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 12/26/2025 have been fully considered but they are not persuasive.
Nonstatutory Double Patenting Rejection: Page 11 of the Remarks, Applicant argued: Applicant would point to the added features of, for example, the random access procedure being performed for each of at least one network slice and the configuration of the parameter related to the random access priority on a per-network-slice basis. Applicant would therefore argue that the added features render the independent claims of the instant application distinguishable over the '696 patent.” Examiner respectfully disagrees. Patent ‘696 recites: performing a random access procedure for the base station based on the information on a random access resource and the slicing-related information, wherein the parameter related to a random access priority is set slice set-specifically. Thus, the added limitation is clearly recited in ‘696 patent claim 1; Therefore, the nonstatutory double patenting rejection is maintained.
35 U.S.C 102(a)(1) and 102(a)(2) Rejections:
Regarding claims 1, 6, 11 and 16, pages 11-12 of the Remarks, Applicant argued:
“…Damnjanovic is silent on the very concept of network slicing.
On the other hand, the pending claims describe determining and applying random access behavior based on network slicing, and particularly based on which among one or more specific network slices is being accessed. It should be very well appreciated that determining random access parameters based on network slices is not directly related to a UE's class.
A network slice is an end-to-end (E2E) logical network of a UE and a counterpart node, so that a given UE may simultaneously access one or more network slices. As described in the present disclosure, network slicing technology features the realization of multiple software- defined virtual networks over general-purpose physical hardware. According to the present disclosure, when network slicing is applied, random access is handled in a slice-aware manner, whereby the UE may perform a random access procedure for each independent slice. Network slicing serves as a technical mechanism for satisfying distinct quality-of-service (QoS) requirements simultaneously, through the flexible isolation and allocation of network resources based on specific traffic characteristics such as ultra-low latency, broadband, or massive connectivity. Thus, the claimed method is useful for prioritizing random access, because different slices/services can have different random access requirements.” Examiner believes that this argument is not relevant because it is directed to subject matter not found in the independent claims. The independent claims did not define a network slice that has characteristics as shown in the arguments. Instead, the claims only recite “slicing-related information which determines a parameter related to a random access priority.” Therefore, Examiner’s interpretation of the random access priority based on UE classification was reasonable and appropriate.
Applicant’s arguments with respect to claims 3, 8, 13 and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-4, 6-9, 11-14 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7; Claims 5, 10, 15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 11 of U.S. Patent No. 11,985,696 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 6, 11 and 16 of the present application merely broaden the scope of the US 11,985,696 B2 patented claims 1 and 7 by splitting off to multiple claims.
It has been held that the omission an element and its functions is an obvious expedient if the remaining elements perform the same as before. In re Karlson, 136 USPQ 184 (CCPA). Also, note Ex parte Rainu, 168 USPQ 375 (Bd.App.1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-7, 9-12, 14-17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Damnjanovic et al, US Pub. 2010/0309877 A1, hereinafter referred to as Damnjanovic.
Regarding claims 1, 6, 11 and 16, Damnjanovic discloses techniques for accessing a wireless communication system (fig. 7), wherein a User Equipment (UE) in the system comprising: a receiver (fig. 7, transceiver 754), receiving from a base station information on a random access preamble and slicing-related information which determines a parameter related to a random access priority (fig. 9, 612, and p. [0096]: an apparatus 900 for transmitting random access signaling. Apparatus 900 includes means for determining at least one parameter value for at least one transmission parameter for random access signaling based on a particular UE class); and a processor (fig. 7, processor 770) performing, for each of the at least one network slice, a random access procedure for the base station based on the information on the random access preamble and the slicing-related information (fig. 9, 914: sending the random access signaling based on the at least one parameter value for system access); wherein the parameter related to the random access priority is configured on a per-network-slice basis (p. [0081]: the UEs may be classified into multiple classes based on their priorities, and different transmission parameter values and settings may be used for different classes of UEs. Different UE classes may be defined for different random access scenarios).
Regarding claims 2, 7, 12 and 17, Damnjanovic discloses wherein the UE receives information about the random access preamble and the slicing-related information through system information transmitted from the base station (see fig. 7, the wireless system comprises eNB 110 and UE 120).
Regarding claims 4, 9, 14 and 19, Damnjanovic discloses wherein the parameter related to the random access priority includes a parameter for a random access backoff value and a parameter for a random access transmission power offset value (abstract, [0009], [0083], [0084] and [0086]: The random access preamble may then be sent based on a target SNR value, a power ramp value, and/or a backoff time value for the particular UE class).
Regarding claims 5, 10, 15 and 20, Damnjanovic discloses wherein when the UE performs a handover from a serving cell to a target cell, the random access procedure is performed on a contention-free basis ([0039], [0047], [0052]-[0053] and [0082]: a random ID is assigned to UE to avoid collision) and a handover-related message of the base station includes at least part of the slicing-related information (fig, 5, p. [0052], [0055], and [0082]: handover to a target node).
Claim Rejections - 35 USC § 103
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.
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 3, 8, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Damnjanovic as shown above, in view of Wiberg et al (hereinafter “Wiberg”), US Pub. 2014/0079011 A1.
Regarding claims 3, 8, 13 and 18, Damnjanovic does not clearly disclose limitations recited in the claims 3, 8, 13 and 18. Wiberg discloses methods and arrangements for adapting random access resource allocations to UEs, wherein the random access preamble is one of a plurality of random access preambles, and wherein the parameter related to the random access priority is determined based on a preamble group of the plurality of random access preambles, the preamble group mapped to a frequency resource for the random access procedure (p. [0130]: The one or more mapping parameter values may then comprise one or more of: a number of groups of RA preambles defined for the cell, a number of RA preambles defined for each RA preamble group of the number of groups, a priority level defined for each RA preamble group of the number of RA preamble groups and a defined size of a RA resource allocation associated with each RA preamble group of the number of RA preamble groups; p. [0315]-[0324], and claims 34, 45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt features disclosed by Wiberg into Damnjanovic’s system in order to satisfy quality of service and customer service.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
WON, et al, US Pub. 2024/0357658 A1, discloses a method and system for accessing a network slice specific random-access channel resources pool at a user equipment.
HӦGLUND et al, US Pub. 2024/0389152 A1, discloses a method for handling access to a wireless communications network.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 THAI D HOANG whose telephone number is (571)272-3184. The examiner can normally be reached 10:30 am-18:30pm.
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, Asad Nawaz can be reached at (571) 272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THAI DINH HOANG/Primary Examiner, Art Unit 2463
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