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 .
This Office Action is a response to communications dated 05/18/2026. Claims 6 and 8-10 are still pending in the application.
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 6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-13 of copending Application No. 18/706,394 in view of Ying et al. (US 12,004,184) (hereinafter “Ying”).
Instant Application Claim 6 Claims
‘394 Application Claim 7 Claims
A terminal comprising:
A terminal comprising:
a receiver that receives downlink control information (DCI) scrambled by a radio network temporary identifier (RNTI) which is common to a plurality of terminals, in a multicast/broadcast service (MBS) for performing data delivering to the plurality of terminals; and
a receiver that receives downlink control information (DCI) scrambled by an RNTI, which is common to a plurality of terminals including the terminal in a multicast/broadcast service (MBS) for data delivering to the plurality of terminals; and
a processor that determines a size of a first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field, and the first field is one or more fields selected from a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, and a transmission configuration indication field.
a processor that determines a size of a Downlink Assignment Index (DAI) field included in the DCI based on a higher layer parameter, wherein a setting of the higher layer parameter is common to the plurality of terminals.
From the above claim comparison, one can see that claim 7 of the ‘394 application anticipates all recitations of claim 6 of the instant application. Alternatively, claims 6 of the instant application claims variously and essentially similar limitations as those in claim 7 of the ‘394 application. Nevertheless, there is a mere difference between the claims depicted in the bolded words. Such difference appears to be using different parameter in DCI format 1_1 in the claims of both applications. For instant frequency domain resource assignment field in the instant application and downlink assignment index in the ‘394 application. It is deemed obvious to those skilled in the art of claim drafting to draft claims in copending applications using different parameters. A motivation for doing so would be to seek a well-rounded protection for a disclose invention.
To satisfy the 103-paragraph rejection, let’s say claim 7 of the ‘394 application fails to explicitly teach the claim limitation of “first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field.” Nevertheless, such limitation lacks thereof from claim 7 of the ‘394 application appears to be well-known in the art and taught by Ying.
In an analogous art in the same field of endeavor, Ying teaches a user terminal equipment (Ying; Abstract and thereinafter) comprising, among other things, the limitations of “first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field” (Ying; col. 27, lines 3-15: “Bits(s) or part of bits of some bit fields (e.g., frequency domain resource assignment … transmission configuration indication, PRB bundling size indicator … rate matching indicator … priority indication … indicated explicitly or implicitly.”).
Thus, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention to incorporate/combine/implement Ying’s teaching into claim 7 of the ‘394 patent to arrive the claim invention. A motivation for doing so would be to overcome shortfalls of existing art in providing system and methods that improve communication flexibility and/or efficiency (Ying, col. 1, lines 30-35).
As per claims 8-10, the claims are deemed obvious over claims 11-13 of the ‘394 application in view of Ying for the same rationale applied to claim 6 as above discussed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Ying.
Regarding claim 6, in accordance with Lee reference entirety, Lee discloses a terminal (FIG. 12; 100 or 200 and col. 14, line 32 to col. 16, line 27) comprising:
a receiver (FIG. 12; 106 or 206) that receives downlink control information (DCI) scrambled by a radio network temporary identifier (RNTI) (G-RNTI) which is common to a plurality of terminals, in a multicast/broadcast service (MBS)(MBMS service data) for performing data delivering to the plurality of terminals (col. 15, lines 6-32: “… the UE … receives the DCI in which the CRC is scrambled with the G-RNTI mapped to the service. The UE receives the PDSCH transmission indicated by the DCI and receives the MBMS service data … .”); and
a processor (FIG. 12; 102 or 202) that determines a size of a first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service (col. 15, line 44 to col. 16, line 10: “When the DCI includes the MBMS indicator, the UE determines the TB decoded from the PDSCH indicated by the DCI as the MCCH/MTCH TB … The MBMS indicator may be subdivided into an MCCH indicator indicating MCCH TM, and an MTCH indicator indicating MTCH TB. Alternatively, a specific DCI code point mapped to a service ID such as TMGI or G-RNTI may be used as the MBMS indicator. Alternatively, a specific DCI format identifier may be used as the MBMS indicator”); wherein the downlink control information includes a frequency domain resource assignment field different from the first field (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include Frequency domain resource assignment), and the first field is one or more fields selected from a mapping field from a virtual resource block to a physical resource block, a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, a transmission configuration indication field, and a feedback timing indicator field from a physical downlink shared channel to an acknowledgement feedback (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include most of the fields recited in the claim. It is noted that the claim is drafted in an alternative format not requiring all recitations but one of the recitations).
For argument’s sake, let’s say Lee fails to explicitly disclose the claim limitation of “the first field is one or more fields selected from a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, and a transmission configuration indication field.” Nevertheless, such limitation lacks thereof from Lee’s teaching is well-known in the art and taught by Ying.
In an analogous art in the same field of endeavor, Ying teaches a user terminal equipment (Ying; Abstract and thereinafter) comprising, among other things, the limitations of “first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field” (Ying; col. 27, lines 3-15: “Bits(s) or part of bits of some bit fields (e.g., frequency domain resource assignment … transmission configuration indication, PRB bundling size indicator … rate matching indicator … priority indication … indicated explicitly or implicitly.”).
Thus, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention to incorporate/combine/implement Ying’s teaching into Lee’s teaching to arrive the claim invention. A motivation for doing so would be to overcome shortfalls of existing art in providing system and methods that improve communication flexibility and/or efficiency (Ying, col. 1, lines 30-35).
Regarding claim 8, in accordance with Lee reference entirety, Lee discloses a base station (FIG. 11; 200 or FIG. 12; 100 or 200 and col. 12, line 42 to col. 14, line 31) comprising:
a first transmitter (FIG. 12; 106 or 202) that transmits downlink control information (DCI) scrambled by a radio network temporary identifier (RNTI) which is common to a plurality of terminals, in a multicast/broadcast service (MBS) for performing data delivering to the plurality of terminals (col. 14, lines 45-60: “… the BS may determine the number of UEs to receive a specific service or G-RNTI-based transmission based on information reported by the UEs … The bs may transmit … DCI in which CRC is scrambled with the C-RNTI of a specific UE … .); and
a second transmitter (FIG. 12; 106 or 206) that transmits a higher layer parameter for the multicast/broadcast service, the higher layer parameter being used for determining a size of a first field among fields included in the downlink control information (col. 14, line 60 to col. 15, line 5: "Upon receiving the DCI, the UE may receive the MTCH TB on the PDSCH indicated by the DCI. In this case, the DCI may include an indicator indicating that the data is MBMS data rather than UE dedicated data on the PDSCH. For example, in the case of MCCH TB, an MCCH indicator may be included. In the case of MTCH TB, an MTCH indicator may be included. Alternatively, the MCCH TB and the MTCH TB received based on the C-RNTI may include an MCCH indicator or an MTCH indicator in the MAC header. Accordingly, the UE may determine whether the TB is a DCCH/ DTCH TB or an MCCH/MTCH TB based on the indicator in the DCI/MAC header");
wherein the downlink control information includes a frequency domain resource assignment field different from the first field (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include Frequency domain resource assignment), and the first field is one or more fields selected from a mapping field from a virtual resource block to a physical resource block, a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, a transmission configuration indication field, and a feedback timing indicator field from a physical downlink shared channel to an acknowledgement feedback (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include most of the fields recited in the claim. It is noted that the claim is drafted in an alternative format not requiring all recitations but one of the recitations).
For argument’s sake, let’s say Lee fails to explicitly disclose the claim limitation of “the first field is one or more fields selected from a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, and a transmission configuration indication field.” Nevertheless, such limitation lacks thereof from Lee’s teaching is well-known in the art and taught by Ying.
In an analogous art in the same field of endeavor, Ying teaches a user terminal equipment (Ying; Abstract and thereinafter) comprising, among other things, the limitations of “first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field” (Ying; col. 27, lines 3-15: “Bits(s) or part of bits of some bit fields (e.g., frequency domain resource assignment … transmission configuration indication, PRB bundling size indicator … rate matching indicator … priority indication … indicated explicitly or implicitly.”).
Thus, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention to incorporate/combine/implement Ying’s teaching into Lee’s teaching to arrive the claim invention. A motivation for doing so would be to overcome shortfalls of existing art in providing system and methods that improve communication flexibility and/or efficiency (Ying, col. 1, lines 30-35).
Regarding claim 9, in accordance with Lee reference entirety, Lee discloses a radio communication system (FIG. 12) comprising:
a terminal (FIG. 12; 100); and
a base station (FIG. 12; 200); wherein
the base station (FIG. 12; 200) comprises a transmitter that transmits downlink control information (DCI) scrambled by a radio network temporary identifier (RNTI) which is common to a plurality of terminals, in a multicast/broadcast service (MBS) for performing data delivering to the plurality of terminals (col. 14, lines 45-60: “… the BS may determine the number of UEs to receive a specific service or G-RNTI-based transmission based on information reported by the UEs … The bs may transmit … DCI in which CRC is scrambled with the C-RNTI of a specific UE … .),
the terminal (FIG. 12; 100) comprises a processor that determines a size of a first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service (col. 15, line 44 to col. 16, line 10: “When the DCI includes the MBMS indicator, the UE determines the TB decoded from the PDSCH indicated by the DCI as the MCCH/MTCH TB … The MBMS indicator may be subdivided into an MCCH indicator indicating MCCH TM, and an MTCH indicator indicating MTCH TB. Alternatively, a specific DCI code point mapped to a service ID such as TMGI or G-RNTI may be used as the MBMS indicator. Alternatively, a specific DCI format identifier may be used as the MBMS indicator”); and the downlink control information includes a frequency domain resource assignment field different from the first field (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include Frequency domain resource assignment), and the first field is one or more fields selected from a mapping field from a virtual resource block to a physical resource block, a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, a transmission configuration indication field, and a feedback timing indicator field from a physical downlink shared channel to an acknowledgement feedback (pages 15-16 and TABLE 5 depicts DCI information for C-RNTI based MCCH/MTCH TB scheduling to include most of the fields recited in the claim. It is noted that the claim is drafted in an alternative format not requiring all recitations but one of the recitations).
For argument’s sake, let’s say Lee fails to explicitly disclose the claim limitation of “the first field is one or more fields selected from a physical resource block bundling size indicator field, a rate matching field, a zero power channel state information reference signal trigger field, a priority indicator field, and a transmission configuration indication field.” Nevertheless, such limitation lacks thereof from Lee’s teaching is well-known in the art and taught by Ying.
In an analogous art in the same field of endeavor, Ying teaches a user terminal equipment (Ying; Abstract and thereinafter) comprising, among other things, the limitations of “first field among fields included in the downlink control information based on a higher layer parameter for the multicast/broadcast service; wherein the downlink control information includes a frequency domain resource assignment field different from the first field” (Ying; col. 27, lines 3-15: “Bits(s) or part of bits of some bit fields (e.g., frequency domain resource assignment … transmission configuration indication, PRB bundling size indicator … rate matching indicator … priority indication … indicated explicitly or implicitly.”).
Thus, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention to incorporate/combine/implement Ying’s teaching into Lee’s teaching to arrive the claim invention. A motivation for doing so would be to overcome shortfalls of existing art in providing system and methods that improve communication flexibility and/or efficiency (Ying, col. 1, lines 30-35).
As per claim 10, the claim appears to call for a method having limitations variously and essentially mirrored functional limitations of apparatus claim 6. Thus, it is deemed obvious over Lee in view of Ying for the same rationales applied to apparatus claim 6 as above discussed.
Response to Arguments
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed on 05/18/2026.
Pertaining the nonstatutory double patenting rejection of claims 6-10, Applicant appears to argue “the Office cannot demonstrate that the claims of the Reference Application recite all the elements of the claims as amended herein.”
The argument is noted but not persuasive because as clearly demonstrated above and thereinafter, all recitations in the amended claims were rendered obvious by the claims of the Reference Application and Ying reference.
Pertaining the nonstatutory double patenting rejection of claims 6-10, Applicant also appears to state that “Applicant will consider the need to file a Terminal Disclaimer at such a time as allowable subject matter is indicated in either application.”
The statement is noted but also not persuasive because 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, not a statement.
Pertaining the rejection of claims 6-10 under 35 U.S.C. 102(a)(2) based on Lee, the Applicant appears to argue “Lee fails to disclose all of the elements recited in the claims as amended.”
The argument is noted but not persuasive because the newly amended claims 6 and 8-10 are rendered obvious over Lee in view of Ying as clearly demonstrated above and thereinafter.
Examiner believes an earnest attempt has been made in addressing all of the Applicant’s arguments. Due to the response fails to place the instant application in a favorable condition for allowance, the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yi et al. (US 12,245,249).
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 FRANK DUONG whose telephone number is (571)272-3164. The examiner can normally be reached 7:00AM-3:30PM.
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/FRANK DUONG/Primary Examiner, Art Unit 2474 July 6, 2026
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