CTNF 18/804,461 CTNF 82191 DETAILED ACTION 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. 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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 of U.S. Patent No. 11,831,479 (reference patent) . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of the application and claims 1-6 of the reference patent are essentially the same invention except for that claims 1-6 of the application broaden the scope of claims 1-6 of the reference patent by omitting the language related to “a user equipment (UE)“, “a first resource of a plurality of synchronization signals in a plurality of resources” and “based on the first synchronization signal” from claim 1 of the reference patent, and add language related to “executing instructions stored in a memory” which is a knowledge well-known in the art. Claims 1-6 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No.12,166,611 for similar reasons set forth above . 08-34 AIA Claim s 7-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 7-14 of U.S. Patent No. 11,831,479 (reference patent) . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 7-14 of the application and claims 7-14 of the reference patent are essentially the same invention except for that claims 7-14 of the reference patent are directed to a method and claims 7-14 of the application are directed to an apparatus comprising the same limitations. Additionally, claims 7-14 of the application omit the language related to “in a first resource of a plurality of synchronization signals in a plurality of resources” from claim 7 of the reference patent. Claims 7-14 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-14 of U.S. Patent No.12,166,611 for similar reasons set forth above . 08-34 AIA Claim s 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 15-20 of U.S. Patent No. 12,166,611 (reference patent) . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15-20 of the application and claims 15-20 of the reference patent are essentially the same invention except for that claims 15-20 of the application omits the language related to “a base station” from claim 15 of reference patent and add the language related to “executing instructions stored in a memory” which is a knowledge well-known in the art . Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding independent claim 1, it is unclear whether “a detected time index” in line 12 refers to the time index in “detect a time index” in line 11, or otherwise. Dependent claims 2-6 are rejected because they depend from claim 1. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alvin ZHU whose telephone number is (571)270-1086. The examiner can normally be reached Mon-Fri 6am-9am and 2pm-7pm. 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, Gary Mui can be reached at 571-270-1420. 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. /BO HUI A ZHU/Primary Examiner, Art Unit 2465 Application/Control Number: 18/804,461 Page 2 Art Unit: 2465 Application/Control Number: 18/804,461 Page 3 Art Unit: 2465 Application/Control Number: 18/804,461 Page 4 Art Unit: 2465 Application/Control Number: 18/804,461 Page 5 Art Unit: 2465 Application/Control Number: 18/804,461 Page 6 Art Unit: 2465
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