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 .
Election/Restrictions
Claims 5-6, 8 & 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B-I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12-29-25.
Applicant’s election without traverse of Species A of Claims 1-4, 7, 9 & 18-20 in the reply filed on 12-29-25 is acknowledged.
Priority
Applicant' s claim for the benefit of a prior-filed application, PCT/CN2022/085243 filed 4-6-22, under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application Nos. CN202110381076.3, filed on 4-9-21 & CN202110400101.8 filed 4-14-21.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12-6-23. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 10-8-23. These drawings are acceptable.
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 Objections
Claim 3 is objected to because of the following informalities:
Claim 3, line 5,
“the first RRC state being RRC_INACTIVE state”
should be deleted to avoid 112 rejection in the next paragraph.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 3 is vague and indefinite because it is not clear whether the UE entering the first RRC state from the RRC_INACTIVE state at all if the first RRC state being RRC-_INACTIVE state.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state comprises: as a response to the second message being received, entering into a first RRC state from RRC-_INACTIVE state; and the second message being received”, and the claim 3 also recites “the first RRC state being RRC_INACTIVE state” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-2, 9 & 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/235,359 {Zhang (U.S. 2023/0397288 A1)}. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
-Application claims 1-2, 9 & 19 merely broaden the scope of the copending claims 1-2, 6, 13-14 & 18 by “and maintaining a second timer…both…and a state of the second timer… the action of maintaining a second timer comprises: as a response to receiving a first-type data unit or as a response to transmitting the first-type data unit, starting or restarting the second timer;…both…and a state of the second Timer comprises: when the second timer is not in a running state, or when the second timer is in the running state, that the first timer is expired not triggering a switch from the RRC inactive state to the first RRC state” from the copending claims 1-2, 6, 13-14 & 18; and
-Application claims 18 & 20 merely broaden the scope of the copending claims 1-2, 6, 13-14 & 18 by “and a state of a second timer…together… and the second timer is maintained by the transmitter of the first message… the second timer being maintained comprises: as a response to receiving a first-type data unit or as a response to transmitting the first-type data unit, the second timer being started or restarted;… and a state of a second timer…together… when the second timer is not in a running state,…
or when the second timer is in the running state, that the first timer is expired not triggering a switch from the RRC inactive state to the first RRC state” from the copending claims 7 & 12.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to eliminate or/and rephrase limitations/elements to broaden the claimed language as long as the limitations or/and elements under different names would perform the same function. It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before {In re Karlson, 136 USPQ 184 (CCPA)} and Omission of a reference’s element whose function is not needed would be obvious to one skilled in the art {Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969)}.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4 & 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 13-14 & 18 of copending Application No. 18/235,359 {Zhang (U.S. 2023/0397288 A1)} in view of Zhang (US 2019/0342832 A1).
This is a provisional nonstatutory double patenting rejection as following:
Regarding Claim 3. (Currently Amended) With the same reasons as set forth in the UE according to claim 1, Zhang does not explicitly disclose wherein the behavior of “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state” comprises: as a response to the second message being received, entering into a first RRC state from RRC_INACTIVE state; and the second message being received; the first RRC state being RRC_INACTIVE state, or, the first RRC state being RRC_IDLE state.
However, in the same field of endeavor, Zhang32 (US 2019/0342832 A1) disclose wherein the behavior of “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state” comprises: as a response to the second message being received, entering into a first RRC state from RRC_INACTIVE state; and the second message being received; the first RRC state being RRC_INACTIVE state, or, the first RRC state being RRC_IDLE state {Zhang: step 220-Fig.2 & ¶0118-¶0119 wherein “The terminal receives a first message sent by the first access network device. The first message is used to instruct the terminal to remain in the RRC inactive state or enter the idle state from the RRC inactive state”, also ¶0121; ¶0120 wherein “after receiving the first message, the terminal remains in the RRC inactive state,” also ¶0122-¶0125; and step 230-Fig.2 & ¶0134 wherein “The terminal remains in the RRC inactive state based on the first message, or enters the idle state from the RRC inactive state based on the first message,” also ¶0135-¶0137}. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to Zhang32’s teaching to Zhang’s system with the motivation being to “increase traffic demands and services having various different requirements, the 3GPP standards organization is currently formulating a standard for a next-generation mobile communications system”{Zhang: ¶0003} and “to improve performance of a communications system”{Zhang: ¶0005}.
Claims 4 & 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 13-14 & 18 of copending Application No. 18/235,359 {Zhang (U.S. 2023/0397288 A1)} in view of DaSilva (US 10667185 B2).
These are a provisional nonstatutory double patenting rejections as following:
Regarding Claim 4. (Currently Amended) With the same reasons as set forth in the UE according to claim 1, Zhang does not explicitly disclose wherein the first message comprises an RRCResumeRequest message; the second message comprises an RRCRelease message.
However, in the same field of endeavor, DaSilva (US 10667185 B2) disclose wherein
the first message comprises an RRCResumeRequest message {DaSilva: Fig.2 wherein upon transmitting the RRC Connection Resume Request (the claimed first message), start timer T300, emphasis added}; the second message comprises an RRCRelease message {DaSilva: step 1530-Fig.15-wherein “the UE stops the timer to stop the connection establishment upon receiving a suspend message or a release message (the claimed second message), or upon performing a cell reselection procedure while the timer is running”}. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to DaSilva’s teaching to Zhang’s system with the motivation being to “prevent the UE from waiting the connection establishment to be completed if there is an error or bad transmission in the connection establishment” {DaSilva: Abstract, lines 10-13}.
Regarding Claim 7. (Currently Amended) With the same reasons as set forth in the UE according to claim 1, Zhang does not explicitly disclose wherein accompanying a first message, not start the T319.
However, in the same field of endeavor, DaSilva (US 10667185 B2) disclose wherein accompanying a first message, not start the T319 {DaSilva: Fig.2 wherein accompanying the RRC Connection Resume Request (the claimed first message), start timer T300 (e.g. not start T319 as claimed), emphasis added}. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to DaSilva’s teaching to Zhang’s system with the motivation being to “resume procedure failure due to bad downlink/uplink radio conditions, and to prevent the UE from getting stuck waiting for a message from the network that never comes”{DaSilva: col.2, lines 36-37 & 45-47}.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-2, 4, 7, 9 & 18-20 is/are rejected under 35 U.S.C. 102(a)(1-2) as being anticipated by DaSilva (US 10667185 B2).
Regarding Claim 1. (Currently Amended)
A user equipment (UE) {DaSilva: UE in Figs.2 & 15-16} for wireless communications, the UE comprising:
a transmitter configured to start a first timer {DaSilva: starting a timer for the connection establishment, 1520-Fig.15, sending unit 1610-Fig.16 & sending RRC Connection Resume Request-Fig.2};
when transmitting a first message, wherein the first message comprises a Radio Resource Control (RRC) signaling {DaSilva: sending request to a network node to initiate a connection establishment, 1510-Fig.15} including a first field {DaSilva: a resume procedure, a set procedure, or an early data transmission, col.41, lines 51-53 & 1510-Fig.15}; and
a receiver configured to monitor for a second message, wherein the second message comprises a RRC signaling used to respond to the first message {DaSilva: start a timer for the connection establishment, 1520-Fig.15 & receiving unit-Fig.16 (not shown but inherent in receiving the release message, 1530-Fig.15 & col.43, lines 4-24)};
wherein as a response to any condition in a first condition set being satisfied {DaSilva: the timer is expired, 1520-Fig.15}, the UE enters into a first RRC state from RRC_INACTIVE state {DaSilva: Fig.2 wherein upon the timer expired, the UE enters RRC-IDLE state from RRC-INACTIVE state};
wherein if the second message is received, and as a response to the second message being received, stop the first timer {DaSilva: stop the timer upon the UE receiving a release message, 1530-Fig.15};
wherein the first field is used to assist in determining a transmission of the second message {DaSilva: a resume procedure, a set procedure, or an early data transmission, col.41, lines 51-53 and 1510-Fig.15 & Fig.2 wherein the UE determines the resume procedure (the claimed first field) if UE get any valid response from the network, col.2, lines 36-48};
wherein two conditions in the first condition set are respectively the first timer being expired {DaSilva: the timer is expired, 1520-Fig.15} and the second message being received {DaSilva: the timer is expired, 1520-Fig.15};
wherein the first RRC state is a candidate state in a first candidate state set, and the first candidate state set comprises RRC_IDLE state {DaSilva: Fig.2 wherein upon the timer expired, the UE enters RRC-IDLE};.
Regarding Claim 2. (Currently Amended) The UE according to claim 1, wherein the behavior of “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state” comprises:
as a response to an expiration of the first timer, entering into the first RRC state from RRC_INACTIVE state {DaSilva: Fig.2 wherein upon the timer expired, the UE enters RRC-IDLE}; and
the second message not being receive; the first RRC state being RRC_IDLE state {DaSilva: Fig.2 wherein upon the timer expired, and the UE does not get any valid response from the network, the UE enters RRC-IDLE}.
Regarding Claim 4. (Currently Amended) The UE according to claim 1, wherein
the first message comprises an RRCResumeRequest message {DaSilva: step 1510-Fig.15 and also Fig.2 wherein upon transmitting the RRC Connection Resume Request (the claimed first message), start timer T300, emphasis added};
the second message comprises an RRCRelease message {DaSilva: step 1530-Fig.15-wherein “the UE stops the timer to stop the connection establishment upon receiving a suspend message or a release message (the claimed second message), or upon performing a cell reselection procedure while the timer is running”}.
Regarding Claim 7. (Currently Amended) The UE according to claim 1, wherein accompanying a first message, not start the T319 {DaSilva: Fig.2 wherein accompanying the RRC Connection Resume Request (the claimed first message), start timer T300 (e.g. not start T319 as claimed), emphasis added}.
Regarding Claim 9. (Currently Amended) The UE according to claim 1, wherein the first message comprises the first field {DaSilva: the RRC Connection Resume Request (the claimed first message) comprising a resume procedure, a set procedure, or an early data transmission (the claimed first field), col.41, lines 51-53 and 1510-Fig.15}.
Regarding Claim 18. (Currently Amended)
-Claim 18 is rejected with the same reasons as set forth in claim 1, vice versa.
A base station for wireless communications, the base station comprising:
a receiver configured to receive a first message comprising an RRC signaling; wherein the first message includes a first field; and
a transmitter configured to transmit a second message comprising an RRC signaling, wherein the second message is used to respond to the first message;
wherein accompanying the first message, a first timer is started;
as a response to any condition in a first condition set being satisfied, a transmitter of the first message enters into a first RRC state from RRC_INACTIVE state;
wherein if the second message is received, as a response to the second message being received, the first timer is stopped;
wherein the first field is used to assist in determining a transmission of the second message;
wherein two conditions in the first condition set are respectively the first timer being expired and the second message being received; and
wherein the first RRC state is a candidate state in a first candidate state set, and the first candidate state set comprises RRC_IDLE state.
Regarding Claim 19. (Currently Amended)
-Claim 19 is rejected with the same reasons as set forth in claim 1.
A method in a user equipment (UE) for wireless communications, the method comprising:
accompanying a transmission of a first message, starting a first timer; wherein the first message comprising an RRC signaling including a first field; and
monitoring for a second message comprising an RRC signaling, wherein the second message is used to respond to the first message;
wherein, as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state;
wherein if the second message is received, and as a response to the second message being received, stop the first timer;
the first field is used to assist in determining a transmission of the second message;
wherein two conditions in the first condition set are respectively the first timer being expired and the second message being received;
wherein the first RRC state is a candidate state in a first candidate state set, and the first candidate state set comprises RRC_IDLE state.
Regarding Claim 20. (Currently Amended)
-Claim 20 is rejected with the same reasons as set forth in claims 1 & 19, vice versa.
A method for a base station, the method comprising:
receiving a first message comprising an RRC signaling including a first field; and
transmitting a second message comprising an RRC signaling, wherein the second message being used to respond to the first message;
wherein accompanying the first message, a first timer is started;
as a response to any condition in a first condition set being satisfied, a transmitter of the first message enters into a first RRC state from RRC_INACTIVE state;
wherein if the second message is received, as a response to the second message being received, the first timer is stopped;
wherein the first field is used to assist in determining a transmission of the second message;
wherein two conditions in the first condition set are respectively the first timer being expired and the second message being received; and
wherein the first RRC state is a candidate state in a first candidate state set, and the first candidate state set comprises RRC_IDLE state.
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 (i.e., changing from AIA to pre-AIA ) 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, 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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over DaSilva (US 10667185 B2) in view of Zhang (US 2019/0342832 A1).
Regarding Claim 3. (Currently Amended) With the same reasons as set forth in the UE according to claim 1, DaSilva does not explicitly disclose wherein the behavior of “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state” comprises: as a response to the second message being received, entering into a first RRC state from RRC_INACTIVE state; and the second message being received; the first RRC state being RRC_INACTIVE state, or, the first RRC state being RRC_IDLE state.
However, in the same field of endeavor, Zhang (US 2019/0342832 A1) disclose wherein the behavior of “as a response to any condition in a first condition set being satisfied, entering into a first RRC state from RRC_INACTIVE state” comprises: as a response to the second message being received, entering into a first RRC state from RRC_INACTIVE state; and the second message being received; the first RRC state being RRC_INACTIVE state, or, the first RRC state being RRC_IDLE state {Zhang: step 220-Fig.2 & ¶0118-¶0119 wherein “The terminal receives a first message sent by the first access network device. The first message is used to instruct the terminal to remain in the RRC inactive state or enter the idle state from the RRC inactive state”, also ¶0121; ¶0120 wherein “after receiving the first message, the terminal remains in the RRC inactive state,” also ¶0122-¶0125; and step 230-Fig.2 & ¶0134 wherein “The terminal remains in the RRC inactive state based on the first message, or enters the idle state from the RRC inactive state based on the first message,” also ¶0135-¶0137}. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to Zhang’s teaching to DaSilva’s system with the motivation being to “increase traffic demands and services having various different requirements, the 3GPP standards organization is currently formulating a standard for a next-generation mobile communications system”{Zhang: ¶0003} and “to improve performance of a communications system”{Zhang: ¶0005}.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 7, 9 & 18-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
A/. With respect to previous 102 rejection, Applicant argued that Zhang (US 2023/0397288) is owned by the same assignee/inventors.
-In reply, the applicant’s argument is found persuasive. Therefore, previous 102 rejection is hereby withdrawn. However, since Zhang is owned by the same assignee/inventors of this instant application, thus, it has raised Obviousness Double Patenting as set forth as above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al (WO 2022/213962 A1, designates U.S. in Section 81 with earlier foreign priority, same assignee) discloses a method and apparatus for wireless communication. The method comprises: a first node holding a first timer and holding a second timer; sending a first message, wherein the first message comprises RRC signaling; and determining, according to both a state of the first timer and a state of the second timer, whether to switch an RRC state, wherein the act of holding the first timer comprises: starting the first timer along with the first message; and the act of determining, according to both the state of the first timer and the state of the second timer, whether to switch the RRC state comprises: when the second timer is not in an operating state, in response to the first timer expiring, switching an RRC inactive state to a first RRC state, and when the second timer is in the operating state, not using the first timer expiring for triggering the switching from the RRC inactive state to the first RRC state. By means of the present application, failure detection during small data transmission is realized {pages 1-53}.
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/PHUONGCHAU BA NGUYEN/Primary Examiner, Art Unit 2464
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