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
Claims 1, 3, 5 and 7-8 of this application is patentably indistinct from claims 1, 3, 5 and 7-8 of Application No. 18/262,807. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 3, 5 and 7-8 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3, 5 and 7-8 of copending Application No. 18/262,807 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
18/262,807
18/262,844
1. A terminal comprising:
a receiver that receives a first reference signal and a second reference signal, wherein the first reference signal is periodic and is used for a first purpose of a measurement related to a radio link management, and the second reference signal is used for a second purpose different from the first purpose; and
a processor that performs the measurement related to the radio link management using the second reference signal,
wherein the receiver omits a reception of the first reference signal in response to a specific condition being satisfied.
1. A terminal comprising:
a receiver that receives a first reference signal and a second reference signal, wherein the first reference signal is periodic and is used for a first purpose of a measurement related to a radio link management, and the second reference signal is used for a second purpose different from the first purpose; and
a processor that performs the measurement related to the radio link management using the second reference signal,
wherein the receiver omits a reception of the first reference signal in response to a specific condition being satisfied.
Similarly, claims 3, 5 and 7-8 of the two Applications recite exactly the same claim language.
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 1, 5 and 7 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.
Claims 1 recites “a receiver that receives a first reference signal” and “wherein the receiver omits a reception of the first reference signal” Applicant’s original Specification does not disclose that a receiver omits a reception of the first reference signal, let alone that a receiver omits a reception of the first reference signal and also receives the first reference signal. Applicant’s Specification discloses only that the gNB may omit at least part of the transmission of the first RS (see, for example, paragraph [0097]). Omitting a transmission is not the same as omitting reception of a signal. In order for reception of a signal to be omitted, the signal would have to exist in some way (such as being transmitted or scheduled).
Claim 5 is rejected for substantially the same reason as claim 1.
For purposes of Examination, the claims are interpreted to mean that a transmission is omitted.
Claims 1 recites “wherein the receiver omits a reception of the first reference signal in response to a specific condition being satisfied.” Applicant’s original Specification does not disclose that a the receiver omits a reception of the first reference signal in response to a specific condition being satisfied. Applicant’s Specification does not use the phrase “in response to” at all. Further, Applicant’s Specification discloses only that the gNB may omit at least part of the transmission of the first RS WHEN the specific condition is satisfied (see, for example, paragraph [0097]). Accordingly, there is no disclosed dependence between omitting a transmission of the first RS and the condition being satisfied. This interpretation is further supported by paragraph [0098] of Applicant’s Specification and by claim 7, which recites that “the specific condition includes a condition under which the measurement related to the radio link management using the second reference signal is performed within a specific period.” A determination, by a base station, that a measurement is performed by the UE during a specific time interval, cannot occur before the instructions for that time interval (scheduling DCI discussed in paragraph [0095]) are transmitted by the base station to the UE.
Claims 5 and 7 are rejected for substantially the same reason as claim 1.
In order to overcome this rejection, Applicant is advised to amend the claims to use the term “when” instead of the phrase “in response to,” in accordance with the disclosures of Applicant’s Specification.
For purposes of Examination, the claims are interpreted to use the term “when” instead of the phrase “in response to.”
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5 and 7-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a receiver that receives a first reference signal” and “wherein the receiver omits a reception of the first reference signal” These two limitations both recite the same “first reference signal” is both received and omitted. Accordingly, the limitations contradict each other. It would not have been be understood by a person of ordinary skill in the art, at the time of the invention, would the same “first reference signal” could be both received and omitted. If the reception is conditional, then conditional language should be used in the claim, in such a way that is supported by Applicant’s original Specification. Alternatively, if the reception and omission occur in different time periods for a particular type of reference signal, then that should be recited in the claims, in such a way that is supported by Applicant’s original Specification.
Claim 5 is rejected for substantially the same reason as claim 1.
Claim 7 is rejected because it depends from claim 1.
Claim 3 recites “a transmitter that transmits a first reference signal” and “wherein the transmitter omits a transmission of the first reference signal” These two limitations both recite the same “first reference signal” is both transmitted and omitted. Accordingly, the limitations contradict each other, in substantially the same way as claim 1.
Claim 8 is rejected for substantially the same reason as claim 3.
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)(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, 3, 5and 7-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Da Silva et al. (US 2020/0037332).
Regarding claim 1, Da Silva discloses a terminal (Da Silva, paragraph [0075], wireless device configured to communicate with a base station) comprising:
a receiver that receives a first reference signal and a second reference signal, wherein the first reference signal is periodic and is used for a first purpose of a measurement related to a radio link management, and the second reference signal is used for a second purpose different from the first purpose (Da Silva, Figs. 5, 22, 24, transceiver, processing circuit; paragraph [0025], RLM measurement sources may be two or more different reference signals; paragraph [0026], PDCCH quality estimated based on signal strength of CRS; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0063], performing RLM based on the same periodic RSs configured to support connected mobility; paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs); and
a processor that performs the measurement related to the radio link management using the second reference signal (Da Silva, Figs. 5, 22, 24, transceiver, processing circuit; paragraph [0025], RLM measurement sources may be two or more different reference signals; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0063], performing RLM based on the same periodic RSs configured to support connected mobility),
wherein the receiver omits a reception of the first reference signal in response to a specific condition being satisfied (Da Silva, paragraph [0012], CRSs not transmitted in all subframes; paragraph 0024], UE can measure serving cell quality without always-on reference signals in some subframes and bands; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0070], when no PDCCH is scheduled for that UE, the network may configure UE with a UE-specific RS transmission, can be DMRS or a dummy PDCCH transmission; paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates. Within the same period, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs; paragraph [0089], UE should start searching for additional sources if the primary source is not present in a given time interval; paragraph [0131], when the UE is not scheduled with any PDCCH, the network may transmit MRS, SS or CSI-RS so UE can detect such beam for RLM).
Regarding claim 3, Da Silva discloses a base station (Da Silva, paragraph [0075], wireless device configured to communicate with a base station) comprising:
a transmitter that transmits a first reference signal and a second reference signal, wherein the first reference signal is periodic and is used for a first purpose of a measurement related to a radio link management, and the second reference signal is used for a second purpose different from the first purpose (Da Silva, Figs. 5, 22, 24, transceiver, processing circuit; paragraph [0025], RLM measurement sources may be two or more different reference signals; paragraph [0026], PDCCH quality estimated based on signal strength of CRS; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0063], performing RLM based on the same periodic RSs configured to support connected mobility; paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs); and
a processor that performs the measurement related to the radio link management using the second reference signal (Da Silva, Figs. 5, 22, 24, transceiver, processing circuit; paragraph [0025], RLM measurement sources may be two or more different reference signals; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0063], performing RLM based on the same periodic RSs configured to support connected mobility),
wherein the transmitter omits a transmission of the first reference signal in response to a specific condition being satisfied (Da Silva, paragraph [0012], CRSs not transmitted in all subframes; paragraph 0024], UE can measure serving cell quality without always-on reference signals in some subframes and bands; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0070], when no PDCCH is scheduled for that UE, the network may configure UE with a UE-specific RS transmission, can be DMRS or a dummy PDCCH transmission; paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates. Within the same period, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs; paragraph [0089], UE should start searching for additional sources if the primary source is not present in a given time interval; paragraph [0131], when the UE is not scheduled with any PDCCH, the network may transmit MRS, SS or CSI-RS so UE can detect such beam for RLM).
Claim 5 is rejected under substantially the same rationale as claim 1.
Regarding claim 7, Da Silva discloses the terminal according to claim 1, wherein the specific condition includes a condition under which the measurement related to the radio link management using the second reference signal is performed within a specific period (Da Silva, paragraph [0012], CRSs not transmitted in all subframes; paragraph 0024], UE can measure serving cell quality without always-on reference signals in some subframes and bands; paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; paragraph [0070], when no PDCCH is scheduled for that UE, the network may configure UE with a UE-specific RS transmission, can be DMRS or a dummy PDCCH transmission; paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates. Within the same period, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs; paragraph [0089], UE should start searching for additional sources if the primary source is not present in a given time interval; paragraph [0131], when the UE is not scheduled with any PDCCH, the network may transmit MRS, SS or CSI-RS so UE can detect such beam for RLM).
Claim 8 is rejected under substantially the same rationale as claim 3.
Response to Arguments
Applicant's arguments filed January 16, 2025 have been fully considered but they are not persuasive.
Applicant asserts that the scope of the claims of Applications 18/262,807 and 18/262,844 are different. However, this is incorrect. Claims 1, 3, 5 and 7-8 are the same in both Applications.
Applicant further asserts that the claims are patentable because Da Silva does not disclose wherein the receiver omits a reception of the first reference signal in response to a specific condition being satisfied. However, this is incorrect. Firstly, as discussed in the 112 rejections above, that limitation is not disclosed in Applicant’s original Specification, and is also indefinite. Secondly, Da Silva does disclose that limitation, as discussed in the 102 rejections above.
Applicant further asserts that the claims are patentable because Da Silva does not disclose two reference signals for different purposes. However, this is incorrect. Da Silva discloses, for example in paragraph [0025], RLM measurement sources may be two or more different reference signals; in paragraph [0026], PDCCH quality estimated based on signal strength of CRS; in paragraph [0027], UE can use for RLM, PDCCH, DMRSs, PDCCH indications and additional reference signals, possibly periodic, when data is not scheduled; in paragraph [0063], performing RLM based on the same periodic RSs configured to support connected mobility; and in paragraph [0086], if data is scheduled, the UE should use PDCCH DMRSs to compute quality estimates, the UE may measure an additional source such as SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs. Accordingly, Da Silva discloses that multiple references signals including CRS, PDCCH, SS Block RS, PSS/SSS/TSS or DMRS for PBCH, CSI-RSs, and other reference signals, which are all used for different purposes other than RLM measurement, may also be used for RLM measurement.
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 ALAN LOUIS LINDENBAUM whose telephone number is (571)270-3858. The examiner can normally be reached Monday through Friday 9:00 AM to 5:00 PM EST.
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/ALAN L LINDENBAUM/ Examiner, Art Unit 2466
/Nishant Divecha/ Supervisory Patent Examiner, Art Unit 2419