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 .
This office action is in response to Pre-Amendment filed on Nov.22, 2024.
Claims 1-5, 9, 11-12, 16, 18-20, 23, 27, 29-31, 33-34, 36-37 and 39 have been amended.
Claims 6-8, 10, 13-15, 17, 21-22, 24-26, 28, 32, 35, 38 and 40 have been canceled.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 respectively of U.S. Patent No. 12,707,254. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all the limitations of the instant application claims, respectively (see table below). The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, " a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claim preclude issuance of generic application claims”).
Claims 2-5, 9 and 11, 9-14, and 16 and 18 are rejected as being dependent on independent claims 1 and 12.
Application 18/868,286
U.S. Patent No. 12,707,254
Claim 1
A method performed by a network node of a wireless communication network, the method comprising: receiving, from a User Equipment, UE, wirelessly connected to the network node, a chipset identifier indicating a type of chipset of the UE, wherein the chipset identifier is received in a UE capability information message, which UE capability information message further comprises standardized information of the UE capabilities, determining, based on the received chipset identifier, how to handle the UE with respect to one or more certain feature/s that is/are associated with one or more of the UE capabilities indicated in the standardized information, and communicating with the UE according to the determination.
Claim 1
A method performed by a network node of a wireless communication network, the method comprising: receiving, from a user equipment (UE) wirelessly connected to the network node, a UE capability information message that includes a plurality of information elements that carry standardized information indicating one or more UE capabilities, wherein the plurality of information elements further carry a Chipset identifier indicating a type of chipset of the UE; determining, based on the received chipset identifier, whether to use one or more features associated with the one or more UE capabilities; and communicating with the UE based on the determination.
Claim 12
A method performed by a user equipment, UE, wirelessly connected to a network node of a wireless communication network, the method comprising: sending, to the network node, a chipset identifier indicating a type of chipset of the UE wherein the chipset identifier is sent (302) in a UE capability information message, the UE capability information message further comprising standardized information of the UE capabilities, thereby enabling the network node to determine how to handle the UE with respect to one or more certain feature/s that is/are associated with one or more of the UE capabilities as indicated in the standardized information, depending on the type of chipset of the UE.
Claim 15
A method performed by a user equipment (UE) wirelessly connected to a network node of a wireless communication network, the method comprising: sending, to the network node, a UE capability information message that includes a plurality of information elements that carry standardized information indicating one or more UE capabilities, wherein the plurality of information elements further carry a chipset identifier indicating a type of chipset of the UE, wherein a first set of one or more features are associated with the standardized information and a second set of one or more features are associated with the type of chipset of the UE.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 11-12, 18-19, 23, 29-31, 33, 36-37 and 39 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Thantharate et al. (2023/0354392).
Regarding claim 1, Thantharate discloses a 1.A method performed by a network node of a wireless communication network (see abstract, fig.1, element 110/100, paragraph [0010] and its description), the method comprising: receiving, from a User Equipment, UE, wirelessly connected to the network node, a chipset identifier indicating a type of chipset of the UE, wherein the chipset identifier is received in a UE capability information message, which UE capability information message further comprises standardized information of the UE capabilities (see abstract, fig.1, elements 110/100, 102/100, fig.2. steps 202-204, paragraphs [0010-0011], [0025], [0029], [0040] and its description), determining, based on the received chipset identifier, how to handle the UE with respect to one or more certain feature/s that is/are associated with one or more of the UE capabilities indicated in the standardized information (see abstract, fig.1, elements 110/100, 102/100, fig.2. steps 202-208, paragraphs [0010-0011], [0025], [0029], [0040-0041] and its description), and communicating with the UE according to the determination (see abstract, fig.1, elements 110/100, 102/100, fig.2. step 210, paragraphs [0010-0011], [0025], [0029], [0040], [0042] and its description).
Regarding claim 2, Thantharate further discloses wherein the determining comprises comparing the received chipset identifier to chipset identifiers stored in the wireless communication network together with information on any feature constraints for each stored chipset identifier, and determining, based on any stored feature constraints for a chipset identifier of the stored chipset identifiers that matches the received chipset identifier, how to handle the UE.
Regarding claim 3, Thantharate further discloses wherein the determination is also based on network node configuration and requirements of the certain feature(s) (see abstract, fig.1, elements 110/100, 102/100, fig.2. step 208, paragraphs [0010-0011], [0025], [0029], [0041] and its description).
Regarding claim 4, Thantharate further discloses wherein the determination comprises determining, based on the chipset identifier and requirements of the certain feature(s), whether to use the certain feature(s) for the UE, and the communicating further comprises selectively using the feature for the communication with the UE depending on the determination (see abstract, fig.1, elements 110/100, 102/100, fig.2. steps 202-210, paragraphs [0010-0011], [0025], [0029], [0040-0042] and its description).
Regarding claim 5, Thantharate further discloses 5. Method according to claim 1, wherein the determination comprises determining, based on the chipset identifier, to avoid use of one or more of the certain feature(s) for the UE, despite the UE having indicated it has a capability that supports the certain feature(s) (see abstract, fig.1, elements 110/100, 102/100, fig.2. step 206, paragraphs [0010-0011], [0025], [0029], [0041] and its description).
Regarding claim 11, Thantharate further comprising sending an identifier of the network node to the UE (see paragraphs [0020], [0029]).
Regarding claim 12, Thantharate discloses a method performed by a User Equipment, UE, wirelessly connected to a network node of a wireless communication network (see abstract, fig.1, elements 102/100. 110/100, paragraph [0010] and its description), the method comprising: sending, to the network node, a chipset identifier indicating a type of chipset of the UE wherein the chipset identifier is sent in a UE capability information message, the UE capability information message further comprising standardized information of the UE capabilities, thereby enabling the network node to determine how to handle the UE with respect to one or more certain feature/s that is/are associated with one or more of the UE capabilities as indicated in the standardized information, depending on the type of chipset of the UE (see abstract, fig.1, elements 110/100, 102/100, fig.2. steps 202-204, paragraphs [0010-0011], [0025], [0029], [0040] and its description).
Regarding claim 18, Thantharate further comprising receiving a network node identifier from the network node (see paragraphs [0020], [0029]).
Regarding claims 19, 23, 29-31, 33, 36-37 and 39 recite limitations substantially similar to claims 1-5, 11-12 and 18. Therefore, these claims were rejected for similar reasons as stated above.
Allowable Subject Matter
Claims 9, 16, 20, 27 and 34 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.
Examiner's Note: Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
When responding to this Office Action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111(c).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CongVan Tran whose telephone number is (571)272-7871. The examiner can normally be reached on Mon-Th.
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UNITED STATES PATENT AND TRADEMARK OFFICE
/CONGVAN TRAN/Primary Examiner, Art Unit 2647
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