DETAILED ACTION
It is hereby acknowledged that the following papers have been received and placed of record in the file: Amendment date 05/26/2026.
Claims 1-2, 4, 6-10, 12, 14-18, 20, 22-24, 26, 28 and 30 are presented for examination.
Response to Arguments
Applicant's arguments with respect to claims 1-2, 4, 6-10, 12, 14-18, 20, 22-24, 26, 28 and 30 have been considered but are moot in view of the new ground(s) of rejection.
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, 9 and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 and 13 of U.S. Patent No. 11, 678,327 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the U.S. Patent are claiming common subject matter, as follows:
Instant Application US Application #: 18/139548 (‘548)
US Patent #: 11,678,327 (327’)
Claim 1. A method comprising:
transmitting, by a first wireless device to a base station, at least one uplink radio resource control message comprising sidelink capability information associated with at least one of transmission or reception at a second wireless device;
1. A method comprising:
receiving, by a first wireless device from a second wireless device, at least one sidelink message comprising sidelink capability information associated with at least one of transmission or reception at the second wireless device;
transmitting, by the first wireless device to a base station, at least one uplink radio resource control message comprising the sidelink capability information associated with at least one of transmission or reception at the second wireless device, wherein the sidelink capability information is different from capability information associated with the first wireless device;
receiving, by the first wireless device from the base station, sidelink configuration parameters that are based on the sidelink capability information and that indicate:
first sidelink radio resources of a first carrier;
second sidelink radio resources of a second carrier; and
receiving, by the first wireless device from the base station, configuration parameters for a transmission from the first wireless device to the second wireless device, wherein the configuration parameters for the transmission are based on the sidelink capability information associated with at least one of transmission or reception at the second wireless device; and
transmitting, by the first wireless device to the second wireless device and via one or both of the first sidelink radio resources of the first carrier or the second sidelink radio resources of the second carrier, at least one transport block.
transmitting, by the first wireless device to the second wireless device and based on the configuration parameters, at least one transport block.
Although the conflict claims are not identical, they are not patentably distinct from each other because 548’ discloses the method, comprising:
· transmitting, by a first wireless device to a base station,
· receiving, by the first wireless device from the base station, sidelink configuration parameters that are based on the sidelink capability information;
· transmitting, by the first wireless device to the second wireless device and via one or both of the first sidelink radio resources of the first carrier or the second sidelink radio resources of the second carrier, at least one transport block.
548’ does not discloses the limitation of “receiving, by a first wireless device from a second wireless device, at least one sidelink message comprising sidelink capability information associated with at least one of transmission or reception at the second wireless device” and “wherein the sidelink capability information is different from capability information associated with the first wireless device” in the instant application. However, it would have been obvious to one or ordinary skill in the art to determined “
sidelink configuration parameters that are based on the sidelink capability information and that indicate: first sidelink radio resources of a first carrier; second sidelink radio resources of a second carrier” corresponding to the sidelink capability information association with the second device and “receiving, by the first wireless device from the second wireless device, at least one sidelink message comprising the sidelink capability information of the second wireless device” corresponding to different sidelink capability information as the instant application in claims 1, 3 and 8. Therefore, they are not patentably distinct from each other.
Regarding claims 9 and 17 are rejected for the same reasons as claim 1 described above corresponding to patented claims 7 and 13.
Therefore, this is Non-Provisional nonstatutory obviousness-type double patenting rejection because the conflicting claims in the U.S. Patent.
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.
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.
Claim(s) 1-2, 4, 6-10, 12, 14-18, 20, 22-24, 26, 28 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al. (US 2020/0359428 A1) in view of Huang et al. (US 2020/0205166 A1).
Regarding claim 1, Pan teaches a method comprising:
transmitting, by a first wireless device to a base station, at least one uplink radio resource control message comprising sidelink capability information associated with at least one of transmission or reception at a second wireless device (UE1 transmitting request for SLRB configuration including both UE’s sidelink capability see Option 1 see Pan: Figs.13-14; ¶[0195]);
receiving, by the first wireless device from the base station, sidelink configuration parameters that based on the sidelink capability information (the UE sidelink capability information may contain parameters for transmission, parameters for reception, and/or parameters for both transmission and reception and UE1 receiving THE SLRB configuration based on UEs’ sidelink capability see Pan: ¶[0209]; Fig.13; ¶[0195]); and
transmitting, by the first wireless device to the second wireless device and via one or both of the first sidelink radio resources of the first carrier or the second sidelink radio resources of the second carrier, at least one transport block (UE1 transmitting a message including AS configuration to UE2 based on SLRB configuration on a carrier see Pan: ¶[0195]; Figs.13-14).
Pan does not explicitly teaches sidelink configuration parameters that indicate: first sidelink radio resource of a first carrier; and second sidelink radio resources of the second carrier.
However, Huang teaches the sidelink configuration parameters that indicate: first sidelink radio resource of a first carrier; and second sidelink radio resources of the second carrier (first UE configured (and/or pre-configured) to perform one or more sidelink transmissions on a plurality of carriers wherein first UE receives first sidelink transmissions on first and second carrier see Huang: Fig.12 steps 1205-1215; ¶[0415]) in order to handle sidelink feedback collision in a wireless communication system (see Huang: ¶[0002]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to create the invention of Pan to include (or to use, etc.) the sidelink configuration parameters that indicate: first sidelink radio resource of a first carrier; and second sidelink radio resources of the second carrier as taught by Huang in order to handle sidelink feedback collision in a wireless communication system (see Huang: ¶[0002]).
Regarding claim 2, the modified Pan taught the method of claim 1 as described hereinabove. Pan further comprising receiving, by the first wireless device from the base station, a radio resource control information request message for the sidelink capability information, wherein the transmitting the at least one uplink radio resource control message is based on the radio resource control information request message (RRC reconfiguration message between UE and UE1 see Pan: ¶[0123-0134]).
Regarding claim 4, the modified Pan taught the method of claim 1 as described hereinabove. Pan further teaches wherein the sidelink capability information indicates whether a multiple carrier sidelink operation is supported (UE sidelink capability indication MCS support and band combinations support see Pan: ¶[0196]).
Regarding claim 6, the modified Pan taught the method of claim 1 as described hereinabove. Pan further teaches wherein the sidelink capability information comprises a synchronization reference source of the second wireless device, and wherein the configuration parameters for the transmission from the first wireless device to the second wireless device are based on the sidelink capability information and the synchronization reference source (sidelinkUEinformationNR message include the sidelink communication (¶[0138) and synchronization reference type (¶[0150) see Pan: ¶[0137-0150]).
Regarding claim 7, the modified Pan taught the method of claim 1 as described hereinabove. Pan further comprising receiving, by the first wireless device from the second wireless device, a response to the at least one transport block (UE1 receiving a complete message of the message including the AS configuration from UE2 see Pan: Fig.13).
Regarding claim 8, the modified Pan taught the method of claim 1 as described hereinabove. Pan further comprising receiving, by the first wireless device from the second wireless device, at least one sidelink message comprising the sidelink capability information (UE1 receiving a message of the message including the UE2 sidelink capability from UE2 see Pan: Fig.13).
Regarding claims 9-10, 12 and 14-16, they are rejected for the same reason as the method of claims 1-2, 4, and 6-8 as set forth hereinabove. Claims 9-10, 12 and 14-16 disclose a first wireless device that perform the same functionalities as method of claim 1-2, 4, and 6-8 as described hereinabove.
Regarding claims 17-18, 20 and 22-24, they are rejected for the same reason as the method of claims 1-2, 4 and 6-8 as set forth hereinabove. Claims 17-18, 20 and 22-24 disclose a non-transitory computer readable medium that perform the same functionalities as method of claim 1-2, 4 and 6-8 as described hereinabove.
Regarding claim 26, the modified Pan taught the method of claim 1 as described hereinabove. Huang further teaches wherein the transmitting the at least one transport block comprises transmitting, by the first wireless device: one or more first transport blocks via the first sidelink radio resources of the first carrier; and one or more second transport blocks via the second sidelink radio resources of the second carrier (the UE can transmit one or more transport blocks (corresponding to slots) on carrier 1 and carrier 2 see Huang: Fig.9; ¶[0368]) in order to handle sidelink feedback collision in a wireless communication system (see Huang: ¶[0002]).
Regarding claim 28, they are rejected for the same reason as claims 26 as set forth hereinabove.
Regarding claim 30, they are rejected for the same reason as claims 26 as set forth hereinabove.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUANG W LI whose telephone number is (571)270-1897. The examiner can normally be reached Monday - Thursday 7AM-5PMET.
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GUANG W. LI
Primary Examiner
Art Unit 2478
August 11, 2026
/GUANG W LI/Primary Examiner, Art Unit 2478
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