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.
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Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-9, 2, 3, 5, 1, 7-9, 2, 3, 5, 1, 7-9, 2, and 3 of U.S. Patent No. 11/191,071 ‘071’. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 8, and 15, ‘071’ claim 1 claims a wireless device comprising:
one or more processors; and
memory storing instructions that, when executed by the one or more processors, cause the wireless device to:
receive, from a base station, one or more radio resource control messages comprising configuration parameters, for a cell (lines 2-5), comprising:
a first downlink control information (DCI) format and a second DCI format associated with a first search space (lines 6-8); and
the second DCI format associated with a second search space (lines 9-10);
monitor for a first DCI on the first search space based on a first DCI size of the first DCI format associated with the first search space, wherein the format of the first DCI is:
the first DCI format; or
the second DCI format (lines 16-18); and
monitor for a second DCI on the second search space based on a second DCI size of the second DCI format associated with the second search space, wherein the format of the second DCI is the second DCI format (lines 19-21).
Regarding claims 2, 9, 16 (see claim 7).
Regarding claims 3, 10, 17(see claim 8).
Regarding claims 4, 11, 18 (see claim 9).
Regarding claims 5, 12, 19(see claim 2).
Regarding claims 6, 13, 20(see claim 3).
Regarding claims 7, 14 (see claim 5).
Claim Rejections - 35 USC § 102
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 –
(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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takeda US 20210258936.
Regarding claim 1, 8, 15, Takeda teaches a wireless device a comprising:
one or more processors; and
memory storing instructions that, when executed by the one or more processors, cause the wireless device to:
receive, from a base station, one or more radio resource control messages comprising configuration parameters, for a cell (For the UE, one or more TCI states (one or more pieces of QCL information for the PDSCH) may be reported (configured) from the base station by using higher layer signaling (for example, RRC signaling, [0039]), comprising:
a first downlink control information (DCI) format (DCI format 1_1, [0054]) and a second DCI format (DCI format 0_1, [0054]) associated with a first search space; and
the second DCI format associated with a second search space (monitoring of downlink control information of the specific DCI format in a plurality of search spaces respectively associated with the plurality of control resource sets, [0011]);
monitor for a first DCI on the first search space based on a first DCI size of the first DCI format associated with the first search space, wherein the format of the first DCI is:
the first DCI format; or
the second DCI format (fig. 2A, 2B, [0065]); and
monitor for a second DCI on the second search space based on a second DCI size of the second DCI format associated with the second search space, wherein the format of the second DCI is the second DCI format (fig. 2A, 2B, [0065]).
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 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.
Claim(s) 5, 12, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeda as applied to claims 1, 8, 15 above, and further in view of JP 7238095 ‘JP.
Takeda is silent on the configuration parameters is configured for a bandwidth part for the cell; and the first search space and the second search space are used for the bandwidth part for the cell.
JP teaches the configuration parameters is configured for a bandwidth part for the cell; and the first search space and the second search space are used for the bandwidth part for the cell (The at least one resource configuration corresponding to each DRX configuration includes at least one BWP configuration belonging to one serving cell and/or multiple BWP configurations belonging to multiple serving cells, and/or the at least one resource configuration is , at least one CORESET configuration belonging to one BWP and/or multiple CORESET configurations belonging to multiple BWPs, and/or said at least one resource configuration comprises at least one search space configuration belonging to one BWP and/or or multiple
search space configurations belonging to multiple BWPs).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the system of Takeda by the configuration parameters is configured for a bandwidth part for the cell; and the first search space and the second search space are used for the bandwidth part for the cell, as shown by JP. This modification would benefit the system by efficiently using bandwidth.
Prior Art of Record
EP 2648359 teaches the concepts of receive, from a base station, one or more radio resource control messages comprising configuration parameters, for a cell (claim 3) ;
a first downlink control information (DCI) format and a second DCI format associated (claim 1) with a first search space (claim 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD B ABELSON whose telephone number is (571)272-3165. The examiner can normally be reached M-F 8:00-4:30.
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/RONALD B ABELSON/ Primary Examiner, Art Unit 2476
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