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 .
Information Disclosure Statement
The information disclosure statement submitted on December 2, 2024 has been considered by the Examiner and made of record in the application file.
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 obviousness-type 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); and 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 and 14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 and 3 of U.S. Patent No. 12,200,801 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application are transparently found in the U.S. Patent No. 12,200,801 B2 with obvious wording variations; they are substantially similar in scope
The independent claims 1 and 14 of the current application include broader limitations of the independent claims 1 and 3 of the U.S. Patent No. 12,200,801 B2.
Nonetheless, claims 1 and 14 of the present application made the claim a broader version of claim 1 and 3 of U.S. Patent No. 12,200,801 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claims 1 and 14 is not patentably distinct from claims 1 and 3 of U.S. Patent No. 12,200,801 B2.
Claims 1 and 14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 and 2 of U.S. Patent No. 12,256,456 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application are transparently found in the U.S. Patent No. 12,256,456 B2 with obvious wording variations; they are substantially similar in scope
The independent claims 1 and 14 of the current application include broader limitations of the independent claims 1 and 2 of the U.S. Patent No. 12,256,456 B2.
Nonetheless, claims 1 and 14 of the present application made the claim a broader version of claim 1 and 2 of U.S. Patent No. 12,256,456 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claims 1 and 14 is not patentably distinct from claims 1 and 2 of U.S. Patent No. 12,256,456 B2.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Alwar et al (US Pat. Pub. No. 2023/0171839).
Regarding claim 1, Alwar et al discloses a method by a terminal (paragraphs 5 and 143 [110, UE]), the method comprising:
receiving from a base station a first message, wherein the first message comprises either a first configuration information related to state transition or a second configuration information related to state transition (see at least paragraphs 6 and 147 discloses receiving from access node a first message for transitioning); and
transmitting to the base station a second message, wherein the second message comprises a first information related to state or a second information related to state (see at least paragraphs 7 and 148 discloses UE sending a second message for transitioning state), wherein:
the first information related to state is comprised in the second message in case that the first message comprises the first configuration information related to state transition; and
the second information related to state is comprised in the second message in case that the first message comprises the second configuration information related to state transition (see at least paragraph 148 discloses a second message related to transitioning state).
Regarding claim 2, Alwar et al discloses the first information related to state indicates one of first set of states; and the second information related to state indicates one of second set of states (see at least paragraph 69).
Regarding claim 3, Alwar et al discloses the first set of states comprises: IDLE state; INACTIVE state; and CONNECTED state (see at least paragraph 69).
Regarding claim 4, Alwar et al discloses the second set of states comprises: IDLE state; and INACTIVE state; and the second set of states does not comprise CONNECTED state (see at least paragraph 69).
Regarding claim 5, Alwar et al discloses the first configuration information related to state transition comprises a parameter related to a first timer; and the second configuration information related to state transition comprises a parameter related to a second timer (see at least paragraph 134).
Regarding claim 6, Alwar et al discloses the first timer controls transmission of the second message; and the second timer controls autonomous state transition (see at least paragraph 134).
Regarding claim 7, Alwar et al discloses the first timer starts before transmission of the second message is initiated; and the second timer starts after transmission of the second message is initiated (see at least paragraph 134).
Regarding claim 8, Alwar et al discloses the terminal starts: the first timer in case that the first configuration information related to state transition is comprised in the first message; and the second timer in case that the second configuration information related to state transition is comprised in the first message (see at least paragraph 134).
Regarding claim 9, Alwar et al discloses the terminal stops the first timer in case that the second timer expires; and the terminal does not stop the second timer in case that the first timer expires (see at least paragraph 134).
Regarding claim 10, Alwar et al discloses the terminal reset medium access control entity in case that the second timer expires (see at least paragraph 134).
Regarding claim 11, Alwar et al discloses receiving from the base station, after transmission of the second message, a third message, wherein the third message comprises a suspend configuration (see at least paragraph 117).
Regarding claim 12, Alwar et al discloses the terminal stops the second timer before applying the suspend configuration (see at least paragraph 75).
Regarding claim 13, Alwar et al discloses the terminal stores cell identity of primary cell after applying the suspend configuration (see at least paragraph 75).
Regarding claim 14, Alwar et al discloses a terminal (paragraphs 5 and 143 [110, UE]) in a wireless communication system, the terminal comprising: a transceiver configured to transmit and receive a signal; and a controller configured to: receive from a base station a first message, wherein the first message comprises either a first configuration information related to state transition or a second configuration information related to state transition (see at least paragraphs 6 and 147 discloses receiving from access node a first message for transitioning), and transmit to the base station a second message, wherein the second message comprises a first information related to state or a second information related to state (see at least paragraphs 7 and 148 discloses UE sending a second message for transitioning state), wherein: the first information related to state is comprised in the second message in case that the first message comprises the first configuration information related to state transition; and the second information related to state is comprised in the second message in case that the first message comprises the second configuration information related to state transition (see at least paragraph 148 discloses a second message related to transitioning state).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
The following prior art are cited to show a method, which is considered pertinent to the claimed invention:
Wu et al (US Pat. Pub. No. 2023/0388891) directed toward conditional configuration.
Tseng et al (US Pat. Pub. No. 12,414,075) directed toward monitoring paging messages received from RAN while the UE is in idle mode.
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/LITON MIAH/ Primary Examiner, Art Unit 2642
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