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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/28/2026 has been entered.
Claims 21, 32 – 33 and 40 are amended.
Claims 1 – 20 are canceled.
Claims 21 – 40 are pending and ready for examination.
In response to applicant’s argument and amendments regarding claims 21 and 33, examiner has withdrawn claim objections mentioned in previous office action.
Response to Arguments
Applicant’s arguments filed 04/28/2026 with respect to claims 21, 32, 33 and 40 have been considered and are persuasive. The claim rejections under 35 USC § 103 has been withdrawn.
Applicant argued on page 2: 2nd paragraph of the remark, "The Applicant respectfully submits that the above amendments render the double patenting rejection moot. Furthermore, as the claims of U.S. Patent Application No. 18/852,065 has not been patented, at present there is no actual double patenting. The Applicant respectfully requests that the double patenting rejection be withdrawn."
Examiner respectfully disagrees with applicant’s arguments. The current amendments do not overcome obviousness double patenting (ODP) rejection, as shown in rejection section below. Independent claims are rejected on the ground of non-statutory ODP as being unpatentable over certain claims of co-pending application 18/852,065 in view of secondary reference Zhou et al. (US 2024/0340790 A1). Even though the co-pending application has not been patented yet; but ODP rejection cannot be withdrawn as patent term filing date of the instant application is later than that of the co-pending application. The patent term filing date is based only on U.S. nonprovisional, continuation, divisional, or PCT applications. This date is used for determining which application has the earliest date for DP purposes. The patent term filing date of the instant application is 8/10/2023, and the co-pending application is 3/31/2023. Therefore, ODP rejection needs to be overcome prior to allowance. MPEP 1490(VI)(D)(2)(a, b, and c) provides guideline how to overcome the ODP rejection. Therefore, applicant’s argument is not proper.
Applicant argued on page 2: last paragraph of the remark, regarding rejections under 35 USC § 103.
As mentioned above the rejection has been withdrawn; therefore, applicant’s argument is moot.
Examiner respectfully disagrees with DP arguments 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 21, 32, 33 and 40 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over claims 16+17+20, 26+27+30, 21+22+25 and 31+32+35, respectively of co-pending application no. 18/852,065 in view of secondary reference Zhou et al. (US 20240340790 A1). This is a provisional obviousness-type double patenting rejection since the claims directed to the similar invention have not in fact been patented.
With respect to the independent claims of the instant application and the Co-pending application, please see the direct claim comparison in the Table 1 below.
Table 1: Claim comparison between instant application and co-pending application.
Instant application no. 18/448,080
Co-pending application No. 18/852,065
21. A method of a user equipment (UE) in a wireless communication system, comprising:
receiving, from a base station (BS), via radio resource control (RRC) signaling, configuration information for a search space of a downlink control information (DCI) format associated with one or more UE;
monitoring the DCI format associated with one or more UEs,
wherein the DCI format includes a cyclic redundancy check (CRC) scrambled by a Radio Network Temporary Identifier (RNTI) used for network energy saving indication, and
wherein the DCI format includes a plurality of bits, each bit of the plurality of bits corresponding to a respective serving cell of one or more serving cells and each bit indicating whether network energy saving is activated or deactivated for the respective serving cell.
16. A method performed by a user equipment (UE) in a communication system, the method comprising:
receiving, via higher layer signaling, a configuration associated with an energy-saving mode;
receiving a downlink control information (DCI) format including an indication for a serving cell; and
determining, based on the indication, whether the energy saving mode is used for the serving cell,
wherein the energy-saving mode corresponds to at least one of a cell discontinuous transmission (DTX) or a cell discontinuous reception (DRX).
20. The method of claim 16, wherein a cyclic redundancy check (CRC) for the DCI format is scrambled by a radio network temporary identifier (RNTI) for energy-saving,
wherein ….., respectively.
17. The method of claim 16, wherein the DCI format includes a plurality of indications for a plurality of serving cells,
wherein each indication corresponds to 1 bit, wherein a first value for the 1 bit indicates that the energy-saving mode is used for a corresponding serving cell, and
wherein a second value for the 1 bit indicates that the energy-saving mode is not used for the corresponding serving cell.
As can be seen from the direct claim comparison of Table 1, claim 21 of instant application is boarder version of claims 16+17+20 of the co-pending application. The dissimilar parts of the claims are underlined. Similar claim comparison can be shown for instant claims 32, 33 and 40 vs. co-pending claims 26+27+30, 21+22+25 and 31+32+35, respectively.
The instant claim 21 recites “RRC signaling” and the co-pending claim 16 recites “higher layer signaling”, which is an obvious variation of one another.
The co-pending claim recites all limitations of the instant application except the limitations
“for a search space of a downlink control information (DCI) format associated with one or more UE;
monitoring the DCI format associated with one or more UEs”.
However, Zhou teaches (Title, Network Energy Saving In A Wireless Communication System)
receiving, from a base station (BS), via radio resource control (RRC) signaling, configuration information for a search space ([0213], The base station transmits, to the UE, RRC messages comprising configuration parameters of one or more CORESETs and one or more search space sets) of a downlink control information (DCI) format associated with one or more UE ([0213], The configuration parameters indicate: ……; one or more DCI formats to be monitored by the UE. Here, the RRC message/ signaling indicates configuration parameters of one or more search space sets for one or more DCI formats to be monitored by the UE; i.e. configuration information for a search space of a DCI format associated with a UE);
monitoring the DCI format associated with one or more UEs ([0214], The UE monitors a set of PDCCH candidates according to configuration parameters of a search space set; Monitoring comprises decoding one or more PDCCH candidates of the set of the PDCCH candidates according to the monitored DCI formats. Here, the DCI format is monitored by the UE).
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 co-pending claims and further incorporate the teaching of Zhou. The motivation for doing so would have been to provide network energy saving in a wireless communication system to improve power consumption of a wireless device, and/or signaling overhead of a base station (Zhou, Title and [0290]).
Accordingly, instant claims 21, 32, 33 and 40 are provisionally rejected on the ground of non-statutory ODP as being unpatentable over claims 16+17+20, 26+27+30, 21+22+25 and 31+32+35, respectively of co-pending Application no. 18/852,065.
Allowable Subject Matter
Claims 21 – 40 are allowable over prior arts; but ODP rejection needs to be overcome.
Conclusion
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).
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/ROWNAK ISLAM/Primary Examiner, Art Unit 2474
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