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 1-12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5, 7 and 9 of U.S. Patent No. 12, 232, 070 . 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, 232, 070 with obvious wording variations. Take an example of comparing claim 1 of pending application and claim 1 of the U.S. Patent No. 12, 232, 070:
Pending Application 19/000, 805
U.S. Patent No. 12, 232, 070
Claim 1, A method performed by a User Equipment (UE) comprising a Multi-Universal Subscriber Identity Module (USIM), the method comprising: sending, to an Access and Mobility Management Function (AMF) apparatus, a first Non-Access Stratum (NAS) message, wherein the first NAS message includes first information configured to indicate a Multi-USIM capability of the UE; and receiving, from the AMF apparatus, a second NAS message, wherein the second NAS message includes second information, wherein the second information is based on the first information, and wherein the second information is configured to indicate whether a Multi-USIM feature related to the Multi-USIM capability is supported by a network.
Claim 2, is similar to claim 5 in the U.S. Patent No. 12, 232, 070, except for it’s not supported for the first information and second information will not be supported.
Claim 3, is similar to is similar to claim 5 in the U.S. Patent No. 12, 232, 070, rationale is the same as previously stated, examiner fails to see the difference in pending application claims 2 and claim 3.
Claim 4, similar terms in claim 1 in the U.S. Patent No. 12, 232, 070, i.e. AMF.
Claim 5, is similar to claim 7 in the U.S. Patent No. 12, 232, 070.
Claim 6, is similar to claim 5 in the U.S. Patent No. 12, 232, 070, except for it’s not supported for the first information and second information will not be supported.
Claim 7, is similar to is similar to claim 5 in the U.S. Patent No. 12, 232, 070, rationale is the same as previously stated, examiner fails to see the difference in pending application claims 6 and claim 7.
Claim 8, similar terms in claim 7 in the U.S. Patent No. 12, 232, 070, i.e. AMF.
Claim 9, is similar to claim 9 in the U.S. Patent No. 12, 232, 070.
Claim 10, is similar to claim 5 in the U.S. Patent No. 12, 232, 070, except for it’s not supported for the first information and second information will not be supported.
Claim 11, is similar to is similar to claim 5 in the U.S. Patent No. 12, 232, 070, rationale is the same as previously stated, examiner fails to see the difference in pending application claims 10 and claim 11.
Claim 12, similar terms in claim 9 in the U.S. Patent No. 12, 232, 070, i.e. AMF.
Claim 1, A method performed by a User Equipment (UE) comprising a plurality of Subscriber Identity Modules (SIMs), the method comprising: transmitting to an Access and Mobility Management Function (AMF) apparatus, in a first Non-Access Stratum (NAS) message, first information indicating a Multi-SIM capability of the UE; and receiving, from the AMF apparatus, in a second NAS message, second information including a Multi-SIM related value, based on the first information and a Multi-SIM feature supported by network, wherein the Multi-SIM related value is configured to indicate whether the Multi-SIM capability of the UE indicated by the first information is also supported by the network.
Further, the instant claims obviously encompass the claimed invention of U.S. Patent No. 12, 232, 070 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, 232, 070, 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 1-12 would be allowable if an approved terminal disclaimer is sent to the 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH E DEAN, JR/Primary Examiner, Art Unit 2647
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