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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Applicant’s arguments filed 12 December 2025 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sun and Barakat.
Claim Objections
Claim 16 is objected to because the claim lacks a period. Appropriate correction is required.
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.
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Claims 1, 4-9 and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,395,929 in view of Fujishiro et al. (US 2019/0174570), Barakat et al. (US 2014/0200040) and Xu et al. (US 2013/0308465). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 4-9 and 13-19, the parent recites features such as operating in a grant-free uplink transmission scheme. However, the claims additionally recite features such as a time window, an RA-RNTI or a C-RNTI. In removing the additional features, the scope of the claims is merely broadened by eliminating elements and their functions. It has been held that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (1963); In re Nelson, 95 USPQ 82 (CCPA 1952); and In re Eliot, 25 USPQ 111 (CCPA 1935). Also note Ex parte Rainu, 168 USPQ 365 (Bd. App. 1969) (omission of a reference element whose function is not needed would be obvious to one skilled in the art). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention (or at the time the invention was made, pre-AIA ) to not recite the additional features.
Further, the patent fails to recite an RRC inactive or idle state related to DRX as claimed. Fujishiro and Barakat teach and make obvious reciting an RRC inactive (idle) state related to DRX as claimed in the patent on the same grounds as the rejections under 35 U.S.C. 103 below.
Further, the patent fails to recite a paging cycle as claimed. Xu teaches and make obvious reciting a paging cycle as claimed in the patent on the same grounds as the rejection under 35 U.S.C. 103 below.
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.
Claims 1, 5, 8-9, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2018//0092125 as supported by U.S. Provisional application No. 62/399,148) in view of Fujishiro et al. (US 2019/0174570) and Barakat et al. (US 2014/0200040). For dependent claims herein, the motivation to combine is the same as the parent claim unless otherwise noted.
Regarding claim 1, Sun discloses a method, comprising: while in RRC inactive or idle state (fig. 5, steps 530-565; fig. 6, steps 620-675; paras. 62 and 68), wherein a user equipment is configured to operate according to a grant-free uplink transmission scheme (step 535 or 625) and is able to receive acknowledgement in response to an uplink data transmission (step 540 or 630).
However, the embodiment of Sun fails to disclose wherein a user equipment is reachable by a mobile terminating data notification, but another embodiment discloses this feature (para. 39; note: paging during an RRC inactive state). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have an RRC inactive state wherein a user equipment is reachable by a mobile terminating data notification in the embodiment of Sun. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, providing data notifications for a device as is known in the art (Sun, para. 39; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Further, Sun fails to disclose an RRC inactive state in response to an instruction from a radio access network node. However, Fujishiro discloses a command to change to an RRC low activity state (fig. 6, steps S1 and S6; fig. 7, steps S11 and S15; paras. 53 and 71). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have an RRC inactive state in response to an instruction from a radio access network node in the invention of Sun. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, providing device control as is known in the art (Fujishiro, figs. 6-7 and para. 53 and 71; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Further, Sun in view of Fujishiro fails to teach and make obvious in response to detecting at least one condition, wherein the at least one condition is a paging occasion in a paging cycle, entering a discontinuous reception active state for monitoring for one or more messages intended for the user equipment. Barakat discloses in an RRC inactive state and in response to detecting at least one condition, wherein the at least one condition is a paging occasion in a paging cycle (fig. 5; paras. 57-58; note: paging monitoring during an RRC inactive (idle) state; note: paging occasions occurring in conjunction with a DRX cycle; note: paging channel at specific scheduled periodic occasions), entering a discontinuous reception active state for monitoring for one or more messages intended for the user equipment (paras. 57-58; note: monitoring for paging during an active portion of a DRX cycle). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have in response to detecting at least one condition, wherein the at least one condition is a paging occasion in a paging cycle, entering a discontinuous reception active state for monitoring for one or more messages intended for the user equipment in the invention of Sun in view of Fujishiro. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, implementing timed communication operations and providing power savings as is known in the art (Barakat, paras. 57-58; note: DRX for powering down components and, alternatively, performing periodic communication; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Regarding claim 5, Sun in view of Fujishiro and Barakat teaches and makes obvious the method according to claim 1, wherein the monitoring for one or more messages comprises monitoring a mobile terminating data notification (Barakat, paras. 57-58; note: monitoring for paging).
Regarding claim 8, Sun in view of Fujishiro and Barakat teaches and makes obvious the method according to claim 1, wherein the user equipment is operating in a fifth generation or new radio network (Sun, para. 25), last sentence).
Regarding claims 9, 16 and 19, these limitations are rejected on the same ground as claims 1, 5 and 8, respectively. In addition, Sun discloses the apparatus comprises a processor and a memory including computer code (fig. 3 and paras. 48-49) configured to perform the method of claims 1, 5 and 8.
Claims 4, 6, 13-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sun in view of Fujishiro and Barakat as applied to claim 1 or 9 above, and further in view of Xu et al. (US 2013/0308465).
Regarding claims 4, 6 and 14, Sun in view of Fujishiro and Barakat fails to teach and make obvious the method according to claim 1, wherein the user equipment is configured to restart a timer in response to determining that there is a message intended for the user equipment, the method according to claim 1, wherein the monitoring for one or more messages comprises monitoring a physical downlink control channel, and the method according to claim 4, wherein the timer comprises a discontinuous reception inactivity timer
Regarding claims 13, 15 and 17, these limitations are rejected on the same ground as claims 4, 14 and 6, respectively.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sun in view of Fujishiro, Barakat and Xu as applied to claim 6 or 17 above, and further in view of Gao (US 2010/0128646).
Regarding claim 7, Sun in view of Fujishiro, Barakat and Xu fails to teach and make obvious the method according to claim 6, wherein the monitoring the physical downlink control channel comprises monitoring for a paging radio network temporary identifier (P-RNTI) in order to check for the presence of a paging message. However, Gao discloses monitoring a physical downlink control channel by monitoring for a paging radio network temporary identifier (P- RNTI) in order to check for the presence of a paging message (para. 80, second and third sentences; para. 81, first sentence; para. 87, first sentence; fig. 6). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have monitoring the physical downlink control channel further comprise monitoring for a paging radio network temporary identifier (P- RNTI) in order to check for the presence of a paging message in the invention of Sun in view of Fujishiro, Barakat and Xu. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, allowing a UE to determine whether or not data is destined for the UE (Gao, paras. 80-81 and 87; fig. 6; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Regarding claim 18, these limitations are rejected on the same ground as claim 7.
Conclusion
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/Kevin C. Harper/
Primary Examiner, Art Unit 2462