DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the preliminary amendment field on 09/21/2023. Claims 1-19 and 30, of which claims 1 and 30 are independent, were pending in this application and have been considered below.
Priority
Acknowledgment is made of the Applicant's claim for foreign priority filed in SWEDEN on 03/31/2021 under 35 U.S.C. 119(a)-(d).
Acknowledgment is made of the Applicant's indication of National Stage entry from the International Application No. PCT/EP2022/053855 filed 02/16/2022, in the Application Data Sheet received on 09/21/2023.
Information Disclosure Statement
The references cited on the information disclosure statement (IDS) submitted on 09/22/2023 and 10/31/2024 have been considered and made of record by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112(b) or pre-AIA 35 USC § 35 USC § 112, second paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
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 pre-AIA 35 U.S.C. 112, 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 1-19 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention
Regarding claim 1, claims recites the limitation “a PEI” (line 7 of claim 1), which is vague because it is not clear whether it is the same as or different from already recited limitation “a PEI” (line 6 of claim 1). It is recommended to replace the limitation with phrase --the PEI --.
Regarding claims 2-19, claims are rejected due to their dependency to the rejected claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(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.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in "at least one of two-digit, three-digit, or four-digit" representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. "The identical invention must be shown in as complete detail as is contained in the … claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01. ("(A) Prove a primary reference contains an "enabled disclosure;" (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent.").
Claim 1-2, 6, 8, 17-19, and 30 rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. US 12,376,039 B2 to He.
Regarding claim 1, He discloses a method for a user equipment (UE) to monitor a paging occasion (PO) for obtaining a paging message from a base station (Fig. 4: “422 Monitor for paging message(s) during configured paging occasion(s)“ – extracted below), the method comprising:
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obtaining configuration of a plurality of paging early indicator(PEI) occasions allocated in an indicator window preceding the PO (lines 36-41 of col. 2 – truncated: “a wireless network may support a paging early indication (PEI), sometimes referred to as a wakeup signal (WUS) … a special signal that a base station transmits to a UE before the PO associated with the UE”);
monitoring reception of a PEI in the indicator window (Fig. 4: “422 Monitor for paging message(s) during configured paging occasion(s)“; and
monitoring the PO, responsive to receiving, in at least one of the PEI occasions, a PEI indicating that the UE shall monitor said PO, or otherwise entering a sleep state without monitoring the PO (lines 43-49 of col. 2: “The UE may monitor only a physical downlink control channel (PDCCH) to determine whether the base station transmitted a PEI to indicate that the UE is to wake up to receive a paging message, and may return to a low-power state in cases where a PEI is not transmitted and/or a PEI indicates that there is no page intended for the UE in the associated PO”).
Regarding claim 2, He discloses as stated above. He also discloses wherein said base station transmits a plurality of synchronization signal blocks (SSBs)s a burst (lines 9-12 of col. 19 - truncated: “As further shown in FIG. 4C, at 436, the base station may transmit one or more reference signals and/or one or more paging messages associated with the PEI ... the reference signals may include an SSB), the method further comprising: obtaining association information which maps identity associated with said SSBs to resources related to said PEI occasions (lines 46-52 of col. 13 - truncated: "after the UE receives a PEI indicating that the UE has a page, the UE may additionally measure one or more reference signals (e.g., one or more SSBs ... to synchronize with the base station and improve decoding of the PDSCH carrying the paging message."; lines 15-20 of col. 19: "if the UE successfully decodes a PEI in a PEI occasion and the PEI indicates that there is a page for a UE group to which the UE belongs, the UE may then decode the PDSCH paging message at the location indicated by the PEI ( e.g., the PO following the PEI occasion)").
Regarding claim 6, He discloses as stated above. He also discloses wherein at least one of said PEI occasions is reserved for a PEI addressed to identified UEs (lines 33-37 of col. 13: "as shown in FIG. 3B, the PEI (or WUS) is a special signal that a base station transmits to a UE before the PO associated with the UE to indicate whether the UE should wake up to receive a paging message.").
Regarding claim 8, He discloses as stated above. He also discloses wherein said monitoring reception of a PEI is carried out to determine reception of a wake up signal (WUS), indicating that a paging message may be scheduled for the UE in said PO (lines 36-49 of col. 2 – truncated: “a wireless network may support a paging early indication (PEI), sometimes referred to as a wakeup signal (WUS) … a special signal that a base station transmits to a UE before the PO associated with the UE to … monitor only a physical downlink control channel (PDCCH) to determine whether the base station transmitted a PEI to indicate that the UE is to wake up to receive a paging message, and may return to a low-power state in cases where a PEI is not transmitted and/or a PEI indicates that there is no page intended for the UE in the associated PO”).
Regarding claim 17, He discloses as stated above. He also discloses wherein said monitoring reception of a PEI is carried out to determine reception of a go to sleep signal (GTS), GTS, indicating that the UE shall not monitor the PO (lines 43-49 of col. 2 – truncated: “The UE may monitor only a physical downlink control channel (PDCCH) to determine … a PEI indicates that there is no page intended for the UE in the associated PO”).
Regarding claim 18, He discloses as stated above. He also discloses determining, based on PEI reception, whether the received PEI is a WUS or GTS (lines 43-49 of col. 2: “The UE may monitor only a physical downlink control channel (PDCCH) to determine whether the base station transmitted a PEI to indicate that the UE is to wake up to receive a paging message, and may return to a low-power state in cases where a PEI is not transmitted and/or a PEI indicates that there is no page intended for the UE in the associated PO”)..
Regarding claim 19, He discloses as stated above. He also discloses wherein said monitoring reception of a PEI comprises: monitoring said PEI occasions in succession; and going to sleep, responsive to receiving a GTS in one of said PEI occasions, without monitoring any subsequent PEI in the indicator window (lines 43-49 of col. 2 – truncated: “The UE may monitor only a physical downlink control channel (PDCCH) to determine … a PEI indicates that there is no page intended for the UE in the associated PO”)..
Regarding claim 30, He discloses a method for a base station to configure a user equipment(UE) (Fig. 4B: “420 Configure paging reception based at least in part on UE indicating lack of PEl support” – extracted below) to monitor a paging occasion (PO) for a paging message transmitted from the base station (Fig. 4: “422 Monitor for paging message(s) during configured paging occasion(s)“) , the method comprising:
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configuring a plurality of paging early indicator (PEI) occasions during an indicator window preceding the PO, for use by the UE to monitor for a PEI transmitted by the base station (lines 36-49 of col. 2 – truncated: “a wireless network may support a paging early indication (PEI), sometimes referred to as a wakeup signal (WUS) … a special signal that a base station transmits to a UE before the PO associated with the UE to … monitor only a physical downlink control channel (PDCCH) to determine whether the base station transmitted a PEI to indicate that the UE is to wake up to receive a paging message, and may return to a low-power state in cases where a PEI is not transmitted and/or a PEI indicates that there is no page intended for the UE in the associated PO”);
transmitting, based on that the UE is to be scheduled, a PEI in at least one of said PEI occasions, indicating that the UE shall monitor said PO (Fig. 4B: “424 Transmit reference signals) and pagingmessages) based at least in part on UE support for cross-slot scheduling”).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
The foregoing obviousness inquiry requires an expansive and flexible approach, not a rigid approach demanding express teachings, suggestions and motivations to combine prior art teachings. KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395, 97 (US 2007). The rationale supporting a conclusion of obviousness should be made explicit for review, but the rationale does not require precise teachings directed to the specific subject matter of the claim. Id. at 1396. A rejection can rely on inferences and creative steps that a person of ordinary skill in the art would employ. Id. Obviousness rejections are not limited to showing the obviousness of solutions to the problems Applicant was trying to solve. Id. at 1397. Rather, one can show obviousness of a claim by establishing the obviousness of any solution to any known problem in the field of endeavor and addressed by a patent application's subject matter. Id. Moreover, one of ordinary skill in the art is not an automaton, but is possessed of ordinary creativity. Id. One of ordinary skill could find alternative uses for prior art elements beyond the elements' primary purposes and fit prior art teachings together like a puzzle. Id. A combination of prior art teachings does not require absolute predictability. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals Inc., 81 USPQ2d 1324, 1329 (Fed. Cir. 2006). All that is required is a reasonable expectation of success. Id.
Claims 1 and 30 are also rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2022/0070783 A1 to Hsieh et al. in view of non-patent publication: Ericsson, "Design of Paging Enhancements", 3rd Generation Partnership Project (3GPP). 3GPP Draft, R1- 2101555, dated January 25-February 5, 2021; 9 pages. (“Ericsson” hereinafter) (see IDS)
Regarding claim 1, Hsieh et al. disclose a method for a user equipment (UE) to monitor a paging occasion (PO) for obtaining a paging message from a base station (¶[0006]; ¶[0022]) {a method of a User Equipment (UE) to monitor a Paging Occasion (PO), which includes monitoring at least one PO set for a paging message sent from a Base Station (BS), i.e., for obtaining a paging message from a base station}, the method comprising:
monitoring the PO, responsive to receiving, in at least one of the PEI occasions, a PEI indicating that the UE shall monitor said PO, or otherwise entering a sleep state without monitoring the PO (¶[0006]; ¶¶[0057[-[0059]) {monitoring the at least one PO responsive to receiving, in at least one of the PEI occasions, that comes later than a synchronization signal, SS, block burst set for a paging message when a paging early indicator indicates that the paging message is presented in the at least one PO that comes later than the SS block burst set, i.e. the PE indicating that the UE shall monitor said PO. The UE entering a sleep state without monitoring the at least one PO that comes later than the SS block burst set when the paging early indicator indicates that the paging message is not presented 1n the at least one PO that comes later than the SS block burst set, i.e. otherwise entering a sleep state without monitoring the PO.}. Hsieh et al. disclose as stated above, except for expressly teaching obtaining configuration of a plurality of paging early indicator(PEI) occasions allocated in an indicator window preceding the PO; monitoring reception of a PEI in the indicator window.
Ericsson, in the same field of endeavor, discloses obtaining configuration of a plurality of paging early indicator(PEI) occasions allocated in an indicator window preceding the PO (section 2.1; Fig. 1 – extracted below) {PO specific configuration of a PEI includes an offset from PO ranging at least up to 3 synchronization sig1n1al blocks, SBBs, prior to the PO and includes a window of PEI monitoring occasions during which the UE searches for PEI};
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Figure 1: Depicts UE’s timelines for UE in low SNR in need of 3 SSBs prior to PO PDSCH decoding. Top sub-figure depicts the legacy (reference) case without PEI. The middle sub-figure depicts PEI transmission occasion window of 1 slot, 4ms after its adjacent SSB.
monitoring reception of a PEI in the indicator window (Fig. 1: “Paging after PEI indication (SSB<->PEI:4ms, PEI occasion during a window of one slot” extracted below ) {see middle sub-figure that depicts PEI transmission occasion window of 1 slot, 4ms after its adjacent SSB}:
It is desirable to enhance paging. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention (at the time the invention was made), to use teaching of Ericsson with the system and method of Hsieh et al. in order to provide paging enhancement(s) to reduce unnecessary UE paging receptions, as suggested by Ericsson (line 5 of section 1).
Regarding claim 30, Hsieh et al. disclose a method for a base station to configure a user equipment(UE) to monitor a paging occasion (PO) for a paging message transmitted from the base station (¶[0006]; ¶[0022]) {a method of a User Equipment (UE) configured by a base station to monitor a Paging Occasion (PO), which includes monitoring at least one PO set for a paging message sent from a Base Station (BS), i.e., for obtaining a paging message from a base station}, the method comprising:
(¶[0006]; ¶¶[0057[-[0059]) {monitoring the at least one PO responsive to receiving, in at least one of the PEI occasions, that comes later than a synchronization signal, SS, block burst set for a paging message when a paging early indicator indicates that the paging message is presented in the at least one PO that comes later than the SS block burst set, i.e. the PE indicating that the UE shall monitor said PO. The UE entering a sleep state without monitoring the at least one PO that comes later than the SS block burst set when the paging early indicator indicates that the paging message is not presented 1n the at least one PO that comes later than the SS block burst set, i.e. otherwise entering a sleep state without monitoring the PO.}.
It is desirable to enhance paging. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention (at the time the invention was made), to use teaching of Ericsson with the system and method of Hsieh et al. in order to provide paging enhancement(s) to reduce unnecessary UE paging receptions, as suggested by Ericsson (line 5 of section 1). Hsieh et al. disclose as stated above, except for expressly teaching configuring a plurality of paging early indicator (PEI) occasions during an indicator window preceding the PO (section 2.1; Fig. 1 – extracted below) {PO specific configuration of a PEI includes an offset from PO ranging at least up to 3 synchronization signal blocks, SBBs, prior to the PO and includes a window of PEI monitoring occasions during which the UE searches for PEI}, for use by the UE to monitor for a PEI transmitted by the base station (Fig. 1: “Paging after PEI indication (SSB<->PEI:4ms, PEI occasion during a window of one slot” extracted below ) {see middle sub-figure that depicts PEI transmission occasion window of 1 slot, 4ms after its adjacent SSB}:.
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Ericsson, in the same field of endeavor, discloses configuring a plurality of paging early indicator (PEI) occasions during an indicator window preceding the PO, for use by the UE to monitor for a PEI transmitted by the base station.
Allowable Subject Matter
Claims 3-5, 7, and 9-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Examiner's note: As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Chen et al. (US 2021/0153162 A1) is equivalent and trustworthy translation of the IDS cited Foreign application No. WO 2019/029711 A1. Wu et al. (US 2022/0046585 A1) disclose “The UE receives indication information indicating whether there is a paging message to be transmitted on M paging occasions (POs) in one paging cycle, M>1, and the UE determines whether to monitor the corresponding PO in the M POs based on the received indication information, by which the base station is enabled to indicate to the UE in advance whether there is a paging message to be transmitted on M POs by transmitting the indication information to the user equipment, so that the UE does not need to monitor the corresponding PO, and therefore further reducing the power consumption of the UE” (¶[0102]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang, SPE can be reached on (571) 272-9018. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631