CTNF 18/854,730 CTNF 80416 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. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement 06-49-07 AIA The information disclosure statement filed October 7, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Drawings 06-37 AIA The drawings were received on October 7, 2024 . These drawings are acceptable . Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim s 13 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. 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. 08-35 Claim 1, 12, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 of copending Application No. 18/854,787 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following: Regarding claim 1 , claim 1 of copending Application No. 18/854,787 recites a method of operating a first communication apparatus for configuring a second communication apparatus to receive aperiodic small data transmission while the second communication apparatus is in a first operating mode, in which electronic components necessary for receiving transmissions are periodically enabled for brief time periods and disabled in between, enabling and disabling being in accordance with a schedule, scheme, or paging cycle that is configured in accordance with information received from the first communication apparatus, the method comprising: transmitting a paging message to the second communication apparatus, wherein the paging message includes or is complemented by a signal indicating properties of an impending small data transmission to the second communication apparatus (lines 11-153) . Claims 12 and 14 of the present application correspond to claims 11 and 13 of the copending Application No. 18/854,787 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-03-aia AIA Claim(s) 1, 6, and 12-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huang et al. (hereinafter “Huang”, US 2023/0309081) . Regarding claim 1 , Huang discloses a method of operating a first communication apparatus for configuring a second communication apparatus to receive aperiodic small data transmission while the second communication apparatus is in a first operating mode, in which electronic components necessary for receiving transmissions are periodically enabled for brief time periods and disabled in between, enabling and disabling being in accordance with a schedule, scheme, or paging cycle that is configured in accordance with information received from the first communication apparatus, the method comprising: transmitting a paging message to the second communication apparatus (i.e., the network initiates the paging procedure by transmitting the Paging message to the UE as described in paragraphs 0188, 0386-0387 and Abstract) , wherein the paging message includes or is complemented by a signal indicating properties of an impending small data transmission to the second communication apparatus (i.e., the Paging message indicates to the UE to perform MT_SDT as described in paragraphs 0386-0387) . Regarding claim 6 , Huang discloses a method of operating a second communication apparatus for receiving aperiodic segmented small data transmission from a first communication apparatus, while the second communication apparatus is in a first operating mode, in which electronic components necessary for receiving transmissions are periodically enabled for brief time periods and disabled in between, enabling and disabling being in accordance with a paging cycle configured in accordance with information received from the first communication apparatus, the method comprising: receiving, from the first communication apparatus and during a time period of the paging cycle (i.e., the network initiates the paging procedure by transmitting the Paging message to the UE as described in paragraphs 0188, 0386-0387 and Abstract) , in which the electronic components necessary for receiving transmissions are enabled, a signal indicating properties of an impending small data transmission to the second communication apparatus (i.e., the Paging message indicates to the UE to perform MT_SDT as described in paragraphs 0386-0387) . With further regard to claims 12, and 14 , the Examiner rejects these claims at least for the same reasons discussed in claims 1 and 6 since claims recite and include similar features to those of recited within claims 1 and 6. Regarding claims 13 and 15 , Huang discloses by being configured to establish, maintain, and terminate a wireless communication connection in accordance with 3GPP 5G and/or 6G standards (i.e., 5G as described in paragraph 0004) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 2-3, 5, 7-8, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Shah et al. (hereinafter “Shah”, US 2023/0413340) . Regarding claim 2 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses wherein the signal indicating properties of an impending small data transmission to the second communication apparatus comprises an indication whether a periodic or an aperiodic small data transmission is impending, further comprising, if an aperiodic small data transmission is impending: transmitting, in the signal indicating properties of the impending small data transmission, in a small signal transmission, or on a separate control channel, an indication permitting detection of a completion or termination of the small data transmission (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 3 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses wherein the signal indicating properties of an impending small data transmission to the second communication apparatus comprises an indication whether a periodic or an aperiodic small data transmission is impending, further comprising, if an aperiodic small data transmission is impending: transmitting, in the signal indicating properties of the impending small data transmission or in a small data transmission, an indication of a time at which the next aperiodic small data transmission will be sent (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 5 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses wherein the signal indicating properties of an impending small data transmission to the second communication apparatus comprises an indication whether a periodic or an aperiodic small data transmission is impending, further comprising, if an aperiodic small data transmission is impending: transmitting, in the signal indicating properties of the impending small data transmission configuration, information for the radio resources used in connection with the small data transmission (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 7 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses determining whether the properties in the received signal indicate an impending aperiodic small data transmission to the second communication apparatus, and if an aperiodic small data transmission is indicated: determining, from the signal indicating properties of the impending small data transmission, in a small signal transmission, or on a separate control channel, an indication permitting detection of a completion or termination of the small data transmission (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 8 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses determining whether the properties in the received signal indicate an impending aperiodic small data transmission to the second communication apparatus, and if an aperiodic small data transmission is indicated: determining, from the signal indicating properties of the impending small data transmission or in a small signal transmission, or on a separate control channel, a time at which the next aperiodic small data transmission will be sent, and enabling the electronic components necessary for receiving a small data transmission to the second communication apparatus in accordance with the determined time (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 10 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses determining whether the properties in the received signal indicate an impending aperiodic small data transmission to the second communication apparatus, and if an aperiodic small data transmission is indicated: determining, from the signal indicating properties of the impending small data transmission, configuration information for the radio resources used in connection with the small data transmission (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data. Regarding claim 11 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, Shah discloses transceiver device and scheduling device involving in transmission of small data. Shah also discloses determining whether the properties in the received signal indicate an impending aperiodic small data transmission to the second communication apparatus, and if an aperiodic small data transmission is indicated: transmitting a signal indicating acknowledgement or confirmation of readiness for the reception of aperiodic small data transmission in accordance with the received properties (i.e., determining whether the characteristic indicator indicates traffic patterns of the small data being “periodic” or “aperiodic”, and the low priority subsequent SDT with a periodic traffic pattern, the scheduling device configures dedicated SR resources as described in paragraphs 0280-0283. It is noted that this claim recites a conditional; thus, the Examiner treats the conditional step as optional. In this case, the step as recited within claim is not performed since it is determined to be aperiodic and not periodic as taught by Shah) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to ensure the resources is configured for the transmission of data . 07-21-aia AIA Claim (s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of da Silva et al. (hereinafter “da Silva”, US 2018/0302914) . Regarding claim 4 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, da Silva discloses methods and apparatus for managing small data transmissions from user equipments, for managing radio resource control states of user equipments and for managing a radio resource control context and state of use equipments. Da Silva also discloses deferring the transmission of aperiodic small data transmissions until an acknowledgement or confirmation of readiness has been received from the second communication apparatus (i.e., managing small data transmissions from a UE based on the readiness, timer, and condition at the UE as described in Abstract) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to manage resources more effectively and at the same time avoid the collisions. Regarding claim 9 , Huang discloses all limitations recited within claims as described above, but does not expressly disclose features of this claim. In a similar endeavor, da Silva discloses methods and apparatus for managing small data transmissions from user equipments, for managing radio resource control states of user equipments and for managing a radio resource control context and state of use equipments. Da Silva also disclosesdetermining, from the signal indicating properties of the impending small data transmission or in a small signal transmission, or on a separate control channel, a timer value validity information, and enabling the electronic components necessary for receiving a small data transmission to the second communication apparatus in accordance with the determined time and the timer value validity information (i.e., managing small data transmissions from a UE based on the readiness, timer, and condition at the UE as described in Abstract) . Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention. The motivation/suggestion for doing so would have been to manage resources more effectively and at the same time avoid the collisions. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE CAI whose telephone number is (571)272-7798. The examiner can normally be reached Monday-Thursday, 7:00 AM-5:00 PM. 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, KATHY WANG-HURST can be reached on (571)270-5371. 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. /Wayne H Cai/Primary Examiner, Art Unit 2644 Application/Control Number: 18/854,730 Page 2 Art Unit: 2644 Application/Control Number: 18/854,730 Page 3 Art Unit: 2644 Application/Control Number: 18/854,730 Page 4 Art Unit: 2644
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