DETAILED ACTION
RCE
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 11,943,642 in view of ISLAM (US 20180199332) and further in view of Takeda (US 20210084507).
Take an example of comparing claim 1 of pending application and claim 1 of Patent No. 11,943,642. The table below shows a direct comparison and mapping of the claims of the instant application and claims of the Patent.
As it can be seen in the table below, independent claim 1 of Patent include all the limitations of independent claim 1 of the instant application with a few wording variations. One skilled in the art would recognize that the minor word variations are obvious and they can easily be interchanged.
However, Patent No. 11,943,642 does not explicitly state the limitation: RACH preamble associated with a contention based random access procedure.
In an analogous art, Islam discloses transmitting to a base station random access channel (PRACH) associated with a contention-based random access (CBRA) procedure, based on a RACH format and a RACH resource (Par. 112, 136, “In one configuration, the base station may determine the total power of the RACH subframe 1 after correlation, and subtract the correlated power corresponding to the signal 802 to obtain an updated power of RACH subframe 1. In one configuration, the base station may transmit a RACH Msg2, i.e., a random access response message of a contention based random access procedure”, note uplink transmission indicates that the UE transmits to the base station).
It would have been obvious to one skilled in the art, before the effective filing date of the claimed invention to modify the Patent claims by incorporating the teachings of Islam in the format claimed, for the purpose of providing the base station the useful information for channel setup and using the channels according to a contention-based random access (CBRA) procedure and thus using communication resources efficiently. Further, this an example of use of known technique to improve similar devices, methods or products in the same way. MPEP 2143.
Further, the patent claim 1 does not explicitly disclose the limitation: “identifying whether the UE is configured to transmit beam failure recovery (BFR) media access control (MAC) control element (CE) in an uplink message”.
In an analogous art, Takeda discloses identifying whether the UE is configured to transmit beam failure recovery (BFR) media access control (MAC) control element (CE) in an uplink message (Par. 204, “message 3 may be a signal transmitted by using a PUSCH, based on a UL grant (message 3 grant) included in a PDSCH of message 2 (MAC CEs for a RA response) in CB-BFR. Message 3 may be a signal retransmitted by using a PUSCH, based on a UL grant with CRC-scrambled with a TC-RNTI (Temporary C-RNTI) in CB-BFR”, note that the UE transmits beam failure recovery (BFR) in the PUSCH which reads on the uplink message. Further, note that the MAC CE is for Random response in the Contention based BFR, which reads on beam failure recovery (BFR) media access control (MAC) control element (CE) in an uplink message because the message on PUSCH is an uplink channel).
It would have been obvious to one skilled in the art, before the effective filing date of the claimed invention to modify the Patent claim by incorporating the teachings of Takeda in the format claimed, for the purpose of providing the terminal ability to transmit the BFR MAC CE in the uplink message on based on the uplink grant message whenever beam failure happens, and thus reducing burden on the base station. Further, this an example of use of known technique to improve similar devices, methods or products in the same way. MPEP 2143.
The table below compares claims of the patent and claims of the instant application:
Claims of the instant application:
(Currently Amended) A method performed by a terminal in wireless communication system, the method comprising:
transmitting, to a base station, a (RACH)preamble associated with a contention-based random access (CBRA) procedure
receiving, from the base station, a random access response message in response to the RACH preamble,
wherein the random access response message includes an uplink grant;
identifying whether the ongoing CBRA procedure is initiated by beam failure recovery (BFR)and whether the terminal is configured to transmit BFR media access control (MAC) control element (CE) in an uplink message; and based on that the ongoing CBRA procedure is identified to be initiated byBFR and the terminal is identified to be configured to transmit the BFR MAC CE in the uplink message, transmitting, to the base station, the uplink message including the BFR MAC CE based on the uplink grant.
2. (Currently Amended) The method of claim 1, further comprising: identifying whether a reference signal foBFR is available or not based on pre-defined threshold, wherein the BFR MAC CE includes an identifier of the reference signal for theBFR based on that the reference signal fo BFR is available.
3. (Original) The method of claim 2, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
4. (Previously Presented) The method of The method of wherein the uplink message includes cell-network temporary identifier (C- RNTI) MAC CE based on that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
5. (Currently Amended) The method of claim 1, further comprising: receiving, from the base station, information on a timer for performingBFR.
6. (Currently Amended) A method performed by a base station in wireless communication system, the method comprising: receiving, from a terminal, a (RACH)preamble associated with a contention-based random access (CBRA) procedurRACH preamble, wherein the random access response message includes an uplink grant; and receiving, from the terminal, an uplink message including beam failure recovery (BFR) media access control (MAC) control element (CE) based on the uplink grant based on that the ongoing CBRA procedure is initiated byBFR and the terminal is configured to transmit the BFR MAC CE in the uplink message.
7. (Currently Amended) The method of claim 6, wherein the BFR MAC CE includes an identifier of a reference signal for theBFR based on that the reference signal foBFR is available.
8. (Original) The method of claim 7, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
9. (Previously Presented) The method of The method of wherein the uplink message includes cell-network temporary identifier (C- RNTI) MAC CE based on that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
10. (Currently Amended) The method of claim 6, further comprising: transmitting, to the terminal, information comprising timer for performingBFR.
11. (Currently Amended) A terminal in wireless communication system, the terminal comprising: a transceiver; and a controller coupled to the transceiver and configured to: transmit, to a base station, a (RACH)preamble associated with a contention-based random access (CBRA) procedurRACH preamble, wherein the random access response message includes an uplink grant, identify whether the ongoing CBRA procedure is initiated by beam failure recovery (BFR)and whether the terminal is configured to transmit BFR media access control (MAC) control element (CE) in an uplink message, and based on that the ongoing CBRA procedure is identified to be initiated byBFR and the terminal is identified to be configured to transmit the BFR MAC CE in the uplink message, transmitting, to the base station, the uplink message including the BFR MAC CE based on the uplink grant.
12. (Currently Amended) The terminal of claim 11, wherein the controller is further configured to: identify whether a reference signal foBFR is available or not based on pre-defined threshold, wherein the BFR MAC CE includes an identifier of the reference signal for theBFR based on that the reference signal fo BFR is available.
13. (Original) The terminal of claim 12, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
14. (Previously Presented) The terminal of The terminal of wherein the uplink message includes cell-network temporary identifier (C- RNTI) MAC CE based on that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
15. (Currently Amended) The terminal of claim 11, wherein the controller is further configured to: receive, from the base station, information comprising timer for performingBFR.
16. (Currently Amended) A base station in wireless communication system, the base station comprising: a transceiver; and a controller coupled to the transceiver and configured to: receive, from a terminal, a (RACH)preamble associated with a contention-based random access (CBRA) procedurRACH preamble, wherein the random access response message includes an uplink grant, and receive, from the terminal, an uplink message including beam failure recovery (BFR) media access control (MAC) control element (CE) based on the uplink grant based on that the ongoing CBRA procedure is initiated byBFR and the terminal is configured to transmit the BFR MAC CE in the uplink message.
17. (Currently Amended) The base station of claim 16, wherein the BFR MAC CE includes an identifier of a reference signal for theBFR based on that the reference signal foBFR is available.
18. (Original) The base station of claim 17, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
19. (Previously Presented) The base station of The base station of wherein the uplink message includes cell-network temporary identifier (C- RNTI) MAC CE based on that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
20. (Currently Amended) The base station of claim 16, wherein the controller is further configured to: transmit, to the terminal, information comprising timer for performingBFR.
Claims of the Patent No. 11943642
A method performed by a terminal in wireless communication system, the method comprising:
transmitting, to a base station, a random access preamble based on a random access procedure;
receiving, from the base station, a random access response corresponding to the random access preamble,
wherein the random access response includes an uplink grant;
identifying whether the random access procedure is initiated by beam failure recovery; and
transmitting, to the base station, an uplink message based on the uplink grant, wherein the uplink message includes beam failure recovery (BFR) media access control (MAC) control element (CE) after identifying that the random access procedure is initiated by beam failure recovery.
2. The method of claim 1, further comprising: identifying whether a reference signal for beam failure recovery is available or not based on pre-defined threshold, wherein the BFR MAC CE includes an identifier of the reference signal for the beam failure recovery in case that the reference signal for beam failure recovery is available.
3. The method of claim 2, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
4. The method of claim 1, wherein the uplink message includes cell-network temporary identifier (C-RNTI MAC CE) in case that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
5. The method of claim 1, further comprising: receiving, from the base station, information on a timer for performing beam failure recovery.
6. A method performed by a base station in wireless communication system, the method comprising:
receiving, from a terminal, a random access preamble based on a random access procedure;
transmitting, to the terminal, a random access response corresponding to the random access preamble,
wherein the random access response includes an uplink grant; and
receiving, from the terminal, an uplink message based on the uplink grant,
wherein the uplink message includes beam failure recovery(BFR) media access control (MAC) control element (CE) after identifying that the random access procedure is initiated by beam failure recovery.
7. The method of claim 6, wherein the BFR MAC CE includes an identifier of a reference signal for the beam failure recovery in case that the reference signal for beam failure recovery is available.
8. The method of claim 7, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
9. The method of claim 6, wherein the uplink message includes cell-network temporary identifier (C-RNTI MAC CE) in case that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
10. The method of claim 6, further comprising: transmitting, to the terminal, information comprising timer for performing beam failure recovery.
11. A terminal in wireless communication system, the terminal comprising: a transceiver; and a controller coupled to the transceiver and configured to: transmit, to a base station, a random access preamble based on a random access procedure, receive, from the base station, a random access response corresponding to the random access preamble, wherein the random access response includes an uplink grant, identify whether the random access procedure is initiated by beam failure recovery, and transmit, to the base station, an uplink message based on the uplink grant, wherein the uplink message includes beam failure recovery (BFR) media access control (MAC) control element (CE) after identifying that the random access procedure is initiated by beam failure recovery.
12. The terminal of claim 11, wherein the controller is further configured to: identify whether a reference signal for beam failure recovery is available or not based on pre-defined threshold, wherein the BFR MAC CE includes an identifier of the reference signal for the beam failure recovery in case that the reference signal for beam failure recovery is available.
13. The terminal of claim 12, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
14. The terminal of claim 11, wherein the uplink message includes cell-network temporary identifier (C-RNTI MAC CE) in case that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
15. The terminal of claim 11, wherein the controller is further configured to: receive, from the base station, information comprising timer for performing beam failure recovery.
16. A base station in wireless communication system, the base station comprising: a transceiver; and a controller coupled to the transceiver and configured to: receive, from a terminal, a random access preamble based on a random access procedure, transmit, to the terminal, a random access response corresponding to the random access preamble, wherein the random access response includes an uplink grant, and receive, from the terminal, an uplink message based on the uplink grant, wherein the uplink message includes beam failure recovery (BFR) media access control (MAC) control element (CE) after identifying that the random access procedure is initiated by beam failure re cove ry.
17. The base station of claim 16, wherein the BFR MAC CE includes an identifier of a reference signal for the beam failure recovery in case that the reference signal for beam failure recovery is available.
18. The base station of claim 17, wherein the reference signal comprises a channel state information-reference signal (CSI-RS).
19. The base station of claim 16, wherein the uplink message includes cell-network temporary identifier (C-RNTI MAC CE) in case that predefined condition is met, and wherein the uplink message is generated based on a priority defined in order of the C-RNTI MAC CE and the BFR MAC CE.
20. The base station of claim 16, wherein the controller is further configured to: transmit, to the terminal, information comprising timer for performing beam failure recovery.
Regarding independent claim 6, Independent claim 6 of the patent and claim 6 of the instant application are both method claims reciting features analogous to the features of the terminal claim 1 of the patent claim and claim 1 of the instant application. Thus, the same reasoning above for rejection of claim 1 under double patenting is applied to claim 6 of the instant application in view of claim 6 of the patent claim and prior arts Ma and Zheng.
Regarding independent claim 11, Independent claim 11 of the patent and claim 11 of the instant application are both method claims reciting features analogous to the features of the terminal claim 1 of the patent claim and claim 1 of the instant application. Thus, the same reasoning above for rejection of claim 1 under double patenting is applied to claim 11 of the instant application in view of claim 11 of the patent claim and prior arts Ma and Zheng.
Regarding independent claim 16 Independent claim 16 of the patent and claim 16 of the instant application are both method claims reciting features analogous to the features of the terminal claim 1 of the patent claim and claim 1 of the instant application. Thus, the same reasoning above for rejection of claim 16 under double patenting is applied to claim 16 of the instant application in view of claim 16 of the patent claim and prior arts Ma and Zheng.
Further independent claims 2-5, 7-10, 12-15 and 17-20 recites features identical to the features of claims 2-5, 7-10, 12-15 and 17-20 with a few minor wording variations, thus, they rejected. Please see the table above for claim comparison.
Response to Arguments
Applicant’s arguments submitted 11/10/2025 have been fully considered but are moot in view of new grounds of rejection.
Applicant’s amendments overcome the rejection of the claims under 35 U.S.C. § 112(a) and thus, the aforementioned rejection is withdrawn.
Applicant is invited to contact examiner and discus claim amendments during an interview in order to place claims in condition for allowance and thereby expedite prosecution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRED A CASCA whose telephone number is (571)272-7918. The examiner can normally be reached on Monday through Friday from 9 to 5. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Kathy Wang-Hurst, can be reached at (571) 270-5371. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/FRED A CASCA/ Primary Examiner, Art Unit 2644