DETAILED ACTION
This action is responsive to claims filed on 16 October 2023 and Information Disclosure Statements filed on 16 October 2023, 22 October 2024, and 11 July 2025.
Claims 1-20 are pending for examination.
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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Information Disclosure Statement
The information disclosure statements (IDSes) submitted on 16 October 2023, 22 October 2024, and 11 July 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities:
Regarding Claim 6 — line 2, a comma appears to be missing between “carriers” and “when”.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 16 of U.S. Patent No. 10,841,789 (hereinafter ‘789). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 14 of the instant application are anticipated by claims 1 and 16 of ‘789 as further detailed below.
Regarding Claim 1, claim 1 of ‘789 is encompassed by claim 1 of the instant application as provided in the table and explanation below.
1. A transmission method, comprising:
1. A method of relay transmission, comprising:
receiving, by a relay terminal as a terminal device, a first message from a first remote terminal and…
receiving, by a relay terminal device, an ADPtive (ADP)-layer Protocol Data Unit (PDU) sent to a network device by a remote terminal device, the ADP-layer PDU containing identifier information of the remote terminal device and the ADP-layer PDU being obtained through performing, by the remote terminal device, encapsulation processing on data contained in the ADP-layer PDU in an ADP layer of layer 2;
determining, by the relay terminal, a first user identity of the first remote terminal corresponding to the first message.
acquiring, by the relay terminal device, the identifier information, contained in the ADP-layer PDU, of the remote terminal device in an ADP layer of layer 2; and
… transmitting the first message to a network device; and
forwarding, by the relay terminal device according to the acquired identifier information of the remote terminal device, the data contained in the ADP-layer PDU to the network device.
Apparent differences between claim 1 of ‘789 and claim 1 of the instant application include: (a) receiving the first message “as a terminal device”, (b) reception of a first message instead of an ADPtive (ADP)-layer Protocol Data Unit (PDU), (c) from a first remote terminal instead of “sent to a network device by a remote terminal device,” (d) determining a first user identity of the first remote terminal instead of “acquiring…the identifier information”, and (e) transmitting instead of “forwarding”.
With respect to (a) — the term “as a terminal device”, claim 1 of ‘789 requires the relay terminal to be a relay terminal device.
With respect to (b) — an ADP PDU is understood to be a type of first message.
With respect to (c) — a received ADP PDU sent to a network device by a remote terminal device is understood to be a message sent from the remote terminal device.
With respect to (d) — claim 1 of ‘789 requires the claimed identifier information to be “of the remote terminal device”, making it a type of first user identity.
With respect to (e) — forwarding is a type of transmitting.
Therefore, claim 1 of the instant application completely encompasses the scope of claim 1 of ‘789.
Regarding Claim 14, the scope of claim 16 of ‘789 is encompassed by claim 14 of the instant application under the same reasoning that claim 1 of ‘789 is encompassed by claim 1 of the instant application.
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.
Claims 1, 14, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang (US 2019/0166486, the Pre-Grant Publication of '789 cited in the Double Patent Rejection above, previously made of record).
Regarding Claim 1, Tang discloses a transmission method, comprising:
receiving, by a relay terminal as a terminal device, a first message from a first remote terminal (Abstract, Figs. 3, 5, ¶¶ 96, 99 and 133 discloses a remote terminal device sending an adaptation (i.e., ADPtive, ADP)-layer PDU to a relay terminal device) and transmitting the first message to a network device (Abstract, Figs. 3, 5, ¶¶ 99 and 135 disclose the relay terminal forwarding the data contained in the ADP-layer PDU to a network device); and
determining, by the relay terminal, a first user identity of the first remote terminal corresponding to the first message (Abstract, Figs. 3, 5, ¶¶ 90, 99, 133-134 disclose the relay terminal device acquiring identifier information, such as a user identifier of the remote terminal device, from the received ADP-layer PDU).
Regarding Claim 14, though of a different scope, the limitations of claim 14 are substantially similar or identical to those of claim 1, and is rejected under the same reasoning.
Regarding Claim 20, Tang discloses a network device, comprising:
a transceiver, configured to receive a first message from a relay terminal as a terminal device (Abstract, Fig. 3, Fig. 7, ¶¶ 99 and 163-164 disclose a network device, including a receiving unit, receiving an ADP-layer PDU sent by a relay terminal device), wherein the first message is transmitted to the relay terminal by a first remote terminal (Abstract, Figs. 3, 7, ¶¶ 99 and 165 disclose the ADP-layer PDU as indicating that it was ultimately from a remote terminal device and was forwarded to the network device by the relay terminal device),
wherein a first user identity of the first remote terminal corresponding to the first message is determined by the relay terminal (Note: a function solely of a device other than the claimed network device does not appear to define the claimed network device in the instant claim; Fig. 3 ¶¶ 90 and 100 disclose the relay terminal device analyzing the acquired identifier, which may be embodied as a user identifier of the remote terminal device).
Claims 1-3, 14-16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2020/0100088, hereinafter Kim).
Regarding Claim 1, Kim discloses a transmission method, comprising:
receiving, by a relay terminal as a terminal device, a first message from a first remote terminal (Fig. 16 and ¶¶ 528-529 disclose an eRemote-UE sending a NAS service request including an identifier of the eRemote-UE, such as a subscriber identifier (S-TMSI) to an eRelay UE, which delivers it to an eNB, which delivers it to an eRemote MME) and transmitting the first message to a network device (Id.); and
determining, by the relay terminal, a first user identity of the first remote terminal corresponding to the first message (Id.).
Regarding Claim 2, Kim discloses the method of claim 1, further comprising:
receiving, by the relay terminal, a second message from a second remote terminal (Fig. 16 and ¶ 533 disclose the eRelay-UE receiving uplink data from the eRemote-UE).
Regarding Claim 3, Kim discloses the method of claim 2, further comprising:
transmitting, by the relay terminal, the second message to the network device (Fig. 16 and ¶ 533 disclose the eRelay-UE delivering the uplink data to the eNB).
Regarding Claims 14-16, though of varying scope, the limitations of claims 14-16 are substantially similar or identical to those of claims 1-3, and are rejected under the same reasoning.
Regarding Claim 20, Kim discloses a network device, comprising:
a transceiver (Fig. 24 and ¶¶ 887-889 disclose a network node, such as a base station (eNB), as implementing the method of Fig. 16, includes a communication module including a radio frequency unit for transmitting/receiving a radio signal), configured to receive a first message from a relay terminal as a terminal device (Fig. 16 and ¶¶ 528-529 disclose an eNB receiving a NAS service request message), wherein the first message is transmitted to the relay terminal by a first remote terminal (Fig. 16 and ¶¶ 528-529 disclose the NAS service request message as originating from an eRemote-UE and including an identifier of the eRemote-UE, such as a subscriber identifier (e.g., S-TMSI)),
wherein a first user identity of the first remote terminal corresponding to the first message is determined by the relay terminal (Note: a function solely of a device other than the claimed network device does not appear to the scope of the claimed network device in the instant claim; Fig. 16 and ¶¶ 528-529).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tang as applied to claim 1 above, and further in view of Xu et al. (US 2019/0239284, previously made of record, hereinafter Xu).
Regarding Claim 4, Tang discloses the method of claim 1.
Tang may not explicitly disclose:
transmitting, by the relay terminal, a first report related to the first remote terminal to the network device.
However, in analogous art, Xu discloses:
transmitting, by a relay terminal, a first report related to a first remote terminal to a network device (Fig. 6 and ¶ 203 disclose a relay UE sending a notification message to a base station (BS) including a layer 2 ID of the remote UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on the remote terminal to the BS. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 5, Tang-Xu disclose the method of claim 4.
Tang may not explicitly disclose:
receiving, by the relay terminal, the first user identity of the first remote terminal from the network device.
However, in analogous art, Xu discloses:
receiving, by the relay terminal, the first user identity of the first remote terminal from the network device (Fig. 6 and ¶ 204 disclose the base station allocating an index to the remote UE, and returns, to the relay UE, a response message that includes the index of the remote UE and a mapping relationship between the index and the layer 2 ID of the remote UE, where the response message is used to instruct the relay UE to provide a connection for the remote UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on the and receive an identifier for the remote terminal from the base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 6, Tang-Xu disclose the method of claim 5.
Tang discloses wherein an adaptation layer header is carried in the first message carries when the first message is transmitted by the relay terminal to the network device, the adaptation layer header containing the first user identity of the first remote terminal (Abstract, Figs. 3, 5, ¶¶ 99 and 135 disclose the relay terminal forwarding the data contained in the ADP-layer PDU to a network device).
Tang may not explicitly disclose wherein the first remote terminal is received from the network device.
However, in analogous art, Xu discloses the first user identity of the first remote terminal received from the network device (Fig. 6 and ¶ 204 disclose the base station allocating an index to the remote UE, and returns, to the relay UE, a response message that includes the index of the remote UE and a mapping relationship between the index and the layer 2 ID of the remote UE, where the response message is used to instruct the relay UE to provide a connection for the remote UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on the and receive an identifier for the remote terminal from the base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 7, Tang discloses the method of claim 1.
Tang may not explicitly disclose:
transmitting, by the relay terminal, a second report related to a second remote terminal to the network device.
However, in analogous art, Xu discloses:
transmitting, by the relay terminal, a second report related to a second remote terminal to the network device (Fig. 1 and ¶ 108 disclose a plurality of remote UEs connected to a relay UE; Fig. 3a and ¶ 135 disclose the relay UE sending data to a base station (BS) including a remote UE index and an LCID of the radio bearer corresponding to the data sent to the BS; Figs. 4a-d and ¶¶ 149, 158, 168, and 176 disclose the data as including information on two remote UEs).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on and receive an identifier for the second remote terminal from the base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 8, Tang-Xu disclose the method of claim 7.
Tang may not explicitly disclose:
receiving, by the relay terminal, a second user identity of the second remote terminal from the network device.
However, in analogous art, Xu discloses:
receiving, by the relay terminal, a second user identity of the second remote terminal from the network device (¶¶ 137 and 180 disclose the base station configuring the relay with radio bearers for each data flow of each remote UE being served by the relay UE, and the BS using identifiers of the remote UEs and their respective radio bearer(s) when communicating data to the remote UEs via the relay UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on and receive an identifier for the second remote terminal from the base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 9, Tang-Xu disclose the method of claim 8.
Tang discloses wherein an adaptation layer header is carried in a message when the message is transmitted by the relay terminal to the network device, the adaptation layer header containing the user identity of the remote terminal (Abstract, Figs. 3, 5, ¶¶ 99 and 135 disclose the relay terminal forwarding the data contained in the ADP-layer PDU to a network device).
Tang may not explicitly disclose wherein the message is a second message and the remote terminal is a second remote terminal, and wherein the user identity of the remote terminal is received from the network device.
However, in analogous art, Xu discloses a second message and a second remote terminal (Fig. 1 and ¶ 108 disclose a plurality of remote UEs connected to a relay UE; Fig. 3a and ¶ 135 disclose the relay UE sending data to a base station (BS) including a remote UE index and an LCID of the radio bearer corresponding to the data sent to the BS; Figs. 4a-d and ¶¶ 149, 158, 168, and 176 disclose the data as including information on two remote UEs), and wherein the user identity of the remote terminal is received from the network device (Fig. 6 and ¶ 204 disclose the base station allocating an index to the remote UE, and returns, to the relay UE, a response message that includes the index of the remote UE and a mapping relationship between the index and the layer 2 ID of the remote UE, where the response message is used to instruct the relay UE to provide a connection for the remote UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on and receive an identifier for the second remote terminal from the base station. One would have been motivated to do this, because such a report (Xu ¶ 4).
Regarding Claim 10, Tang-Xu disclose the method of claim 4.
Tang may not explicitly disclose wherein the first report comprises: ID information of the first remote terminal.
However, in analogous art, Xu discloses wherein the first report comprises: ID information of the first remote terminal (Fig. 6 and ¶ 203 disclose a relay UE sending a notification message to a base station (BS) including a layer 2 ID of the remote UE).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on the remote terminal to the BS. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 11, Tang-Xu disclose the method of claim 7.
Tang may not explicitly disclose wherein the second report comprises ID information of the second remote terminal.
However, in analogous art, Xu discloses wherein the second report comprises ID information of the second remote terminal (Fig. 1 and ¶ 108 disclose a plurality of remote UEs connected to a relay UE; Fig. 3a and ¶ 135 disclose the relay UE sending data to a base station (BS) including a remote UE index and an LCID of the radio bearer corresponding to the data sent to the BS; Figs. 4a-d and ¶¶ 149, 158, 168, and 176 disclose the data as including information on two remote UEs).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal report on and receive an identifier for the second remote terminal from the base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 12, Tang discloses the method of claim 1.
Tang may not explicitly disclose wherein the first user identity is obtained by the first remote terminal through a signaling from a network.
However, in analogous art, Xu discloses wherein the first user identity is obtained by the first remote terminal through a signaling from a network (Fig. 3a and ¶¶ 137-138 disclose a base station configuring the radio bearers and their identifiers for each data flow of each remote UE being served by the relay UE, and the relay UE using the radio bearer IDs when communicating data to the base station for either of the remote UEs).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to have the relay terminal use identifiers configured by a base station. One would have been motivated to do this, because such a report may help a base station identify specific UE from which data is received from a relay UE (Xu ¶ 4).
Regarding Claim 13, Tang discloses the method of claim 1.
Tang may not explicitly disclose wherein an adaptation layer header is not carried in at least one of the first message or a second message when transmitted.
However, in analogous art, Xu discloses wherein an adaptation layer header is not carried in at least one of the first message or a second message when transmitted (¶¶ 143, 146, 152, 161, and 170 disclose a MAC PDU including a MAC subheader as including the remote UE index, which is understood to not be an adaptation layer header).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Xu to modify Tang in order to use a MAC header and MAC subheader as opposed to an ADP-layer header to convey the remote UE index. One would have been motivated to do this, because the MAC subheader can support including information for a plurality of remote UEs (Xu ¶¶ 144-145), and thereby avoid a problem in the prior art related to the limits of using a logical channel identifier (LCID) (Xu ¶ 139).
Regarding Claims 17-19, though of varying scope, the limitations of claims 17-19 are substantially similar or identical to those of claims 4-5 and 7, and are rejected under the same reasoning.
Conclusion
A shortened statutory period for reply to this action is set to expire THREE MONTHS from the mailing date of this action. An extension of time may be obtained under 37 CFR 1.136(a). However, in no event, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS R CAIRNS whose telephone number is (571)270-0487. The examiner can normally be reached 9AM-5PM ET M-F.
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/Thomas R Cairns/ Primary Examiner, Art Unit 2468