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 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.
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Claims 1 - 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 17 of U.S. Patent No. 12,137,386. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower claims of the issued patent anticipate the broader claims of the instant application.
To illustrate the above statement, claim 1 of the instant application (in plain text) will be mapped to claim 1 of the issued patent (in bold text).
1. A method for a user equipment (UE), comprising (A method for a user equipment (UE), comprising):
determining a mobility state of the UE (determining a mobility state of the UE, wherein the mobility state indicates mobility capability of the UE);
based on the mobility state, transitioning to a relaxation mode for radio resource management (RRM) measurement (based on the mobility state, transitioning to a relaxation mode for radio resource management (RRM) measurement);
sending, from the UE to a base station, a UE assistance information message indicating that the UE is in the relaxation mode (sending, from the UE to a base station, a UE assistance information message indicating that the UE is in the relaxation mode and indicating measurement gap information); and
performing reference signal (RS) measurement in the relaxation mode within at least one cell (performing reference signal (RS) measurement in the relaxation mode within at least one cell, wherein the at least one cell is determined based on the mobility state).
Any other independent claims would be rejected in a similar matter. Regarding the dependent claims, both sets of claims are directed to the measurement of signals in a wireless communication system. The claims of the issued patent contain all limitations, albeit in different combinations, of the instant application claims and thus anticipate and render obvious all claims and subgroups.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER G SOLINSKY whose telephone number is (571)270-7216. The examiner can normally be reached M - Th, 6:30 A - 5:00 P.
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PETER G. SOLINSKY
Examiner
Art Unit 2463
/Peter G Solinsky/Primary Examiner, Art Unit 2463
