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 .
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1-3, 9-11 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 1, 2, 3, 1, 1&2, and 1&3, respectively, of U.S. Patent No. 12,101,833. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, see entire claim (see claim 1 of the Patent 12,101,833 at col.34, lines 48-62).
Regarding claim 2, see entire claim (see claim 2 of the Patent 12,101,833 at col.34, lines 63-67).
Regarding claim 3, see entire claim (see claim 3 of the Patent 12,101,833 at col.35, lines 1-6).
Regarding claim 9, see entire claim (see claim 1 of the Patent 12,101,833 at col.34, lines 48-62).
Regarding claim 10, see entire claim (see claim 2 of the Patent 12,101,833 at col.34, lines 63-67).
Regarding claim 11, see entire claim (see claim 3 of the Patent 12,101,833 at col.35, lines 1-6).
Regarding claim 17, see entire claim (see claim 1 of the Patent 12,101,833 at col.34, lines 48-62).
Regarding claim 18, see entire claim (see claims 1 and 2 of the Patent 12,101,833 at col.34, lines 48-67).
Regarding claim 19, see entire claim (see claims 1 and 3 of the Patent 12,101,833 at col.34, lines 48-62 and col. 35, lines 1-6).
Regarding claim 1, as patented claim 1 is directed to a method, claim 1 is also directed to a method performing steps described in the method of the patented claim 1, with an additional step. Thus, Applicant merely narrows the scope of patent claim 1 by adding the limitations, “performing, based on the second indication information, the channel state information measurement on a secondary cell to obtain the channel state information measurement result in the secondary cell activation phase”.
Regarding claims 2-3, these claims have the same limitations as those of the patented claims 2-3, respectively.
It has been held that adding a functional limitation is an obvious expedient if the remaining elements perform the same function as before. Therefore, omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Regarding claim 9, the only difference between the current application independent claim 9 and the patented claim 1 is the recitation of an apparatus having at least one processor communicably coupled to one or more non-transitory memories storing programming instructions for execution by the at least one processor to perform operations. However, it would have been obvious to modify the invention of patented claim 1 to be performed by an apparatus having a processor coupling to one or more (non-transitory) memories storing programming instructions as described by Wang, see processor 180-fig.2 and memory 120-fig.2.
Regarding claims 10-11, these claims have the same limitations as those of the patented claims 2-3, respectively.
For claims 9-11, although, the patented claim 1 does not explicitly claim at least one processor communicably coupled to one or more non-transitory memories storing programming instructions for execution by the at least one processor to perform operations nor an apparatus, it would have been obvious to one skilled in the art before the effective filing date to claim the subject matter at least one processor communicably coupled to one or more non-transitory memories storing programming instructions for execution by the at least one processor to perform operations and an apparatus claim as they are obvious variants, where claiming at least one processor communicably coupled to one or more non-transitory memories storing programming instructions for execution by the at least one processor to perform operations and an apparatus would yield a reasonable and predictable result.
Regarding claim 17, current application independent claim 17 is directed to a non-transitory computer storage medium and independent patented claim 1 is directed to a method claim. Although, the patented claim 1 does not explicitly claim a non-transitory computer storage medium, it would have been obvious to one skilled in the art before the effective filing date to claim the subject matter a non-transitory computer readable medium and a method claims as they are obvious variants, where claiming a non-transitory computer storage medium and a method would yield a reasonable and predictable result.
Regarding claim 18, as patented claim 1 is directed to a method, claim 18 is also directed to a method performing steps described in the method of the patented claim 1, with two additional steps. Thus, Applicant merely narrows the scope of patent claim 1 by adding limitations, “performing, based on the second indication information, the channel state information measurement on a secondary cell to obtain the channel state information measurement result in the secondary cell activation phase” and “sending a request message that is used to request the first indication information”.
It would have been obvious to one skilled in the art before the effective filing date to claim the subject matter of claim 1 and 2 which was also similar to the subject matter to that of the method claims 1-2 of the US Patent where claiming the methods claims 1-2 as function of the device claim would yield a reasonable and predictable result
Regarding claim 19, as patented claim 1 is directed to a method, claim 19 is also directed to a method performing steps described in the method of the patented claim 1, with two additional steps. Thus, Applicant merely narrows the scope of patent claim 1 by adding limitations, “performing, based on the second indication information, the channel state information measurement on a secondary cell to obtain the channel state information measurement result in the secondary cell activation phase” and “sending third indication information, wherein the third indication information indicates a time period required for a terminal device to activate the secondary cell”.
It would have been obvious to one skilled in the art before the effective filing date to claim the subject matter of claim 1 and 3 which was also similar to the subject matter to that of the method claims 1 and 3 of the US Patent where claiming the methods claims 1 and 3 as function of the device claim would yield a reasonable and predictable result
Allowable subject matter
4. Claim 20 is allowed.
5. Claims 4-8 and 12-16 are rejected based on its dependency, would be allowable if claims 1, and 9 rewritten or amended to overcome the non-statutory DP rejections, set forth in this Office action.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park et al. (US 2024/0049070); Jang Jaehyuk (KR-20200099324 A) are cited, and considered pertinent to the instant specification.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUC C HO whose telephone number is (571)272-3147. The examiner can normally be reached on M-F 8am-4pm.
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/DUC C HO/Primary Examiner, Art Unit 2465
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