DETAILED ACTION
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 1 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 10,993,268. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the patent anticipate the claims in the present application as shown in the table below.
Present Application
USPN 10,993,268
Claim 1 and 2
Claim 1
Claim 5 and 6
Claim 7
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7 and 10-12 of U.S. Patent No. 11,696,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the patent anticipate the claims in the present application as shown in the table below.
Present Application
USPN 11,696,334
Claim 1
Claim 1
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Claim 7
Claim 6
Claim 10
Claim 7
Claim 11
Claim 8
Claim 12
Claims 1 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 12,114,367. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the patent anticipate the claims in the present application as shown in the table below.
Present Application
USPN 12,114,367
Claim 1 and 3
Claims 1 and 2
Claim 5 and 7
Claims 7 and 8
Allowable Subject Matter
Claims 1-8 are allowed over prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1 and 5, Sahlin et al. (USPN 10,201,018) teaches selecting a random-access preamble sequence having a length equal to or longer than a length of a random preamble sequence used in a licensed band [Abstract].
However, Sahlin does not teach transmitting the selected random access preamble sequence to a base station in a frequency bandwidth of an unlicensed band, wherein the frequency bandwidth is equal to or larger than a minimum bandwidth required for the unlicensed band.
Above taken with other limitations from the claim and dependent claims is considered novel and non-obvious. Therefore, claims 1-8 are allowable over prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (USPN 9,538,554) teaches checking whether cell coverage of a terminal exceeds fixation standard to determine size of the cell coverage of the terminal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANDRAHAS PATEL whose telephone number is (571)270-1211. The examiner can normally be reached Monday - Thursday 7:30 - 17:30.
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/Chandrahas B Patel/ Primary Examiner, Art Unit 2464
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