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 9/18/26, 12/24/25, 10/22/25, 4/17/25, 3/25/25, 3/13/25, 2/6/25, 9/11/24, and 8/30/24 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 25 and 26 of U.S. Patent No. 12,137,460. 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 wireless transmit/receive unit (WTRU), comprising: a receiver and a transmitter, wherein the receiver is configured to: receive a first physical downlink shared channel (PDSCH) transmission; receive a second PDSCH transmission” corresponds to the same in claim 25 of the above U.S. Patent.
“A processor configured to: determine a first physical uplink control channel (PUCCH) resource for transmission of first hybrid automatic repeat request (HARQ) information associated with the first PDSCH transmission; determine a second PUCCH resource for transmission of second HARQ information associated with the second PDSCH transmission” corresponds to “a processor configured to: determine first HARQ information associated with the first PDSCH transmission” as well as “select a first PUCCH resource from the plurality of PUCCH resources” as well as “determine second HARQ information associated with the second PDSCH transmission” as well as “select a second PUCCH resource from the plurality of PUCCH resources” in claim 25 of the above U.S. Patent.
“Determine a priority for each of the first and second HARQ information” corresponds to the same in claim 25 of the above U.S. Patent.
Lastly, “determine, on condition that the first PUCCH resource overlaps in time with the second PUCCH resource, and on condition that the priority of the first HARQ information is different than the priority of the second HARQ information, whether lower priority HARQ information is allowed to be multiplexed with higher priority HARQ information; wherein the transmitter is configured for multiplexing the first and second HARQ information and sending the multiplexed first and second HARQ information in a single PUCCH transmission, and wherein the multiplexing is conditioned on the lower priority HARQ information being allowed to be multiplexed with the higher priority HARQ information” corresponds to “on condition that the first PUCCH resource overlaps in time with the second PUCCH resource, and on condition that the priority of the first HARQ information is different than the priority of the second HARQ information, determine whether lower priority HARQ information is allowed to be multiplexed with higher priority HARQ information” as well as “wherein, on condition that lower priority HARQ information is allowed to be multiplexed with higher priority HARQ information, the transmitter is configured to multiplex the first and second HARQ information and send the multiplexed first and second HARQ information in a single PUCCH transmission in claim 25 of the above U.S. Patent.
Claim 1 of the instant application does not claim “receive configuration information indicating a plurality of physical uplink control channel (PUCCH) resource sets to be used for transmission of hybrid automatic repeat request (HARQ) information, wherein each of the plurality of PUCCH resource sets includes a plurality of PUCCH resources” as well as “receive, in first downlink control information (DCI), information including (1) a first PUCCH set indication; and (2) a first resource indicator, wherein the first PUCCH set indication and the first resource indicator are separate fields in the first DCI” as well as “receive, in second DCI, information including (1) a second PUCCH set indication and (2) a second resource indicator, wherein the second PUCCH set indication and the second resource indicator are separate fields in the second DCI” as well as “select a first PUCCH resource set from the plurality of PUCCH resource sets based on at least the first PUCCH set indication” as well as “select a second PUCCH resource set from the plurality of PUCCH resource sets based on at least the second PUCCH set indication”. Therefore, claim 1 merely broadens the scope of claim 25 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 25 of the above U.S. Patent.
Regarding claim 3, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 4, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 5, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 6, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 7, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 8, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claim 9, this claim similarly corresponds to claim 26 of the above U.S. Patent.
Regarding claim 10, this claim similarly corresponds to claim 25 of the above U.S. Patent.
Regarding claims 11-20, these corresponding “method” claims including the same “receiving” and “determining” steps as recited in claim 1 similarly correspond to claims 25 and 26 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).
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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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