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.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,120,732 B2 in view of Zhang (US 2022/0046604 A1). Claims 1-9 of U.S. Patent No. 12,120,732 B2 disclose a method, a user equipment, and a non-transitory computer readable storage medium storing program for canceling random access message transmission when a time domain resource of the PRACH conflicts a time domain resource indicated by DCI. Claims 1-9 of U.S. Patent No. 12,120,732 B2 do not disclose that the time domain resource for the PRACH overlaps with at least one of the following resources indicated by the network side message: a downlink transmission resource, a downlink time domain resource, or a flexible time domain resource. Zhang discloses that the terminal receives, via higher layer signaling, first indication information for receiving downlink transmission, e.g., PDSCH, which overlaps with PRACH, obtained from second indication information (256th – 258th paragraphs). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1-9 of U.S. Patent No. 12,120,732 B2 to cancel random access message transmission when a time domain resource of the PRACH overlaps with a downlink transmission resource, a downlink time domain resource, or a flexible time domain resource, as suggested by, to prevent collisions in downlink and uplink transmissions simultaneously.
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.
Claims 1-3, 7-9, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over by Zhang (US 2022/0046604 A1) in view of Hakola et al (US 2020/0267768 A).
Regarding claim 1, Zhang discloses a random access method, applied to user equipment and comprising:
in a case that a time domain resource for a random access message conflicts with a time domain resource indicated by a network-side message (188th, 189th and 192nd paragraphs, when the first time domain resource used to send the PRACH, either completely or partially, overlaps with the second time domain resource used to receive/transmit SL data. The second time domain resource is indicated by second indication information and carried in DCI), canceling transmission of the random access message (272nd paragraph, the terminal may cancel the sending of PRACH on the first time domain resource);
that the time domain resource for the random access message conflicts with the time domain resource indicated by the network-side message comprises: that a time domain resource for the PRACH conflicts the time domain resource indicated by the network side message (188th, 189th and 192nd paragraphs, when the first time domain resource used to send the PRACH, either completely or partially, overlaps with the second time domain resource used to receive/transmit SL data. The second time domain resource is indicated by second indication information and carried in DCI).
Zhang discloses PRACH transmission (60th paragraph). Zhang does not disclose that wherein the random access message comprises a random access channel (PRACH) and an uplink data channel (PUSCH). Hakola discloses two-step random access procedure wherein the random access message includes PRACH and PUSCH in first and second portions of the message (29th paragraph). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include two step random access procedure in Zhang’s system, as suggested by Hakola, to reduce signaling.
Regarding claims 2, 8, and 14, Zhang discloses that wherein that the time domain resource for the PRACH conflicts with the time domain resource indicated by the network-side message comprises: the time domain resource for the PRACH at least partially overlaps with at least one of the following resources indicated by the network-side message: a downlink transmission resource; a downlink time domain resource; or a flexible time domain resource (188th, 189th and 192nd paragraphs, when the first time domain resource used to send the PRACH, either completely or partially, overlaps with the second time domain resource used to receive/transmit SL data. The second time domain resource is indicated by second indication information and carried in DCI).
Regarding claims 3, 9, and 15, Zhang discloses that wherein the network side message is downlink control information (DCI) (192nd paragraph, the second time domain resource is indicated by second indication information and carried in DCI).
Regarding claims 7 and 13, Zhang discloses user equipment (Fig. 17), comprising: a processor (Fig. 17, processor 1701), a memory (Fig. 17, memory 1702), and a computer program stored in the memory and capable of running on the processor, wherein when the computer program is executed by the processor, a random access method is implemented, and the random access method comprises:
in a case that a time domain resource for a random access message conflicts with a time domain resource indicated by a network-side message (188th, 189th and 192nd paragraphs, when the first time domain resource used to send the PRACH, either completely or partially, overlaps with the second time domain resource used to receive/transmit SL data. The second time domain resource is indicated by second indication information and carried in DCI), canceling transmission of the random access message (272nd paragraph, the terminal may cancel the sending of PRACH on the first time domain resource);
that the time domain resource for the random access message conflicts with the time domain resource indicated by the network-side message comprises: that a time domain resource for the PRACH conflicts the time domain resource indicated by the network side message (188th, 189th and 192nd paragraphs, when the first time domain resource used to send the PRACH, either completely or partially, overlaps with the second time domain resource used to receive/transmit SL data. The second time domain resource is indicated by second indication information and carried in DCI).
Zhang discloses PRACH transmission (60th paragraph). Zhang does not disclose that wherein the random access message comprises a random access channel (PRACH) and an uplink data channel (PUSCH). Hakola discloses two-step random access procedure wherein the random access message includes PRACH and PUSCH in first and second portions of the message (29th paragraph). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include two step random access procedure in Zhang’s system, as suggested by Hakola, to reduce signaling.
Allowable Subject Matter
Claims 4-6, 10-12, and 16 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
Lin (US 2019/0313462 A1), generally related, discloses handling of simultaneous transmission of PRACH and PUSCHs in mobile communications (Figs. 3-4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH VU H LY whose telephone number is (571)272-3175. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nick Jensen can be reached at 571-270-5443. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANH VU H. LY
Primary Examiner
Art Unit 2472
/ANH VU H LY/Primary Examiner, Art Unit 2472
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