DETAILED ACTION
This Office action is a response to Preliminary Amendment made to an Application No. 18/877,004 filed on 12/19/2025 in which claims 1-5 are canceled and new claims 6-9 are added. Accordingly, claims 6-9 are currently pending for examination.
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 .
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 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.
Drawings
The Examiner contends that the drawings submitted on 12/19/2024 are acceptable for examination proceedings.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Information Disclosure Statement
The Examiner has considered the reference(s) listed on the Information Disclosure Statement submitted on 12/19/2024 and 06/03/2026.
Claim Objections
Claims 6-9 are objected to because of the following informalities:
Claims 6-9 recites acronyms such as “UL” in line 4 respectively. For clarity, it is suggested to spell out the specified acronyms in at least the first time it is mentioned in the claim.
Claim 9 recites “A system comprising a terminal and a base station,…” in line 1. For clarity and formality, it is suggested to insert the colon ":" after the word -- comprising: -- in order to properly demarcate the preamble and the body of the claim.
Appropriate corrections are required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-10 of copending Application No. 18/877,112 (hereinafter ‘112) in view of Babaei (US 2023/0232420 A1) hereinafter “Babaei”. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in this instant application and co-pending application ‘112 disclose the similar features, therefore claims 6-9 in this instant application constitute obvious double patenting over said claims of ‘112.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding pending claim 6, the claimed limitation of said claim 6 are substantially the same as claim 7 of ‘112.
However, ‘112 does not recite suspends uplink transmission. In the same analogous art, Babaei discloses wherein the processor suspends uplink transmission in a certain period after the ACK transmission of the MAC CE (see ¶ [0220] [0227], the wireless device may not perform and/or may stop uplink transmission during the switching gap period).
Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide suspends uplink transmission as taught by Babaei, in the system of ‘112, so that it would provide to enhance processes for switching between uplink carriers to enable efficient utilization of TX chains/radio frequency (RF) TX resources (Babaei: see ¶ [0037]).
The table below shows only Example (sample) of how each of the limitations/claims is/are similar features with co-pending application ‘112.
Instant Application No. 18/877,004
Co-pending Application No. 18/877,112
6. A terminal comprising:
a receiver that receives a medium access control control element (MAC CE) for indicating cell switch, the MAC CE including at least one of a transmission configuration indication (TCI) state and a UL TCI state for a target cell; and
a processor that applies the TCI state or the UL TCI state included in the MAC CE after a certain period elapses from acknowledgement (ACK) transmission of the MAC CE,
wherein the processor suspends uplink transmission in a certain period after the ACK transmission of the MAC CE.
7. A terminal comprising:
a receiver that receives a medium access control control element (MAC CE) for indicating cell switch in different frequency bands, the MAC CE including at least one of a transmission configuration indication (TCI) state and a UL TCI state for a target cell; and
a processor that applies the TCI state or the UL TCI state included in the MAC CE after a certain time period elapses from acknowledgement (ACK) transmission of the MAC CE.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 8 recites the limitation “the certain time period” in line 7. It is unclear whether “the certain time period” refers to “a certain period” in line 5. There is insufficient antecedent basis for this limitation in the claim.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over YUAN et al. (US 2025/0317821 A1) hereinafter “Yuan” in view of Babaei (US 2023/0232420 A1) hereinafter “Babaei”.
Regarding claims 6 and 7, Yuan discloses Claim 6 of a terminal (see FIG. 4; see ¶ [0096], a UE) and Claim 7 of a radio communication method for a terminal (see FIG. 4; see ¶ [0096], a UE), comprising:
a receiver (see FIG. 4; see ¶ [0096-97], a UE includes wireless transceiver) that receives a medium access control control element (MAC CE) for indicating cell switch, the MAC CE including at least one of a transmission configuration indication (TCI) state (see FIG. 15; see ¶ [0142] [0145], the switching to a new cell may be indicated by a MAC-CE or a DCI indicating the UE to use at least one TCI state configured for the new cell);
a processor (see FIG. 4; see ¶ [0096], a UE includes processor) that applies the TCI state included in the MAC CE after a certain period elapses from acknowledgement (ACK) transmission of the MAC CE (see FIG. 15; see ¶ [0127], the application time can be a number of X milliseconds (ms) from the end of UL slot carrying the feedback (e.g., ACK) for the MAC-CE; see claim 137),
Yuan does not explicitly disclose suspends uplink transmission.
However, Babaei discloses wherein the processor suspends uplink transmission in a certain period after the ACK transmission of the MAC CE (see ¶ [0220] [0227], the wireless device may not perform and/or may stop uplink transmission during the switching gap period).
Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide suspends uplink transmission as taught by Babaei, in the system of Yuan, so that it would provide to enhance processes for switching between uplink carriers to enable efficient utilization of TX chains/radio frequency (RF) TX resources (Babaei: see ¶ [0037]).
Regarding claim 8, Yuan discloses a base station (see FIG. 2; see ¶ [0080], a base station) comprising:
a transmitter (see FIG. 2; see ¶ [0080], a base station includes transceiver) that transmits a medium access control control element (MAC CE) for indicating cell switch, the MAC CE including at least one of a transmission configuration indication (TCI) state (see FIG. 15; see ¶ [0142] [0145], the switching to a new cell may be indicated by a MAC-CE or a DCI indicating the UE to use at least one TCI state configured for the new cell);
a processor (see FIG. 2; see ¶ [0080], a base station includes processor) wherein the TCI state included in the MAC CE is applied after the certain time period elapses from ACK transmission of the MAC CE by a terminal (see FIG. 15; see ¶ [0127], the application time can be a number of X milliseconds (ms) from the end of UL slot carrying the feedback (e.g., ACK) for the MAC-CE; see claim 137),
Yuan does not explicitly disclose suspends uplink transmission.
However, Babaei discloses suspends uplink transmission in a certain period after acknowledgement (ACK) reception of the MAC CE (see ¶ [0220] [0227], the wireless device may not perform and/or may stop uplink transmission during the switching gap period).
Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide suspends uplink transmission as taught by Babaei, in the system of Yuan, so that it would provide to enhance processes for switching between uplink carriers to enable efficient utilization of TX chains/radio frequency (RF) TX resources (Babaei: see ¶ [0037]).
Regarding claim 9, Yuan discloses a system comprising a terminal (see FIG. 4; see ¶ [0096], a UE) and a base station (see FIG. 2; see ¶ [0080], a base station), wherein
the base station comprises:
a transmitter (see FIG. 2; see ¶ [0080], a base station includes transceiver) that transmits a medium access control control element (MAC CE) for indicating cell switch, the MAC CE including at least one of a transmission configuration indication (TCI) state (see FIG. 15; see ¶ [0142] [0145], the switching to a new cell may be indicated by a MAC-CE or a DCI indicating the UE to use at least one TCI state configured for the new cell), and
the terminal comprises:
a receiver (see FIG. 4; see ¶ [0096-97], a UE includes wireless transceiver) that receives the MAC CE (see FIG. 15; see ¶ [0142] [0145], the switching to a new cell may be indicated by a MAC-CE or a DCI indicating the UE to use at least one TCI state configured for the new cell);
a processor (see FIG. 4; see ¶ [0096], a UE includes processor) that applies the TCI state included in the MAC CE after a certain period elapses from acknowledgement (ACK) transmission of the MAC CE (see FIG. 15; see ¶ [0127], the application time can be a number of X milliseconds (ms) from the end of UL slot carrying the feedback (e.g., ACK) for the MAC-CE; see claim 137),
Yuan does not explicitly disclose suspends uplink transmission.
However, Babaei discloses wherein the processor suspends uplink transmission in a certain period after the ACK transmission of the MAC CE (see ¶ [0220] [0227], the wireless device may not perform and/or may stop uplink transmission during the switching gap period).
Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide suspends uplink transmission as taught by Babaei, in the system of Yuan, so that it would provide to enhance processes for switching between uplink carriers to enable efficient utilization of TX chains/radio frequency (RF) TX resources (Babaei: see ¶ [0037]).
Conclusion
The prior art made of record (see attached PTO-892) and not relied upon is considered pertinent to applicant's disclosure.
JANG et al. (US 2022/0385425 A1) teaches A method performed by a terminal includes receiving information associated with an activation of transmission configuration indication (TCI) states from a base station through a medium access control (MAC) control element (CE), where the information indicates a serving cell identifier (ID), a control resource set (CORESET) index, and TCI state IDs (see Abstract).
Farag et al. (US 2024/0007916 A1) teaches A method for operating a user equipment (UE) includes receiving configuration information for reference signals associated with measurement of one or more candidate cells, receiving configuration information for transmission configuration indicator (TCI) state lists associated with the one or more candidate cells, performing measurement on the reference signals, determining, based on the measurement, a measurement report, and transmitting the measurement report (see Abstract).
A shortened statutory period for reply to this action is set to expire THREE MONTHS from the mailing date of the action. An extension of time may be obtained under 37 CFR 1.136(a). However, in no event, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER CHEN whose telephone number is (571)270-7241. The examiner can normally be reached Monday - Friday 8:00am to 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yemane Mesfin can be reached at (571) 272-3927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER CHEN/Primary Examiner, Art Unit 2462
Prosecution Insights