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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/12/24 and 7/3/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the 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 30 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 31 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 32 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 33 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 34 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 35 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 36 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 37 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 38 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 39 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 39 directs the method/apparatus to a User Equipment (UE) and claim 1 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 40 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 40 directs the method/apparatus to a User Equipment (UE) and claim 1 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 41 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 41 directs the method/apparatus to a User Equipment (UE) and claim 2 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 42 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 42 directs the method/apparatus to a User Equipment (UE) and claim 3 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 43 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 43 directs the method/apparatus to a User Equipment (UE) and claim 4 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 44 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 44 directs the method/apparatus to a User Equipment (UE) and claim 5 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 45 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 45 directs the method/apparatus to a User Equipment (UE) and claim 6 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 46 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 46 directs the method/apparatus to a User Equipment (UE) and claim 7 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 47 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,058,701.
The invention claimed in the present application is not patentably distinct from the invention claimed in the reference patent/application. While claim 47 directs the method/apparatus to a User Equipment (UE) and claim 8 directs the method/apparatus to a base station, the claim limitations are otherwise functionally identical.
Specifically, the allowed base station claim requires:
"transmitting a RRC configuration to a UE"
The instant claim (UE) requires the mirror image of this step:
"receiving a RRC configuration from a base station")
The reversal of steps between communicating devices in a standard wireless system (e.g., transmitting vs. receiving) is an obvious design choice to one of ordinary skill in the art. For a wireless network to operate, the transmission of data by a base station necessarily dictates the receipt of data by a UE, and vice-versa. To allow the instant claims would result in an impermissible timewise extension of the exclusionary rights granted in the reference patent.
Claim 48 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Claim 49 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,058,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim limitations of the instant application encompass those of the conflicting patent. Essentially, the sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the sub-genus should the genus issue as a patent after the sub-genus.
Allowable Subject Matter Over Prior Art
The following is an examiner’s statement of reasons for allowance:
In the Examiner's best judgement the best prior art found during prosecution with respect to independent claims 30, 39 and 48 fail to, either singularly or in combination, to anticipate or render the claim features obvious, particularly the combination of features of the Independent Claims. The references used, fail to singularly or in combination, to anticipate and render obvious the inventive concept identified by the specific claim features of the inventive concept claims. Specifically, wherein the first type of control signaling includes downlink control information (DCI) Format 0_0 transmissions, DCI Format 1_0 transmissions, and a nrofcandidates information element (IE) from a downlink control channel (PDCCH) transmission, and the second type of control signaling includes all other DCI transmissions PDCCH IEs not included in the first type of control signaling.
The examiner identifies, as the best prior art of record, the following documents: a. U.S. Pre-Grant Publ'n. No. 2022/0109597 (published 17 Feb. 2011) [hereinafter Takeda] teaches a base station and a processor of a base station configured to perform operations comprising: (i.e. fig. 11 shows a base station comprising a processor, memory and transceiver for executing programmed instructions) configuring a first search space having a first search space identification (SearchSpaceId) in a special cell (SpCell) and a second search space having a second search space identification (SearchSpaceId) in a secondary cell (SCell) for monitoring control signaling that schedules operations on the spCell; (i.e. fig. 7 shows a base station (705) may configure an RRC information element (IE) for a user equipment (UE) (715), the IE may comprise a first and second identifiers corresponding to first and second cells, respectively; see paragraph 90) (see Also fig. 5b showing the RRC information element with a SS ID field, that may comprise first and second identifiers for cell search spaces; see paragraphs 80)
(See also paragraph 106;
For example, a first search space 912 and a second search space 914 are monitored by the UE in the first cell 910. The first search space 912 has a search space identifier of 0, and the second search space 914 has a search space identifier of 2. Further, third and fourth search spaces 922, 924 are monitored by the UE in the second cell 920. The third search space 922 has a search spacer identifier of 1, and the fourth search space 924 has a cell identifier of 4. A fifth search space 926 is monitored by the UE in the third cell. The fifth search space 932 has a cell identifier of 3.)
and transmitting a radio resource control (RRC) configuration to a user equipment (UE) including the first SSID and the second SSID, wherein the RRC configuration configures the UE to monitor the first search space having the first SSID for scheduling of a first type of control signaling and the second search space having the second SSID for scheduling of a second type of control signaling. (i.e. figs. 5b and 6 shows the RRC information element may be transmitted to the UE via RRC configuration, search spaces for monitoring separate control signaling (DCI); see paragraphs 43, 70)
However, Takeda does not teach wherein the first type of control signaling includes downlink control information (DCI) Format 0_0 transmissions, DCI Format 1_0 transmissions, and a nrofcandidates information element (IE) from a downlink control channel (PDCCH) transmission, and the second type of control signaling includes all other DCI transmissions PDCCH IEs not included in the first type of control signaling.
Additionally, all of the further limitations in 31 – 38, 40 - 47 and 49 are allowable since the claims are dependent upon the independent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J LOPATA whose telephone number is (571)270-5158. The examiner can normally be reached Mon-Fri 10-7 EST.
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ROBERT J. LOPATA
Primary Examiner
Art Unit 2471
/ROBERT J LOPATA/
June 26, 2026Primary Examiner, Art Unit 2471
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