DETAILED ACTION
Status of Case
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 in response to the claims filed on 6/3/2024.
Claim 1 is pending.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 8/20/2024, 11/27/2024, and 2/21/2025 have been considered by Examiner.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,363,643 and claim 1 of U.S. Patent No. 12,004,236. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in the instant application are recited in the noted patents (see correspondence table below):
Instant Application
USPN 11,363,643
USPN 12,004,236
1. A method performed by a wireless device for random access, the method comprising: performing an open-loop timing advance estimation procedure to thereby determine an open-loop timing advance estimate for an uplink between the wireless device and a base station; and transmitting a random access preamble using the open-loop timing advance estimate.
1. A method performed by a wireless device for random access, the method comprising: performing an open-loop timing advance estimation procedure to thereby determine an open-loop timing advance estimate for an uplink between the wireless device and a base station; transmitting a random access preamble using the open-loop timing advance estimate; receiving, from the base station, a random access response comprising a timing advance value; and determining a timing advance for the uplink between the wireless device and the base station based on the timing advance value comprised in the random access response and the open-loop timing advance estimate, wherein the random access response schedules resources for an uplink transmission from the wireless device, and the method further comprises: transmitting an uplink transmission to the base station using the scheduled resources and the determined timing advance, the uplink transmission comprising an identity of the wireless device and an indication of the open-loop timing advance estimate, wherein the indication of the open-loop timing advance estimate is a differential value that equals a difference between the open-loop timing advance estimate and a predefined or preconfigured reference value.
1. A method performed by a wireless device for random access, the method comprising: performing an open-loop timing advance estimation procedure to thereby determine an open-loop timing advance estimate for an uplink between the wireless device and a base station, wherein the open-loop timing advance estimate is based on a comparison of a first time when a downlink system sub-frame is received, and a second time that is an expected time based on system frame timing configuration received from the base station; and transmitting a random access preamble using the open-loop timing advance estimate.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Earnshaw (USPN 9,820,244) in view of Ryu (USPAN 2019/0159149)
Consider claim 1, Earnshaw discloses a method performed by a wireless device for random access (see the method of figure 4 (reproduced below for convenience)), the method comprising:
performing a timing advance estimation procedure to thereby determine a timing advance estimate (see step 418 in figure 4 and col. 7 line 35 to col. 8 line 31: an estimated signal propagation time can be calculated and then used to derive the initial time advance) for an uplink between the wireless device (UE element 405 in figure 4) and a base station (eNB element 410 in figure 4); and
transmitting a random access preamble using the timing advance estimate (see step 420 in figure 4 and col. 7 line 35 to col. 8 line 31: sending a PRACH [random access] preamble with an initial time advance based on the estimated signal propagation time; in some implementations, the initial time advance used in sending the preamble is the over the air round trip delay which is twice as long as the estimated one-way signal propagation time).
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Although Earnshaw discloses a timing advance (see above), Earnshaw does not specifically disclose an open-loop timing advance.
Ryu teaches an open-loop timing advance (see paragraph 7: open-loop uplink timing advance).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Earnshaw and combine it with the noted teachings of Ryu. The motivation to combine these references is to provide a method for determining an open loop uplink timing advance (see paragraph 2 of Ryu).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jamal Javaid whose telephone number is 571-270-5137 and email address is Jamal.Javaid@uspto.gov.
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/JAMAL JAVAID/
Primary Examiner, Art Unit 2412
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