DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 13, 15 of U.S. Patent No. 12,108,478. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instant Application conflict with claim 1 of U.S. Patent 12,108,478. Claim 1 of the instant Application is broader in scope. Claim 1 of the instant Application is anticipated by claim 1 of U.S. Patent 12,108,478.
Claim 2 of the instant Application conflict with claim 2 of U.S. Patent 12,108,478. Claim 2 of the instant Application is broader in scope. Claim 2 of the instant Application is anticipated by claim 2 of U.S. Patent 12,108,478.
Claim 3 of the instant Application conflict with claim 3 of U.S. Patent 12,108,478. Claim 3 of the instant Application is broader in scope. Claim 3 of the instant Application is anticipated by claim 3 of U.S. Patent 12,108,478.
Claim 4 of the instant Application conflict with claim 4 of U.S. Patent 12,108,478. Claim 4 of the instant Application is broader in scope. Claim 4 of the instant Application is anticipated by claim 4 of U.S. Patent 12,108,478.
Claim 5 of the instant Application conflict with claim 6 of U.S. Patent 12,108,478. Claim 5 of the instant Application is broader in scope. Claim 5 of the instant Application is anticipated by claim 6 of U.S. Patent 12,108,478.
Claim 6 of the instant Application conflict with claim 8 of U.S. Patent 12,108,478. Claim 6 of the instant Application is broader in scope. Claim 6 of the instant Application is anticipated by claim 8 of U.S. Patent 12,108,478.
Claim 7 of the instant Application conflict with claim 7 of U.S. Patent 12,108,478. Claim 7 of the instant Application is broader in scope. Claim 7 of the instant Application is anticipated by claim 7 of U.S. Patent 12,108,478.
Claim 8 of the instant Application conflict with claim 1 of U.S. Patent 12,108,478. Claim 8 of the instant Application is broader in scope. Claim 8 of the instant Application is anticipated by claim 1 of U.S. Patent 12,108,478.
Claim 9 of the instant Application conflict with claim 1 of U.S. Patent 12,108,478. Claim 9 of the instant Application is broader in scope. Claim 9 of the instant Application is anticipated by claim 1 of U.S. Patent 12,108,478.
Claim 10 of the instant Application conflict with claim 8 of U.S. Patent 12,108,478. Claim 10 of the instant Application is broader in scope. Claim 10 of the instant Application is anticipated by claim 8 of U.S. Patent 12,108,478.
Claim 11 of the instant Application conflict with claim 3 of U.S. Patent 12,108,478. Claim 11 of the instant Application is broader in scope. Claim 11 of the instant Application is anticipated by claim 3 of U.S. Patent 12,108,478.
Claim 12 of the instant Application conflict with claim 6 of U.S. Patent 12,108,478. Claim 12 of the instant Application is broader in scope. Claim 12 of the instant Application is anticipated by claim 6 of U.S. Patent 12,108,478.
Claim 13 of the instant Application conflict with claim 1 of U.S. Patent 12,108,478. Claim 13 of the instant Application is broader in scope. Claim 13 of the instant Application is anticipated by claim 1 of U.S. Patent 12,108,478.
Claim 14 of the instant Application conflict with claim 9 of U.S. Patent 12,108,478. Claim 14 of the instant Application states ‘while beam failure of the first beam is not detected’ which is not explicitly in claim 9 of U.S. Patent 12,108,478. However, this would have been obvious to one of ordinary skill in the art before the effective filing date to modify claim 9 of U.S. Patent 12,108,478 to include the teaching of while beam failure of the first beam is not detected with the motivation being it is common sense (e.g. the second SR config could be used for the second beam when the first is detected or when it is not detected; either way there are no unexpected results) and further it is obvious to try (e.g. at the time there was a need to seek beam failure recovery; in the closed set the first beam could be detected failed or not detect failed and the second SR is used; there are no unexpected results of either way). Claim 14 of the instant Application is an obvious variant of claim 9 of U.S. Patent 12,108,478.
Claim 15 of the instant Application conflict with claim 10 of U.S. Patent 12,108,478. Claim 15 of the instant Application is an obvious variant of claim 10 of U.S. Patent 12,108,478.
Claim 16 of the instant Application conflict with claim 11 of U.S. Patent 12,108,478. Claim 16 of the instant Application is an obvious variant of claim 11 of U.S. Patent 12,108,478.
Claim 17 of the instant Application conflict with claim 12 of U.S. Patent 12,108,478. Claim 17 of the instant Application is an obvious variant of claim 12 of U.S. Patent 12,108,478.
Claim 18 of the instant Application conflict with claim 13 of U.S. Patent 12,108,478. Claim 18 of the instant Application is an obvious variant of claim 13 of U.S. Patent 12,108,478.
Claim 19 of the instant Application conflict with claim 15 of U.S. Patent 12,108,478. Claim 19 of the instant Application is an obvious variant of claim 15 of U.S. Patent 12,108,478.
Claim 20 of the instant Application conflict with claim 9 of U.S. Patent 12,108,478. Claim 20 of the instant Application is an obvious variant of claim 9 of U.S. Patent 12,108,478.
Claim 21 of the instant Application conflict with claim 9 of U.S. Patent 12,108,478. Claim 21 of the instant Application is broader in scope. Claim 21 of the instant Application is anticipated by claim 9 of U.S. Patent 12,108,478.
Claim 22 of the instant Application conflict with claim 15 of U.S. Patent 12,108,478. Claim 22 of the instant Application states ‘while beam failure of the first beam is not detected’ which is not explicitly in claim 15 of U.S. Patent 12,108,478. However, this would have been obvious to one of ordinary skill in the art before the effective filing date to modify claim 15 of U.S. Patent 12,108,478 to include the teaching of while beam failure of the first beam is not detected with the motivation being it is common sense (e.g. the second SR config could be used for the second beam when the first is detected or when it is not detected; either way there are no unexpected results) and further it is obvious to try (e.g. at the time there was a need to seek beam failure recovery; in the closed set the first beam could be detected failed or not detect failed and the second SR is used; there are no unexpected results of either way). Claim 22 of the instant Application is an obvious variant of claim 15 of U.S. Patent 12,108,478.
Claim 23 of the instant Application conflict with claim 11 of U.S. Patent 12,108,478. Claim 23 of the instant Application is anticipated by claim 11 of U.S. Patent 12,108,478.
Claim 24 of the instant Application conflict with claim 13 of U.S. Patent 12,108,478. Claim 24 of the instant Application is anticipated by claim 13 of U.S. Patent 12,108,478.
Claim 25 of the instant Application conflict with claim 9 of U.S. Patent 12,108,478. Claim 25 of the instant Application is anticipated by claim 9 of U.S. Patent 12,108,478.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN J CLAWSON whose telephone number is (571)270-7498. The examiner can normally be reached M-F 7:30-5:00 pm est.
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/Stephen J Clawson/ Primary Examiner, Art Unit 2461
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