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 .
Information Disclosure Statement
The information disclosure statements (IDSs), submitted on 16 August 2025 and 28 March 2025, were filed after the mailing date of the patent application on 16 August 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings, received on 16 August 2025, are acceptable for examination.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 21, 24-25, 28, 30-31, 34-35, 38, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, and 11 of U.S. Patent No. 9838989 (hereinafter referred to as “the ‘989 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claim 21, Claim 11 of the ‘989 Patent discloses a mobile device operable to communicate over a wireless network via a plurality of component carriers of at least a first type and a second, different type (Claim 11 of the ‘989 Patent discloses a first carrier of a first type or a cell on a second carrier of a second, different type is to be used as a reference cell), wherein at least one or more primary and secondary cells are aggregated for the mobile device from among the plurality of component carriers (Claim 11 of the ‘989 Patent discloses the first carrier and the second carrier are part of a carrier aggregation), the mobile device comprising:
at least one processor (Claim 11 of the ‘989 Patent discloses at least one processor) configured to:
receive, from a network node, information indicating whether a cell on a component carrier of a first type is to be used as a reference cell (Claim 11 of the ‘989 Patent discloses receive, from a network node, information indicating whether a cell on a first carrier of a first type or a cell on a second carrier of a second, different type is to be used as a reference cell),
determine, based on the information, whether the mobile device is able to use the cell on the component carrier of the first type as the reference cell (Claim 11 of the ‘289 Patent discloses determine, based on the information, whether the mobile device is able to use the cell on the first carrier as the reference cell);
receive, from the network node, configuration information regarding whether the mobile device is to monitor an enhanced control channel (Claim 11 of the ‘289 Patent discloses receive, from the network node, configuration information regarding whether the mobile device is to monitor an enhanced control channel);
decode the enhanced control channel in response to the received configuration information (Claim 11 of the ‘289 Patent discloses decode the enhanced control channel in response to the configuration information specifying that the mobile device is to monitor the enhanced control channel); and
utilize a delay value associated with a modification of the component carriers, the delay value representing a duration during which reception at the mobile device is interrupted (Claim 4 of the ‘289 Patent discloses determining, by the network node, a delay value associated with modification of the carrier aggregation, the delay value representing a time delay during which the mobile device is unable to receive signaling from the network node responsive to the modification of the carrier aggregation).
Regarding Claim 24, Claim 4 and Claim 11 of the ‘989 Patent discloses the mobile device of claim 21.
Claim 11 of the ‘989 Patent further discloses wherein the reference cell is at least one of a timing reference or a pathloss reference cell (Claim 11 of the ‘989 Patent discloses the reference cell is at least one selected from among a pathloss reference cell and a timing reference cell).
Regarding Claim 25, Claim 11 of the ‘289 Patent discloses the mobile device of claim 21.
Claim 6 of the ‘989 Patent further discloses wherein one of the carrier of the first type and carrier of the second type lacks system information (Claim 6 of the ‘989 Patent discloses wherein sending the information indicating whether the cell on the first carrier of the first type or the cell on the second carrier of the second type is to be used as the reference cell comprises sending the information in system information or a dedicated Radio Resource Control (RRC) message. Here, the other carrier will lack system information if the system information is only sent on the first carrier).
Regarding Claim 28, Claim 11 of the ‘989 Patent discloses the mobile device of claim 21.
Claim 1 of the ‘989 Patent further discloses wherein information regarding the delay value is received by the mobile device from the wireless network (Claim 1 of the ‘989 Patent discloses sending, by the network node to the mobile device, the delay value because the delay value representing a time delay during which the mobile device is unable to receive signaling from the network node responsive to the modification of the carrier aggregation).
Regarding Claim 30, Claim 11 of the ‘289 Patent discloses the mobile device of claim 21.
Claim 1 of the ‘989 Patent further discloses wherein the delay value is preconfigured at the mobile device (Claim 1 of the ‘989 Patent discloses sending, by the network node to the mobile device, the delay value because the delay value representing a time delay during which the mobile device is unable to receive signaling from the network node responsive to the modification of the carrier aggregation).
Regarding Claim 31, Claim 31 is rejected on the same basis as Claim 21.
Regarding Claim 34, Claim 34 is rejected on the same basis as Claim 24.
Regarding Claim 35, Claim 35 is rejected on the same basis as Claim 25.
Regarding Claim 38, Claim 38 is rejected on the same basis as Claim 28.
Regarding Claim 40, Claim 40 is rejected on the same basis as Claim 30.
Claims 22-23 and 32-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 11, of the ‘989 Patent” in view of Wei et al. (US 20130301566 A1 using a first provisional filing date of 11 May 2012 corresponding to U.S. Provisional Application No. 61/646,224 and a second provisional filing date of 18 May 2012 corresponding to U.S. Provisional Application No. 61/649,188; hereinafter referred to as “Wei”).
Regarding Claim 22, Claim 4 and Claim 11 of the ‘989 Patent discloses the mobile device of claim 21.
However, Claim 11 of the ‘989 Patent does not disclose wherein the mobile device is operable to communicate via one primary cell and at least two secondary cells.
Wei, a prior art reference in the same field of endeavor, teaches the mobile device is operable to communicate via one primary cell and at least two secondary cells (¶75 & Fig. 11 (1110) supported by U.S. Provisional App. No. 61/649,188: ¶58 & Fig. 11, Wei discloses a user equipment (UE) operable to communicate via a primary carrier and each secondary carrier).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify Claim 11 of the ‘989 Patent by requiring that the mobile device is operable to communicate via one primary cell and at least two secondary cells as taught by Wei because coexistence between legacy carrier types and new carrier types is improved (Wei, ¶4).
Regarding Claim 23, Claim 11 of the ‘989 Patent discloses the mobile device of claim 21.
However, Claim 11 of the ’989 Patent does not disclose wherein component carriers of the first type correspond to a frequency band that is different than a frequency band of component carriers of the second, different type.
Wei, a prior art reference in the same field of endeavor, teaches wherein component carriers of the first type correspond to a frequency band that is different than a frequency band of component carriers of the second, different type (Abstract & ¶65 & ¶8, Wei discloses a first set of resources associated with a first carrier type in a first band and a second set of resources associated with a second carrier type when non-continuous carrier aggregation is used).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify Claim 11 of the ‘989 Patent by requiring that the component carriers of the first type correspond to a frequency band that is different than a frequency band of component carriers of the second, different type as taught by Wei because coexistence between legacy carrier types and new carrier types is improved (Wei, ¶4).
Regarding Claim 32, Claim 32 is rejected on the same basis as Claim 22.
Regarding Claim 33, Claim 33 is rejected on the same basis as Claim 23.
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, http://www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Allowable Subject Matter
Claims 26-27, 29, 36-37, and 39 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC NOWLIN whose telephone number is (313)446-6544. The examiner can normally be reached M-F 12:00PM-10:00PM.
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/ERIC NOWLIN/Examiner, Art Unit 2474
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