Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,185,259. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are nearly identical in scope. Regarding claim 1, A communication apparatus, comprising: circuitry, which, in operation, determines power of first physical random access channel (PRACH) transmission on a Primary Cell, and determines power of second PRACH transmission on another Cell (adjusting circuitry, determining power of first and second PRACH, patent claim 1); and responsive to that the first PRACH transmission in a first subframe overlaps in a time domain with the second PRACH transmission in a second subframe having a different start time from the first subframe and that total power of the first PRACH transmission and the second PRACH transmission exceeds a configured transmission power value (P.sub.MAX), adjusts the power of the second PRACH transmission in the second subframe so that the total power at an overlapped portion between the first PRACH transmission in the first subframe and the second PRACH transmission in the second subframe does not exceed P.sub.MAX (first PRACH in first subframe overlaps second PRACH in second subframe, adjust power of second PRACH not exceed the max power, patent claim 1); and a transmitter, which, in operation, transmits a first random access preamble in the first subframe on the Primary Cell carrier at the power of the first PRACH transmission, and transmits a second random access preamble in the second subframe on the another Cell at the power of the second PRACH transmission, wherein the Primary Cell belongs to a first timing group and the another Cell belongs to a second timing group different from the first timing group (transmission circuitry, transmitting first RA preamble on first sub-frame on primary cell at first power and transmitting second RA preamble in second sub-frame on another cell at second power, Pcell belongs to first timing group and another cell belongs to second timing group, patent claim 1). For dependent claims 2-8 and 10-16 see patent claims 2-8. Claim 9 is the method version of claim 1 and rejected for similar reasons by patent claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN CUNNINGHAM whose telephone number is (571) 272-1765. The examiner can normally be reached Monday through Thursday 7:30-18:00 (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Vu can be reached on (571) 272-3155. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M CUNNINGHAM/Primary Examiner, Art Unit 2461
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