DETAILED ACTION
It is hereby acknowledged that the following papers have been received and placed of record in the file: Amendment date 11/17/2025.
Claims 1-2, 4, 6-10, 12, 14-18, 20 and 22-30 are presented for examination and claims 3, 5, 11, 13, 19 and 21 are cancelled.
Note: Application will consider submitting a terminal disclaimer to overcome Double Patenting upon allowance.
Response to Arguments
5. Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive.
6. Applicant argues the following limitation(s):
Applicant argues, stated in the remark on page 11, “Nor does Pan disclose that any transport block is transmitted from UE1 to UE2 that is based on the SLB configuration. Thus, Pan also fails to anticipate "transmitting, by the first wireless device to the second wireless device and based on the configuration parameters, at least one transport block," as claimed.” On the contrary, examiner disagreed with applicant argument that Pan does not teach any transport block is transmitted from UE1 to UE2 that is based on the SLRB configuration. First, Pan teaches UE1 may perform sidelink transmission to the UE2 on a unicast link. For maximum TB (Transport Block) size, UE1 can support up to 2,000 bits per TB, and UE2 can support up to 1,000 bits per TB. For MCS, UE1 can support it up to 64-QAM, and UE2 can support up to 16-QAM. It is feasible for UE1 to derive a set of sidelink capability parameters according to sidelink capabilities of both UEs (see Pan: ¶[0220]). Pan further teaches UE1 received SLRB configuration that included parameter based on UEs’ sidelink capability (see Fig.13; ¶[0195]) corresponding to configuration parameters for transmission . Second Pan further teaches UE1 receiving The SLRB configuration includes mapping of PC5 QoS flow ID to SLRB ID , mapping of SLRBID to LCG etc. in a transport block that sent to UE 1 (corresponding to a message include AS configuration see Pan: Fig.13; ¶0195]). Similar reason applies to claims 7 (a complete message response to a message send from UE1 to UE2 see Pan: Fig.13), 15 and 23. Based reasons above, Applicant's arguments filed have been fully considered but they are not persuasive.
Since the claims 25-30 are entered after last office action, claims 25-30 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.
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.
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, wherein the first wireless device is different from the 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, 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; 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 based on the configuration parameters, 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, configuration parameters for a transmission from the first wireless device to the second wireless device
· transmitting, by the first wireless device to the second wireless device and based on the configuration parameters, 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 “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” 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 § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
(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.
Claim(s) 1-2, 4, 6-10, 12, 14-18, 20 and 22-24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pan et al. (US 2020/0359428 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]), wherein the first wireless device is different from the second wireless device (UE1 and UE2 see Pan: Figs.13-14);
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 (UE1 receiving the SLRB configuration includes AS configuration (AS configuration indicates configuration parameters) see Pan: ¶[0192]; Figs.13-14), wherein the configuration parameters for the transmission are 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 based on the configuration parameters, at least one transport block (UE1 transmitting a message including AS configuration to UE2 based on SLRB configuration see Pan: ¶[0195]; Figs.13-14).
Regarding claim 2, 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, 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, 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, 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, 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, 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 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, 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 as described hereinabove.
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) 25-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al. (US 2020/0359428 A1) in view of Loehr et al. (US 2018/0263026 A1).
Regarding claim 25, Pan taught the method of claim 1 as described hereinabove. Pan does not explicitly teaches wherein the configuration parameters indicate: first sidelink radio resources of a first carrier; and second sidelink radio resources of a second carrier.
However, Loehr teaches the wherein the configuration parameters indicate: first sidelink radio resources of a first carrier; and second sidelink radio resources of a second carrier (carrier indicator in the control signaling for assigning uplink or downlink radio resources and carrier aggregation is configured “Carrier indicator, which is used if a control channel transmitted on a first carrier assigns resources that concern a second carrier, i.e., resources on a second carrier or resources related to a second carrier; (cross carrier scheduling)” see Loehr: ¶[0062]; ¶[0036-0039]) in order to enhance allocation to perform multiple direct sidelink transmission (see Loehr: ¶0001]).
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 wherein the configuration parameters indicate: first sidelink radio resources of a first carrier; and second sidelink radio resources of a second carrier as taught by Loehr in order to enhance allocation to perform multiple direct sidelink transmission (see Loehr: ¶0001]).
Regarding claim 26, the modified Pan taught the method of claim 25 as described hereinabove. Loehr 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 multiple transport blocks (only one per subframe (TTI), i.e., one after the other) and each of sidelink grant generates the corresponding transport blocks see Loehr: ¶[0191]; ¶[0293]; ¶[0327]) in order to enhance allocation to perform multiple direct sidelink transmission (see Loehr: ¶0001]).
Regarding claims 27-28, they are rejected for the same reason as claims 25-26 as set forth hereinabove.
Regarding claims 29-30, they are rejected for the same reason as claims 25-26 as set forth hereinabove.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
February 21, 2026
/GUANG W LI/Primary Examiner, Art Unit 2478