DETAILED ACTION
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 .
This action is in response to the application filed on 01 February 2024.
Claims 1-16 are under examination.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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).
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Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,910,256. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims are broader in every aspect than the claims of U.S. Patent No. 11,910,256 and is therefore an obvious variant thereof.
Claims 1 and 9 of the instant application is directed to A method performed by a terminal in a communication system, the method comprising: receiving system information including a threshold value, wherein the threshold value is used to identify a data transmission in a radio resource control (RRC) inactive mode; receiving an RRC message including information on bearers used for the data transmission in the RRC inactive mode; transmitting a random access preamble; receiving a random access response in response to the random access preamble; identifying, in the RRC inactive mode, an amount of data to be transmitted based on the threshold value; and transmitting, in the RRC inactive mode, the data with an RRC resume request message based on the identification and the information on the bearers, wherein the RRC resume request message includes a resume identity of the terminal and a short message authentication code—integrity (MAC-I).
Claims 1 and 9 of the U.S. Patent No. 11,910,256 is directed to A method performed by a terminal in a communication system, the method comprising: receiving system information including a threshold value for a data transmission; transmitting, to a base station, a random access preamble for the data transmission in a random access procedure; receiving, from the base station, a random access response in response to the random access preamble; identifying that a size of uplink data to be transmitted is less than or equal to the threshold value; multiplexing a radio resource control (RRC) resume request message and the uplink data; and transmitting, to the base station, the RRC resume request message and the uplink data as a message 3, wherein the RRC resume request message includes a resume identifier of the terminal and a short message authentication code-integrity (MAC-I).
Claims 1 and 9 of the present application merely broaden the scope of independent claims 1 and 9 of the U.S. Patent No. 11,910,256 by eliminating multiplexing a radio resource control (RRC) resume request message and the uplink data; and transmitting, to the base station, the RRC resume request message and the uplink data as a message 3.
Dependent claims 2-5 and 10-13 of instant application is rejected for the same reasoning as the independent claims 1 and 9.
Claims 6 and 14 of the instant application is directed to A method performed by a base station in a communication system, the method comprising: receiving a random access preamble; transmitting a random access response in response to the random access preamble; and receiving data with a radio resource control (RRC) resume request message from a terminal in an RRC inactive mode, the RRC resume request message including a resume identity of the terminal and a short message authentication code—integrity (MAC-I), wherein information on bearers used for a data transmission in the RRC inactive mode is configured via an RRC message to the terminal, wherein an amount of the data to be transmitted is based on a threshold value which is transmitted to the terminal via system information.
Claims 5 and 13 of the U.S. Patent No. 11,910,256 is directed to A method performed by a base station in a communication system, the method comprising: receiving, from a terminal, a random access preamble for a data transmission in a random access procedure; transmitting, to the terminal, a random access response in response to the random access preamble; and receiving, from the terminal, a radio resource control (RRC) resume request message and uplink data as a message 3, wherein the RRC resume request message and the uplink data for the data transmission are multiplexed, and wherein a size of the uplink data is less than or equal to a threshold value, wherein the RRC resume request message includes a resume identifier of the terminal and a short message authentication code-integrity (MAC-I), and wherein the threshold value is transmitted via system information.
Claims 6 and 14 of the present application merely broaden the scope of independent claims 5 and 13 of the U.S. Patent No. 11,910,256 by eliminating receiving, from the terminal, a radio resource control (RRC) resume request message and uplink data as a message 3, wherein the RRC resume request message and the uplink data for the data transmission are multiplexed, and wherein a size of the uplink data is less than or equal to a threshold value,
Dependent claims 7, 8, 15 and 16 of instant application is rejected for the same reasoning as the independent claims 6 and 14.
It has been held that the omission an element and its function is an obvious expedient if the remaining elements perform the same as before. In Re Karlson, 136 USPQ 184 (CCPA). Also, note Ex Parte Rainu, 168 USPQ 375 (Bd.App. 1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rudgeland et al. (US Publication 2020/0037210) discloses a user equipment (UE) that was previously in communication with a source network node, comprises an interface operably coupled to processing circuitry. The interface is configured to receive a connection resume request from the user equipment, wherein the connection resume request comprises a resume identification associated with the source network node. The processing circuitry is configured to determine that the UE was previously in communication with the source network node. The interface is further configured to transmit the connection resume request to the source network node, receive a radio resource control (RRC) response from the source network node, and forward the RRC response to the UE.
Tseng et al. (US Publication 2018/0220486) discloses an RRC connection resume method of a wireless communication system is provided. An RRC suspend message is received by a UE from a first base station. An RRC resume procedure is performed by the UE with a second base station in response to the RRC suspend message. An RRC resume response is received by the UE from the second base station.
Any inquiry concerning this communication from the examiner should be directed to ABDULLAHI AHMED whose telephone number is (571) 270-3652. The examiner can normally be reached on M-F 8:00AM-4:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khalid Kassim can be reached on 571-270-3370. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABDULLAHI AHMED/Examiner, Art Unit 2472