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 1-4, 6-11, 13-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8-9, 12-16, and 19-20 of U.S. Patent No. 11,317,463. Although the claims at issue are not identical, they are not patentably distinct from each other because even though they are not word for word with each other they both teach the same inventive concept.
Regarding claim 1, U.S. Patent No. 11,317,463 teaches a method performed by a user equipment, the method comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 1).
Regarding claim 2, U.S. Patent No. 11,317,463 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 2).
Regarding claim 3, U.S. Patent No. 11,317,463 teaches wherein applying delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 5).
Regarding claim 4, U.S. Patent No. 11,317,463 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 6).
Regarding claim 6, U.S. Patent No. 11,317,463 teaches based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 3).
Regarding claim 7, U.S. Patent No. 11,317,463 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 1).
Regarding claim 8, U.S. Patent No. 11,317,463 teaches a non-transitory computer readable medium storing computer readable program code executable by processing circuitry of a user equipment to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 8).
Regarding claim 9, U.S. Patent No. 11,317,463 teaches wherein the suspend
configuration field indicates a configuration corresponding to the inactive state (Claim 9).
Regarding claim 10, U.S. Patent No. 11,317,463 teaches wherein applying
delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 12).
Regarding claim 11, U.S. Patent No. 11,317,463 teaches wherein the suspend
configuration includes RAN Notification Area information (Claim 13).
Regarding claim 13, U.S. Patent No. 11,317,463 teaches wherein the transitioning of the user equipment to the inactive state is performed during a connection of the user equipment to a 5G core network from a long term evolution network (Claim 14).
Regarding claim 14, U.S. Patent No. 11,317,463 teaches wherein the RRC
message is received while user equipment is operating in a connected state (Claim 8).
Regarding claim 15, U.S. Patent No. 11,317,463 teaches a user equipment comprising a non-transitory memory; and processing circuitry coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 15).
Regarding claim 16, U.S. Patent No. 11,317,463 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 16).
Regarding claim 17, U.S. Patent No. 11,317,463 teaches receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 19).
Regarding claim 18, U.S. Patent No. 11,317,463 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 20).
Regarding claim 20, U.S. Patent No. 11,317,463 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 15).
Claims 1-5 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-20 of U.S. Patent No. 11,723,108. Although the claims at issue are not identical, they are not patentably distinct from each other because even though they are not word for word with each other they both teach the same inventive concept.
Regarding claim 1, U.S. Patent No. 11,723,108 teaches a method performed by a user equipment, the method comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 1).
Regarding claim 2, U.S. Patent No. 11,723,108 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 2).
Regarding claim 3, U.S. Patent No. 11,723,108 teaches wherein applying delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 3).
Regarding claim 4, U.S. Patent No. 11,723,108 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 4).
Regarding claim 5, U.S. Patent No. 11,723,108 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend configuration (Claim 5).
Regarding claim 7, U.S. Patent No. 11,723,108 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 7).
Regarding claim 8, U.S. Patent No. 11,723,108 teaches a non-transitory computer readable medium storing computer readable program code executable by processing circuitry of a user equipment to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 8).
Regarding claim 9, U.S. Patent No. 11,723,108 teaches wherein the suspend
configuration field indicates a configuration corresponding to the inactive state (Claim 9).
Regarding claim 10, U.S. Patent No. 11,723,108 teaches wherein applying
delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 10).
Regarding claim 11, U.S. Patent No. 11,723,108 teaches wherein the suspend
configuration includes RAN Notification Area information (Claim 11).
Regarding claim 12, U.S. Patent No. 11,723,108 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend
Configuration (Claim 12).
Regarding claim 13, U.S. Patent No. 11,723,108 teaches wherein the transitioning of the user equipment to the inactive state is performed during a connection of the user equipment to a 5G core network from a long term evolution network (Claim 13).
Regarding claim 14, U.S. Patent No. 11,723,108 teaches wherein the RRC
message is received while user equipment is operating in a connected state (Claim 14).
Regarding claim 15, U.S. Patent No. 11,723,108 teaches a user equipment comprising a non-transitory memory; and processing circuitry coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 15).
Regarding claim 16, U.S. Patent No. 11,723,108 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 16).
Regarding claim 17, U.S. Patent No. 11,723,108 teaches receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 17).
Regarding claim 18, U.S. Patent No. 11,723,108 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 18).
Regarding claim 19, U.S. Patent No. 11,723,108 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend configuration (Claim 19).
Regarding claim 20, U.S. Patent No. 11,723,108 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 20).
Claims 1-5 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-20 of U.S. Patent No. 12,232,205. Although the claims at issue are not identical, they are not patentably distinct from each other because even though they are not word for word with each other they both teach the same inventive concept.
Regarding claim 1, U.S. Patent No. 12,232,205 teaches a method performed by a user equipment, the method comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 1).
Regarding claim 2, U.S. Patent No. 12,232,205 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 2).
Regarding claim 3, U.S. Patent No. 12,232,205 teaches wherein applying delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 3).
Regarding claim 4, U.S. Patent No. 12,232,205 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 4).
Regarding claim 5, U.S. Patent No. 12,232,205 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend configuration (Claim 5).
Regarding claim 7, U.S. Patent No. 12,232,205 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 7).
Regarding claim 8, U.S. Patent No. 12,232,205 teaches a non-transitory computer readable medium storing computer readable program code executable by processing circuitry of a user equipment to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 8).
Regarding claim 9, U.S. Patent No. 12,232,205 teaches wherein the suspend
configuration field indicates a configuration corresponding to the inactive state (Claim 9).
Regarding claim 10, U.S. Patent No. 12,232,205 teaches wherein applying
delta signalling comprises receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 10).
Regarding claim 11, U.S. Patent No. 12,232,205 teaches wherein the suspend
configuration includes RAN Notification Area information (Claim 11).
Regarding claim 12, U.S. Patent No. 12,232,205 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend
Configuration (Claim 12).
Regarding claim 13, U.S. Patent No. 12,232,205 teaches wherein the transitioning of the user equipment to the inactive state is performed during a connection of the user equipment to a 5G core network from a long term evolution network (Claim 13).
Regarding claim 14, U.S. Patent No. 12,232,205 teaches wherein the RRC
message is received while user equipment is operating in a connected state (Claim 14).
Regarding claim 15, U.S. Patent No. 12,232,205 teaches a user equipment comprising a non-transitory memory; and processing circuitry coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to perform operations comprising receiving a radio resource control message; determining whether a suspend configuration field is present or absent in the RRC message; based on the determination that the suspend configuration field is present applying delta signalling corresponding to a suspend configuration indicated by the suspend configuration field; and transitioning the user equipment to an inactive state; based on the determination that the suspend configuration field is absent, transitioning the user equipment to an idle state (Claim 15).
Regarding claim 16, U.S. Patent No. 12,232,205 teaches wherein the suspend configuration field indicates a configuration corresponding to the inactive state (Claim 16).
Regarding claim 17, U.S. Patent No. 12,232,205 teaches receiving changed suspend configuration information indicated by the suspend configuration field; and accessing unchanged suspend configuration information from previously stored suspend configuration information on the user equipment (Claim 17).
Regarding claim 18, U.S. Patent No. 12,232,205 teaches wherein the suspend configuration includes RAN Notification Area information (Claim 18).
Regarding claim 19, U.S. Patent No. 12,232,205 teaches wherein the delta signalling is applied to update RAN Notification Area information in the suspend configuration (Claim 19).
Regarding claim 20, U.S. Patent No. 12,232,205 teaches wherein the RRC message is received while user equipment is operating in a connected state (Claim 20).
Conclusion
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/ANDREW WENDELL/Primary Examiner, Art Unit 2648 9/19/2026
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