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 on 08/25/2026 have been fully considered. Applicant’s arguments and Examiner’s response are provided below.
Applicant argues that the office action improperly picks and chooses among isolated disclosures through hindsight reconstruction to support the conclusion of obviousness, and uses the claimed invention as a roadmap to assign the PDCCH linkage discussed in paragraph [0097] a new function- that is, forming a basis for monitoring of the linked PDCCH candidates- that Bagheri does not teach or suggest.
Examiner’s response:
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to modify the teachings of Bagheri in the manner proposed by the examiner, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the Examiner’s conclusion does not rely upon knowledge gleaned only from Applicant’s disclosure. Rather, the factual basis of the proposed modification is found in Bagheri itself. As set forth in the rejection, paragraph [0117] of Bagheri teaches monitoring one or more PDCCH candidates in a first slot of a first set of monitoring occasions and one or more PDCCH candidates in a second slot of a second set of monitoring occasions. Bagheri therefore expressly teaches monitoring first and second PDCCH candidates.
Further, paragraph [0097] of Bagheri expressly teaches an association or linkage between PDCCH candidates. Specifically, Bagheri explains that PDCCHs carrying the same DCI may be linked to each other, such that the UE, knowing a PDCCH candidate in a first CORESET, can determine the linked PDCCH candidate in another CORESET. Thus, Bagheri establishes the functional usefulness of the association in enabling the UE to determine corresponding PDCCH candidates across different CORESETs.
Accordingly, one of ordinary skill in the art would have had reason to utilize Bagheri’s disclosed association between the PDCCH candidates when performing Bagheri’s disclosed monitoring of the respective PDCCH candidates in order to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring, since Bagheri expressly teaches the knowledge of a PDCCH candidate in one CORESEST enables the UE to determine the linked PDCCH candidate in another CORESET.
Thus, the proposed modification applies Bagheri’s disclosed candidate linking mechanism to Bagheri’s disclosed monitoring of the corresponding PDCCH candidates for the predictable benefit of facilitating determination of the corresponding linked candidate across different CORESETs.
Applicant argues that paragraph [0097] of Bagheri concerns selection of a CORESET whose number of CCEs is used in determining a PUCCH resource and does not teach or suggest monitoring the first and second PDCCH candidates based on their association.
However, the rejection does not rely upon paragraph [0097], standing alone, as expressly disclosing the entire claimed monitoring operation. Rather, paragraph [0117] is relied upon for the teaching that PDCCH candidates may be linked. The fact that paragraph [0097] describes use of the linkage in connection with PUCCH resource determination does not negate its express teaching that such a linkage between PDCCH candidates exists and can be used by the UE to determine the corresponding linked candidate.
Therefore, the proposed modification is supported by the express teachings of Bagheri and the predictable use of Bagheri’s disclosed PDCCH candidate association in its disclosed PDCCH monitoring framework, rather than knowledge obtained from Applicant’s disclosure.
Applicant further argues that the Office Action’s stated rationale does not explain why one of ordinary skill in the art would have modified Bagheri’s monitoring to depend on its association between PDCCH candidates.
As discussed above, paragraph [00097] of Bagheri expressly teaches that PDCCHs carrying the same DCI may be linked to each other, such that the UE, knowing a PDCCH candidate in a first CORESET, can determine the linked PDCCH candidate in another CORESET. Thus, Bagheri establishes the functional usefulness of the association in enabling the UE to determine corresponding PDCCH candidates across different CORESETs.
Accordingly, one of ordinary skill in the art would have had reason to utilize Bagheri’s disclosed association between the PDCCH candidates when performing Bagheri’s disclosed monitoring of the respective PDCCH candidates in order to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring.
Accordingly, Applicant’s assertion that the rejection is based on impermissible hindsight is not persuasive, and the rejection is maintained.
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
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PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out
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disclaimer.
Claims 27 and 29 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claim 16 of U.S. Patent No. 11711832 B2 in view of Bagheri et al. (US
20200053757 A1).
The reference patent claims differ from the instant claims in that they do not explicitly
disclose monitoring for first and second PDCCH candidates based on the association
between the first and second PDCCH candidates.
However, Bagheri discloses “monitoring for the first physical downlink control channel
candidate and the second physical downlink control channel candidate based at least on
the association between the first physical downlink control channel candidate and the
second physical downlink control channel candidate” (See [0097] the scheduling DCI may
indicate which CORESET index should be used (e.g., in case the PDCCHs carrying the same
DCI are linked to each other (i.e., the UE knowing a PDCCH candidate in a first CORESET can
determine the linked PDCCH candidate in another CORESET). [0117] monitoring one or more
downlink control channel candidates in a first slot of the first set of monitoring occasions;
monitoring one or more downlink control channel candidates in a second slot of the second
set of monitoring occasions). Bagheri teaches monitoring first and second PDCCH
candidates, and teaches PDCCH candidates being linked in a different embodiment. It would
have been obvious to monitor PDCCH candidates based on a PDCCH candidate association, in order to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring.
It would have been obvious to modify claim 16 of U.S. Patent No. 11711832 B2, to include
monitoring first and second candidates based on a PDCCH candidate association, as taught
by Bagheri, in order to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring.
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.
Claims 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Bagheri et el.
(US 20200053757 A1).
Regarding claim 27,
Bagheri discloses “A method for wireless communication at a user equipment (UE),
comprising: receiving, from a base station, a configuration that indicates an association
between a first search space set and a second search space set” (See [0111] The
method 700 may include receiving 702 a first indication comprising a first search space
identity and a second search space identity, wherein the first search space identity and
the second search space identity are for a set of associated search spaces comprising
a first search space and a second search space), “wherein a first control resource set
associated with the first search space set is different than a second control resource set
associated with the second search space set” (See [0111] the associated search spaces
correspond to two different control resource sets comprising a first control resource set and
a second control resource set); “identifying an association between a first physical
downlink control channel candidate in the first search space set and a second physical downlink control channel candidate in the second search space set” (See [0097] the
scheduling DCI may indicate which CORESET index should be used (e.g., in case the PDCCHs
carrying the same DCI are linked to each other (i.e., the UE knowing a PDCCH candidate in a
first CORESET can determine the linked PDCCH candidate in another CORESET)), “wherein a
configured presence or absence of a first transmission configuration indicator field
associated with downlink control information for the first control resource set is a same as
a configured presence or absence of a second transmission configuration indicator field
associated with downlink control information for the second control resource set” (See
[0068] if a UE is configured with a higher layer parameter tci-PresentInDCI that is set as
‘enabled’ for both CORESETs 1 and 2 scheduling the PDSCH, the UE assumes the TCI field
is present in the DCI format (e.g., DCI format 1_1) of the PDCCH transmitted
on CORESETs 1 and 2); “and monitoring for the first physical downlink control channel
candidate and the second physical downlink control channel candidate” (See [0117]
monitoring one or more downlink control channel candidates in a first slot of the first set
of monitoring occasions; monitoring one or more downlink control channel candidates in a
second slot of the second set of monitoring occasions).
Bagheri in this embodiment does not explicitly disclose that the monitoring is based on the
PDCCH association.
However, another embodiment of Bagheri discloses reception of linked PDCCHs (See [0097]
the scheduling DCI may indicate which CORESET index should be used (e.g., in case the
PDCCHs carrying the same DCI are linked to each other (i.e., the UE knowing
a PDCCH candidate in a first CORESET can determine the linked PDCCH candidate in another
CORESET).
Therefore, it would have been obvious to monitor PDCCH candidates “based at least on the
association between the first physical downlink control channel candidate and the second
physical downlink control channel candidate”, and the motivation to do so would have
been to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring.
Regarding claim 29,
Bagheri discloses “An apparatus for wireless communication at a user equipment (UE),
comprising: one or more memories; and one or more processors, coupled to the one or
more memories, the one or more processors individually or collectively configured to cause
the UE to” (See Fig. 2): “receive, from a base station, a configuration that indicates an
association between a first search space set and a second search space set” (See [0111]
The method 700 may include receiving 702 a first indication comprising a first search space
identity and a second search space identity, wherein the first search space identity and
the second search space identity are for a set of associated search spaces comprising
a first search space and a second search space), “wherein a first control resource set
associated with the first search space set is different than a second control resource set
associated with the second search space set” (See [0111] the associated search spaces
correspond to two different control resource sets comprising a first control resource set and
a second control resource set); “identify an association between a first physical downlink
control channel candidate in the first search space set and a second physical downlink
control channel candidate in the second search space set” (See [0097] the scheduling DCI
may indicate which CORESET index should be used (e.g., in case the PDCCHs carrying the
same DCI are linked to each other (i.e., the UE knowing a PDCCH candidate in a first CORESET can determine the linked PDCCH candidate in another CORESET)), “wherein a
configured presence or absence of a first transmission configuration indicator field
associated with downlink control information for the first control resource set is a same as
a configured presence or absence of a second transmission configuration indicator field
associated with downlink control information for the second control resource set” (See [0068] if a UE is configured with a higher layer parameter tci-PresentInDCI that is set as
‘enabled’ for both CORESETs 1 and 2 scheduling the PDSCH, the UE assumes the TCI field
is present in the DCI format (e.g., DCI format 1_1) of the PDCCH transmitted
on CORESETs 1 and 2); “and monitor for the first physical downlink control channel
candidate and the second physical downlink control channel candidate” ((See [0117]
monitoring one or more downlink control channel candidates in a first slot of the first set
of monitoring occasions; monitoring one or more downlink control channel candidates in a
second slot of the second set of monitoring occasions).
Bagheri in this embodiment does not explicitly disclose that the monitoring is based on the
PDCCH association.
However, another embodiment of Bagheri discloses reception of linked PDCCHs (See [0097]
the scheduling DCI may indicate which CORESET index should be used (e.g., in case the
PDCCHs carrying the same DCI are linked to each other (i.e., the UE knowing
a PDCCH candidate in a first CORESET can determine the linked PDCCH candidate in another
CORESET).
Therefore, it would have been obvious to monitor PDCCH candidates “based at least on the
association between the first physical downlink control channel candidate and the second
physical downlink control channel candidate”, and the motivation to do so would have been to facilitate identification of the corresponding PDCCH candidate across different CORESETs during monitoring.
Allowable Subject Matter
Claims 1 and 28 are allowable over the prior art of record. Claims 2-26 are allowable by
virtue of their dependency on claim 1.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1 and 28, closest prior art of record, whether alone or in combination with
other references, fail to particularly disclose or render obvious the claimed limitations as
recited as-a-whole, in particular “identifying an association between a monitoring occasion
of the first search space set and a monitoring occasion of the second search space set which
are included within a time interval; identifying an association between a first physical
downlink control channel candidate in the first search space set and a second physical
downlink control channel candidate in the second search space set; and monitoring for the
first physical downlink control channel candidate and the second physical downlink control
channel candidate based on: the association between the first search space set and the
second search space set; the association between the monitoring occasion of the first
search space set and the monitoring occasion of the second search space set; and the
association between the first physical downlink control channel candidate and the second
physical downlink control channel candidate”.
The closest references include:
Bagheri et al. (US 20200053757 A1) discloses [0060] a UE may receive an indication that
some or all monitoring occasions of a first search space are associated with some or all monitoring occasions of a second search space. [0111] an indication comprising a first
search space identity and a second search space identity, wherein the
first search space identity and the second search space identity are for a set
of associated search spaces comprising a first search space and a second search space.
[0117] monitoring one or more downlink control channel candidates in a first slot of the
first set of monitoring occasions; monitoring one or more downlink control
channel candidates in a second slot of the second set of monitoring occasions.
LIU et al. (US 20210345308 A1) discloses [0005] determining a correspondence between
a first aggregation level AL set associated with a plurality of first downlink control
channel PDCCH candidates and a second AL set associated with a plurality of
second PDCCH candidates, and monitoring at least one of the plurality
of first PDCCH candidates and/or at least one of the plurality of second PDCCH
candidates based on the correspondence.
Conclusion
THIS ACTION IS MADE FINAL. 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 SALMA A AYAD whose telephone number is (571)270-0285. The examiner can normally be reached Monday-Friday 8:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yemane Mesfin can be reached at 5712723927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SALMA AYAD/Examiner, Art Unit 2462 /YEMANE MESFIN/Supervisory Patent Examiner, Art Unit 2462
