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 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.
DETAILED ACTION
1. The application of Freda et al. for the "METHODS AND APPARATUS FOR EFFICIENT POWER SAVING IN WIRELESS NETWORKS" filed 08/28/2024 has been examined. This application is a Continuation of 18/210,828, filed 06/16/2023 now U.S. Patent # 12,101,719 which is a Continuation of 16/322,862, filed 02/01/2019, now U.S. Patent #11,722, 960 which is a National Stage entry of PCT/US2017/045033, International Filing Date: 08/02/2017 which Claims Priority from Provisional Application 62373130, filed 08/10/2016, from Provisional Application 62416404 , filed 11/02/2016, from Provisional Application 62441804 , filed 01/03/2017, from Provisional Application 62453372 , filed 02/01/2017, from Provisional Application 62474665, filed 03/22/2017. The preliminary amendment filed 08/28/2024 has been entered and made of record. Claims 31-50 are pending in the application.
2. The applicant should use this period for response to thoroughly and very closely proof read and review the whole of the application for correct correlation between reference numerals in the textual portion of the Specification and Drawings along with any minor spelling errors, general typographical errors, accuracy, assurance of proper use for Trademarks TM, and other legal symbols @, where required, and clarity of meaning in the Specification, Drawings, and specifically the claims (i.e., provide proper antecedent basis for “the'' and “said'' within each
claim). Minor typographical errors could render a Patent unenforceable and so the applicant is
strongly encouraged to aid in this endeavor.
Specification
3. The disclosure is objected to because of the following informalities: The status of the related application USSN#18/210,828 noted on page 1, para. [0001] need to be updated. This application is now US Patent#12,101,719. Appropriate correction is required.
Double Patenting
4. A rejection based on double patenting of the ''same invention'' type finds its support in
the language of 35 U.S.C. 101 which states that ''whoever invents or discovers any new and
useful process ... may obtain : patent therefor ...'' (Emphasis added). Thus, the term ''same
invention'' in this context, means an invention drawn to identical subject matter. See Miller v.
Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957);
and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
5. 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'' ranted by a patent and to prevent possible
harassment by multiple assignees. See 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 196%.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to
overcome an actual or provisional rejection based on a nonstatutory double patenting ground
provided the conflicting application or patent is shown to be commonly owned with this
application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37CFR 3.7309.
6. Claims 31-50 of the present application Serial No. 18/817,562 (hereinafter Application ‘562) rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent #12,101,719 (hereinafter ‘719) and claims 1-20 of U.S. Patent #11,722,960 (hereinafter ‘960) since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The claims are identical and they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent, since the patent and the application are claiming common subject matter. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims are equivalent in scope and embodiment. The language of the two claims is substantially identical and is equivalent in functioning. All of the structural elements of the patent claims are present in the pending claims, defined with either identical or equivalent language. Additionally, the functional language, scope and embodiment reflect identical operation, purpose, application, and environment.
With respect to the specific limitations, claims 1-18 of U.S. Patent ‘719 and claims 1-20 of U.S. Patent ‘960 are equivalent to the combination of pending claims 31-50 of Application ‘562 for scheduling an uplink signal and downlink data channel in wireless networks. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a 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. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Cirik et al. (US#2020/0351682) shows radio link monitoring in New Radio.
The Zhang et al. (US#2021/0143936) shows system and method for Fast sinsle-DCI and multi-DCI mode switching.
The Lin et al. (US#2021/0243741) shows dynamic adaptation on PDCCH monitoring behavior across multi-TRPS.
The Kim et al. (US#2021/0084628) shows method and apparatus for transmitting and receiving control and data channels in wireless communication system.
The Wang et al. (US#2021/0235441) shows control resource configurations.
The Sun et al. (US#10,631,178) shows control resource set group design for improved communications devices, systems and networks.
The Pan et al. (US#2020/0205134) shows method for monitoring PDCCH terminal and network device.
The Chou et al. (US#2018/0183551) shows method for signaling bandwidth part (BWP) indicators and radio communication equipment using the same.
The Feng et al. (US#9,131,489) shows resource allocation method and apparatus.
The Xiong et al. (US#2020/0260526) determination of advanced PUCCH resource.
The You et al. (US#10,652,872) shows DCI receiving method and UE and DCI transmitting method and BS.
The Chen et al. (US#10,104,651) shows physical downlink control channel design for narrow band Internet of things.
The Chen et al. (US#9,872,289) shows blind decoding for an enhanced physical downlink control channel (EPDCCH).
The Kim et al. (US#9,807,755) shows method for allocating resources in a wireless communication system and a device for the same.
8. Applicant's future amendments need to comply with the requirements of MPEP § 714.02, MPEP § 2163.04 and MPEP § 2163.06.
"with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims." See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). See In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) In re Wertheim, 541 F.2d at 262,191 USPQ at 96 (emphasis added). "The use of a confusing variety of terms for the same thing should not be permitted.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification." Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01 (i) and § 1302.01.
Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1,75(d)(1 ). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced."
"USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure." In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,1027-28 (Fed. Cir. 1997). MPEP § 2106. "
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. Phan whose telephone number is (571) 272-3149. The examiner can normally be reached on Mon - Fri from 6:00 to 3:00.
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, Chirag Shah, can be reached on (571) 272-3144. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-2600.
10. 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 any questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at toll free 1-866-217-9197.
Mphan
07/14/2026
/MAN U PHAN/Primary Examiner, Art Unit 2477
Prosecution Insights