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 . 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.
Information Disclosure Statements
2. The information disclosure statements (IDS) submitted on 03/27/25 and 04/13/26 have been considered by the examiner.
Priority
3. 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. 17/792,320, filed on July 12, 2022.
Specification
4. The disclosure is objected to because of the following informalities: in paragraph [0001] of the originally filed specification, reference to parent case 17/792,320 should be updated so as to reflect the fact that this application has now issued as U.S. Patent No. 12,273,758.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al, U.S. Patent Application Publication No. 2015/0056925.
As to claim 1, Jung et al '925 discloses
an operation method of a user equipment (UE) in a wireless communication system, the operation method comprising:
receiving, from a base station, a radio resource control (RRC) message including Logged minimization of drive test (MDT) configuration information, wherein the Logged MDT configuration information includes area configuration information (see step S1210 in figure 12 and paragraph [0200] of Jung et al '925 which discloses that the user equipment receives, from base station eNB, a radio resource control message including Logged MDT configuration information wherein the Logged MDT configuration information includes area configuration information);
identifying a report type, based on the Logged MDT configuration information (see paragraph [0173] of Jung et al '925);
in case that the UE camps on a cell in a camped normally state, a registered public land mobile network RPLMN is included in a public land mobile network PLMN (see paragraph [0008] of Jung et al '925) identity list stored in the UE (see paragraphs [0021], [0095] and [0241] of Jung et al '925), and the cell is included in a logging area indicated in the area configuration information (inherently or obviously in Jung et al, the cell that the user equipment is camped on in a normal state will be included in a logging area indicated in the area configuration information), determining whether conditions corresponding to an event type of the report type are satisfied, based on the Logged MDT configuration information (see paragraph [0173] of Jung et al '925); and
performing logging of at least one measurement while the UE is in an RRC IDLE mode or an RRC INACTIVE mode within the logging area in case that the conditions are satisfied (see paragraphs [0006] and [0074] of Jung et al '925),
wherein whether the cell is included in the logging area is determined based on a system information block type 1 SIB1 (see paragraph [0207] of Jung et al '925 which discloses determining whether the cell is included in the logging area, and to the extent that Jung et al '925 does not indicate that such is based on a system information block type 1 (SIB1), such would have been obvious to one of ordinary skill in the art, the reason being that it was old and well-known in the art before the effective filing date of applicant's invention that communication between a user equipment and a base station is typically performed using SIB1, of which fact official notice is taken by the examiner).
As to claim 2, Jung et al '925 further discloses that determining whether the cell is included in the logging area is based on a PLMN identity information list, see paragraph [0212] of this reference.
As to claim 3, see paragraphs [0164] and [0223] of Jung et al '925 where this reference discloses using global cell identifier and PLMN identity.
As to claim 4, see paragraphs [0232] through [0291] of Jung et al '925 where this reference discloses determining whether the log entry into a PLMN list is valid or invalid.
As to claim 5, see paragraphs [0095] and [0164] of Jung et al '925 where this reference discloses that the area configuration information includes a tracking area code (TAC).
As to claims 6-10, the limitations of these claims would have been obvious using the same analysis as set forth above in the rejection claims 1-5, note that the Jung et al '925 operation method will inherently be performed in both the user equipment and the base station, because the wireless communication system of this reference is performed between the user equipment and the base station.
As to claims 11-20, the limitations of these claims also would have been obvious using the same analysis as set forth above in the rejection of claims 1-5, note that the user equipment and the base station in Jung et al '925 will both inherently or obviously include a communicator and at least one processor coupled with the communicator to perform the steps recited in claims 1-5.
Double Patenting
6. Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,273,758. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1-20 of the instant application are fully anticipated by what is recited in the claims of applicant's prior patent.
As to claim 1 of the instant application, note that the limitations recited on lines 1-6 are fully anticipated by what is recited on lines 1-10 of claim 1 of the '758 patent; the limitations recited on lines 7-12 are fully anticipated by what is recited on lines 11-13 of claim 1 of the '758 patent together with what is recited in claim 2 of the '758 patent; the limitations recited on lines 13-15 are fully anticipated by what is recited on lines 18-21 of claim 1 of the '758 patent; and the limitations recited on lines 16-17 are fully anticipated by what is recited on lines 14-17 of claim 1 of the '758 patent.
As to claim 2 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in claim 4 of the '758 patent.
As to claim 3 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in claim 8 of the '758 patent.
As to claim 4 of instant application, note that the limitations of this claim are fully anticipated by what is recited in claim 9 of the '758 patent.
As to claim 5 of the instant application, note that the limitations of this claim are fully anticipated by what is recited on lines 6-7 of claim 10 of the '758 patent.
As to claim 6 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in claim 6 of the '758 patent.
As to claim 7 of the instant application, note that the limitations of this claim are anticipated by what is indicated in either claim 9 or claim 10 of the '758 patent.
As to claim 8 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in either claim 3 or claim 7 of the '758 patent.
As to claim 9 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in either claim 4, claim 9, claim 10 or claim 15 of the '758 patent.
As to claim 10 of the instant application, note that the limitations of this claim are anticipated by what is recited in either claim 5 or claim 10 of the '758 patent.
As to claim 11 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in claims 11 and 12 of the '758 patent.
As to claim 12 of the instant application, note that the limitations of this claim are fully anticipated by what is recited in claim 14 of the '758 patent.
As to claim 13 of the instant application, note that the limitations of this claim are anticipated by what is recited in claim 13 of the '758 patent.
As to claim 14 of the instant application, note that the limitations of this claim are anticipated by what is recited in claim 14 of the '758 patent.
As to claim 15 of the instant application, note that the limitations of this claim are anticipated by either claim 5, claim 10 or claim 15 of the '758 patent.
As to claims 16-20, the limitations of these claims would have been obvious to one of ordinary skill in the art from what is recited in claims 1-15 of the '758 patent, the reason being that both the user equipment and the base station operating in the wireless communication system of applicant's previously claimed invention will inherently or obviously include a communicator and at least one processor in order to perform the operation method thereof.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Prior Art Not Relied Upon
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jung et al '846 and Jung et al '832 disclose two additional examples of an operation method of a user equipment in a wireless communication system wherein radio resource control messages are received from a base station, where such control messages include Logged minimization of drive test (MDT) configuration information which includes area configuration information, similar to Jung et al '925, supra.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH B WELLS whose telephone number is (571)272-1757. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, REGIS J BETSCH, can be reached at (571)270-7101. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH B WELLS/Primary Examiner, Art Unit 2836 June 26, 2026
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