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).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5, 8, 11, 12, 15, 18, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9, 10, 14, 15, 16 and 20, respectively of U.S. Patent No. 12,127,141. 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 12,127,141 at col.14, lines 49-62).
Regarding claim 5, see entire claim (see claim 8 of the Patent 12,127,141 at col.15, lines 18-34).
Regarding claim 8, see entire claim (see claim 9 of the Patent 12,127,141 at col.15, lines 35-48).
Regarding claim 11, see entire claim (see claim 10 of the Patent 12,127,141 at col.15, lines 49-53).
Regarding claim 12, see entire claim (see claim 14 of the Patent 12,127,141 at col.16, lines 4-17).
Regarding claim 15, see entire claim (see claim 15 of the Patent 12,127,141 at col.15, lines 18-32).
Regarding claim 18, see entire claim (see claim 16 of the Patent 12,127,141 at col.15, lines 33-37).
Regarding claim 19, see entire claim (see claim 20 of the Patent 12,127,141 at col.15, lines 51-62).
Regarding claim 1, Applicant adds an additional limitation to the scope of patented claim 1 by reciting “wherein the first indication information is carried in a Master Information Block (MIB), and the second indication information is carried in a System Information Block2 (SIB2) or a Radio Resource Control (RRC) reconfiguration message” in lines 5-7.
Regarding claim 5, this claim has the same limitations as those of patented claim 8.
Regarding claim 8, Applicant adds an additional limitation to the scope of patented claim 9 by reciting “wherein the first indication information is carried in a Master Information Block (MIB), and the second indication information is carried in a System Information Block2 (SIB2) or a Radio Resource Control (RRC) reconfiguration message” in lines 5-7.
Regarding claims 11 and 12, these claims have the same limitations as those of patented claims 10 and 14, respectively.
Regarding claim 15, Applicant adds an additional limitation to the scope of patented claim 15 by reciting “wherein the first indication information is carried in a Master Information Block (MIB), and the second indication information is carried in a System Information Block2 (SIB2) or a Radio Resource Control (RRC) reconfiguration message” in lines 5-7.
Regarding claims 18-19, these claims have the same limitations as those of patented claims 16 and 20, 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.
Allowable subject matter
Claims 2-4, 6-7, 9-10, 13-14, 16-17 and 20 are rejected based on its dependency, would be allowable if claims 1, 8 and 15 rewritten or amended to overcome the non-statutory Double Patenting rejection.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yoon et al. (US 2022/0191849) is cited, and considered pertinent to the instant specification.
6. 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.
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 on 571-270-1420 (Gary.mui@uspto.gov). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUC C HO/Primary Examiner, Art Unit 2465
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