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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/29/2026 has been entered.
Response to Arguments
Applicant's arguments filed 6/29/2022 have been fully considered but they are not persuasive. Choi teaches a base station which provides configuration that indicates how a user device is to manage small data transmissions on an uplink resource using time restrictions for each channel in the PUSCH resource. The applicant does not provide a limiting description of small data transmission that precludes the time restrictions from reading on the claimed invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-33 and 36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description Issue #1
Claim 31 features the following amendment:
determine, based at least in part on the configuration information, whether at least one logical channel is configured to receive data as the small data transmission via a pre-configured uplink resource;
Claim 31 covers the base station. The applicant did not disclose that the base station makes such a determination. The base station transmits configuration information to the UE but is not disclosed as making any determination whether at least one logical channel is configured to receive data as the small data transmission via a pre-configured uplink resource based at least in part on the configuration information that the base station sends to the UE. As illustrated in Figures 7, 8A, 8B, 8C, and 9, the use is the sole device disclosed as making such a determination.
Written Description Issue #2
Claim 1 features the following limitation:
receiving, from a base station while operating in a connected mode, configuration information for performing a small data transmission while operating in an inactive mode, wherein the configuration information indicates, for each pre-configured uplink resource, which logical channels are allowed for the small data transmission;
Claim 24 features the following limitation:
receive, from a base station while operating in a connected mode, configuration information for performing a small data transmission while operating in an inactive mode, wherein the configuration information indicates, for each pre-configured uplink resource, which logical channels are allowed for the small data transmission;
Claim 31 features the following limitation:
transmit configuration information for performing a small data transmission to a user equipment (UE), wherein the configuration information is for the UE operating in an inactive mode, and wherein the configuration information indicates, for each pre-configured uplink resource, which logical channels are allowed for the small data transmission;
The language “for each pre-configured uplink resource” suggests that the claimed configuration information indicates logical channels, respectively, for each of multiple pre-configured uplink resources. The applicant appears to disclose indicating channels for a single pre-configured uplink resource, the resource being the PUSCH, according to paragraphs 29-32 and 57-64. Paragraph 66 and 78 of the disclosure are the only paragraphs which reference “each preconfigured uplink resource” but there is no description of what context would have multiple preconfigured uplink resources between the base station and the UE on which the UE would send small data transmissions. PUSCH is the physical uplink shared channel between the UE and the base station. There is no scenario in the state of the art where there are multiple PUSCH resources between a UE and a base station and therefore the language used in paragraph 66 and 78 of the applicant’s disclosure regarding “each” preconfigured uplink resource does not fit with the definition of PUSCH as it is understood in the art.
The applicant’s disclosure, therefore, lacks any description of how the invention manages the multiple pre-configured uplink resources implied by the use of the word “each” in the claim. The claims make a distinction between the “logical channels” which would operate within the PUSCH pre-configured uplink resource and the pre-configured resources themselves so the logical channels described (DRB/LCH correspondence described in paragraph 28) do not provide support for both the claimed “logical channels” and the multiple pre-configured uplink resources implied by the use of each.
Aside from the literal support of the word “each” in the in paragraph 66 and 78, the applicant’s disclosure makes no attempt to explain the how the concept of multiple preconfigured uplink resources that would support the “each” language claimed. Therefore, the applicant has not provided a description of the how the claimed configuration information would be implemented in such a way that it would define more than one preconfigured uplink resource, defined by the applicant as PUSCH, in paragraph 29. As such, the applicant has not disclosed how the function of receiving configuration information and using such configuration information, regarding “each” preconfigured uplink resource, is implemented. As stated in section 2161.01(I) of the MPEP, when the applicant claims a function without describing how the function is performed, written description issues may arise. In this case, based on the disclosure and the state of the art, the Examiner concludes the applicant did not have a satisfactory description for the “each pre-configured uplink resource” concept in a claim to inform those skilled in the art as to the nature of the subject matter being claimed.
Written Description Issue #3
Claim 41 covers:
41. (New) The method of claim 1, further comprising entering a connected state to transmit data in response to determining that the at least one logical channel is restricted from the small data transmission via the pre-configured uplink resource.
The applicant did not disclose a scenario where the UE enters a connected state to transmit data in response to determining that the at least one logical channel is restricted from the small data transmission via the pre-configured uplink resource. Such a cause and effect does not appear to be described in the original disclosure. Paragraph 34 states that if there is not a DRB/LCH configured for small data, then the UE may enter a connected state but this does not suggest an explicit step of determination of a restriction as claimed. The applicant is encouraged to claim paragraph 34 as it is disclosed, if this is what the applicant is trying to cover. The Examiner did not find prior art that suggested the current claim language but it is not indicated as allowable because it is not originally described.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 24-26, 28, 31-33, 37, 38, 40 and 42 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 9,930,956 to Choi et al.
As to claim 1, Choi teaches a method performed by a user equipment (UE) (device 102), the method comprising: receiving, from a base station (eNodeB 106) while operating in a connected mode, configuration information for performing a small data transmission (col. 10, lines 22-35 explains how the configuration information which defines the scheduling method can define small data transmission) while operating in an inactive mode (col. 7, line 61-col 8, line 27, device 102 receives configuration information from eNodeB 106 before it has applied the configuration which leads to an inactive mode), wherein the configuration information indicates, or each pre-configured uplink resource (col. 3, lines 26-34, the base station controls the use of a single PUSCH resource, just as disclosed by the applicant, using configuration information), which logical channels are allowed for the small data transmission (col. 3, lines 35-50 and Table 1, the time restrictions define small data transmission for each logical channel); applying the configuration information for performing the small data transmission (the applicant’s disclosure does not provide a limiting technical definition of the term “small data transmission”) in response to entering the inactive mode (col. 8, lines 28-31, device 102 transmits RRC connection reconfiguration complete message, which reads on “entering an inactive mode”, and actives configuration received from base station. The examiner could not find any limiting definition of the term “inactive mode” or “state” disclosed by the applicant.); determining, based at least in part on the configuration information, whether at least one logical channel is configured to transmit data as the small data transmission via a pre-configured uplink resource (col. 8, lines 32-52 explain how the device uses the configuration information to manage transmissions over a logical channel of the PUSCH); and performing, while operating in the inactive mode, the small data transmission with the base station via the at least one logical channel according to the configuration information for the small data transmission (col. 10, lines 22-35).
As to claims 24 and 31, they are rejected for the same reason as claim 1.
As to claims 2, 25, and 32, see col. 9, line 66-col. 10, line 21.
As to claim 3, 26, 33, and 38, see col. 2, line 57-col. 3, line 8.
As to claims 5 and 28, see col. 8, lines 28-31.
As to claim 37, see col. 10, lines 22-47 and col. 3, lines 4-8.
As to claims 40 and 42, the time restrictions are considered a LCP restriction because they restrict what can be transmitted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 13, 30, 36, and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 9,930,956 to Choi et al. in view of U.S. Patent Application Publication Number 2021/0274525 by Wei et al.
As to claims 13, 30, and 36, Choi teaches the subject matter of the independent claims however Choi does not explicitly teach the use of HARQ retransmissions. Wei teaches a method of determining data of a small data transmission is not successfully transmitted to a base station on a pre-configured uplink resource according to a HARQ process and autonomously retransmitting the data of the small data transmission to the base station on the pre-configured uplink resource (paragraph 381-388). It would have been obvious to one of ordinary skill in the art at the time of the filing to combine the teachings of Choi regarding applying configuration information from a base station with the teachings of Wei regarding using HARQ because the applicant’s claim is using HARQ for its intended purpose.
As to claim 39, Choi teaches the subject matter of claim 24 however Choi does not explicitly teach that the RRC message that provides the configuration information is an RRC “release” message.
Wei teaches providing a small data configuration via an RRC release message (paragraph 380).
It would have been obvious to one of ordinary skill in the art at the time of the filing to combine the teachings of Choi regarding applying configuration information from a base station with the teachings of Wei regarding using a RRC release message to convey such information because Choi is already providing the information using an RRC message and Wei shows how such information could be supplied using the “release” message.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
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