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 (IDS) submitted on 1/2/25 is being considered by the examiner.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-9, and 13-14 of U.S. Patent No. 12,22,617 (hereinafter ‘617). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 recites all the limitations of claim 1 of ‘617 in a similar scope. In a first instance, claim 1 recites “wherein the first RRC message comprises a set of parameters for small data transmission” which is similar in scope with “wherein the first RRC message comprises a set of parameters for RRC_INACTIVE state” as recited by the conflicting claim since a UE performs small data transmission in RRC_INACTIVE state. In a second instance, claim 1 recites “restoring from the UE context a Packet Data Convergence Protocol (PDCP) configuration of the bearer configured for small data transmission” which is similar in scope with “restoring a first configuration from the UE context, wherein the first configuration comprises a Packet Data Convergence Protocol (PDCP) configuration and a bearer configuration “as recited by the conflicting claim. Claim 1 is therefore similar in scope with claim 1 of ‘617 and is not patentably distinct from the conflicting claim.
Claim 2 recites subject matter similar to claim 2 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 3 recites subject matter similar to claim 5 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 4 recites subject matter similar to claim 1 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 5 is rejected by virtue of its dependence on a rejected base claim(s).
Claim 6 recites subject matter similar to claim 3 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 7 recites subject matter similar to claim 9 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 2 recites subject matter similar to claim 2 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 8 recites subject matter similar to claim 8 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 9 is rejected by virtue of its dependence on a rejected base claim(s).
Claim 10 recites subject matter similar to claim 4 of ‘617 and is therefore not patentably distinct from the conflicting claim.
Claim 11-14 are rejected by virtue of their dependence on a rejected base claim(s).
Claim 15 recites subject matter similar to claim 1 and is therefore not patentably distinct from claim 13 of ‘617 for the same reasons set forth above with respect to claim 1.
Claim 16 recites subject matter similar to claim 1 and is therefore not patentably distinct from claim 14 of ‘617 for the same reasons set forth above with respect to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nam T Huynh whose telephone number is (571)272-5970. The examiner can normally be reached 9am-5pm.
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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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/NAM T HUYNH/Primary Examiner, Art Unit 2647
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