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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,262,247. Although the claims at issue are not identical, they are not patentably distinct from each other because it includes limitations from dependent claims into the independent claims as shown below.
Instant Application – 19/000,692
Parent Patent - 12,262,247
1. A method for a User Equipment (UE), comprising:
1. A method for a User Equipment (UE), comprising:
receiving, in a first system information, a first reference location of a first cell and a first assistance information associated with the first cell,
receiving information of a first reference location of a cell; receiving an assistance information associated with the cell;
wherein the first assistance information comprises at least one of a time stamp or ephemeris of the first cell;
3. The method of claim 1, wherein the assistance information comprises at least one of time stamp, validity duration, direction, velocity, and/or ephemeris of the cell
deriving and/or acquiring a third reference location of the first cell based on at least the first assistance information and the first reference location of the first cell; and
deriving and/or acquiring a second reference location of the cell based on at least the assistance information;
using at least the third reference location of the first cell to evaluate a location-based event or measurement.
and using the second reference location of the cell to evaluate a location-based event or measurement.
With respect to Claim 1, the claim reorganizes and adds limitations from dependent claim 3 to the independent claim, and is therefore obvious over the combination of claims 1 and 3 of the parent.
With respect to Claim 2, the claim repeats the limitations from claims 2 from the parent case, and repeats the same steps as claim 1 to perform the same function, and is therefore obvious over the combination of claims 1, 2 and 3.
With respect to Claim 3, the claim corresponds to claim 8 of the parent case.
With respect to Claim 4, the claim corresponds to one of the options from claim 10 of the parent case.
With respect to Claim 6, the claim corresponds to one of the options from claim 3 of the parent case.
With respect to Claim 7, the claim corresponds to one of the options from claim 3 of the parent case.
With respect to Claim 8, the claim corresponds to claim 8 of the parent case.
With respect to Claim 9, the claim corresponds to one of the options from claim 10 of the parent case.
With respect to Claim 10, the claim corresponds to one of the options from claim 3 of the parent case.
With respect to Claim 11-20, the claims are the apparatus corresponding to the of Claim 1-10, with similar changes to the claim 1 above, and is rejected accordingly.
Allowable Subject Matter
Claims 1-20 are would be allowable if rewritten or amended to overcome the non-statutory double patenting rejection(s) set forth in this Office action, or Applicant was to file a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) which 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA NGUYEN whose telephone number is (571)270-5660. The examiner can normally be reached Monday - Friday 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jae Y Lee can be reached at 571-270-3936. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA NGUYEN/Primary Examiner, Art Unit 2479
