DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The non-statutory 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 non-statutory 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 86-92 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 34, 36, and 38-42 of U.S. Patent No. 11,990,993. Although the conflicting claims are not identical, they are not patentably distinct from each other because some of the limitations in the instant application claim 86 has been eliminated or modified some words with the same meaning from patent claim 34 as seen in the bold and italic in the tables below. It has been held that the 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 (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.
Application claim 86: Patent claim 34:
An apparatus for wireless communication at a user equipment (UE), comprising:
34. An apparatus for wireless communications at a user equipment (UE), comprising:
one or more memories storing processor-executable code; and
a processor, memory coupled with the processor;
one or more processors coupled with the one or more memories and operable to execute the code to cause the UE to:
instructions stored in the memory and executable by the processor to cause the apparatus to:
identify, for an uplink channel, a plurality of rate matching resources that correspond to one or more downlink signals scheduled for transmission via a downlink channel; and
determine a rate matching configuration for one or more of an uplink channel or a downlink channel, wherein the uplink channel at least partially overlaps in time and frequency with the downlink channel; and
determine a plurality of first rate matching resources of the uplink channel, a plurality of second rate matching resources of the downlink channel, or a combination thereof, based at least in part on the rate matching configuration;
transmit a message via the uplink channel, the uplink channel excluding the plurality of rate matching resources when the message is transmitted.
a transmitter configured to transmit a first message on the uplink channel, wherein the uplink channel excludes the plurality of first rate matching resources; and
a receiver configured to receive a second message on the downlink channel, wherein the downlink channel excludes the plurality of second rate matching resources, and wherein a reference signal is received on one or more resources of the downlink channel that correspond to the plurality of first rate matching resources excluded from the uplink channel.
As to claim 87, this claim is fully disclosed in Patent claim 36.
As to claim 88, this claim is fully disclosed in Patent claim 38.
As to claim 89, this claim is fully disclosed in Patent claim 39.
As to claim 90, this claim is fully disclosed in Patent claim 40.
As to claim 91, this claim is fully disclosed in Patent claim 42.
As to claim 92, this claim is fully disclosed in Patent claim 41.
Allowable Subject Matter
Claims 93 and 95 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 96-103 and 105 are allowed.
Conclusion
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Date: 07/24/2026
/PHIRIN SAM/Primary Examiner, Art Unit 2476
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