DETAILED ACTION
This action is in response to the Applicant’s preliminary amendment filed on July 9, 2025. As set forth therein, claims 1-20 are cancelled and New claims 21-40 have been added.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 9, 2024, May 30, 2024 and July 9, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 21-27 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-14 of U.S. Patent No. 11,943,742 in view of Yao et al. US Patent Pub. 2023/0155873 or Lin et al. US Patent Pub. 2020/0100209.
18/615,818
11,943,742
21. A wireless device comprising one or more processors and memory storing instructions that, when executed by the one or more processors, cause the wireless device to:
8. A wireless device comprising: one or more processors; and memory storing instructions that, when executed by the one or more processors, cause the wireless device to perform a process comprising:
receive one or more radio resource control (RRC) messages comprising configuration parameters of a cell, wherein the configuration parameters comprise:
receiving parameters comprising:
a first number of physical downlink control channel (PDCCH) monitor occasions (MOs),per synchronization signal block (SSB) of SSBs, in a paging occasion;
a first number of physical downlink control channel (PDCCH) monitor occasions (MOs), per synchronization signal block (SSB) of SSBs, in a paging occasion;
a parameter indicating a quantity of the SSBs;
a first starting location indication of first PDCCH MOs of a paging early indication (PEI) occasion; and
a first starting location indication of first PDCCH MOs of a paging early indication (PEI) occasion; and
a second starting location indication of second PDCCH MOs of the paging occasion;
a second starting location indication of second PDCCH MOs of the paging occasion;
receive a PEI based on monitoring a second number of the first PDCCH MOs of the PEI occasion, wherein:
receiving, a PEI, based on monitoring a second number of the first PDCCH MOs of the PEI occasion, wherein
the second number of the first PDCCH MOs starts based on the first starting location indication; and
the second number is determined based on: the first number; and
the second number is determined based on: the first number; and
the quantity of the SSBs; and
a quantity of the SSBs; and
monitor, in response to the PEI indicating to monitor the paging occasion,
a third number of the second PDCCH MOs of the paging occasion,
monitoring, in response to the PEI,
a third number of the second PDCCH MOs of the paging occasion,
wherein: the third number of the second PDCCH MOs starts based on the second starting location indication; and
the third number is equal to the second number.
wherein the third number is equal to the second number.
The Examiner finds that the claims of the instant application are directed to the same invention and are similar to the claims of the US Patent 11,943,742 and thus are not patentably distinct from each other. For example, the Examiner finds that at least claim 21 is substantially the same as claim 8 of U.S. Patent 11,943,742 except claim 21 of the instant application recites additional elements not specifically set forth in claim 8 of U.S. Patent 11,943,742. Nonetheless, these additional elements are not patentably distinct and/or would have been obvious to a person of ordinary skill in the art.
For example, claim 21 of the application recites the wireless device to: receive one or more radio resource control (RRC) messages comprising configuration parameters of a cell, wherein the configuration parameters whereas claim 8 recites the wireless device to receive parameters. The Examiner notes however, that claim 9 of the ‘742 patent states that the parameters indicated that the PEI is configured with the wireless device in a radio resource control idle or inactive state. Thus, the ‘742 patent confirms that the parameters can be configured in an RRC message. Thus, this additional limitation is not patentably distinct. See also the below teachings from Yao.
In addition, claim 21 recites “a parameter indicating a quantity of the SSBs”. The Examiner notes that claim 8 of the ‘742 patent also recites that the parameters comprises “a quantity of the SBBs”. Thus both claim sets pertain to an indication of a quantity of the SSBs. Claim 8 of the ‘742 patent is already directed to the reception of parameters and therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the quantity of the SSBs since the parameters include the paging early indication occasion and the quantity of the SSBs relies on quantity of the SSBs. Therefore, a person of ordinary skill in the art would have found it obvious to include an indication of a quantity of the SSBs since it is directed to the PEI which is part of the received parameter.
In addition, the Examiner notes that claim 21 recites “monitor, in response to the PEI indicating to monitor the paging occasion”; whereas claim 8 of the ‘742 patent recites “monitoring, in response to the PEI”. The Examiner finds that the end result is both claim sets will monitor, in response to the PEI since it is a claimed function for both claim sets. Thus, further clarifying that the PEI indicates to monitor the paging occasion, is not a patentable distinction since it is broader than the recitation set forth in the ‘742 patent.
Therefore, the Examiner finds that that the above differences are rendered obvious based on then limitations recited in claims 8 and 9 of the ‘742 patent.
In addition, with respect to “the second number of the first PDCCH MOs starts based on the first starting location indication” and “the third number of the second PDCCH MOs starts based on the second starting location indication” the Examiner finds that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to start the second number based on the first starting location and the third number based on the second starting location.
For example, the Examiner finds that Yao is directed to a method for determining PDCCH search space monitoring configuration for a wireless device that specifies PDCCH monitoring. See the abstract. As explained in paragraph [0087], Yao discloses that a UE may be configured to perform PDCCH monitoring with radio resource configuration (RRC). See also paragraph [0112] which discloses the transmission of information to the UE (wireless device) uses RRC signaling.
As further explained in paragraph [0121] of Yao, the PDCCH monitoring locations can be located in any OFDM symbol of a slot-group and the OFDM symbols between the start of different PDCCH MO is defined. Thus, the initial PDCCH MO location sets where each additional PDCCH MO (2nd, 3rd etc.) will be located. See figures 12 and 15 and paragraph [0107]. The Examiner notes that the from the start of different PDCCH MOs, the number of symbols between them is set and thus each starting location is based on the previous initial location. Yao at paragraph [0106] discloses that the information that the UE is configured with includes information that specifies the location of the PDCCH monitoring occasions (MOs). Thus, the location of each MO is identified. See also paragraph [0125-0126] and figures 12-17.
In the alternative, Lin is directed to a paging method for determining locations of a plurality of monitor occasions based on one NRUP rule. See the abstract. With reference to paragraphs [0058-0060], Lin discloses that the locations of a plurality of monitor locations are determined. In addition, Lin discloses that the initial monitor location iMO1 is determined and afterwards additional monitor locations (aMO1) are determined. Lin teaches the initial monitor occasion is a starting point and the additional monitor occasions start after the initial monitor occasion. Thus, Lin discloses tht it was known for second or third monitor locations to be based on an initial Monitor Occasion.
Therefore, the Examiner finds that it would have been obvious to a persons of ordinary skill in the art before the effective filing date of the claimed invention for the “second number of the first PDCCH MOs starts based on the first starting location indication” and “the third number of the second PDCCH MOs starts based on the second starting location indication” as disclosed by either Yao or Lin. As explained in the ‘742 patent, the locations of the first and second MO are already determined and provided in the received parameter and thus it would have been predictable to a person of ordinary skill in the art to derive a relationship between the starting locations of each of the second and third MOs relative to the initial MO. Thus, by setting the initial MO, a person of ordinary skill in the art would have found it obvious to also set the second, third MOs based on the initial MO since the locations of the MOs are already provided to the UE as disclosed by the ‘742 patent. As explained by both Yao and Lin the additional MOs are known in the prior art to be based on the initial staring locations of the first MO.
Therefore, for the above reasons, the claims of the instant application are not patentably distinct from the claims of the ‘742 patent.
The Examiner also finds that claims 22-27 correspond to claims 9-14 respectively of the ‘742 patent and therefore are not patentably distinct.
Dependent claims 28-40 are also not patentably distinct in view of the ‘742 patent and either Yao and Lin on the ground of nonstatutory double patenting based upon further teachings with respect to Xiong et al. US Patent Pub. 2024/0172272.
The Examiner notes that dependent claims 28-40 are based on limitations which pertain to a wireless device being a reduced capability (Redcap) type of device and further wherein a first initial downlink bandwidth part is configured for a ‘Redcap’ wireless device type and a second bandwidth park configured not for a Redcap type of wireless device. Xiong discloses that it was known for RedCap and non-RedCap UEs to be provided with a bandwidth part (see paragraph [0071] and [0149]) and as set forth in the ‘742 patent, the wireless device is configured to monitor the PDCCH MOs. See also the above teachings with respect to Yao with respect to the search space association with the PDCCH MOs. Therefore, it would have been further obvious to a person of ordinary skill in the art to include a bandwidth part for Redcap and non-Redcap UEs. The Examiner finds that Xiong et al. discloses that it was known to differentiate between Redcap UEs and non-Redcap UEs. As set forth by Xiong this would help identify UEs that does or doesn’t support specific type of messages such as Msg3 PUSCH repetition in and in coverage enhanced condition. Thus, it would have been obvious to identify these types of devices in order to determine the capabilities of each device. In addition, as per claims 32-34 and 38-40 also correspond to claims 12 and 14 of the ‘742 patent and are thus not patentably distinct for the reason set forth above.
Therefore, the Examiner finds that the claims of the instant application are not patentably distinct over the ‘742 patent for the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OVIDIO ESCALANTE whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday from 6:00 AM to 3:00PM.
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/Ovidio Escalante/
Primary Examiner, Art Unit 3992