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 .
Claims 51-70 have been examined.
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.
Claims 69-70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 of U.S. Patent No. 12150178. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 69-70 of the instant application is anticipated by claims 12-13 of U.S. Patent No. 12150178 in that claims 12-13 of U.S. Patent No. 12150178 contains all the limitations of claims 69-70 of the instant application. Claims 69-70 of the instant application therefore are not patently distinct from the earlier patent claim and as such are unpatentable for obvious-type double patenting.
Claim 51-68 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12150178 in view of Akoum et al. (US 2020/0267579).
In reference to claim 51
Claim 1 of US 12150178 teaches substantially all limitations of the parent claim except does not teach that each beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams.
Claim 1 of US 12150178 teaches substantially all limitations of the parent claim except does not teach that each beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams.
Akoum et al. teaches a beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams (par. 0050-0051, 0072).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify each beam of U.S. Patent No. 12150178 to be associated with a synchronization signal block (SSB) and a beam of a plurality of beams as suggested by Akoum et al. because it would allow the wireless device to perform a synchronization procedure with a cell and with multiple beams within the network.
In reference to claim 51
Claim 2 of US 12150178 teaches substantially all limitations of the parent claim except the difference between the claim 51 of the application and the claim 2 of US 12150178 is that claim 51 discloses a method which wireless device of claim 2 of US 12150178 is operable to perform. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to implement the method of claims 51 of the application using the wireless device of claim 2 of US 12150178 because the steps of the method of claim 51 of the application would be performed when the apparatus of claim 2 of US 12150178 is operating.
Claim 2 of US 12150178 teaches substantially all limitations of the parent claim except does not teach that each beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams.
Akoum et al. teaches a beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams (par. 0050-0051, 0072).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify each beam of U.S. Patent No. 12150178 to be associated with a synchronization signal block (SSB) and a beam of a plurality of beams as suggested by Akoum et al. because it would allow the wireless device to perform a synchronization procedure with a cell and with multiple beams within the network.
In reference to claims 52-59
The combination of US 12150178 and Akoum et al. teaches a system and method that covers substantially all limitations of the parent claim. Claims 3-5, 2, and 6-8 of US 12150178 teach substantially all limitations of claims 52-59.
In reference to claim 60
Claim 2 of US 12150178 teaches substantially all limitations of the parent claim except does not teach that each beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams.
Claim 2 of US 12150178 teaches substantially all limitations of the parent claim except does not teach that each beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams.
Akoum et al. teaches a beam is associated with a synchronization signal block (SSB) is a beam of a plurality of beams (par. 0050-0051, 0072).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify each beam of U.S. Patent No. 12150178 to be associated with a synchronization signal block (SSB) and a beam of a plurality of beams as suggested by Akoum et al. because it would allow the wireless device to perform a synchronization procedure with a cell and with multiple beams within the network.
In reference to claims 61-68
The combination of US 12150178 and Akoum et al. teaches a system and method that covers substantially all limitations of the parent claim. Claims 3-5, 2, and 6-8 of US 12150178 teach substantially all limitations of claims 61-68.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN S ROBERTS whose telephone number is (571)272-3095. The examiner can normally be reached M to F, 9am to 5pm.
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BRIAN S. ROBERTS
Primary Examiner
Art Unit 2466
/BRIAN S ROBERTS/Primary Examiner, Art Unit 2466
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