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 .
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,192,813. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Instant claim 1 recites “a method of operation of a User Equipment (UE) in a wireless network to perform System Frame Number (SFN) Frame Time Difference (SFTD) measurements between a Primary Cell (PCell) of the UE and one or more other cells”; “receiving an Radio Resource Control (RRC) message from a network node in the wireless network, the RRC message comprising a list of cells, wherein the list of cells comprises one or more New Radio (NR) cells”; “determining the RRC message comprises an indication to perform SFTD measurements between the PCell and one or more NR neighbor cells”; “based on the determination, performing SFTD measurements between the PCell and the one or more NR cells included in the list of cells”; and “reporting, to the network node, the SFTD measurements in accordance with the list of cells for which the UE can report SFTD measurements.” These are a broader recitation of the limitations in conflicting patent claim 1.
Instant claims 3-8 and 10 correspond to conflicting patent claims 3-8 and 10. Instant claims 12-19 substantially correspond to conflicting patent claims 3-9.
Allowable Subject Matter
Claims 1-19 would be allowable if the double-patenting rejection is overcome.
The following is a statement of reasons for the indication of allowable subject matter: Tsai et al. (US 2019/0215711), the closest prior art, discloses a UE receives a radio resource control RRC message comprising a configuration for SFN Timing Difference (SFTD) measurement and performs SFTD measurements between a primary cell (PCell) of a first service network and neighbor cells of a second service network. The measurement results will then be reported to the first service network. Tsai further teaches the measurement information element would include a list of indicated neighbor cells.
However, the prior art fails to disclose receiving an Radio Resource Control (RRC) message from a network node in the wireless network, the RRC message comprising a list of cells, wherein the list of cells comprises one or more New Radio (NR) cells; determining the RRC message comprises an indication to perform SFTD measurements between the PCell and one or more NR neighbor cells; based on the determination, performing SFTD measurements between the PCell and the one or more NR cells included in the list of cells; and reporting, to the network node, the SFTD measurements in accordance with the list of cells for which the UE can report SFTD measurements, as in claims 1 and 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAM BHATTACHARYA whose telephone number is (571)272-7917. The examiner can normally be reached weekdays, 9-5:30.
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/SAM BHATTACHARYA/Primary Examiner, Art Unit 2646
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