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 .
Response to Arguments
Applicant's arguments filed April 14, 2026 have been fully considered but they are not persuasive.
Regarding claims 1, 5, 8, and 10, first, on page 6, Applicant argues, “Applicant continues to point out that the shaping configuration seems to be a mechanism used to prevent the UE from accessing the system to send background data during a time period. While it is not clear what exactly is included in the shaping configuration, there is nothing that teaches the required "periodic update timer" which is used to explicitly trigger the UE to send a message to the network after the timer has been expired.
There is nothing in Hsu that teaches the required "periodic update timer" which is used to explicitly trigger the UE to send a message to the network after the timer has expired, even if the UE would not otherwise want to send a message. As such, one of ordinary skill in the art would not be motivated to add such a feature.”
The Examiner respectfully disagrees with the above argument. First of all, the Applicant keeps arguing on the shaping step while the Office Action does not cite this to rejection any limitations. The shaping step is an extra step in Hsu that is not relevant to the claim limitations. The Office Action is focused on Hsu teaching related to the claimed limitations. Second, contrary to the above argument, Hsu clearly describes that if the timer is expired, the UE is released, and the release message relies on a proper RRC release timer controlled by the eNB (paragraph [0008]). However, for an explicitly teaching, Examiner cited Kim for this limitation. That is, receiving an update message from the UE upon expiry of the periodic updating timer. Therefore, the argument, “there is nothing that teaches the required "periodic update timer" which is used to explicitly trigger the UE to send a message to the network after the timer has been expired” and “As such, one of ordinary skill in the art would not be motivated to modify the teachings of Hsu to address the problems solved by the claims” is not persuasive.
Furthermore, the Examiner respectfully submits that the eNB commands the UE to go RRC_IDLE MODE (in active state) by sending a release message to the UE (fig. 8, step 801, paragraph [0005]).
On page 7, the Applicant further argues, “While Hsu discusses some timers, it fails to teach the claimed timer. One major difference is what the timer is used for, i.e., the actions in the UE when using the timer. Also, the logic in selecting what value to set for the timer could be different since the timer has different purposes. Hsu fails to teach any of these features. Hakkinen is not alleged to and does not remedy this deficiency. And no other alleged reference teaches these features either. Therefore, claim 1 is allowable over the combination of Hsu and Hakkinen with any other reference.”
The Examiner respectfully submits Hakkinen is not cited in this Office Action.
Additionally, on page 7-8, the Application argues, “In contrast to the claimed features, Kim teaches the standard use of "a periodic access (or location update) relater timer, for example, a T3312 timer or a T3312 extended timer or a T3412 timer or a T3412 extended timer."6 None of these timers are configured in a release message "wherein the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer."7 These types of timers are different than types of timers referred to in Hsu. By combining these inconsistent features from various references, the Patent Office used the Applicant's disclosure as a roadmap for combining unrelated features. The only motivation to combine the features of claim 1 is found in Applicant's disclosure. Such a reconstruction is impermissible hindsight. "[I]mpermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art."8 When a judgment of obviousness takes into account "knowledge gleaned only from applicant's disclosure,"9 such a reconstruction is proper.
Applicant respectfully submits that the Patent Office has not provided any reasonable motivation to combine that was based only on knowledge which was within the level of ordinary skill at the time the claimed invention was made. As discussed above, the alleged motivations provided by the Patent Office are either technically incorrect or lacking sufficient specificity. As such, since there is no reason or motivation for a person of ordinary skill in the art at the time of invention to combine these separate teachings, the combination of Hsu and Kim is improper. The Patent Office did not rebut the previous argument that Kim's timers are NAS-level and not RAN-configured via release signaling. Therefore, claim 1 is allowable.”
The Examiner respectfully disagrees with the above argument. The Office Action clearly provided the use of receiving an update message from the UE upon expiry of the periodic updating timer as taught by Kim into Hsu in order to avoid dropping of user data packets, and to reduce delay and congestion. The Examiner respectfully submits that the Applicant’s assertion that the only motivation to combine the features of claim 1 is found in Applicant’s disclosure is, technically, incorrect and random analysis. If an update message would not be received after the expiry of the periodic update timer, the data that has been stored will be discarded or dropped or more data will be stored which leads to congestion and delay of communication. Therefore, the argument is not persuasive.
Regarding claims 2-4, 6-7, 9, and 11, the arguments are based on their dependencies.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 13-16, and 19-20 of U.S. Patent No. 11,950,322 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim limitations of the claims of the instant application are included in and/or broader than the US patent.
Instant Application
1. A method of operation of a Radio Access Network, RAN, base station in a cellular communications network, comprising: sending, to a User Equipment, UE, a release message for moving the UE to a RAN controlled inactive state, wherein the release message comprises a configuration of a timer value T for a periodic updating timer.
2. The method of claim 1 wherein the periodic updating timer is a timer utilized by the UE for periodic updates when the UE is in a RAN inactive state.
3. The method of claim 1 wherein the timer value T is a first value if the RAN base station is a macro node and a second value if the RAN base station is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value.
4. The method of claim 1 further comprising: releasing a connection with the UE; and after releasing the connection with the UE, receiving an update message from the UE upon expiry of the periodic updating timer.
5. A Radio Access Network, RAN, base station for a cellular communications network, the RAN node comprising: one or more transmitters; and processing circuitry configured to: send, to a User Equipment, UE, a release message for moving the UE to a RAN controlled inactive state, wherein the release message comprises a configuration of a timer value T for a periodic updating timer.
6. The RAN base station of claim 5 wherein the timer value T is a first value if the RAN base station is a macro node and a second value if the RAN base station is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value.
7. The RAN base station of claim 5 wherein the RAN base station is further operable to: release a connection with the UE; and after releasing the connection with the UE, receive an update message from the UE upon expiry of the periodic updating timer.
8. A method of operation of a User Equipment, UE, in a cellular communications network, comprising: receiving, from a Radio Access Network, RAN, base station, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE, wherein the release message comprises a configuration of a timer value T for a periodic updating timer; starting the periodic updating timer at entry of the RAN controlled inactive state; and upon expiry of the periodic updating timer, sending a periodic update message.
9. The method of claim 8 further comprising, upon transitioning from the RAN controlled inactive state to an active state, rebuilding the RAN context of the UE if needed.
10. A User Equipment, UE, for a cellular communications network, the UE comprising: one or more transmitters; one or more receivers; and processing circuitry configured to: receive, from a Radio Access Network, RAN, base station, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE, wherein the release message comprises a configuration of a timer value T for a periodic updating timer; start the periodic updating timer at entry of the RAN controlled inactive state; and upon expiry of the periodic updating timer, send a periodic update message.
11. The UE of claim 10 further comprising, upon transitioning from the RAN controlled inactive state to an active state, rebuilding the RAN context of the UE if needed.
US 11,950,322
1. A method of operation of a Radio Access Network, RAN, node in a cellular communications network, comprising: sending, to a User Equipment, UE, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE and in the RAN node, wherein the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer; and receiving an update message from the UE upon expiry of the periodic updating timer.
5. The method of claim 1 wherein the periodic updating timer is a timer utilized by the UE for periodic updates when the UE is in a RAN inactive state.
6. The method of claim 1 wherein the timer value T is a first value if the RAN node is a macro node and a second value if the RAN node is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value.
7. The method of claim 1 further comprising: releasing a connection with the UE; and after releasing the connection with the UE, receiving the update message from the UE upon expiry of the periodic updating timer.
8. A Radio Access Network, RAN, node for a cellular communications network, the RAN node comprising: one or more transmitters; and processing circuitry configured to: send, to a User Equipment, UE, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE and in the RAN node, wherein the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer; and receive an update message from the UE upon expiry of the periodic updating timer.
13. The RAN node of claim 8 wherein the timer value T is a first value if the RAN node is a macro node and a second value if the RAN node is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value.
14. The RAN node of claim 8 wherein the RAN node is further operable to: release a connection with the UE; and after releasing the connection with the UE, receive the update message from the UE upon expiry of the periodic updating timer.
15. A method of operation of a User Equipment, UE, in a cellular communications network, comprising: receiving, from a Radio Access Network, RAN, node, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE and in a RAN base station, where the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer; starting the periodic updating timer at entry of the RAN controlled inactive state; and upon expiry of the periodic updating timer, sending a periodic update message to the RAN node as triggered by the expiry of the periodic updating timer.
16. The method of claim 15 further comprising, upon transitioning from the RAN controlled inactive state to an active state, rebuilding the RAN context of the UE if needed.
19. A User Equipment, UE, for a cellular communications network, the UE comprising: one or more transmitters; one or more receivers; and processing circuitry configured to: receive, from a Radio Access Network, RAN, node, a release message for moving the UE to a RAN controlled inactive state, during which state a UE RAN context is stored in the UE and in a RAN base station, where the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer; start the periodic updating timer at entry of the RAN controlled inactive state; and upon expiry of the periodic updating timer, send a periodic update message to the RAN node as triggered by the expiry of the periodic updating timer.
20. The UE of claim 19 further comprising, upon transitioning from the RAN controlled inactive state to an active state, rebuilding the RAN context of the UE if needed.
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.
Claims 1-2, 4-5, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US 2015/0009816 A1) in view of Kim et al. (US 10,015,621 B2).
Regarding claim 1, Hsu discloses a method of operation of a Radio Access Network, RAN, node in a cellular communications network, comprising: sending, to a User Equipment, UE, a release message for moving the UE to a RAN controlled inactive state (e.g. fig. 7; paragraph [0049]-[0050]; [0005]; [0008]; [0038]-[0039]; [0053]-[0054]; and so on, clearly illustrates the base station or eNB 702 transmits a release message to the UE 701 for the UE to go or change into inactive mode), wherein the release message comprises a configuration of a timer value T for a periodic updating timer (such as paragraph [0053]-[0054]; [0049]-[0050]; [0038]-[0039], explaining that the periodic update timer, set by the eNB 702, is included in the release message).
Hsu doesn’t teach receiving an update message from the UE upon expiry of the periodic updating timer.
Kim teaches receiving an update message from the UE upon expiry of the periodic updating timer (col. 19, lines 34-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use receiving an update message from the UE upon expiry of the periodic updating timer as taught by Kim into Hsu in order to avoid dropping of user data packets, and to reduce delay and congestion.
Regarding claims 5, the claim includes features identical to the subject matter mentioned in the rejection to claim 1. The claim is a mere reformulation of claim 1 in order to define the corresponding Radio Access Network, RAN. The rejection to claims 1 is applied hereto.
Regarding claim 2, Hsu discloses the periodic updating timer is a timer utilized by the UE for periodic updates when the UE is in a RAN inactive state ([0049]-[0050]; [0038]-[0039]; [0053]-[0055]).
Regarding claim 4 and 7, as applied above, Hsu further discloses comprising: releasing a connection with the UE. However, Hsu doesn’t disclose after releasing the connection with the UE, receiving an update message from the UE upon expiry of the periodic updating timer.
Kim teaches after releasing the connection with the UE, receiving an update message from the UE upon expiry of the periodic updating timer (col. 18, line 47-col. 19, line 46 and table 7).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use after releasing the connection with the UE, receiving an update message from the UE upon expiry of the periodic updating timer as taught by Kim into Hsu in order to avoid dropping of user data packets, and to reduce delay and congestion.
Regarding claim 8, Hsu discloses a method of operation of a User Equipment, UE, in a cellular communications network (e.g. figs. 7), comprising: receiving, from a Radio Access Network, RAN, node, a release message for moving the UE to a RAN controlled inactive state (e.g. fig. 7; paragraph [0049]-[0050]; [0005]; [0008]; [0038]-[0039]; [0053]-[0054]; and so on, clearly illustrates a release message is received by the UE 701 from the base station or eNB 702 for the UE to go into inactive mode), where the release message comprises a configuration of a timer value T set by the RAN node for a periodic updating timer (such as paragraph [0053]-[0054]; [0049]-[0050]; [0038]-[0039], explaining that the periodic update timer, set by the eNB 702, is included in the release signaling); starting the periodic updating timer at entry of the RAN controlled inactive state (such as paragraph [0049]-[0050]; [0038]-[0039]; [0053]-[0055]; and etc. illustrating the start of the periodic update timer, at the start and re-start of the eNB controlled inactivity time); upon expiry of the periodic updating timer, sending a periodic update message (figs. 7-8; paragraph [0038]; [0053]-[0054]; [0049]-[0050]; and so on describing upon expiration of the periodic update timer, the UE sends to the eNB an initiation of a connection message and/or request).
Hsu doesn’t explicitly disclose the message to the RAN node is as triggered by the expiry of the periodic updating timer.
Kim teaches the message to the RAN node is as triggered by the expiry of the periodic updating timer (col. 19, lines 34-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the message to the RAN node is as triggered by the expiry of the periodic updating timer as taught by Kim into Hsu in order to avoid dropping of user data packets, and to reduce delay and congestion.
Regarding claim 10, the claim includes features identical to the subject matter mentioned in the rejection to claim 8. The claim is a mere reformulation of claim 8 in order to define the corresponding User Equipment, UE, for a cellular communication network. The rejection to claim 8 is applied hereto.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu in view of Kim, and further in view of Grayson et al. (US 2016/0105865 A1).
Regarding claim 3 and 6, as applied above, the modified communication of Hsu discloses the timer value T. However, the modified communication of Hsu doesn’t disclose the timer value T is a first value if the RAN node is a macro node and a second value if the RAN node is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value.
Grayson teaches the timer value T is a first value if the RAN node is a macro node and a second value if the RAN node is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value (paragraph [0044]-[0046]; [0067]; [0089]; and so on).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the timer value T is a first value if the RAN node is a macro node and a second value if the RAN node is a Low Power Node, LPN, having lower transmit power than a macro node, the second value being less than the first value as taught by Grayson into Hsu in view of Kim in order to improve quality of service and utilization of resource.
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu in view of Kim, and further in view of Rayavarapu (US2013/0260810 A1).
Regarding claim 9 and 11, as applied above, Hsu further discloses comprising, upon transitioning from the RAN controlled inactive state to an active state. However, Hsu doesn’t disclose rebuilding the RAN context of the UE if needed upon the transitioning.
Rayavarapu teaches rebuilding the RAN context of the UE if needed upon the transitioning (e.g. paragraph [0200]-[0201]; [0204]; [0206]-[0208]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use rebuilding the RAN context of the UE if needed upon the transitioning as taught by Rayavarapu into Hsu in view of Kim in order to improve quality and efficiency of the communication.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIBROM T HAILU whose telephone number is (571)270-1209. The examiner can normally be reached M-F 8:00 AM to 5:30 PM.
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/KIBROM T HAILU/Primary Examiner, Art Unit 2461
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