CTNF 18/808,128 CTNF 86042 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. Specification 06-31 AIA 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 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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 11-13 of U.S. Patent No. 12,133,270 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because Instant Application U.S. Patent No. 12,133,270 B2 Claim 1, A method performed by a user equipment (UE), the method comprising: receiving information indicating a condition for limiting small data transmission in a Radio Resource Control (RRC) Inactive state; receiving a RRC release message for configuring a radio bearer (RB) enabled for the small data transmission in the RRC Inactive state; transmitting, in a case where the UE is in the RRC Inactive state and the condition is met, a small data using the RB. Claim 1. A method performed by a user equipment (UE), the method comprising: receiving a Radio Resource Control (RRC) release message for configuring a data radio bearer (DRB) enabled for small data transmission in a RRC Inactive state; and transmitting, while the UE is in the RRC Inactive state, a small data the DRB configured by the RRC release message. Claim 6 A method performed by an access network node, the method comprising: transmitting information indicating a condition for limiting small data transmission in a Radio Resource Control (RRC) Inactive state; transmitting a RRC release message for configuring a radio bearer (RB) enabled for the small data transmission in the RRC Inactive state; and receiving, from the UE in a case where the UE is in the RRC Inactive state and the condition is met, a small data using the RB. Claim 11. A method performed by an access network node, the method comprising: transmitting a Radio Resource Control (RRC) release message for configuring a data radio bearer (DRB) enabled for small data transmission in a RRC Inactive state; and receiving, from the UE while the UE is in the RRC Inactive state, a small data using the DRB configured by the RRC release message. Claim 7 A user equipment (UE) comprising: at least one memory storing instructions; and at least one processor configured to process the instructions to: receive information indicating a condition for limiting small data transmission in a Radio Resource Control (RRC) Inactive state; receive a RRC release message for configuring a radio bearer (RB) enabled for the small data transmission in the RRC Inactive state; transmit, in a case where the UE is in the RRC Inactive state and the condition is met, a small data using the RB. Claim 12. A user equipment (UE) comprising: a memory storing instructions; and at least one processor configured to process the instructions to: receive a Radio Resource Control (RRC) release message for configuring a data radio bearer (DRB) enabled for small data transmission in a RRC Inactive state; transmit, while the UE is in the RRC Inactive state, a small data using the DRB configured by the RRC release message. Claim 8 An access network node comprising: at least one memory storing instructions; and at least one processor configured to process the instructions to: transmit information indicating a condition for limiting small data transmission in a Radio Resource Control (RRC) Inactive state; transmit a RRC release message for configuring a radio bearer (RB) enabled for the small data transmission in the RRC Inactive state; and receive, from the UE in a case where the UE is in the RRC Inactive state and the condition is met, a small data using the RB Claim 13. An access network node comprising: a memory storing instructions; and at least one processor configured to process the instructions to: transmit a Radio Resource Control (RRC) release message for configuring a data radio bearer (DRB) enabled for small data transmission in a RRC Inactive state; and receive, from the UE while the UE is in the RRC Inactive state, a small data using the DRB configured by the RRC release message. claims 1-8 of the instant application represent broader version of re-arrangement of the claims 1-13 of the patent by eliminating the elements and functions of the claims and are obvious variants of the patent claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY P CATTUNGAL whose telephone number is (571)270-7525. The examiner can normally be reached M-F 9:00-5:00 PM. 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, Hassan Phillips can be reached at 5712723940. 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. /AJAY CATTUNGAL/Primary Examiner, Art Unit 2467 Application/Control Number: 18/808,128 Page 2 Art Unit: 2467 Application/Control Number: 18/808,128 Page 3 Art Unit: 2467 Application/Control Number: 18/808,128 Page 4 Art Unit: 2467 Application/Control Number: 18/808,128 Page 5 Art Unit: 2467 Application/Control Number: 18/808,128 Page 6 Art Unit: 2467 Application/Control Number: 18/808,128 Page 7 Art Unit: 2467 Application/Control Number: 18/808,128 Page 8 Art Unit: 2467 Application/Control Number: 18/808,128 Page 9 Art Unit: 2467 Application/Control Number: 18/808,128 Page 10 Art Unit: 2467 Application/Control Number: 18/808,128 Page 11 Art Unit: 2467
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