CTNF 18/765,073 CTNF 89587 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-36 AIA Claim s 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-24 of U.S. Patent No. 12,034,668 in view of Rahman et al (US 2021/0067979, hereinafter Rahman, claiming priority date of the provisional applications). Regarding pending claim 2 , the Patent discloses a method of wireless communication at a user equipment (UE), comprising: receiving a configuration of uplink (UL) transmission configuration indicator (TCI) (UL-TCI) states that comprise configured UL-TCI states, ( receiving a configuration of UL TCI states, patent claim 2 ); receiving downlink control information (DCI) in a physical downlink control channel (PDCCH) scheduling a sounding reference signal (SRS) transmission with one or more UL-TCI states of the activated UL-TCI states ( receiving DCI in PDCCH scheduling a SRS transmission, patent claim 2 ); and transmitting the SRS transmission based on the one or more UL-TCI states, wherein transmitting the SRS transmission comprises transmitting the SRS transmission with a quasi-co location (QCL) property associated with the one or more UL-TCI states, and wherein each UL-TCI state in the configured UL-TCI states corresponds to a first reference signal associated with indicating a UL transmit (Tx) beam configuration for a UL channel or a UL reference signal ( transmitting the SRS transmission based on the one or more UL-TCI states…, patent claim 2 ); but does not explicitly disclose receiving an activation of a subset of the configured UL-TCI states, the subset of the configured UL-TCI states comprising activated UL-TCI states nor wherein the configured UL-TCI states are initially deactivated upon the configuration. Rahman discloses a set of K1 UL TCI states are configured by higher layer and a subset K2 is activated from the configured set K1 via a MAC activation command, Para [0124], meaning they were not previous activated . It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize the techniques taught by Rahman in the system of the US patent in order to allow for MAC-CE overhead reduction. The other independent claims are rejected under double patenting for similar reasons. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN CUNNINGHAM whose telephone number is (571) 272-1765. The examiner can normally be reached Monday through Thursday 7:30-18:00 (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Vu can be reached on (571) 272-3155. The fax number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KEVIN M CUNNINGHAM/Primary Examiner, Art Unit 2461 Application/Control Number: 18/765,073 Page 2 Art Unit: 2461 Application/Control Number: 18/765,073 Page 3 Art Unit: 2461 Application/Control Number: 18/765,073 Page 4 Art Unit: 2461
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