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 .
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 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 1-2, 6-7, 9-10, 12-13, 17-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,289,624 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scopes of claims 1-2, 6-7, 9-10, 12-13, 17-18 and 20 of the present application are similar with the scopes of the US 12,289,624 B2 patented claims 1-8.
It has been held that the omission an element and its functions is an obvious expedient if the remaining elements perform the same 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.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 6-7, 9-10, 12-13, 17-18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xu et al (hereinafter “Xu”), US Pub, 2023/0276520 A1.
Regarding claims 1 and 12, Xu discloses apparatuses, systems, and methods for a user equipment device (UE) to perform a method for supporting a periodical radio access network (RAN) notification area (RNA) mechanism when small data transmission (SDT) is enabled for a UE. The UE (fig. 4, UE 106) comprising: at least one processor (processor 402); and at least one memory including computer program code (memory 406); the at least one memory and the computer program code configured to, with the at least one processor, cause the first device to: initiate a small data transmission (SDT) procedure; and upon expiration of a timer used to trigger a radio access network based notification area (RNA) update procedure during the SDT procedure, restrict performing of the RNA update procedure during the SDT procedure (fig. 10: timer stop; p. [0141]: The UE may receive, from a base station, an RRC release message 1012 with a suspend configuration. The RRC release message 1012 may instruct the UE to transition to an RRC inactive state. The RRC release message 1012 may include an indication that SDT is enabled for the UE. Further, the RRC release message 1012 may include a configuration (and/or an indication of a configuration) for an RNA timer, e.g., such as duration and/or value of the timer. Thus, upon receipt of the RRC release message 1012, the UE may transition to an RRC inactive state and initiate the RNA timer. Then, the UE may detect arrival of SDT data and initiate an SDT procedure 1000a. Upon initiation of the procedure, the UE may stop the RNA timer).
Regarding claims 2 and 13, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure by: in response to the initiation of the SDT procedure, stopping the timer used to trigger the RNA update procedure (fig. 10: timer stop; p. [0141]: the UE may detect arrival of SDT data and initiate an SDT procedure 1000a. Upon initiation of the procedure, the UE may stop the RNA timer).
Regarding claims 6 and 17, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure by: upon expiration of the timer used to trigger the RNA update procedure during the SDT procedure, avoiding the performing of the RNA update procedure during the SDT procedure (fig. 10: timer stop; p. [0141]: the UE may detect arrival of SDT data and initiate an SDT procedure 1000a. Upon initiation of the procedure, the UE may stop the RNA timer).
Regarding claims 7 and 18, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure by: upon expiration of the timer used to trigger the RNA update procedure during the SDT procedure, postponing the performing of the RNA update procedure (fig. 10 and p. [0141]: upon initiation of the procedure, the UE may stop the RNA timer… subsequent transmission indication 1032, i. e. RNA update procedure during the SDT procedure was postponed between procedures 1000a and 1000b).
Regarding claims 9 and 20, Xu discloses wherein the first device is caused to postpone the performing of the RNA update procedure by: postponing the performing of the RNA update procedure until an end of the SDT procedure (fig. 10 and p. [0141]: upon initiation of the procedure, the UE may stop the RNA timer… subsequent transmission indication 1032, i. e. RNA update procedure during the SDT procedure was postponed until end of step 1000b)..
Regarding claim 10, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure by: upon expiration of the timer used to trigger the RNA update procedure during the SDT procedure, determining whether a dedicated control channel is configured for the SDT procedure; and in accordance with a determination that the dedicated control channel is configured, performing the RNA update procedure using the dedicated control channel during the SDT procedure (fig. 12-13, p. [0147]-[0148] and [0153]-0154]: the UE may stop the RNA timer. Additionally, upon termination of the SDT procedure, the UE may start (and/or restart) the RNA timer. In some aspects, the UE may receive, during the SDT procedure, an SDT termination indication. The SDT termination indication may include an updated RNA timer configuration. In such aspects, the UE starting (and/or restarting) the RNA timer may include the UE starting the RNA timer based on the updated RNA timer configuration. In some aspects, the UE may receive, during the SDT procedure, an SDT subsequent transmission indication. The SDT subsequent transmission indication may include an updated RNA timer configuration. The SDT procedure may be terminated after a subsequent transmission period of the SDT procedure. In such aspects, the UE starting (and/or restarting) the RNA timer may include the UE starting the RNA timer based on the updated RNA timer configuration).
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.
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.
Claims 3-5, 8, 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Xu as shown above, in view of Tsai et al (hereinafter “Tsai”), US Pub. 2023/0044028 A1.
Regarding claims 3 and 14, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure (as shown in claim 1 above). Xu does not disclose the step of stopping the timer used to trigger the RNA update procedure upon reception of a random access message 4 or a random access message B from a second device. Tsai discloses a method and a user equipment (UE) for timing alignment. Tsai discloses this feature at p. [0086]: the NW may transmit an RRC message in the MSG4/MSGB. The UE may stay in the RRC_INACTIVE state if the UE receives an RRCRelease message (with the suspendConfig IE) or enters into the RRC_CONNECTED state if the UE receives an RRCResume message. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the feature discloses by Tsai into Xu’s system in order to optimize network resources and services.
Regarding claims 4 and 15, Xu does not discloses stopping the timer used to trigger the RNA update procedure upon a success of contention resolution. Tsai discloses this feature at p. [0322], [0339]-[0340]: the UE may stop an SDT TA timer/TA timer and/or consider the SDT TA timer/TA timer as expired when the UE receives a response from the NW. In one aspect, the response may be a MSG2/MSG4/MSGB and/or a response for a UL transmission via the CG resource. In one aspect, the response may be used for a contention resolution, e.g., for an RA procedure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the feature discloses by Tsai into Xu’s system in order to optimize network resources and services.
Regarding claims 5 and 16, Xu discloses wherein the first device is caused to restrict the performing of the RNA update procedure during the SDT procedure by: in response to the initiation of the SDT procedure and completion of a random access procedure, stopping the timer used to trigger the RNA update procedure. Tsai discloses this feature at p. [0322], [0339]-[0340]: the UE may stop an SDT TA timer/TA timer and/or consider the SDT TA timer/TA timer as expired when the UE receives a response from the NW. In one aspect, the response may be a MSG2/MSG4/MSGB and/or a response for a UL transmission via the CG resource. In one aspect, the response may be used for a contention resolution, e.g., for an RA procedure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the feature discloses by Tsai into Xu’s system in order to optimize network resources and services.
Regarding claims 8 and 19, Xu does not disclose postponing the performing of the RNA update procedure until a failure of a random access procedure during the SDT procedure. As shown in claims 3-5 above, Tsai’s method and system inherently postpone the performing of the RNA update procedure until a failure of a random access procedure during the SDT procedure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt the feature discloses by Tsai into Xu’s system in order to optimize network resources and services.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
AGIWAL, US Pub. 2024/0155725 A1, a method and an apparatus for updating RNA (radio access network-based notification area) during SDT (small data transmission) in a wireless communication system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THAI D HOANG whose telephone number is (571) 272-3184. The examiner can normally be reached 10:30 am-18:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Asad Nawaz can be reached at (571) 272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THAI HOANG D.
Primary Examiner
Art Unit 2463
/THAI DINH HOANG/Primary Examiner, Art Unit 2463
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