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 .
Examiner’s Note
The examiner has initiated a courtesy call to the applicant's representative, Thomas D. Anderson (Reg. No. 56,293), to file a Terminal Disclaimer in order to overcome Obviousness Double Patenting Rejection for advancing compact prosecution. However, applicant's representative has not responded as of July 10, 2026. As such, an Obviousness Double Patenting Rejection is made.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged with the benefit on an earlier filing date of July 16, 2020 for Provisional Application 63/052907.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 5, 2024, May 22, 2026, and June 29, 2026 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, 2, 8 – 13, 15, 16, 22 – 27, 29, and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 – 9, 12, and 22 of U.S. Patent No. 12,114,320 (hereinafter ‘320).
Regarding claim 1, ‘320 discloses an apparatus for wireless communications at a user equipment (UE) (an apparatus for wireless communications at a user equipment (UE), see claim 1), comprising:
one or more memories (one or more memories, see claim 1); and
one or more processors coupled to the one or more memories, the one or more processors configured to cause the UE to (one or more processors coupled to the one or more memories, the one or more processors configured to cause the UE to, see claim 1):
transmit a request for a quantity of tones to be allocated to a set of peak-reduction tones for transmission of a peak-reduction signal in accordance with a reduced peak to average power ratio (PAPR) value (transmit a request for a quantity of tones to be allocated to the first set of peak-reduction tones for transmission of the peak-reduction signal in accordance with a reduced PAPR value, see claim 8); and
receive a downlink control information (DCI) based at least in part on the request for the quantity of tones (receive the second DCI based at least in part on the request, see claim 8).
Although the claims at issue are not identical, it is clear that the conflicting claims are not patentably distinct from each other because claim 1 of the instant application merely broadens the scope of claim 8 of the ‘320 Patent by essentially reciting the bold text of claim 8 of the ‘320 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. Moreover, the doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent.
Regarding claim 2, ‘320 discloses the apparatus of claim 1, wherein the request for the quantity of tones comprises at least a portion of a power headroom report (wherein the request for the quantity of tones comprises at least a portion of a power headroom report, see claim 9).
Regarding claim 8, ‘320 discloses the apparatus of claim 1, wherein the request for the quantity of tones is indicated via radio resource control signaling (receive a message comprising a configuration to monitor for the first RNTI and the second RNTI, see claim 5; wherein the configuration comprises a radio resource control (RRC) message, see claim 6).
Regarding claim 9, ‘320 discloses the apparatus of claim 1, wherein the DCI comprises a first DCI and a second DCI, wherein the first DCI is indicative of a set of data tones and the second DCI is indicative of the set of peak-reduction tones (wherein the DCI comprises a first DCI and a second DCI, wherein the first DCI is indicative of a first set of data tones and the second DCI is indicative of a first set of peak-reduction tones, see claim 1).
Regarding claim 10, ‘320 discloses the apparatus of claim 9, wherein the one or more processors are configured to cause the UE to:
transmit a signal comprising a combination of the set of data tones and the set of peak-reduction tones based at least in part on the DCI, wherein the set of data tones is different from the set of peak-reduction tones (transmit a signal comprising a combination of the first set of data tones and the first set of peak-reduction tones from the set of allocated resources based at least in part on the DCI, wherein the first set of data tones is different from the first set of peak-reduction tones, see claim 1).
Regarding claim 11, ‘320 discloses the apparatus of claim 10, wherein the one or more processors are configured to cause the UE to:
identify a PAPR value that exceeds a threshold PAPR value for an uplink transmission (identify a PAPR value that exceeds a threshold PAPR value for the uplink transmission, see claim 7); and
receive, in the first DCI, an allocation of the set of data tones that is within a threshold frequency distance from the set of peak-reduction tones based at least in part on the identified PAPR value (receive, in the first DCI, an allocation of the first set of data tones that is within a threshold frequency distance from the first set of peak-reduction tones based at least in part on the identified PAPR value, see claim 7).
Regarding claim 12, ‘320 discloses the apparatus of claim 10, wherein the one or more processors are configured to cause the UE to:
identify a PAPR value that is below a threshold PAPR value for an uplink transmission (identify a PAPR value that exceeds a threshold PAPR value for the uplink transmission, see claim 7); and
receive, in the first DCI, an allocation of the set of data tones that is outside a threshold frequency distance from the set of peak-reduction tones based at least in part on the identified PAPR value (receive, in the first DCI, an allocation of the first set of data tones that is within a threshold frequency distance from the first set of peak-reduction tones based at least in part on the identified PAPR value, see claim 7).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the instant application is modification of the allocation that is within a threshold of claim 7 of the ‘320 Patent to the allocation that is outside a threshold.
Regarding claim 13, ‘320 discloses the apparatus of claim 1, wherein the one or more processors are configured to cause the UE to:
transmit a signal indicative of one or more tone capabilities for the UE (transmit an indication of a tone reservation capability for an uplink transmission by the UE, see claim 12);
receive, in the DCI, an allocation for the quantity of tones based at least in part on the one or more tone capabilities for the UE (determine the set of allocated resources is scheduled by the DCI in accordance with the tone reservation capability of the UE; and configure the signal based at least in part on the tone reservation capability, see claim 12).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the instant application is modification of the apparatus determining and configuring the tone reservation capability in claim 12 of the ‘320 Patent to receive allocation for the tones.
Regarding claim 15, ‘320 discloses an apparatus for wireless communications at a network entity (an apparatus for wireless communications at a network device, see claim 22), comprising:
one or more memories (one or more memories, see claim 22); and
one or more processors coupled to the one or more memories, the one or more processors configured to cause the network entity to (one or more processors coupled to the one or more memories, the one or more processors configured to cause the network device to, see claim 22):
obtain a request for a quantity of tones to be allocated to a set of peak-reduction tones for transmission of a peak-reduction signal in accordance with a reduced peak to average power ratio (PAPR) value (transmit a request for a quantity of tones to be allocated to the first set of peak-reduction tones for transmission of the peak-reduction signal in accordance with a reduced PAPR value, see claim 8); and
output, for a user equipment (UE), a downlink control information (DCI) based at least in part on the request for the quantity of tones (receive the second DCI based at least in part on the request, see claim 8).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the instant application is modification of the apparatus in claim 8 of the ‘320 Patent to be performed on the network entity.
Regarding claim 16, ‘320 discloses the apparatus of claim 15, wherein the request for the quantity of tones comprises at least a portion of a power headroom report (wherein the request for the quantity of tones comprises at least a portion of a power headroom report, see claim 9).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the instant application is modification of the apparatus in claim 9 of the ‘320 Patent to be performed on the network entity.
Regarding claim 22, ‘320 discloses the apparatus of claim 15, wherein the request for the quantity of tones is indicated via radio resource control signaling (receive a message comprising a configuration to monitor for the first RNTI and the second RNTI, see claim 5; wherein the configuration comprises a radio resource control (RRC) message, see claim 6).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 22 of the instant application is modification of the apparatus in claims 5 and 6 of the ‘320 Patent to be performed on the network entity.
Regarding claim 23, ‘320 discloses the apparatus of claim 15, wherein the DCI comprises a first DCI and a second DCI, wherein the first DCI is indicative of a set of data tones and the second DCI is indicative of the set of peak-reduction tones (wherein the DCI comprises a first DCI and a second DCI, wherein the first DCI is indicative of the first set of data tones and the second DCI is indicative of the first set of peak-reduction tones, see claim 22).
Regarding claim 24, ‘320 discloses the apparatus of claim 23, wherein the one or more processors are configured to cause the network entity to:
obtain a signal comprising a combination of the set of data tones and the set of peak-reduction tones based at least in part on the DCI, wherein the set of data tones is different from the set of peak-reduction tones (receive the signal comprising a combination of the first set of data tones and the first set of peak-reduction tones based at least in part on the DCI, see claim 22).
Regarding claim 25, ‘320 discloses the apparatus of claim 24, wherein the one or more processors are configured to cause the network entity to:
output, in the first DCI, an allocation of the set of data tones that is within a threshold frequency distance from the set of peak-reduction tones based at least in part on a PAPR value that exceeds a threshold PAPR value for an uplink transmission (receive, in the first DCI, an allocation of the first set of data tones that is within a threshold frequency distance from the first set of peak-reduction tones based at least in part on the identified PAPR value, see claim 7).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 25 of the instant application is modification of the apparatus in claim 7 of the ‘320 Patent to be performed on the network entity.
Regarding claim 26, ‘320 discloses the apparatus of claim 24, wherein the one or more processors are configured to cause the network entity to:
output, in the first DCI, an allocation of the set of data tones that is outside a threshold frequency distance from the set of peak-reduction tones based at least in part on a PAPR value that is below a threshold PAPR value for an uplink transmission (receive, in the first DCI, an allocation of the first set of data tones that is within a threshold frequency distance from the first set of peak-reduction tones based at least in part on the identified PAPR value, see claim 7).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 26 of the instant application is modification of the allocation for the apparatus that is within a threshold of claim 7 of the ‘320 Patent to the allocation that is outside a threshold on the network entity.
Regarding claim 27, ‘320 discloses the apparatus of claim 15, wherein the one or more processors are configured to cause the network entity to:
obtain a signal indicative of one or more tone capabilities for the UE (transmit an indication of a tone reservation capability for an uplink transmission by the UE, see claim 12);
output, in the DCI, an allocation for the quantity of tones based at least in part on the one or more tone capabilities for the UE (determine the set of allocated resources is scheduled by the DCI in accordance with the tone reservation capability of the UE; and configure the signal based at least in part on the tone reservation capability, see claim 12).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 27 the instant application is modification of the apparatus determining and configuring the tone reservation capability in claim 12 of the ‘320 Patent to receive allocation for the tones from the network entity.
Regarding claim 29, ‘320 discloses a method for wireless communications at a user equipment (UE), comprising:
transmitting a request for a quantity of tones to be allocated to a set of peak-reduction tones for transmission of a peak-reduction signal in accordance with a reduced peak to average power ratio (PAPR) value (transmit a request for a quantity of tones to be allocated to the first set of peak-reduction tones for transmission of the peak-reduction signal in accordance with a reduced PAPR value, see claim 8); and
receiving a downlink control information (DCI) based at least in part on the request for the quantity of tones (receive the second DCI based at least in part on the request, see claim 8).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 29 the instant application is the method claim of the apparatus in claim 8 of the ‘320 Patent.
Regarding claim 30, ‘320 discloses a method for wireless communications at a network entity, comprising:
obtaining a request for a quantity of tones to be allocated to a set of peak-reduction tones for transmission of a peak-reduction signal in accordance with a reduced peak to average power ratio (PAPR) value (transmit a request for a quantity of tones to be allocated to the first set of peak-reduction tones for transmission of the peak-reduction signal in accordance with a reduced PAPR value, see claim 8); and
outputting, for a user equipment (UE), a downlink control information (DCI) based at least in part on the request for the quantity of tones (receive the second DCI based at least in part on the request, see claim 8).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 30 of the instant application is method claim of the apparatus in claim 8 of the ‘320 Patent to be performed on the network entity.
Allowable Subject Matter
Claims 3 – 7, 14, 17 – 21, and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
YE et al (US Patent Application Publication 2019/0215849) – the UE provides capability information to the access node, receives configuration/allocation information related to the use of sub-PRB PUSCH allocations, and generates the transmission of DMRS/PUSCH, where the transmission of 2-tone BPSK DMRS symbols is transmitted on one out of these two subcarriers, thus the peak-to-average-power-ratio (PAPR) is the same as single-tone transmission
PARK et al (US Patent Application Publication 2021/0014893) – the first base station determines combined resource information associated with a first cell based on the resource information that comprises a combined channel busy ratio of a sidelink resource pool, sends an information message comprising the combined resource information to a second base station, receives a request message requesting a resource configuration of the first cell for a wireless device from the second base station that is based on the information message, where the MAC CE information includes buffer status reports and power headroom reports
BACK et al (US Patent Application Publication 2022/0159678) – the UE transmits SCI, maps at least one complex-valued modulation symbol to a plurality of sub-carriers which is related to a sidelink data signal and a preset value, generates the sidelink data signal by modulating the at least one complex-valued modulation symbol and the preset value by OFDM; and transmits the sidelink data signal on the basis of the SCI, wherein the SCI comprises information regarding a sub-carrier set including at least one sub-carrier to which the preset value is mapped from among the plurality of sub-carriers, and at least one of the location and number in a frequency domain of the at least one sub-carrier to which the preset value is mapped is different for each sub-carrier set, and the preconfigured value is a value set to minimize a peak to average power ratio (PAPR) of the sidelink data signal
BACK et al (US Patent Application Publication 2022/0191908) – a first complex-valued modulation symbol associated with a sidelink control signal is mapped to a control resource included in a sidelink resource, at least one second complex-valued modulation symbol associated with a sidelink data signal is mapped to a data resource included in the sidelink resource, a preset value is mapped to a plurality of subcarriers included in the sidelink resource, the at least one first complex-valued modulation symbol, the at least one second complex-valued modulation symbol, and the preset value are orthogonal frequency division multiplexing (OFDM)-modulated to generate the sidelink control signal and the sidelink data signal, and the sidelink control signal and the sidelink data signal are transmitted by the UE, where the transmission is based on the allocating tones for cancelling in-band emission/inter-carrier interference (ICI) and reducing a peak to average power ratio (PAPR)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAI J CHANG whose telephone number is (571)270-5448. The examiner can normally be reached Monday - Friday, 10AM-6PM EST.
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/Kai Chang/Examiner, Art Unit 2468
/Thomas R Cairns/Primary Examiner, Art Unit 2468
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