DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2022-126647, filed on 08/08/2022.
Information Disclosure Statement
3. The information disclosure statements (IDSs) submitted on 02/03/2025, 06/25/2025 and 12/22/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
4. Claim 9 is objected to because of the following informalities:
(1) In claim 9, line 3, insert a colon “:” after the word “comprising”.
Appropriate correction is required.
Double Patenting
5. 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.
6. Claims 1 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 6-7 of copending Application No. 19/044534.
Although the claims at issue are not identical, they are not patentably distinct from each other because, for example:
Claims of instant application:
1. A communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the communication apparatus comprising: a controller configured to temporarily restrict a capability of the communication apparatus used for communication with a second network in a case of communicating with a first network; and a communicator configured to transmit restriction information for temporarily restricting the capability, to the second network.
8. The communication apparatus according to claim 7, wherein the information for indicating that the capability is temporarily restricted is included in a complete message used to confirm that a procedure related to the radio resource control (RRC) connection has been successfully completed.
9. A base station of a network in a mobile communication system including a communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the base station comprising a communicator configured to receive, from the communication apparatus communicating with another network, restriction information for temporarily restricting a capability of the communication apparatus used for communication with the network.
10. A communication method executed by a communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the communication method comprising the steps of: temporarily restricting a capability of the communication apparatus used for communication with a second network in a case of communicating with a first network; and transmitting restriction information for temporarily restricting the capability to the second network.
Claims of copending Application No. 19/044534:
1. A communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the communication apparatus comprising: a controller configured to temporarily restrict a capability of the communication apparatus used for communication with a first network in a case of communicating with a second network; and a communicator configured to transmit information for indicating that the capability is temporarily restricted, to the second network.
2. The communication apparatus according to claim 1, wherein the information is included in a complete message used to confirm that a procedure related to a radio resource control (RRC) connection has been successfully completed.
6. A base station of a network in a mobile communication system including a communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the base station comprising a communicator configured to receive, from the communication apparatus temporarily restricting a capability of the communication apparatus used for communication with another network, information for indicating that the capability is temporarily restricted.
7. A communication method executed by a communication apparatus configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the communication method comprising the steps of: temporarily restricting a capability of the communication apparatus used for communication with a first network in a case of communicating with a second network; and transmitting information for indicating that the capability is temporarily restricted, to the second network.
As can be seen in the above claims comparison, it would have been obvious to an artisan of ordinary skill in the art at the time the invention was made to use theteachings of claims of co-pending application to perform the same functions as claimed by the present application. The instant claims obviously encompass the claimed invention of co-pending application and differ only in terminology.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Claim 8 recites the limitation "the radio resource control (RRC) connection" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
9. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well.
Applicants are reminded that MPEP 2141.02 states:
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Claim Rejections - 35 USC § 102
10. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
11. Claims 1-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by XIAO et al. (US 20260012773) (hereinafter XIAO).
Regarding claims 1 and 10:
As shown in figures 1-15, XIAO discloses a communication apparatus (see UE figures 1 and 15) configured to communicate with a plurality of networks (see a plurality of networks A-C) by using a plurality of subscriber identity modules (see a plurality of subscriber identity modules A-B), the communication apparatus comprising:
a controller (see processor 151 in figure 15) configured to temporarily restrict a capability of the communication apparatus used for communication with a second network (see network A in par 0127) in a case of communicating with a first network (abstract, par 0127-0132); and
a communicator (150 in figure 15) configured to transmit restriction information for temporarily restricting the capability, to the second network (figure 5, abstract, par 0110, 0127-0132, 0160-0166).
Regarding claim 2:
XIAO further discloses wherein the restriction information is included in a UE assistance information message used for an indication of UE assistance information (par 0068, 0089, 0110).
Regarding claim 3:
XIAO further discloses wherein the restriction information is included in a multiple universal subscriber identity module, MUSIM, assistance information element used to provide MUSIM assistance information (par 0110, 0132).
Regarding claim 4:
XIAO further discloses wherein the controller is configured to include, in the MUSIM assistance information element (par 0110, 0132), at least one of information for restricting a secondary cell, information for restricting a frequency band, and information for restricting a multiple-input and multiple-output, MIMO, layer as the restriction information (par 0091-0094, 0127, 0129, 0225, 0231-0232).
Regarding claim 5:
XIAO further discloses wherein the controller is configured to include, in the MUSIM assistance information element, flag information for deactivating or releasing a secondary cell as the restriction information (see the flow chart of figure 5).
Regarding claim 6:
XIAO further discloses wherein the communicator is configured to transmit information for releasing or changing the temporary restriction of the capability to the second network (see the flow chart of figure 5).
Regarding claim 7:
XIAO further discloses wherein the communicator is configured to transmit information for indicating that the capability is temporarily restricted, to the second network (figure 5, abstract, par 0110, 0127-0132, 0160-0166), and the communicator is configured to transmit the restriction information to the second network after the transmission of the information for indicating that the capability is temporarily restricted (figure 5, abstract, par 0110, 0127-0132, 0160-0166).
Regarding claim 8:
XIAO further discloses wherein the information for indicating that the capability is temporarily restricted is included in a complete message used to confirm that a procedure related to the radio resource control (RRC) connection has been successfully completed (abstract).
Regarding claim 9:
As shown in figures 1-15, XIAO discloses a base station of a network in a mobile communication system (par 0055, 0063) including a communication apparatus (see UE figures 1 and 15) configured to communicate with a plurality of networks by using a plurality of subscriber identity modules, the base station comprising
a communicator configured to receive, from the communication apparatus communicating with another network (figure 5, abstract, par 0110, 0127-0132, 0160-0166), restriction information for temporarily restricting a capability of the communication apparatus used for communication with the network (figure 5, abstract, par 0110, 0127-0132, 0160-0166).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JIN et al. (US 20240422843) disclose a 5G or 6G communication system for supporting a higher data transmission rate including a user equipment, which supports a plurality of USIMs, may be supported so as to also perform an operation related to dual connectivity configured in one network while maintaining RRC connection establishment with two networks.
13 Any inquiry concerning this communication or earlier communications from the examiner should be directed to KABIR A TIMORY whose telephone number is (571)270-1674. The examiner can normally be reached Mon-Fri 7:00 AM-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S Wang can be reached at 571-272-9018. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KABIR A TIMORY/Primary Examiner, Art Unit 2631
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