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 .
DETAILED ACTION
This office action is a response to application no. 18/797,372 filed on 08/07/2024.
Claims 1 – 8 are pending and ready for examination.
Priority
This application is a continuation of U.S. application no. 18/325,876 (now, Patent no. US 12,089,060 B2) filed on 05/30/2023, which is a continuation of U.S. application no. 17/578,306 (now, Patent no. US 11,706,636 B2) filed on 01/18/2022, which is a continuation U.S. application no. 16/577,181 (now, Patent no. US 11,265,732 B2) filed on 09/20/2019, which is a continuation of U.S. application no. 15/647,117 (now, Patent no. US 10,462,679 B2) filed on 07/11/2017, which is a continuation of PCT application no. PCT/JP2016/001729 filed on 03/25/2016. The application also claims priority of foreign application no. EP15164127.1 filed on 04/17/2015.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/07/2024 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 8 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over claims 1 – 9 of Patent no. US 12,089,060 B2 (application no. 18/325,876). Claims 1 – 8 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over claims 1 – 16 of Patent no. US 11,706,636 B2 (application no. 17/578,306). Claims 1 – 8 are rejected on the ground of ODP as being unpatentable over claims 1 – 6, 8 – 14, 16 of Patent no. US 11,265,732 B2 (application no. 16/577,181). Claims 1 – 7 are rejected on the ground of nonstatutory ODP as being unpatentable over claims 1 – 8, 10 of Patent no. US 10,462,679 B2 (application no. 15/647,117) in view of patent no. US 11,265,732 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all inventions are directed towards communication apparatus for transmitting/ receiving system information in coverage enhancement (CE) and information elements correspond to a plurality of CE levels. With respect to the independent claims of the instant application and the patent, please see the direct claim comparison in the Table 1 below.
Table 1: Claim comparison between instant application and Patent
Instant application no. 18/797,372
Patent no. 12,089,060 B2
1. An integrated circuit for controlling a base station, the integrated circuit comprising:
control circuitry, which, in operation, generates system information for a user equipment in Coverage Enhancement (CE), the system information including information elements common to a plurality of CE levels including one or more radio condition threshold values used to determine a CE level out of the plurality of CE levels and at least one information element specific to one or more of the plurality of CE levels; and
transmitting circuitry, which, in operation, controls transmitting the system information, wherein the information elements common to the plurality of CE levels are transmitted, to the user equipment, with a first frequency equal to or higher than a second frequency with which the information elements common to the plurality of CE levels are received, by the user equipment, depending on a current CE status of the user equipment,
wherein, at the user equipment, the system information is soft-combined in a plurality of redundancy versions cyclically repeated a defined plurality of times, and decoding of the system information is attempted after each of the soft-combining.
1. A base station, comprising:
control circuitry, which, in operation, generates system information for a user equipment in Coverage Enhancement (CE), the system information including information elements common to a plurality of CE levels including one or more radio condition threshold values used to determine a CE level out of the plurality of CE levels and at least one information element specific to one or more of the plurality of CE levels; and
a transmitter, which, in operation, transmits the system information, to the user equipment, including the information elements common to the plurality of CE levels with a first frequency equal to or higher than a second frequency with which the information elements common to the plurality of CE levels are received by the user equipment, depending on a current CE status of the user equipment,
wherein, at the user equipment, the system information is soft-combined in a plurality of redundancy versions cyclically repeated a defined plurality of times, and decoding of the system information is attempted after each of the soft-combining.
As can be seen from the direct claim comparison of Table 1, claim 1 of instant application is obvious variation of patented claim 1, wherein the instant application is claiming an integrated circuit for controlling a base station, whereas the patented claim provides a base station, which receives the same information and performs the same function as that of the instant application. The underlined parts of the claims are different; but it’s an obvious variation. Therefore, all of the limitations of the instant claim 1 are obvious variation of the patented claim 1. Similar comparison can be shown for instant claim 1 vs. patented claim 9, which is a method performed by the base station. Therefore, claims 1 – 8 of the instant application is rejected on the ground of ODP as being unpatentable over claims 1 – 9 of the Patent 12,089,060 B2.
Similarly, claim comparison can be shown for instant claim 1 against claim 1 of Patent no. 11,706,636, Patent no. US 11,265,732 and Patent no. 10,462,679 in view of claim 1 of patent 11,265,732. Therefore, claims of the instant application are rejected on the ground of ODP as being unpatentable over claims of all continuation patents.
Allowable Subject Matter
Claims 1 – 8 are allowed over prior art; but a terminal disclaimer is required to overcome ODP issue with all continuation patents.
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
KR 102263703 B1 (Title, METHODS AND APPARATUS FOR ENHANCED COVERAGE TRANSMISSION FOR LTE ADVANCED) discloses a system and method for communicating with an enhanced coverage user terminal (UE). The base station transmits system information (SI) to the UE in the MTC framework. It discloses cells or frequencies supporting the coverage enhancement operation and Category 0 UE operation are the same, i.e. the cells or frequencies supporting the coverage enhancement operation also support Category 0 UE operation, and vice versa.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWNAK ISLAM whose telephone number is (571)272-8009. The examiner can normally be reached on Monday - Friday 8 am - 5 pm (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Thier can be reached on 571-272-2832. The fax phone 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.
/ROWNAK ISLAM/
Primary Examiner, Art Unit 2474
Prosecution Insights