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 .
Claim Objections
Claims 1-3 are objected to because of the following informalities: In claim 1, lines 2 and 3, “messa ge” should be --message--. In claim 1, lines 5 and 6, “wher ein” should be --wherein--. In claim 1, lines 7 and 8, “con figuration” should be --configuration--. In claim 1, lines 14 and 15, “w herein” should --wherein--. In claim 1, lines 18 and 19, “proced ure” should be --procedure--. In claim 2, lines 1 and 2, “proce dure: should be ---procedure--. In claim 3, lines 1 and 2, “proce dure”: should be --procedure-. Appropriate correction is required.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7 and 15-17 of U.S. Patent No. 12,069,761. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to a method for receiving by a mobile terminal an RRC message that indicates a power headroom report.
Claim Analysis:
Claim 1 of the present invention corresponds to claims 1-3, 7 and 15-17 of U.S. Patent No. 12,069,761.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 11,832,331. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to a method for receiving by a mobile terminal an RRC message that indicates a power headroom report.
Claim Analysis:
Claim 1 of the present invention corresponds to claims 1 and 5 of U.S. Patent No. 11,832,331.
Allowable Subject Matter
Claims 1-3 would be allowable once the double patenting rejections have been overcome.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Zhou et al., U.S. Patent Pub. No. 2019/0207662, discloses RRC message configuration and triggering a power headroom report (PHR) based on bandwidth parts (BWP). Zhou, however, fails to suggest or render obvious, taken individually or collectively, a method and apparatus as claimed as a whole, triggering, based on a second resume procedure being initiated, a PHR, wherein the triggered PHR is based on a second PHR configuration, and wherein a multiplePHR parameter of the second PHR configuration is set to False; and canceling the triggered PHR, wherein the triggered PHR is canceled based on the second resume procedure being ongoing, wherein the second resume procedure is associated with a small data transmission (SDT).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al., U.S. Patent Pub. No. 2018/0213452 discloses a method and apparatus for communication in a wireless mobile communication system.
Zhou et al., U.S. Patent Pub. No. 2019/0207662, discloses methods and apparatus for information reporting.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEMICA M. BEAMER whose telephone number is (571)272-7797. The examiner can normally be reached Monday thru Friday; 9:00 AM to 3:00 PM.
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/TEMICA M BEAMER/Primary Examiner, Art Unit 2646
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