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 .
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.
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.
Claims 1,5,and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Translation of Guan et al. ( EP 2706807) in view of Chen et al. (2015/0103777).
For claims 1,5,and 8, Translation of Guan et al. ( EP 2706807) discloses a method comprising the steps of determining a payload size of a first downlink control information (DCI) format that is the same as a payload size of a second DCI format (See details of paragraph 0016 and paragraph 0006 lines 15-48) , wherein the first DCI format is for scheduling an uplink carrier and carries a first carrier indication and the second DCI format is for scheduling a downlink carrier and carries a second carrier indication ( See details of paragraphs 0017 to 0023); and monitoring DCI in the first DCI format ( See details of paragraph 0016 and paragraph 0006 lines 15-48 and See details of paragraphs 0017 to 0023).
For independent claim 1, Translation of Guan et al. (EP 2706807) discloses all the subject matter of the claimed invention with the exception of wherein the first carrier indication is different from the second carrier indication in the communication network. Chen et al. (2015/0103777) from the same or similar fields of endeavor teaches a provision of wherein the first carrier indication is different from the second carrier indication in the communication network ( See the differences F1 and F2 of uplink and downlink in Figure 2a). Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use wherein the first carrier indication is different from the second carrier indication in the communication network as taught by Chen et al. in the communication network of Translation of Guan et al. for the purpose of using the first carrier indication is different from the second carrier indication in the communication network.
For independent claim 8 is rejected for the same reason as claim 1.
For dependent claim 5, Translation of Guan et al. also disclose wherein the first carrier indication indicates a carrier in a secondary cell and the second carrier indication indicates a carrier in a primary cell; and wherein determining the payload size of the first DCI format comprises determining that the payload size of the first DCI format is an information bit quantity of the second DCI format( See details of paragraph 0016 and paragraph 0006 lines 15-48 and See details of paragraphs 0017 to 0023).
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.
Claims 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Translation of Translation of Guan et al. ( EP 2706807) in view of Chen et al. (2015/0103777) in view of Nam (2016/0157218).
For independent claim 15, Translation of Guan et al. ( EP 2706807) discloses a method comprising the steps of determining a payload size of a first downlink control information (DCI) format that is the same as a payload size of a second DCI format ( See details of paragraph 0016 and paragraph 0006 lines 15-48) , wherein the first DCI format is for scheduling an uplink carrier and carries a first carrier indication and the second DCI format is for scheduling a downlink carrier and carries a second carrier indication ( See details of paragraphs 0017 to 0023); and monitoring DCI in the first DCI
format ( See details of paragraph 0016 and paragraph 0006 lines 15-48 and See details of paragraphs 0017 to 0023).
For independent claim 15, Translation of Guan et al. (EP 2706807) discloses all the subject matter of the claimed invention with the exception of wherein the first carrier indication is different from the second carrier indication in the communication network. Chen et al. (2015/0103777) from the same or similar fields of endeavor teaches a provision of wherein the first carrier indication is different from the second carrier indication in the communication network ( See the differences F1 and F2 of uplink and downlink in Figure 2a). Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use wherein the first carrier indication is different from the second carrier indication in the communication network as taught by Chen et al. in the communication network of Translation of Guan et al. for the purpose of using the first carrier indication is different from the second carrier indication in the communication network.
For claim 15, Translation of Translation of Guan et al. (EP 2706807) in view of Chen et al. (2015/0103777) in view of Nam ( 2016/0157218) disclose all the subject matter of the claimed invention with the exception of memory and processor in a communications network. Nam et al. from the same or similar fields of endeavor teaches a provision of the memory and processor ( See paragraphs 0014 and 0052). Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use memory and as taught by Nam et al. in the communication
network of Translation of Translation of Guan et al. ( EP 2706807) in view of Chen et al. (2015/0103777 for the purpose of storing codes in the memory to execute the process by the processor.
For dependent claim 19, Translation of Guan et al. also disclose wherein the first carrier indication indicates a carrier in a secondary cell and the second carrier indication indicates a carrier in a primary cell; and wherein determining the payload size of the first DCI format comprises determining that the payload size of the first DCI format is an information bit quantity of the second DCI format( See details of paragraph 0016 and paragraph 0006 lines 15-48 and See details of paragraphs 0017 to 0023).
Claims 2-4,6,7,9-14,16,17,18,anc 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
In the remarks of 4/28/2026, applicant traverses the rejection under 35 USC 103(a). The traversal is based on the ground that the MPEP expressly cautions against such reasoning. As stated in MPEP § 2145(X)(A), "the combination of two or more references is 'hindsight' because 'express' motivation to combine the references is lacking." Here, Guan does not contain any suggestion or motivation to incorporate Chen's design. Nor does Chen provide any teaching that would have led a person of ordinary skill in the art to modify Guan to achieve the claimed features, and In other words, the mere fact that Chen discloses a carrier aggregation topology is not a sufficient motivation absent a clear reason in the prior art to apply it in the context of Applicant's claimed apparatus. Accordingly, the proposed combination is only possible with impermissible hindsight. The record shows no teaching, suggestion, or motivation in Guan or Chen that would have led to the aforementioned features of claim 1
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
9. THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANG T TON whose telephone number is (571)272- 3171. The examiner can normally be reached Monday to Friday 5:30 AM to 3:00 PM.
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/DANG T TON/
Primary Examiner, Art Unit 2476
/D.T.T/
Primary Examiner, Art Unit 2476
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