CTNF 18/782,256 CTNF 85276 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. Information Disclosure Statement 06-49-08 The information disclosure statement filed 7/24/24 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. Note: Half of the form lacks a blank space for Examiner’s Initials and is therefore, not considered. 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 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. 08-34 AIA Claim s 2-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 of U.S. Patent No. 12082195 . Although the claims at issue are not identical, they are not patentably distinct from each other because : For claim 2, ‘195 discloses the limitations in claims 1-6. For claim 3, ‘195 discloses the limitations in claims 1-6. For claim 4, ‘195 discloses the limitations in claims 1-6. For claim 5, ‘195 discloses the limitations in claims 1-6 . 08-34 AIA Claim s 2-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-7 of U.S. Patent No. 11,343,803 . Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim having a broader scope recites similar steps as that of the referenced U.S. Patent No. 11,343,803 . For claim 2, ‘803 discloses the limitations in claims 1-7. For claim 3, ‘803 discloses the limitations in claims 1-7 For claim 4, ‘803 discloses the limitations in claims 1-7. For claim 5, ‘803 discloses the limitations in claims 1-7 . 08-34 AIA Claim s 2-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 6-9 of U.S. Patent No. 10,536,930 . Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim having a broader scope recites similar steps as that of the referenced U.S. Patent 10,536,930 . For claim 2, ‘930 discloses the limitations in claims 1 and 6-9. For claim 3, ‘930 discloses the limitations in claims 1 and 6-9. For claim 4, ‘930 discloses the limitations in claims 1 and 6-9. For claim 5, ‘930 discloses the limitations in claims 1 and 6-9 . 08-34 AIA Claim s 2-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 6, 11, 16, 18, 23, 26,30, 31, 36, 37, and 45-47 of U.S. Patent No. 9,961,672 . Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim having a broader scope recites similar steps as that of the referenced U.S. Patent 9,961,672 . For claim 2, ‘672 discloses the limitations in claims 1, 6, 11, 16, 18, 23, 26,30, 31, 36, 37, and 45-47. For claim 3, ‘672 discloses the limitations in claims 1, 6, 11, 16, 18, 23, 26,30, 31, 36, 37, and 45-47. For claim 4, ‘672 discloses the limitations in claims 1, 6, 11, 16, 18, 23, 26,30, 31, 36, 37, and 45-47. For claim 5, ‘672 discloses the limitations in claims 1, 6, 11, 16, 18, 23, 26,30, 31, 36, 37, and 45-47 . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-fti The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-fti The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-fti This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a). 07-21-fti Claim s 2-5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ishii et al. (U.S. Patent Application Publication No. 2017/0272364) [R1] and further in view of Lee et al. (U.S. Patent Application Publication No. 2015/0319801) [R2] . For claim 2, R1 discloses operating dual connectivity which utilizes a first cell operated by a master base station and a second cell operated by a secondary base station (paragraphs 10, 17, 59, 64, 76-85, Fig 3, 22D); receiving configuration information of the second cell forwarded by the secondary base station, from the master base station via the secondary base station (paragraphs 10, 17, 59, 64, 76-85, Fig 3, 22D); and performing Radio Resource Control (RRC) reconfiguration according to the configuration information of the second cell (paragraphs 10, 17, 59, 64, 76-85, 186-189 Fig 3, 22D). Although teaching that the radio resource configuration of D2UE connection is transmitted to UE as noted above, R1 does not explicitly state the received and transmitted information is configuration information of the second cell . R2 is directed to method and apparatus for transmitting indication in wireless communication system. More specifically, R2 teaches the RRC at the macro cell controls management of all data radio bearers (DRBs) and radio resources, even though the DRBs and radio resources are established/configured at the small cell (par [0144]). Further, R2 teaches that the eNB controlling macro cell communicates with the eNB controlling the small cell to reconfigure DRB or radio resources at the small cell (par [0149]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the invention of R1 so that the radio resource control message includes radio resource configuration of the second cell, as taught by R2. The modification would have allowed the system to configure a SCell efficiently (see Lee et al., par [0010]). For claim 3, R1 discloses the receiving is performed while the radio terminal is connected to the secondary base station in the dual connectivity (paragraphs 4-10, 115-120). For claim 4, R1 discloses a memory (paragraphs 349-351); and at least one processor configured to access the memory and configured to (paragraphs 349-351): operate dual connectivity which utilizes a first cell operated by a master base station and a second cell operated by a secondary base station (paragraphs 10, 17, 59, 64, 76-85, Fig 3, 22D); receive configuration information of the second cell forwarded by the secondary base station, from the master base station via the secondary base station (paragraphs 10, 17, 59, 64, 76-85, Fig 3, 22D); and perform Radio Resource Control (RRC) reconfiguration according to the configuration information of the second cell (paragraphs 10, 17, 59, 64, 76-85, 186-189, Fig 3, 22D). Although teaching that the radio resource configuration of D2UE connection is transmitted to UE as noted above, R1 does not explicitly state the received and transmitted information is configuration information of the second cell . R2 is directed to method and apparatus for transmitting indication in wireless communication system. More specifically, R2 teaches the RRC at the macro cell controls management of all data radio bearers (DRBs) and radio resources, even though the DRBs and radio resources are established/configured at the small cell (par [0144]). Further, R2 teaches that the eNB controlling macro cell communicates with the eNB controlling the small cell to reconfigure DRB or radio resources at the small cell (par [0149]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify R1 so that the radio resource control message includes radio resource configuration of the second cell, as taught by R2. The modification would have allowed the system to configure a SCell efficiently (see Lee et al., par [0010]). For claim 5, R1 discloses the processor is configured to receive the configuration information of the second cell while the radio terminal is connected to the secondary base station in the dual connectivity (paragraphs 10, 17, 59, 64, 76-85, Fig 3, 22D) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Pelletier et al (US 2014/0056243) forwarding RRC via a secondary cell . Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R CROMPTON whose telephone number is (571)270-3678. The examiner can normally be reached 10AM-4PM ET M-Th. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Asad Nawaz can be reached at (571)272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CHRISTOPHER R CROMPTON/Primary Examiner, Art Unit 2463 Application/Control Number: 18/782,256 Page 2 Art Unit: 2463 Application/Control Number: 18/782,256 Page 3 Art Unit: 2463 Application/Control Number: 18/782,256 Page 4 Art Unit: 2463 Application/Control Number: 18/782,256 Page 5 Art Unit: 2463 Application/Control Number: 18/782,256 Page 6 Art Unit: 2463 Application/Control Number: 18/782,256 Page 7 Art Unit: 2463 Application/Control Number: 18/782,256 Page 8 Art Unit: 2463 Application/Control Number: 18/782,256 Page 9 Art Unit: 2463 Application/Control Number: 18/782,256 Page 10 Art Unit: 2463
Prosecution Insights