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 .
DETAILED ACTION
This office action is a response to amendment filed on 05/19/2026.
Claims 1, 3, 5, 7 and 9 – 11 are amended.
Claims 1 – 12 are pending and ready for examination.
Response to Arguments
Applicant’s arguments filed 05/19/2026 with respect to claims 1 – 12 have been considered but are moot because the new ground of rejection does not rely on combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant amended the independent claims 1, 5 and 9 by adding new limitations. But the new limitations are disclosed by a prior cited reference LI et al. (US 2024/0244701 A1) and a new reference REIAL et al. (US 2024/0381307 A1). Applicant’s arguments have overcome prior art of record; therefore, the independent claims are allowable over prior arts; but the allowable subject matter is recited in to be patented application no. 18/423,611 (Notice of Allowance is mailed on 07/28/2026). Accordingly, a terminal disclaimer is required to consider this application for allowance.
Applicant argued on 1st page: last paragraph of the remark, that Applicant has amended claim 1 to distinguish from 18/423,611 and requests that the Examiner withdraw the double patenting rejection”.
Examiner respectfully disagrees with applicant’s argument and remark. As mentioned above the new limitations of the amended claim 1 are disclosed by the combination of LI and REIAL (rejection is shown in the ODP rejection below). Accordingly, applicant’s argument is not appropriate.
Applicant argued on 2nd page: 1st paragraph of the remark regarding 35 U.S.C. 103 rejection.
Examiner respectfully agrees with applicant’s argument. The independent claims 1, 5 and 9 are allowable over prior arts. Therefore dependent claims are also allowable by virtue of their dependency.
Examiner respectfully disagrees with all the argument filed by the applicant. All arguments and remarks are replied in detail in the rejection section below.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 12 are rejected on the ground of non-statutory obviousness-type double patenting (ODP) as being unpatentable over claims 1 – 9 of the to be patented application no. 18/423,611 (Notice of Allowance is mailed on 07/28/2026) in view of Li (US 20240244701 A1), Nokia (R1-2105506, 3GPP TSG RAN WG1 #105-e) and REIAL (US 2024/0381307 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed towards apparatus and method regarding Tracking Reference Signal (TRS) configuration resources and communication process. With respect to the independent claims of the instant application and the to be patented application, please see the direct claim comparison in the Table 1 below.
Table 1: Claim comparison between the instant and the to be patented applications.
Instant application No. 18/423,549
To be patented application No. 18/423,611
1. A communication apparatus comprising:
a receiver; and
a controller;
wherein:
in a case where the communication apparatus is in a radio resource control (RRC) idle state or an RRC inactive state, the receiver is configured to:
receive, from a base station, system information block including first information configuring a validity duration for an information field indicating Tracking Reference Signal (TRS) availability; and
receive on a physical downlink control channel (PDCCH), from the base station, downlink control information (DCI) including the information field indicating the TRS availability, and
the controller is configured to control reception of a TRS based on the first information configuring the validity duration and a value set to the information field;
in a case where the communication apparatus is in an RRC connected state, the receiver is configured to receive, from the base station, an RRC signaling including second information indicating that an antenna port for all non-zero-power (NZP) channel state information reference signal (CSI-RS) resources in a CSI-RS resource set is the same;
the controller is configured to control reception of the CSI-RS based on the second information: and
the system information block further includes:
a parameter indicating one value of power offset configured to a plurality of TRS resources, wherein the plurality of TRS resources include NZP CSI-RS resources, and wherein the power offset is a power offset of the TRS with respect to a synchronization signal; and
a parameter list indicating more than one value of scrambling identifier, wherein each value of the scrambling identifier corresponds to one TRS resource of the plurality of TRS resources respectively.
1. A communication apparatus comprising:
a receiver configured to receive from a base station,
(claim 3, wherein the system information includes information configuring the validity duration)
and to receive, from the base station, downlink control information including a TRS availability indication, wherein a validity duration is configured for the TRS availability indication for the plurality of TRS resources;
a controller configured to control reception of the TRS based on the parameter and the parameter list in a case where the communication apparatus is in a radio resource control (RRC) idle state or an RRC inactive state.
system information including a parameter and a parameter list, the parameter indicating one value of power offset configured to a plurality of Tracking Reference Signal (TRS) resources, the power offset being a power offset of the TRS with respect to a synchronization signal, the parameter list indicating more than one value of scrambling identifier, each value of the scrambling identifier corresponding to one TRS resource of the plurality of TRS resources,
As can be seen from the direct claim comparison of Table 1, claim 1 of instant application is narrower version of claims 1+3 of the to be patented application. Dissimilar parts of the claims are underlined. The to be patented claim limitations are rearranged in a different sequence to show the comparison with the instant claim. Similar claim comparison can be shown for instant claims 5, 9 vs. to be patented claims 4+6, 7+9, respectively.
The to be patented claims 1, 4 and 7 do not recite
in a case where the communication apparatus is in a radio resource control (RRC) idle state or an RRC inactive state, the receiver is configured to:
receive, from a base station, system information block; and
receive on a physical downlink control channel (PDCCH);
reception of a TRS based on the first information configuring the validity duration and a value set to the information field;
in a case where the communication apparatus is in an RRC connected state, the receiver is configured to receive, from the base station, an RRC signaling including second information indicating that an antenna port for all non-zero-power (NZP) channel state information reference signal (CSI-RS) resources in a CSI-RS resource set is the same;
the controller is configured to control reception of the CSI-RS based on the second information;
wherein the plurality of TRS resources include NZP CSI-RS resources.
However, LI teaches (Title, USER EQUIPMENT, SCHEDULING NODE, METHOD FOR USER EQUIPMENT, AND METHOD FOR SCHEDULING NODE)
in a case where the communication apparatus ([0085], UE) is in a radio resource control (RRC) idle state or an RRC inactive state ([0085], RRC IDLE state, inactive state), the receiver is configured to:
receive, from a base station, system information ([0085], in the idle and inactive states, the UE receives system information) block including first information configuring a validity duration ([0219], validity duration is configured by a System Information Block (SIB); [0224], validity duration is configured for different RS configurations) for an information field indicating Tracking Reference Signal (TRS) availability ([0164], gNB sends the TRS availability indication to IDLE/INACTIVE UEs; [0149], UE is in an inactive state or in an idle state, is provided with an indication of the availability state of a RS); and
receive on a physical downlink control channel (PDCCH), downlink control information (DCI) ([0099], downlink control signal (information) is a signal (information) transmitted through PDCCH of the physical layer).
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified to be patented claim 1 and further incorporate the teaching of LI. The motivation for doing so would have been to provide transmission and reception of signals in a communication system, in which configuring the validity duration via SIB allows some flexibility to a network to tradeoff between signaling overhead to refresh RS status depending on how frequent the RS status changes (LI, [0001] and [0222]).
The combination of to be patented claim and Li does not recite
reception of a TRS based on the first information configuring the validity duration and a value set to the information field.
However, Nokia teaches (Title, On RS information to IDLE/INACTIVE mode UEs)
configuring a validity duration for an information field indicating Tracking Reference Signal (TRS) availability (Pg.4: 1st para, once UE receives a positive availability indication UE assumes the TRS availability in the cell is valid for a certain time, such as few paging cycles; Pg.4, Observation: Paging mechanism based availability indication with validity time is considered as a physical channel indication. Here, the validity time/ valid for a certain time is a validity duration and the positive availability indication is an indicating (TRS) availability; therefore, the validity duration is configured for an information of TRS availability indication), and
receive, downlink control information (DCI) including the information field indicating the TRS availability (Pg.2: section 2.1, Support at least L1 based signaling for the availability indication of TRS/CSI-RS at the configured occasion(s) to the idle/inactive UEs includes paging DCI. Pg.4: Proposal: Support paging DCI based and PEI based beam specific aperiodic availability indication with validity timer as an additional availability indication. Here, the DCI includes information of the TRS availability indication; therefore, it is obvious that DCI includes an information field indicating TRS availability), and
reception of a TRS based on the first information configuring the validity duration and a value set to the information field (Pg.2: section 2.1: presence indication: Agreement, availability of TRS/CSI-RS at the configured occasion(s) is informed to the idle/inactive UE based on explicit indication; Pg.3: 2nd para, presence/availability indication is part of the configuration of potential TRS/CSI-RS occasions. As mentioned above, UE assumes the TRS availability is valid for a certain time, when it receives positive availability indication; therefore, it is obvious the reception of a TRS based on the information configuring the validity duration and positive availability indication/ a value set to the information field),
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified combination of to be patented application and LI as mentioned above and further incorporate the teaching of Nokia. The motivation for doing so would have been to provide enhancements for idle/inactive-mode UE power saving, paging enhancement(s) to reduce unnecessary UE paging receptions and potential TRS/CSI-RS occasions available in connected mode to idle/inactive-mode UEs, minimizing system overhead impact (Nokia, Pg.1: section 1: Introduction).
The combination of to be patented claim, Li and Nokia does not recite
in a case where the communication apparatus is in an RRC connected state, the receiver is configured to receive, from the base station, an RRC signaling including second information indicating that an antenna port for all non-zero-power (NZP) channel state information reference signal (CSI-RS) resources in a CSI-RS resource set is the same;
the controller is configured to control reception of the CSI-RS based on the second information;
wherein the plurality of TRS resources include NZP CSI-RS resources.
However, REIAL teaches (Title, SIGNALING PAGING EARLY INDICATORS (PEI) WITH ADDITIONAL INFORMATION)
in a case where the communication apparatus is in an RRC connected state, the receiver is configured to receive, from the base station, an RRC signaling ([0016], A WD in radio resource control (RRC) connected mode is expected to receive from the network node the RRC layer WD-specific configuration) including second information indicating that an antenna port for all non-zero-power (NZP) channel state information reference signal (CSI-RS) resources in a CSI-RS resource set is the same ([0016], the WD assumes that the antenna port with the same port index of the configured NZP CSI-RS resources in the NZP-CSI-RS-ResourceSet is the same; [0056], “no report” trs-Info Indicates that the antenna port for all NZP-CSI-RS resources in the CSI- RS resource set is same);
the controller is configured to control reception of the CSI-RS based on the second information ([0016] and [0050], receive from the network node the RRC layer WD-specific configuration of a non-zero power (NZP) channel state information reference signal (CSI-RS)-ResourceSet configured to include the parameter trs-Info. For a NZP-CSI-RS-ResourceSet configured with the higher layer parameter trs-Info set to “true”, the WD assumes that the antenna port with the same port index of the configured NZP CSI-RS resources in the NZP-CSI-RS-ResourceSet is the same);
wherein the plurality of TRS resources include NZP CSI-RS resources ([0019] – [0020], A WD configured with NZP-CSI-RS-ResourceSet(s) configured with higher layer parameter trs-Info have the CSI-RS resources configured as Periodic).
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified combination of to be patented application, LI and Nokia as mentioned above and further incorporate the teaching of REIAL. The motivation for doing so would have been to provide a method, system and apparatus for signaling paging early indicators (PEI) with additional information, in which teachings of some of embodiments improve the data rate, latency, and/or power consumption and thereby provide benefits such as reduced user waiting time, relaxed restriction on file size, better responsiveness, extended battery lifetime, etc. (REIAL, Abstract and [0134]).
The claims of the instant application that are rejected under ODP are listed in table 2.
Table 2: instant claims vs. To be patented claims.
Instant application no. 18/423,549
To be patented application No. 18/423,611
1
1 +3
3
2
5
4+6
7
5
9
7+9
11
8
Accordingly, instant claims 1, 3, 5, 7, 9 and 11 are provisionally rejected on the ground of ODP as being unpatentable over claims 1 – 9 of the to be patented application no. 18/423,611 in view of Li, Nokia and REIAL.
Dependent claims 2, 4, 6, 8, 10 and 12 have different limitations than that of the to be patented claim limitations. Prior art rejection of claims 2, 4, 6, 8, 10 and 12 has been shown in non-final office action mailed on 01/20/2026. Therefore, claims 4, 8 and 12 can be rejected on the ground of ODP as being unpatentable over claims 1+3, 4+6 and 7+9 of the to be patented application in view of Li, Nokia, REIAL and Haghighat; and claims 2, 6 and 10 can be rejected on the ground of ODP as being unpatentable over claims 1+3, 4+6 and 7+9 of the to be patented application in view of Li, Nokia, REIAL and HUAWEI.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWNAK ISLAM whose telephone number is (571)272-8009. The examiner can normally be reached on Monday - Friday 8 am - 5 pm (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Thier can be reached on 571-272-2832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROWNAK ISLAM/
Primary Examiner, Art Unit 2474
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