DETAILED ACTION
1. The following Office Action is based on the application filed on 26 April 2024, having claims 1-10 and drawing figures 1-17.
Notice of Pre-AIA or AIA Status
2. 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
3. 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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,985,656 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following rationale:
Claims 1-10 of the instant application are anticipated by claims 1-10 of the Patent.
Specification
4. The abstract of the disclosure is objected to because of the following informalities:
The acronyms PHR, PH, UL, CG, PUSCH, and DCI must be defined the first time each of them is recited in the abstract.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
5. Claims 1 and 6 are objected to because of the following informalities:
The comma (,) located between the words “point” and “where” in line 6 of claim 1 must be deleted to conform with punctuation rules. It is also suggested to replace the word “where” with “when” to refer to a point in time, rather than location.
The comma (,) located between the words “point” and “where” in line 11 of claim 6 must be deleted to conform with punctuation rules. It is also suggested to replace the word “where” with “when” to refer to a point in time, rather than location.
Appropriate correction is required.
Allowable Subject Matter
6. Claims 1-10 would be allowable upon receipt of a filed Terminal Disclaimer to overcome the double patenting rejection. The closest prior art reference is Loehr et al. (US 2019/0394732 A1) which discloses that PHR is triggered at a first time point [0062], a remote unit 102 determines whether a PH value for an activated serving cell (configured uplink grant) is based on an actual transmission or a reference format [0085], and the remote unit transmits the PHR on a PUSCH resource received after the PHR is triggered or an earlier received UL grant [0092].
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisabeth B Magloire whose telephone number is (571)272-5601. The examiner can normally be reached M-F 8 AM-5 PM ET.
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, Sujoy K Kundu can be reached at 571-272-8586. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELISABETH BENOIT MAGLOIRE/Primary Examiner, Art Unit 2471