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 10/4/24 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are 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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 9, 11, 14-16, 19, and 20 of U.S. Patent No. 12,081,485. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following correspondences.
Regarding claim 1, “a method comprising: receiving, by a wireless device, a first uplink grant, for a first transport block (TB) of a hybrid acknowledgment repeat request (HARQ) process associated with a new data indication (NDI)” corresponds to the same in claim 1 of the above U.S. Patent.
“Receiving a group common signal comprising a cancellation indication indicating cancellation of transmission via one or more uplink resources indicated by the first uplink grant” corresponds to “receiving a group common downlink control information (DCI) comprising a pre-emption indication indicating cancellation of transmission via one or more uplink resources indicated by the first uplink grant” in claim 1 of the above U.S. Patent.
“Cancelling an uplink transmission of the first TB of the HARQ process based on the receiving the cancellation indication” corresponds to “cancelling an uplink transmission of the first TB of the HARQ process based on the receiving the pre-emption indication” in claim 1 of the above U.S. Patent.
“After cancelling the uplink transmission of the first TB of the HARQ process, determining that: the NDI associated with the HARQ process is toggled; and a received second uplink grant is used for a new transmission of a second TB associated with the HARQ process” corresponds to “determining the NDI associated with the HARQ process as being toggled after cancelling the uplink transmission of the first TB of the HARQ process; determining that a received second uplink grant is used for a new transmission of a second TB associated with the HARQ process” in claim 1 of the above U.S. Patent.
Lastly, “transmitting, by the wireless device, the second TB of the HARQ process based on the determining” corresponds to the same in claim 1 of the above U.S. Patent.
Claim 1 of the instant application does not claim “receiving … from a base station”, “determining … based on the NDI associated with the HARQ process being toggled”, or “transmitting … to the base station”. Therefore, claim 1 merely broadens the scope of claim 1 of the above U.S. Patent.
It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. See In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). The omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Regarding claim 2, this claim similarly corresponds to claim 4 of the above U.S. Patent.
Regarding claim 3, this claim similarly corresponds to claim 5 of the above U.S. Patent.
Regarding claim 4, this claim similarly corresponds to claim 6 of the above U.S. Patent.
Regarding claim 5, this claim similarly corresponds to claim 1 of the above U.S. Patent.
Regarding claim 6, this claim similarly corresponds to claim 9 of the above U.S. Patent.
Regarding claim 7, this claim similarly corresponds to claim 1 of the above U.S. Patent.
Regarding claim 8, this corresponding “wireless device” claim similarly corresponds to claim 11 of the above U.S. Patent for similar reasoning as described for claim 1 above.
Regarding claim 9, this claim similarly corresponds to claim 14 of the above U.S. Patent.
Regarding claim 10, this claim similarly corresponds to claim 15 of the above U.S. Patent.
Regarding claim 11, this claim similarly corresponds to claim 16 of the above U.S. Patent.
Regarding claim 12, this claim similarly corresponds to claim 11 of the above U.S. Patent.
Regarding claim 13, this claim similarly corresponds to claim 19 of the above U.S. Patent.
Regarding claim 14, this claim similarly corresponds to claim 11 of the above U.S. Patent.
Regarding claim 15, this corresponding “non-transitory computer-readable medium” claim similarly corresponds to claim 20 of the above U.S. Patent for similar reasoning as described for claim 1 above.
Regarding claim 16, this claim similarly corresponds to claim 14 of the above U.S. Patent.
Regarding claim 17, this claim similarly corresponds to claim 15 of the above U.S. Patent.
Regarding claim 18, this claim similarly corresponds to claim 16 of the above U.S. Patent.
Regarding claim 19, this claim similarly corresponds to claim 19 of the above U.S. Patent.
Regarding claim 20, this claim similarly corresponds to claim 20 of the above U.S. Patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References considered relevant to this application are listed in the attached “Notice of References Cited” (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J. MOORE, JR., whose telephone number is (571)272-3168. The examiner can normally be reached M-F (9am-4pm).
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, Hassan A. Phillips can be reached at (571)272-3940. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J MOORE JR/Primary Examiner, Art Unit 2467
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