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Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,004,080. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21, claim 1 of 080 discloses
Claim 21 of present Application
Claim 1 or 9 of 080
A method implemented by a wireless transmit/receive unit (WTRU) the method
comprising:
A method implemented by a wireless transmit/receive unit (WTRU), the method comprising:
receiving discontinuous reception (DRX) configuration parameters, the DRX
configuration parameters comprising an indication of a first DRX cycle length, an indication of a second DRX cycle length, an indication of a value for a first WTRU timer, and an indication of a value for a second WTRU timer;
receiving discontinuous reception (DRX) configuration parameters, the DRX configuration parameters comprising an indication of a first DRX cycle length, an indication of a second DRX cycle length, an indication of a first timer length, and an indication of a second timer length
(note WTRU is taught above so the timers are WTRU timers)
operating the WTRU at the first DRX cycle length;
using the first WTRU timer to trigger a transition to the second DRX cycle length;
setting the second WTRU timer based on beginning DRX operation at the second DRX
cycle length;
setting a first timer at the first timer length; determining that the first timer has expired; performing DRX using the first DRX cycle length based on determining that the first timer has expired
operating the WTRU at the second DRX cycle length;
determining that the second WTRU timer has expired; and
operating the WTRU at the first DRX cycle length based on determining that the second
WTRU timer has expired
setting a second timer at the second timer length based on beginning DRX operation at the first DRX cycle length; determining that the second timer has expired
wherein the first DRX cycle length is a multiple of the second DRX
cycle length
performing DRX using the second DRX cycle length based on determining the second timer has expired, wherein the second DRX cycle length is a multiple of the first DRX cycle length
Regarding claim 22, claim 2 of 080 discloses the DRX configuration parameters are received
via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 23, claim 2 of 080 discloses the higher layer signaling corresponds to radio
resource control (RRC) message.
Regarding claim 24, claim 3 of 080 discloses the length of the second WTRU timer
corresponds to a resume period.
Regarding claim 25, claim 4 of 080 discloses resetting one or more of the first WTRU timer or the second WTRU timer based on transmission activity.
Regarding claim 26, claim 8 of 080 discloses each of the first and second WTRU timers are
synchronized with respective first and second base station timers.
Regarding claim 27, claim 1 of 080 discloses the second DRX cycle length is a power of two
multiple of the first DRX cycle length. (Note, for example, a multiple of 2 is 2^1 or a power of 2)
Regarding claim 28, claim 15 of 080 discloses the indication of the value of the second WTRU
timer is signaled as a number of DRX cycles.
Regarding claim 29, Claim 1 or 9 of 080 disclose all elements for the same reasons as discussed with respect to claim 1, except claim 1 of 080 does not disclose a processor and memory, the
processor and memory configured to. However, it if officially noted that the use of a processor and memory to carry out steps was well known in the art before the time of the invention and therefore, ut would have been obiouvs to a person of ordinary skill in the art to use a processor and memory to carry out the steps of claims 1 or 9 of 080. The motive to combine is to use the low cost microprocessor.
Regarding claim 30, claim 2 of 080 discloses the DRX configuration parameters are received
via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 31, claim 2 of 080 discloses the higher layer signaling corresponds to radio
resource control (RRC) message.
Regarding claim 32, claim 6 of 080 discloses the indication of the first DRX cycle length is received in a first information element (IE), the indication of the second DRX cycle length is received in a second IE, the indication of the value for the first WTRU timer is received in a third IE, and the indication of the value for the second WTRU timer is received in a fourth IE.
Regarding claim 33, claim 11 of 080 discloses the length of the second WTRU timer corresponds to a resume period.
Regarding claim 34, claim 12 of 080 discloses reset one or more of the first WTRU timer or the second WTRU timer based on transmission activity.
Regarding claim 35, claim 16 of 080 discloses each of the first and second WTRU timers are synchronized with respective first and second base station timers.
Regarding claim 36, claim 7 of 080 discloses the indication of the value for the second WTRU timer is signaled as a number of DRX cycles.
Claims 37-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,004,080 in view of R2-070265 (Author Unknown, DRX Scheme, pages 1-4, Doc. No. R2-070265, 19 January 2007). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 37, Claim 1 or 9 of 080 disclose all elements for the same reasons as discussed with respect to claim 1, except it is seen that the only difference between claim 1 of 080 and claim 29 of the present application is that the steps are performed in mirror image at the base station and not the UE in the present application. In the same field of endeavor, R2-070265 discloses that the base station perfroms the mirror of operations of the UE (pages 1-2, section 2, in particular, Figs. 1 and 2 – base station performs mirror image, such as receiving the transmission from the UE, determining the DRX start/end period based on local calculations so UE and base station TX/RX at the same time, etc). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the mirroring of 265 with the system of 080 by mirroring the operations of the UE at the base station such that the base station sends the WTRU configuration the UE receives, tracks the first and second timers locally to determine when to TX/RX from the UE in the DRX and when to transition between the first and second cycle, etc. The motive to combine is to allow the base station to TX/RX at appropriate times and cycles to allow for proper communication with the UE and DRX power savings at the UE.
Regarding claim 38, claim 2 of 080 discloses the DRX configuration parameters are sent via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 39, claim 6 of 080 discloses the indication of the first DRX cycle length is sent in a first information element (IE), the indication of the second DRX cycle length is sent in a second IE, the indication of the value for the first WTRU timer is sent in a third IE, and the indication of the value for the second WTRU timer is sent in a fourth IE.
Regarding claim 40, claim 15 of 080 discloses the indication of the value for the second
WTRU timer is signaled as a number of DRX cycles.
Claims 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 8,238,260 (“260”) in view of Fu, et al. (US Pre Grant Publication No. 2009/0268689; note PCT/CN2007/000038, published in English and designating US, attached). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21, claims 1 of 260 discloses
Claim 21 of present Application
Claims 1, 30, 37 and 42 of 260 (All citations to claims 1 or 37 unless otherwise noted)
A method implemented by a wireless transmit/receive unit (WTRU) the method
comprising:
A method for controlling discontinuous reception (DRX) in a wireless transmit/receive unit (WTRU), the method comprising:
receiving discontinuous reception (DRX) configuration parameters, the DRX
configuration parameters comprising an indication of a first DRX cycle length, an indication of a second DRX cycle length,
the WTRU receiving a DRX configuration comprising a plurality of DRX levels, each of the plurality of DRX levels comprising at least one DRX cycle length; (claims 1 or 37)
operating the WTRU at the first DRX cycle length;
using the first WTRU timer to trigger a transition to the second DRX cycle length;
setting the second WTRU timer based on beginning DRX operation at the second DRX
cycle length;
the WTRU operating at a first DRX level of the plurality of DRX levels; the WTRU determining that a WTRU timer has expired; and responsive to determining that the WTRU timer has expired, the WTRU transitioning from the first DRX level to a second DRX level of the plurality of DRX levels without receiving explicit signaling from a base station to transition from the first DRX level to the second DRX level,
operating the WTRU at the second DRX cycle length;
determining that the second WTRU timer has expired; and
operating the WTRU at the first DRX cycle length based on determining that the second
WTRU timer has expired
Claim 30 - the WTRU setting a resume period timer upon transitioning to the second DRX level; and the WTRU transitioning to the first DRX level responsive to expiration of the resume period timer
Claim 42 - the processor is further configured to transition the WTRU from the second DRX level to the first DRX level responsive to a trigger, and wherein the trigger comprises at least one of a counter, a downlink command, an expiration of a timer,
wherein the first DRX cycle length is a multiple of the second DRX
cycle length
performing DRX using the second DRX cycle length based on determining the second timer has expired, wherein the second DRX cycle length is a multiple of the first DRX cycle length
260 fails to disclose receiving an indication of a value for a first WTRU timer, and an indication of a value for a second WTRU timer. In the same field of endeavor, Fu discloses receiving an indication of a value for a first WTRU timer, and an indication of a value for a second WTRU timer. (Fu discloses the base station may configure the UE with the DRX transition timers [paragraphs 0102-0105; 0020-0021 – sent via RRC).
Therefore, since Fu discloses RRC configured DRX transition timers, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the RRC configured DRX transition timers of Fu with the system of 260 by having the base station transmit and the UE receive the first and second timers using RRC/higher layer signaling. The motive to combine is to improve flexibility by allowing the base station to set the timers.
Regarding claim 22, claim 1 of 260 as modified by Fu discloses the DRX configuration parameters are received via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 23, claim 1 of 260 as modified by Fu discloses the higher layer signaling corresponds to radio resource control (RRC) message.
Regarding claim 24, claim 30 of 260 discloses the length of the second WTRU timer
corresponds to a resume period.
Regarding claim 25, claim 22 of 260 discloses resetting one or more of the first WTRU timer or the second WTRU timer based on transmission activity.
Regarding claim 26, claim 40 of 260 discloses each of the first and second WTRU timers are
synchronized with respective first and second base station timers.
Regarding claim 27, claim 1 of 260 discloses the second DRX cycle length is a power of two
multiple of the first DRX cycle length. (Note, for example, a multiple of 2 is 2^1 or a power of 2)
Regarding claim 29, Claim 1 or 37 of 260 disclose all elements for the same reasons as discussed with respect to claim 1, except claim 1 of 260 does not disclose a processor and memory, the
processor and memory configured to. However, it if officially noted that the use of a processor and memory to carry out steps was well known in the art before the time of the invention and therefore, it would have been obvious to a person of ordinary skill in the art to use a processor and memory to carry out the steps of claims 1 or 9 of 260. The motive to combine is to use the low cost microprocessor.
Regarding claim 30, claim 2 of 260 discloses the DRX configuration parameters are received
via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 31, claim 2 of 260 discloses the higher layer signaling corresponds to radio
resource control (RRC) message.
Regarding claim 32, claim 6 of 260 discloses the indication of the first DRX cycle length is received in a first information element (IE), the indication of the second DRX cycle length is received in a second IE, the indication of the value for the first WTRU timer is received in a third IE, and the indication of the value for the second WTRU timer is received in a fourth IE.
Regarding claim 33, claim 11 of 260 discloses the length of the second WTRU timer corresponds to a resume period.
Regarding claim 34, claim 12 of 260 discloses reset one or more of the first WTRU timer or the second WTRU timer based on transmission activity.
Regarding claim 35, claim 16 of 260 discloses each of the first and second WTRU timers are synchronized with respective first and second base station timers.
Regarding claim 36, claim 7 of 260 discloses the indication of the value for the second WTRU timer is signaled as a number of DRX cycles.
Claims 29-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 8,238,260 (“260”) in view of Fu, et al. (US Pre Grant Publication No. 2009/0268689; note PCT/CN2007/000038, published in English and designating US, attached) and R2-070265 (Author Unknown, DRX Scheme, pages 1-4, Doc. No. R2-070265, 19 January 2007). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 29, Claim 1 or 9 of 260 as modified by Fu disclose all elements for the same reasons as discussed with respect to claim 1, except it is seen that the only difference between claim 1 of 260 and claim 29 of the present application is that the steps are performed in mirror image at the base station and not the UE in the present application. In the same field of endeavor, R2-070265 discloses that the base station perfroms the mirror of operations of the UE (pages 1-2, section 2, in particular, Figs. 1 and 2 – base station performs mirror image, such as receiving the transmission from the UE, determining the DRX start/end period based on local calculations so UE and base station TX/RX at the same time, etc). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the mirroring of 265 with the system of 260 by mirroring the operations of the UE at the base station such that the base station sends the WTRU configuration the UE receives, tracks the first and second timers locally to determine when to TX/RX from the UE in the DRX and when to transition between the first and second cycle, etc. The motive to combine is to allow the base station to TX/RX at appropriate times and cycles to allow for proper communication with the UE and DRX power savings at the UE.
Regarding claim 38, claim 1 of 260 as modified by Fu, supra, discloses the DRX configuration parameters are sent via higher layer signaling (noting RRC is higher layer signaling).
Regarding claim 39, claim 1 of 260 as previously modified by Fu fails to disclose the indication of the first DRX cycle length is sent in a first information element (IE), the indication of the second DRX cycle length is sent in a second IE, the indication of the value for the first WTRU timer is sent in a third IE, and the indication of the value for the second WTRU timer is sent in a fourth IE.
However, in another portion of Fu, the use of information elements for the transmission of values is discloses (paragraphs 0099-0100).
Therefore, since Fu discloses transmitting information in information elements, it would have been obvious to send the cycle lengths and time values in discrete information elements. The motive to combine is to provide an easy to parse syntax for transmission of the information.
A note about double patenting
Regarding 11,172,441, no double patenting rejection has been presented. The reason is that the claims do not disclose the second timer as claimed. Therefore, no double patenting rejection has been presented as the second timer is novel for the reasons discussed with respect to the prior art in the reasons for allowance, infra.
Regarding 10,237,820, no double patenting rejection has been presented. The reason is that the claims do not disclose the second timer as claimed. That is, the “value for a WTRU timer used to trigger a transition from the first DRX cycle length to the second DRX cycle length” corresponds to the first timer in the present application but there is no teaching of the second timer. As discussed in the reasons for allowance, infra, there is no teaching of the second timer in the prior art. Therefore, no double patenting rejection has been presented.
Regarding 9,749,951, no double patenting rejection has been presented. The reason is that the claims do not disclose the second timer as claimed. That is, the “an indication of a resume period, wherein the indication of a resume period indicates a number of DRX cycles at which the WTRU is to perform DRX using the first DRX cycle length prior to implicitly transitioning to performing DRX using the second DRX cycle length if no new transmissions are received” corresponds to the first timer in the present application but there is no teaching of the second timer. As discussed in the reasons for allowance, infra, there is no teaching of the second timer in the prior art. Therefore, no double patenting rejection has been presented.
Regarding 9,014,032, no double patenting rejection has been presented. The reason is that the claims do not disclose the second timer as claimed. That is, the “WTRU setting a WTRU timer upon initiating DRX operation using the shorter DRX cycle length, wherein the WTRU timer is associated with a length of time during which the WTRU performs DRX using the shorter DRX cycle length prior to transitioning to a longer DRX cycle length of the plurality of DRX cycle lengths” corresponds to the first timer in the present application but there is no teaching of the second timer. As discussed in the reasons for allowance, infra, there is no teaching of the second timer in the prior art. Therefore, no double patenting rejection has been presented.
Regarding U.S. Patent No. 8,238,260, no double patenting rejection has been presented with regard to claims 28, 36 and 40 as the indication of the value for the second WTRU timer is signaled as a number of DRX cycles. That is, no art teaching this element could be located.
Allowable Subject Matter
Claim 21-40 would be allowable upon entry of a timely filed terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 21, the prior art fails to teach, suggest or disclose:
determining that the WTRU is operating at the first DRX cycle length;
use a first base station timer that is synchronized with the first WTRU timer to determining that the WTRU has transitioned to the second DRX cycle length;
set a second base station timer that is synchronized with the second WTRU timer based on determining that the WTRU began DRX operation at the second DRX cycle length;
determining that the second base station timer has expired; and
determining that the WTRU is operating at the first DRX cycle length based on determining the second base station timer has expired, wherein the first DRX cycle length is a multiple of the second DRX cycle length.
That is, the closest prior art of R2-070265 (Author Unknown, DRX Scheme, pages 1-4, Doc. No. R2-070265, 19 January 2007) discloses the use of two different DRX levels with different cycle lengths/periods (see, for example, second full paragraph of page 2) with the cycle/period length configured by the base station/eNB (page 3, first step of the code flow below figure 2). However, the transition between the periods is explicit and occurs via MAC signaling of a DRX indicator from the base station (page 2, last paragraph carried on to page 3) and therefore is not controlled by two timers as claimed here.
Other art, such as R2-070896 (Author Unknown, Draft2 minutes of the 56bis TSG-RAN WG2 meeting, pages 1-82, 19 January 2007) discloses that the first DRX cycle length is an integer multiple of the second length (DRX cycle values used in long/second DRX cycle length is a factor of 2, 5, 10 etc of the first/shore DRX cycle length, indicating the inverse is true as well- page 20, section 5.2.7) but is likewise silent as to the two synchronized timers.
Finally, R2-070120 (Author Unknown, DRX control in LTE_ACTIVE, Doc. No. R2-070120, pages 1-2, 19 January 2007) discloses loosely discloses a timer may be used to transition from a higher DRX cycle/shorter activity factor state to a lower/longer DRX cycle “activity factor” state (page 2, second and third indented dashes). However, what is lacking is using a second timer’s expiration to transition back to the higher DRX cycle/shorter activity factor state. Furthermore, no other art teaching this element could be located and it is generally incompatible with the methods known in the art, such as that of R2-070120, as the timer of R2-070120 tracks a lack of activity in the present state using the timer and it makes no sense to go to a higher DRX cycle/shorter activity factor state (i.e. a state with more transmission opportunities) when a timer expires indicating reduced activity. Therefore, the prior art fails to teach, suggest or disclose all elements of the claimed invention.
Regarding claims 21-28, the claims depend from claim 20 and are allowable for at least the reasons stated with respect to claim 20, supra.
Regarding claims 29 and 37, the claims both require the first and second timer and state transmissions discussed with respect to claim 20. Therefore, the claims are allowable for the same reasons stated with respect to claim 20, supra.
Regarding claims 30-36 and 38-40, the claims depend from claims 29 and 37 and are allowable for at least the reasons stated with respect to claim 20, supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dalsgaard, et al. (US Pre Grant Publication No. 2007/0291729) – disclosing timeout for switch between short and normal DRX
Damnjanovic, et al. (US Pre Grant Publication No. 2009/0122736)- Disclosing timers to transition between DRX cycles of different length; General lack of provisional support of many relevant elements)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M CRUTCHFIELD whose telephone number is (571)270-3989. The examiner can normally be reached 9am-5pm M-F.
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/CHRISTOPHER M CRUTCHFIELD/Primary Examiner, Art Unit 2466
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