CTNF 18/774,150 CTNF 80364 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION Claim Objections Claims 1 and 8 are objected to because of the following informality: Re claims 1 and 8, RRC is not spelled out. Double Patenting 08-33 AIA 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). 08-34 AIA Claim s 1, 2, 4, 5 and 8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim s 1, 4 and 7 of U.S. Patent No. 10,849,027 . Although the conflicting claims are not identical, they are not patentably distinct from each other because : Claims 1, 4 and 7 of Patent No.10, 849,027 contain every elements of claims 1, 2, 4 and 5 of the instant application and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. Claim 8 differs from patent claim 1 in that present claim is directed to a terminal while patent claim is directed to a method. Such a change is deemed obvious to one having ordinary skill in the art at the time the invention was made to provide obvious variants . 08-34 AIA Claim s 1, 2, 4, 5 and 8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim s 1, 4 and 6 of U.S. Patent No. 11,516,711 . Although the conflicting claims are not identical, they are not patentably distinct from each other because : Claims 1, 4 and 6 of Patent No. 11,516,711 contain every elements of claims 1, 2, 4 and 5 of the instant application and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. Claim 8 differs from patent claim 1 in that present claim is directed to a terminal while patent claim is directed to a method. Such a change is deemed obvious to one having ordinary skill in the art at the time the invention was made to provide obvious variants . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-03-aia AIA Claim s 1, 2, 4 and 8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Son et al (US 9,560,561, “Son”) . Re claims 1 and 8, Son discloses a terminal (figure 5, element 510) receiving an RRC message from a base station, the RRC message including information related to a beam (figure 5, step 6); transmitting a random access preamble signal using the radio resource information in uplink (figure 5, step 9). Re claim 2, Son discloses transmitting, to the base station, first information indicating results of the measurements, the results of the measurements include measured best cell (column 9, lines 47-65). Re claim 4, Son discloses the radio resource information includes information regarding a resource for the beam (figure 5, step 4-2) . Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-aia AIA Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Su (US 2018/0062722, “Su”) . Re claim 3, Son discloses all of the limitations of the base claim, but fails to disclose the results of measurements include preferred beamforming weights that correspond to the beam. However, Su discloses selecting a beamforming weight matrix in accordance with a measurement result (paragraph [0026]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Son with Su for the benefit of providing efficient/reliable communication by utilizing optimal beamforming. Allowable Subject Matter Claims 5-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims to overcome the rejection(s) under Double Patenting, set forth in this Office action. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hong Cho whose telephone number is 571-272-3087. The examiner can normally be reached on Mon-Fri during 8 am to 4 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Hassan Phillips can be reached on 571-272-3940. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). /HONG S CHO/ Primary Examiner, Art Unit 2467 Application/Control Number: 18/774,150 Page 2 Art Unit: 2467 Application/Control Number: 18/774,150 Page 3 Art Unit: 2467 Application/Control Number: 18/774,150 Page 4 Art Unit: 2467 Application/Control Number: 18/774,150 Page 5 Art Unit: 2467 Application/Control Number: 18/774,150 Page 6 Art Unit: 2467
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