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.
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Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,207,283. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following explanation.
Regarding Claim 1, the claim is reprinted below:
Instant Application – 19/012,413
Parent Application – 12,207,283
1. A method for accessing baseband resources, the method comprising:
1. A method for controlling access to fifth generation (5G) cellular baseband resources, the method comprising:
by at least a baseband component of a wireless device:
by a wireless device:
determining a cellular recommendation that indicates i) a network bandwidth requirement and ii) a confidence metric of the network bandwidth requirement based on one or more active applications;
determining a 5G cellular recommendation that indicates i) a network bandwidth requirement and ii) a confidence metric of the network bandwidth requirement based on one or more application layer data metrics for one or more active applications;
determining a baseband control signal based on the cellular recommendation; and
determining a 5G baseband control signal based on the 5G cellular recommendation and on one or more device states associated with data usage; and
configuring, in accordance with the baseband control signal, one of the following states: i) use of both a first radio frequency (RF) band and a second RF band, different from the first RF band, is enabled, ii) use of the first RF band is enabled and use of the second RF band is disabled, or iii) use of both the first RF band and the second RF band is disabled.
configuring, in accordance with the 5G baseband control signal, one of the following states: i) use of both a first 5G radio frequency (RF) band and a second 5G RF band is enabled, ii) use of the first 5G RF band is enabled and use of the second 5G RF band is disabled, or iii) use of both the first 5G RF band and the second 5G RF band is disabled.
Regarding Claim 1, Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s Claims 1 merely broadens the scope of the new independent claims by eliminating limitations as shown above the from Claim 1 of the parent case and adding the hardware limitation “by at least a baseband component.” However, the method of the parent application is “controlling access to fifth generation (5G) cellular baseband resources” which would need a device capable of creating a baseband signal. Therefore, the additional limitation is an obvious variant of the parent case.
It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re karlson, 136 USPQ 184 (CCPA). Also, note Ex Parte Raine 168 USPQ 376 (bd. App 1969); omission of a reference whose function is not needed would be obvious to one skilled in the art.
Regarding Claim 2, the claim corresponds to Claim 2 of the parent case.
Regarding Claim 3, the claim corresponds to Claim 3 of the parent case.
Regarding Claim 4, the claim corresponds to Claim 4 of the parent case.
Regarding Claim 5, the claim corresponds to Claim 5 of the parent case.
Regarding Claim 6, the claim corresponds to Claim 6 of the parent case.
Regarding Claim 7, the claim corresponds to Claim 7 of the parent case.
Regarding Claim 8, the claim corresponds to Claim 8 of the parent case.
Regarding Claim 9, the claim corresponds to Claim 9 of the parent case.
Regarding Claim 10, the claim corresponds to Claim 10 of the parent case.
Regarding Claim 11, the claim is the apparatus corresponding to Claim 1 of the instant application, and corresponding to Claim 11 of the parent application that has been modified in the same way as Claim 1 in the instant application.
Regarding Claim 12, the claim corresponds to Claim 12 of the parent case.
Regarding Claim 13, the claim corresponds to Claim 13 of the parent case.
Regarding Claim 14, the claim corresponds to Claim 14 of the parent case.
Regarding Claim 15, the claim corresponds to Claim 15 of the parent case.
Regarding Claim 16, the claim corresponds to Claim 16 of the parent case.
Regarding Claim 17, the claim corresponds to Claim 17 of the parent case.
Regarding Claim 18, the claim corresponds to Claim 18 of the parent case.
Regarding Claim 19, the claim corresponds to Claim 19 of the parent case.
Regarding Claim 20, the claim corresponds to Claim 20 of the parent case.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT M MORLAN whose telephone number is (571)270-5674. The examiner can normally be reached Monday - Friday, 10 AM - 4PM.
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/ROBERT M MORLAN/Primary Examiner, Art Unit 2409
ROBERT M. MORLAN
Primary Examiner
Art Unit 2409
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