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.
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Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,350,445. Although the claims at issue are not identical, they are not patentably distinct from each other because
For claims 1-5; U.S. Patent No. 11,350,445 discloses: receiving, by the user equipment from a network node, a message including information related to the predetermined data transmission, the message being a message for transitioning the user equipment from an RRC connected state to a predetermined RRC state (claim 1: receiving from a base station, by a user equipment in RRC connected mode, an RRC connection release message for transitioning the user equipment from the RRC connected mode to an RRC idle mode, wherein the RRC connection release message includes information for the user equipment to determine whether the user equipment is able to perform early data transmission which transmits uplink user data using a message during a random access procedure); transitioning, by the user equipment, from the RRC connected state to the predetermined RRC state in response to receiving the message (claim 1: transitioning to the RRC idle mode, by the user equipment); and determining, by the user equipment, whether to perform the predetermined data transmission based on the information included in the message (claim 1: determining, by the user equipment, to perform the early data transmission when an amount of transmission data to the base station is less than or equal to the allowable amount of data indicated by the SIB), wherein the predetermined RRC state is a state in which an RRC connection is released or suspended (claim 1: an RRC connection release message for transitioning the user equipment from the RRC connected mode to an RRC idle mode).
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Huang et al. (US 2015/0113128) (“Huang”).
For claims 1-5; Huang discloses: receiving, by the user equipment from a network node, a message including information related to the predetermined data transmission (paragraph 44: the control node 110 and the user equipment 120 may then continue the communication regarding conditions for the small data in: a package size, a transmission period or an interval, an absolute timing of the transmission, and/or a robustness requirement), the message being a message for transitioning the user equipment from an RRC connected state to a predetermined RRC state (paragraph 44: part of the information for the small data transmission (e.g., the specific preamble signal, the validity duration for using the specific preamble signal, or even the indicating address of the small data of the downlink path) included in the RRC release message); transitioning, by the user equipment, from the RRC connected state to the predetermined RRC state in response to receiving the message (paragraph 44: the control node 110 may transmit the RRC release message to the user equipment 120 (step S501). When the RRC release message is received by the user equipment, the idle mode (i.e., the RRC IDLE state) may be switched to); and determining, by the user equipment, whether to perform the predetermined data transmission based on the information included in the message (paragraph 50: when the small data (e.g., delivery data) is generated by the user equipment 120 (e.g., generated through operations of the user, or generated repeatedly) (step S511), the user equipment 120 may inform the control node that the user equipment 120 intends to transmit a small data by transmitting the specific preamble signal to the control node 110 through the PRACH), wherein the predetermined RRC state is a state in which an RRC connection is released or suspended (paragraph 44: the control node 110 may transmit the RRC release message to the user equipment 120 (step S501). When the RRC release message is received by the user equipment, the idle mode (i.e., the RRC IDLE state) may be switched to).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lim et al. (US 2019/0357272); Lim discloses UE initiated uplink (UL) data being available when the UE is UL out-of-sync in RRC connected/new radio (NR) RRC active state, scheduling request (SR) transmission, and small UL data transmission in NR RRC inactive state.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D BLANTON whose telephone number is (571)270-3933. The examiner can normally be reached 7am-6pm EST, Mon-Thu.
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/JOHN D BLANTON/Primary Examiner, Art Unit 2466
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