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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1, 3-4 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,244,559. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,932,298. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,069,729. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-6, the respective claims of the parent patents recite features such as obtaining information for a random access procedure and/or random access responses for other terminals. However, the claims additionally recite features such first information received through a channel carrying downlink scheduling information and/or the claims recite limitations in various combinations. In removing the additional features, the scope of the claims is merely broadened by eliminating elements and their functions. It has been held that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (1963); In re Nelson, 95 USPQ 82 (CCPA 1952); and In re Eliot, 25 USPQ 111 (CCPA 1935). Also note Ex parte Rainu, 168 USPQ 365 (Bd. App. 1969) (omission of a reference element whose function is not needed would be obvious to one skilled in the art). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention (or at the time the invention was made, pre-AIA ) to not recite the additional features.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Vujcic (US 2009/0252125) in view of Baker (US 6,674,737) and Pajukoski et al. (US 2007/0206531). For dependent claims herein, the motivation to combine is the same as the parent claim unless otherwise noted.
Regarding claim 1, Vujcic discloses a wireless communication method (fig. 14) comprising: transmitting, at a terminal, a random access preamble (S1402);
However, Vujcic fails to disclose receiving, at the terminal, first information, wherein the first information comprises radio resource information; obtaining, at the terminal, second information at least based on the radio resource information. Baker discloses first information comprising radio resource information and obtaining second information based at least on the radio resource information (fig. 2; col. 3, lines 21-38; col 4, lines 3-7; note: BCH field having resource information to acquire a random access channel RACH for downstream responses). Therefore, it would have been obvious to one skilled in the art at the time the invention was made to have receiving, at the terminal, first information, wherein the first information comprises radio resource information; obtaining, at the terminal, second information at least based on the radio resource information in the invention of Vujcic. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, providing resource information (i.e., specific frequencies and/or time slots) to facilitate communication as is known in the art (Baker, fig. 2; col. 3, lines 21-38 and col 4, lines 3-7; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Further, Vujcic in view of Baker fails to teach and make obvious the first random access response comprising a first random access preamble index which identifies the random access preamble. Pajukoski discloses this feature (fig. 4, index of the observed signature; para. 55, lines 12-17). Therefore, it would have been obvious to one skilled in the art at the time the invention was made to have the first random access response comprise a first random access preamble index which identifies the random access preamble in the invention of Vujcic in view of Baker. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, providing an acknowledgement of a received signature among signatures on a random access channel as is known in the art (Pajukoski, fig. 4 and para. 55; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Regarding claim 6, Vujcic in view of Baker and Pajukoski teaches and makes obvious the method of claim 1, wherein the first random access response comprises information about uplink radio resources, and the method further comprises: transmitting uplink data through the uplink radio resources (Vujcic, para. 153; para. 144, lines 19-27; note: RACH resources used for an uplink transmission from the terminal).
Allowable Subject Matter
Claims 2-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Harper whose telephone number is 571-272-3166. The examiner can normally be reached weekdays from 11:00 AM to 7:00 PM 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, Yemane Mesfin, can be reached at 571-272-3927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. For non-official communications, the examiner’s e-mail address is kevin.harper@uspto.gov (MPEP 502.03 – A copy of all received emails relating to an application including proposed amendments and excluding scheduling information for interviews will be placed informally into the application file).
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kevin C. Harper/
Primary Examiner, Art Unit 2462
Prosecution Insights