CTNF 18/822,064 CTNF 84301 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 12089203 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent 12089203 anticipated the claims in the instant application as shown in the table below . Claim 1 of instant application Claims 1+4+7 of patent 12089203 A method comprising: receiving first information for: self-scheduling from a first serving cell on the first serving cell, and cross-carrier scheduling from a second serving cell on the first serving cell, wherein an active downlink (DL) bandwidth part (BWP) of the first serving cell has a subcarrier spacing (SCS) configuration μ1 and wherein an active DL BWP of the second serving cell has a SCS configuration μ2; determining: a first number of scheduled cells associated with scheduling cells having respective active DL BWPs with the SCS configuration μ1, a second number of scheduled cells associated with scheduled cells having respective active DL BWPs with the SCS configuration μ2, a first total number M.sub.PDCCH.sup.total,slot,μ1 of physical downlink control channel (PDCCH) receptions per slot for the first serving cell, and a first total number C.sub.PDCCH.sup.total,slot,μ1 of non-overlapping control channel elements (CCEs) per slot for the first serving cell, wherein: M.sub.PDCCH.sup.total,slot,μ1 and C.sub.PDCCH.sup.total,slot,μ1 are based on the first number of scheduled cells and the second number of scheduled cells, when μ1=μ2, the first serving cell is counted once towards the first number of scheduled cells, and when μ1<μ2, the first serving cell is counted once towards a sum of: the first number of scheduled cells, and the second number of scheduled cells; and receiving first PDCCHs over first non-overlapping CCEs on the first serving cell for scheduling on the first serving cell, and second PDCCHs over second non-overlapping CCEs on the second serving cell for scheduling on the first serving cell, in a slot of the first serving cell, based on M.sub.PDCCH.sup.total,slot,μ1 and C.sub.PDCCH.sup.total,slot,μ1 A method for receiving physical downlink control channels (PDCCHs), the method comprising: receiving first information for first search space sets associated with receptions of first PDCCHs on a first scheduling cell, wherein: the first PDCCHs have subcarrier spacing (SCS) configuration μ1, a first PDCCH from the first PDCCHs provides a first downlink control information (DCI) format, the first DCI format schedules a first physical downlink shared channel (PDSCH) reception or a first physical uplink shared channel (PUSCH) transmission on a scheduled cell, and the first DCI format is from a first set of DCI formats; receiving second information for second search space sets associated with receptions of second PDCCHs on a second scheduling cell, wherein: the second PDCCHs have SCS configuration μ2, a second PDCCH from the second PDCCHs provides a second DCI format, the second DCI format schedules a second PDSCH reception or a second PUSCH transmission on the scheduled cell, and the second DCI format is from a second set of DCI formats, wherein the second set of DCI formats is different from the first set of DCI formats; and determining: a first number of scheduled cells associated with scheduling cells having PDCCH receptions with SCS configuration μ1, wherein, when μ1=μ2, the scheduled cell is counted once towards the first number of scheduled cells, and a second number of scheduled cells associated with scheduled cells having PDCCH receptions with SCS configuration μ2 wherein, when μ1<μ2, the scheduled cell is counted once towards a sum of: the first number of scheduled cells, and the second number of scheduled cells; determining a number of PDCCH receptions over a number of non-overlapping control channel elements (CCEs) in a slot of the first scheduling cell based on the second search space sets, wherein: the number of PDCCH receptions does not exceed (1−α).Math.min(M.sub.PDCCH.sup.total,slot, μ1,M.sub.PDCCH.sup.max,slot,μ1), the number of non-overlapping CCEs does not exceed (1−α).Math.min(C.sub.PDCCH.sup.total, slot,μ1,C.sub.PDCCH.sup.max,slot,μ1), α is a scaling factor, M.sub.PDCCH.sup.total, slot,μ1 and C.sub.PDCCH.sup.total, slot,μ1 are respectively a total number of PDCCH receptions and a total number of non-overlapping CCEs per slot for the first scheduling cell, M.sub.PDCCH.sup.max, slot,μ1 and C.sub.PDCCH.sup.total, slot,μ1 are respectively a maximum number of PDCCH receptions and a maximum number of non-overlapping CCEs per slot for the first scheduling cell, and μ1≤μ2; α=1 when the second scheduling cell is a deactivated cell or an active downlink (DL) bandwidth part (BWP) of the second scheduling cell is a dormant BWP Appropriate correction required . Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite when u1 < u2, the first serving cell is counted once towards a sum of the first and second scheduled cells. The specification does not appear to support this limitation. Paragraph 364 of the published specification teaches that when the first and second numerologies are different, the UE counts the third service cell twice towards the total number of DL CCs; however, this does not appear to support the claim language at issue. Appropriate correction required. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M RENNER whose telephone number is (571)270-3621. The examiner can normally be reached Monday-Friday 7am-5pm EST. 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, Derrick Ferris can be reached at (571)-272-3123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. /BRANDON M RENNER/Primary Examiner, Art Unit 2411 Application/Control Number: 18/822,064 Page 2 Art Unit: 2411 Application/Control Number: 18/822,064 Page 3 Art Unit: 2411 Application/Control Number: 18/822,064 Page 4 Art Unit: 2411 Application/Control Number: 18/822,064 Page 5 Art Unit: 2411 Application/Control Number: 18/822,064 Page 6 Art Unit: 2411 Application/Control Number: 18/822,064 Page 7 Art Unit: 2411 Application/Control Number: 18/822,064 Page 8 Art Unit: 2411 Application/Control Number: 18/822,064 Page 9 Art Unit: 2411 Application/Control Number: 18/822,064 Page 10 Art Unit: 2411 Application/Control Number: 18/822,064 Page 11 Art Unit: 2411 Application/Control Number: 18/822,064 Page 12 Art Unit: 2411
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