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 .
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1of U.S. Patent No. 11,523,437. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1of U.S. Patent No. 11,523,437 anticipate pending claim 1.
Claim #
Current application
Claim #
U.S. Patent No. 11,523,437
1
A method of operating a wireless terminal in communication with a network node, the
method comprising:
receiving a Physical Downlink Control Channel, PDCCH, order from the network node,
wherein the PDCCH order includes an identification for a Random Access CHannel, RACH,
occasion to be used for a RACH message 1 preamble transmission, wherein the identification
includes a first index that indicates a set of RACH occasions and a second index that indicates
the RACH occasion associated with the set; and
responsive to the PDCCH order, transmitting a Message 1 preamble to the network node
using the RACH occasion
1
A method of operating a wireless terminal in communication with a network node, the method comprising: receiving a Physical Downlink Control Channel, PDCCH, order from the network node, wherein the PDCCH order includes an identification for a Random Access CHannel, RACH, occasion to be used for a RACH message 1 preamble transmission, wherein the identification includes a first index that indicates a set of RACH occasions and a second index that indicates the RACH occasion associated with the set; wherein the first index is a synchronization signal block, SSB, index that indicates a set of RACH occasions that are associated with the SSB index, wherein the second index is a RACH occasion, RO, index that indicates the RACH occasion associated with the set of RACH occasions indicated by the SSB index, and responsive to the PDCCH order, transmitting a Message 1 preamble to the network node using the RACH occasion
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park to (US20190182800) in view of NOKIAETAL: “Summary of Remaining Details on RACH Procedure" from IDS
Regarding claim 1, Park teaches method of operating a wireless terminal in communication with a network node,(see, fig.9) the method comprising: receiving a Physical Downlink Control Channel, PDCCH, order from the network node,([0186] discloses The base station may also transmit a PDDCH order 901 to the wireless device) and responsive to the PDCCH order, transmitting a Message 1 preamble to the network node using the RACH occasion([00186] discloses The wireless device may begin to perform a RACH process for the SCell, which may be initiated, for example, after receiving the PDDCH order 901. A wireless device may transmit to the base station (e.g., as part of a RACH process) a preamble 902 (e.g., Msg1), such as a random access preamble (RAP))
Park does not explicitly teach wherein the PDCCH order includes an identification for a Random Access CHannel, RACH, occasion to be used for a RACH message 1 preamble transmission, wherein the identification includes a first index that indicates a set of RACH occasions and a second index that indicates the RACH occasion associated with the set
“Summary of Remaining Details on RACH Procedure" teaches wherein the PDCCH order includes an identification for a Random Access Channel, RACH, occasion to be used for a RACH message 1 preamble transmission (page 36, section 5.3: parameters to be included in the PDCCH order - SSB-index... RO mask), wherein the identification includes a first index that indicates a set of RACH occasions (page 36, section 5.3: SSB-index; page 2, section 2, agreements: all FDMed RACH occasions get mapped to the same SSB) and a second index that indicates the RACH occasion associated with the set (page 36, section 5.3: RO mask)
Therefore it would have been obvious to one ordinarily skilled in the art before the effective filling date of the claimed invention to enable the system of Park include wherein the PDCCH order includes an identification for a Random Access CHannel, RACH, occasion to be used for a RACH message 1 preamble transmission, wherein the identification includes a first index that indicates a set of RACH occasions and a second index that indicates the RACH occasion associated with the set, as suggested by “Summary of Remaining Details on RACH Procedure". This modification would benefit the system to reduce communication error.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEWDU A BEYEN whose telephone number is (571)270-7157. The examiner can normally be reached M-F 9:00-6:00.
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/ZEWDU A BEYEN/Primary Examiner, Art Unit 2461
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