DETAILED ACTION
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/33/24, 12/10/24, 1/17/25, 8/6/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus. Further, because storing functional instructions to perform a patented method onto a physical medium represents a predictable, conventional automation of that method, adding no patentably distinct inventive concept over the method itself.
Claim 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus. Further, because storing functional instructions to perform a patented method onto a physical medium represents a predictable, conventional automation of that method, adding no patentably distinct inventive concept over the method itself.
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus. Further, because storing functional instructions to perform a patented method onto a physical medium represents a predictable, conventional automation of that method, adding no patentably distinct inventive concept over the method itself.
Claim 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,192,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims language of the instant application encompasses those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus. Further, because storing functional instructions to perform a patented method onto a physical medium represents a predictable, conventional automation of that method, adding no patentably distinct inventive concept over the method itself.
REASONS FOR ALLOWABILITY OVER PRIOR ART
The following is an examiner’s statement of reasons for allowance:
In the Examiner's best judgement the best prior art found during prosecution with respect to independent claims 1, 9 and 15 fail to, either singularly or in combination, to anticipate or render the claim features obvious, particularly the combination of features of the Independent Claims. The references used, fail to singularly or in combination, to anticipate and render obvious the inventive concept identified by the specific claim features of the inventive concept claims. Specifically, determine, based on determination that the configuration information does not include the absoluteFrequencySSB parameter, a first reference signal of the SCell is associated with a second reference signal of an active serving cell that is on a same band as the SCell; and activate the SCell based on determination that the first reference signal is associated with the second reference signal.
The examiner identifies, as the best prior art of record, the following documents: a. U.S. Pre-Grant Publ'n. No. 2019/0253925 (published 15 Aug. 2019) [hereinafter Gholmieh] teaches a base station (BS) may receive indication information from a UE, the BS may determine UE capability based upon the indication. The UE capabilities indicated may include UE support for an SCell without SSB. (see paragraph 171 and figure 16) The BS may then configure the UE based upon the capability information.
However, Gholmieh does not teach determine, based on determination that the configuration information does not include the absoluteFrequencySSB parameter, a first reference signal of the SCell is associated with a second reference signal of an active serving cell that is on a same band as the SCell; and activate the SCell based on determination that the first reference signal is associated with the second reference signal.
Additionally, all of the further limitations in 2 – 8, 10 - 14 and 16 - 20 are allowable since the claims are dependent upon the independent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J LOPATA whose telephone number is (571)270-5158. The examiner can normally be reached Mon-Fri 10-7 EST.
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ROBERT J. LOPATA
Primary Examiner
Art Unit 2471
/ROBERT J LOPATA/
August 20, 2026Primary Examiner, Art Unit 2471
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