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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12, 167, 228. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations recited in the present application are found in the U.S. Patent No.12, 167, 228 with obvious wording variations. Take an example of comparing claim 1 of pending application and claim 1 of the U.S. Patent No.12, 167, 228:
Pending Application No. 18/956,868
U.S. Patent No.12, 167, 228
Claim 1, An apparatus comprising: at least one processor; and a computer-readable storage device storing instructions which, when executed by the at least one processor, cause the at least one processor to be configured to: transmit, to a network device in a heterogeneous network, first data comprising mobility data or session data for the apparatus, wherein the network device classifies the first data in a control plane to yield a category, wherein the category comprises an access type and an indication of an access priority to the access type, wherein the access priority comprises at least an acceptable access type or a preferred access type, and wherein the access type is identified from a list of access types which comprises at least one of a non-cellular node type and a cellular node type; transmit second data associated with a quality of service, wherein the network device measures, based on the second data, traffic quality of service according to a prioritized list of nodes or cells to obtain a measurement; receive, from the network device, handoff data, wherein the network device or the apparatus makes a handoff decision when handing off the apparatus from a first node to a second node based at least in part on the category or the measurement; and transition, based on the handoff data and the handoff decision, the apparatus from the first node to the second node in the heterogeneous network.
Claim 2, similar to claim 2 in U.S. Patent No.12, 167, 228.
Claim 3, similar to claim 3 in U.S. Patent No.12, 167, 228.
Claim 4, similar to claim 4 in U.S. Patent No.12, 167, 228.
Claim 5, similar to claim 5 in U.S. Patent No.12, 167, 228.
Claim 6, similar to claim 6 in U.S. Patent No.12, 167, 228.
Claim 7, similar to claim 7 in U.S. Patent No.12, 167, 228.
Claim 8, similar to claim 8 in U.S. Patent No.12, 167, 228.
Claim 9, similar to claim 9 in U.S. Patent No.12, 167, 228.
Claim10, similar to claim 10 in U.S. Patent No.12, 167, 228.
Claim 11, similar to claim 11 in U.S. Patent No.12, 167, 228.
Claim 12, similar to claim 12 in U.S. Patent No.12, 167, 228.
Claim 13, similar to claim 13 in U.S. Patent No.12, 167, 228.
Claim 14, similar to claim 14 in U.S. Patent No.12, 167, 228.
Claim 15, similar to claim 15 in U.S. Patent No.12, 167, 228.
Claim 16, similar to claim 16 in U.S. Patent No.12, 167, 228.
Claim 17, similar to claim 17 in U.S. Patent No.12, 167, 228.
Claim 18, similar to claim 18 in U.S. Patent No.12, 167, 228.
Claim 19, similar to claim 19 in U.S. Patent No.12, 167, 228.
Claim 20, similar to claim 20 in U.S. Patent No.12, 167, 228.
Claim 1, A device comprising: a processor; a wireless communication component; and a computer-readable storage device storing instructions which, when executed by the processor, cause the processor to perform operations comprising: transmitting, via the wireless communication component, data to a first node in a heterogeneous network comprising at least a non-cellular node type and a cellular node type, the data comprising mobility data or session data for the device, wherein a network node or the device in the heterogeneous network classifies the data in a control plane to yield a category, wherein the category comprises an access type and an indication of an access priority to the access type, wherein the access priority comprises at least an acceptable access type or a preferred access type, and wherein the access type is identified from a list of access types which comprises at least one of the non-cellular node type and the cellular node type; transmitting, via the wireless communication component and to the first node, a measurement associated with a quality of service, wherein the network node uses the measurement to measure traffic quality of service in the control plane from a prioritized list of traffic quality of service; receiving handoff data from the first node, wherein the network node or the device makes a handoff decision in the control plane when handing off the device from the first node to a second node based at least in part on the category or the measurement; and transitioning, based on the handoff data and the handoff decision, from the first node to the second node in the heterogeneous network.
Further, the instant claims obviously encompass the claimed invention of U.S. Patent No. 12, 167, 228.and differ only in terminology. To the extent that the instant claims are broaden and therefore generic to the claimed invention of U.S. Patent No. 12, 167, 228., in re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
Allowable Subject Matter
Claims 1-20 would be allowable if an approved terminal disclaimer is sent to USPTO, as set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH E DEAN, JR whose telephone number is (571)270-7116. The examiner can normally be reached Mon-Fri 7:30-3:30.
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/JOSEPH E DEAN, JR/ Primary Examiner, Art Unit 2647
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