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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Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,375,155. Although the claims at issue are not identical, they are not patentably distinct from each other because they broaden the claims of the parent case.
Regarding Claim 1,
Instant Application – 19/251,663
Claim 1 – 12,375,155
1. A method performed by a user equipment (UE), the method comprising:
1. A method comprising:
determining, at a user equipment, a first beam failure detection reference signal set and a second beam failure detection reference signal set for a serving cell;
determining, at a first layer in the UE, a radio link quality of reference signal resource configurations in each of a first reference signal set and a second reference signal set;
determining, at a physical layer in the user equipment, a radio link quality of reference signal resource configurations in each of the first beam failure detection reference signal set and the second beam failure detection reference signal set; and
providing, to a second layer in the UE, an indication of a third reference signal set selected from the first reference signal set and the second reference signal set in response to the radio link quality for reference signal resource configurations in the third reference signal set being less than a threshold.
indicating, to a layer higher than the physical layer of the user equipment, an indication of a third beam failure detection reference signal set selected from a group comprising the first beam failure detection reference signal set and the second beam failure detection reference signal set in response to the radio link quality for all corresponding reference signal resource configurations in the third beam failure detection reference signal set being less than a threshold.
Regarding Claims 1, 19 and 20, Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s Claim 1 merely broadens the scope of the new independent claims by eliminating limitations as shown above the from Claim 1 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 corresponds to Claim 11 of the parent case.
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 18 of the parent case.
Regarding Claim 18, the claim corresponds to Claim 19 of the parent case.
Conclusion
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/ROBERT M MORLAN/Primary Examiner, Art Unit 2409
ROBERT M. MORLAN
Primary Examiner
Art Unit 2409
