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 .
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.
Claims 1-4, 6-7, 8-11, 13-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8, 10-12, 15, and 17-20 of U.S. Patent No. 12,107.797. Although the conflicting claims are not identical, they are not patentably distinct from each other because 1, 3-5, 8, 10-12, 15, and 17-20 of U.S. Patent No. 12,107.797 encompasses the limitations of claims 1-4, 6-7, 8-11, 13-18 and 20 of instant application. Moreover, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art. It is well settled that the omission of an element and its functions is an obvious expedient if the remaining elements performs the same function as before In re Karlson, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969).
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)(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.
Claims 1-4, 6-11, 13-18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by MOLAVIANJAZI et al PG PUB 2021/0184812.
Re Claims 1, 8 and 15, MOLAVIANJAZI et al teaches in figure 8, 820, a gNB (an Access node: processing circuitry and PHY circuitry) identifying uplink communication beam (a first communication beam) and figure 9, 910 teaches the gNB identifying downlink communication beam (a second communication beam) among the plurality of beams wherein the gNB generating a beam indication resource as defined based on a unified TCI state (a universal TCI state) [0152] that identifies the uplink and downlink beams associated with PUSCH or PDSCH (applicability information) wherein the gNB provides the unified TCI state to a UE.
Re Claims 2, 9, 16. MOLAVIANJAZI et al teaches in figures 8 and 9, the PUSCH or PDSCH (applicability information) identifying one or more data channels associated by uplink and downlink beam identified by the unified TCI state.
Re Claims 3, 10, 17, MOLAVIANJAZI et al teaches in figure 8, 850, the UE transmits on the PUSCH (identified…the application information) using the gNB-indicated beam (the first communication beam) to the gNB (receiving, by the AN).
Re Claims 4, 11, 18, MOLAVIANJAZI et al teaches the gNB generating the unified TCI state to include one or more parameters such QCL relationship between the plurality of beams [0112-0114].
Re Claims 6-7, 13-14, 20, MOLAVIANJAZI et al teaches the gNB providing the TCI-state via a DCI [0112].
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.
Claims 5, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over MOLAVIANJAZI et al PG PUB 2021/0184812.
Re Claims 5, 12 and 19, MOLAVIANJAZI et al teaches in figure 11, 1120, the UE monitoring whether all beam indication RS resources have failed [0209], this would have included “a third communication beam” and “a fourth communication beams” as claimed. MOLAVIANJAZI et al further teaches in 1140, the UE receiving from the gNB an indication for alternative beams to perform switching from the failed beams. The alternative beams can be “the first communication beam” and “the second communication beam” as claimed. One skilled in the art would have been motivated to have switched to the working beams for channel reliability. Therefore, it would have obvious to one skilled to have switchover to the working beams.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW LEE whose telephone number is (571)272-3130. The examiner can normally be reached Monday-Friday 8:30AM-5PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KASSIM KHALAD can be reached at 5712703770. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW LEE/ Primary Examiner, Art Unit 2475
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