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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 16, 2025 has been entered.
Response to Arguments
Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive because the cited prior arts in the final action, mailed on August 13, 2025, discloses the argued limitations.
Regarding the Applicant’s argument on page 6-8, the Examiner respectfully disagrees. Contrary to the Applicant’s argument, Hsu’s prohibit or release or inactivity timer is used to trigger the UE to initiate a connection request or message for uplink transmission. For example, paragraph [0038]-[0039] of Hsu states:
[0038] FIG. 4B illustrates a second triggering condition 2 (periodic access) for uplink shaping. In this example, for background traffic, a prohibit timer is used to prohibit uplink transmission until the timer expires. While the timer is running, UE buffers uplink packets and is not allowed to enter RRC Connected mode. Only when the timer is expired, the UE is allowed to initiate connection request and upload the buffered packets for uplink transmission. The prohibit timer is re-started upon buffer becomes empty and/or the UE is release to RRC Idle mode. For normal traffic type, the UE is allowed to establish connection once packet arrives regardless whether the prohibit timer is running or not.
[0039] In this example, the triggering condition for uplink transmission is based on periodic access via the prohibit timer. If the timer is configured by eNB, the eNB may assign a dedicated PRACH resource (e.g., physical resource or preamble) to enable the UE trigger contention-free random access. The value of the prohibit timer may be decided according to QoS requirement. An example is to set the value as minimum delay requirement for the union of the QoS requirement of the existing bearer. Therefore, the prohibit timer would be UE-specific and based on at least one of its running applications. If controller is an eNB, the eNB need to specify the period upon RRC release/reject. Depending on the configuration, the threshold can be applied for just one idle session or as long as the condition (e.g., background mode) is valid.
Additionally, the claimed ‘periodic update timer’ is the same as Hsu’s prohibit or release or inactivity timer because, as described in paragraphs [0038]-[0039], [0049], the timer is periodic and re-started (restarted). That is, the timer in Hsu is also periodic and updated. For example, the UE receives a timer (RRC inactivity timer) related RRC release message to move the UE to idle (step 715), and later on, in step 716 the UE sends an RRC request to the eNB. This timer is clearly related to periodic update timer because, in LTE system, a registered UE normally has to synchronize with MME periodically, e.g. periodic tracking area update (TAU) (paragraph [0059]). Furthermore, Hsu discloses that the eNB sends a release message to instruct the UE to go to an idle or inactive state (fig. 8; paragraph [0005]). Specifically, Hsu describes that the release message relies on a proper RRC release timer that is controlled by the eNB and if the timer is expired, the UE is released (paragraph [0008]). Hsu even teaches that eNB would keep UEs context (security, id) and process radio resource management (RRM) that UE (please paragraph [0004]). (Please also refer the same on page 6 of the Patent Board Decision on Feb. 9, 2023).. Although the above being true, the Examiner the cites Kim for its explicitly teaching of receiving an update message from the UE upon expiry of the periodic updating timer (col. 19, lines 34-46). Therefore, motivating to add this feature or limitation into Hsu is proper.
Regarding the Applicant’s argument that the problems addressed with these solutions are also different, since the solution that the Applicant asserts, form the specification, is not claimed, the Examiner cannot import it from the specification into the claim. Furthermore, Hsu does not necessarily need to have the same purpose or solution as the current application. However, the Examiner respectfully submits that Hsu describes the same solution. Specifically, Hsu describes that the eNB sends to the UE inactivity or prohibit or release timer, and the UE sends to the eNB a request for communication or to establish connection upon expiration of the timer (e.g. figs. 7-8; paragraph [0038]-[0039]; and so on). Additionally, Hsu describes that the context is stored in MME, the context is released when the timer expires or the UE detach, and the timer restarted upon each time the UE comes back to the network. That is, the UE connection is recovered when the UE detach from and comes back to the network while the UE is in idle and/or inactive state (e.g. please read paragraph [0049]). Therefore, the Examiner respectfully submits that both Hsu and the claims address the same solution.
Finaly, the Applicant argues, in general terms without considering the explicit reasonable motivation provided, 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. 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
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