DETAILED ACTION
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 1-3, 5-7, 9, and 13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4, 9-11, and 14-16 of U.S. Patent No. 12,445,959 (herein called “the ’959 Patent”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the present application are broader than claims in the ’959 Patent.
Regarding claim 1 of the present application, claim 1 of the ’959 Patent discloses a communication apparatus, comprising:
a transceiver, which, in operation (see 29:58),
transmits a scheduling request (SR) over a physical uplink control channel (PUCCH), wherein the SR is pending until a valid uplink grant is received (see 29:58-61),
receives information on a first time duration via a radio resource control (RRC) signaling different from a discontinuous reception (DRX) configuration (see 29:65-30:1), and
receives information on a second time duration via a medium access control (MAC) control element (see 30:1-3); and
circuitry, which is coupled to the transceiver and which, in operation, starts an active time to monitor a physical downlink control channel (PDCCH) after the SR transmission and a monitoring sleeping time, wherein the monitoring sleeping time has a total time duration of the first time duration and the second time duration (see 30:4-9).
Therefore, claim 1 of the ’959 Patent contains every element and thus anticipates claim 1 of the present application. Claim 1 of the present application therefore is not patently distinct from the earlier patent claims and as such is unpatentable under obviousness-type double patenting. A later claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
Stated another way, claim 1 of the present application is a broader version of claim 1 of the ’959 Patent in that it omits one or more elements of claim 1 of the ’959 Patent. Omission of an element whose function is not needed would be obvious to one of ordinary skill in the art.
Regarding claim 6 of the present application, claim 11 of the ’959 Patent discloses scheduling device, comprising:
a transceiver, which, in operation (see 30:56),
receives a scheduling request (SR) over a physical uplink control channel (PUCCH) from a communication apparatus, wherein the SR is pending until the transceiver transmits a valid uplink grant is transmitted over a physical downlink control channel (PDCCH) to the communication apparatus (see 30:57-62),
transmits information on a first time duration via a radio resource control (RRC) signaling different from a discontinuous reception (DRX) configuration to the communication apparatus (see 30:63-66), and
transmits information on a second time duration via a medium access control (MAC) control element to the communication apparatus (see 30:66-67), wherein the communication apparatus starts an active time to monitor the PDCCH after the SR transmission and a monitoring sleeping time, wherein the monitoring sleeping time has a total time duration of the first time duration and the second time duration (see 31:1-6); and
circuitry, which is coupled to the transceiver and which, in operation, allocates resources according to the SR (see 31:7-8).
Therefore, claim 11 of the ’959 Patent contains every element and thus anticipates claim 6 of the present application. Claim 6 of the present application therefore is not patently distinct from the earlier patent claims and as such is unpatentable under obviousness-type double patenting. A later claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
Stated another way, claim 6 of the present application is a broader version of claim 11 of the ’959 Patent in that it omits one or more elements of claim 11 of the ’959 Patent. Omission of an element whose function is not needed would be obvious to one of ordinary skill in the art.
Regarding claim 7 of the present application, claim 15 of the ’959 Patent discloses method, comprising:
transmitting a scheduling request (SR) over a physical uplink control channel (PUCCH), wherein the SR is pending until a valid uplink grant is received (see 32:2-4);
receiving information on a first time duration via a radio resource control (RRC) signaling different from a discontinuous reception (DRX) configuration (see 32:7-9);
receiving information on a second time duration via a medium access control (MAC) control element (see 32:9-11); and
starting an active time to monitor a physical downlink control channel (PDCCH) after the SR transmission and a monitoring sleeping time, wherein the monitoring sleeping time has a total time duration of the first time duration and the second time duration (see 32:12-18).
Therefore, claim 15 of the ’959 Patent contains every element and thus anticipates claim 7 of the present application. Claim 7 of the present application therefore is not patently distinct from the earlier patent claims and as such is unpatentable under obviousness-type double patenting. A later claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
Stated another way, claim 7 of the present application is a broader version of claim 15 of the ’959 Patent in that it omits one or more elements of claim 15 of the ’959 Patent. Omission of an element whose function is not needed would be obvious to one of ordinary skill in the art.
Regarding claim 2 of the present application, claim 4 discloses the limitations and the claim is thus similarly rejected under obviousness-type double patenting.
Regarding claim 3 of the present application, claim 10 discloses the limitations and the claim is thus similarly rejected under obviousness-type double patenting.
Regarding claim 5 of the present application, claim 9 discloses the limitations and the claim is thus similarly rejected under obviousness-type double patenting.
Regarding claim 9 of the present application, claim 16 discloses the limitations and the claim is thus similarly rejected under obviousness-type double patenting.
Regarding claim 13 of the present application, claim 14 discloses the limitations and the claim is thus similarly rejected under obviousness-type double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert C Scheibel whose telephone number is (571)272-3169. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hassan A Phillips can be reached at 571-272-3940. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert C. Scheibel
Primary Examiner
Art Unit 2467
/Robert C Scheibel/Primary Examiner, Art Unit 2467 August 8, 2026
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