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 .
Specification
The applicant is requested to update the status of Application No. 17/421,853 (now US Patent No. 12,126,577).
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.
Claims 2-16 and 18-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ang et al (2019/0124558).
Regarding claims 2 and 9, Ang discloses a method and a network node (see the base station 505 in figure 5), comprising: a processor; and a memory coupled with the processor (see figure 9), the memory storing executable instructions that when executed by the processor cause the processor to effectuate operations comprising: sending to, or receiving from, a wireless transmit and receive unit (WTRU) (see UE 515 in figure 5) a communication, wherein the WTRU is served by two or more serving cells (see multiple serving cells in paragraph 0092), wherein the two or more serving cells comprise a special cell (SpCell) and one or more secondary cells (SCells) (see primary cell and one or more secondary cells in paragraph 0098), wherein each of the one or more SCells is in a cell state for the WTRU, wherein the cell state comprises a deactivated state, an activated dormant state, or an activated non-dormant state (see different sates in paragraphs 0013, 0054, 0063-0064).
Regarding claims 3 and 10, Ang discloses sending, for an SCell that is in the activated non-dormant state with a non-dormant bandwidth part (BWP), information indicating to switch to the activated dormant state with a dormant BWP for the SCell (see the BWP switching in paragraphs 0012, 0019, 0029, 0063, 0065).
Regarding claims 4 and 11, Ang discloses after sending the information, switching to the activated dormant state with the dormant BWP for the SCell (see The dormant state may also hereby be referred to as a partially activated state and The UE may transition the state of the secondary cell to a dormant state based on the received MAC CE in paragraph 0054).
Regarding claims 5 and 12, Ang discloses wherein the information comprises a bitmap, and wherein each of the one or more SCells is associated with a bit of the bitmap in accordance with a configurable association (see to reduce latency signaling associated with secondary cell activation and deactivation, the base station may configure a downlink control information (DCI) format that may include a bitmap for secondary cell activation and deactivation in paragraphs 0005, 0021-0025, 0029-0030).
Regarding claims 6 and 13, Ang discloses wherein the information is transmitted on the special cell (SpCell) (a primary cell) (see configuring the secondary cell to switch from the partially activated state to a full activated state based at least in part on a BWP switching DCI transmitted on a primary cell in paragraph 0012).
Regarding claims 7 and 14, Ang discloses wherein the information indicates to switch an active downlink (DL) BWP from the non-dormant BWP to the dormant BWP (see an activated secondary cell may quickly switch to the dormant state in paragraph 0063).
Regarding claims 8 and 15, Ang discloses wherein the information indicates to switch the SCell from the deactivated state to the activated dormant state with the dormant bandwidth part (see transition the secondary cell to a dormant state (a partially activated state) in paragraph 0067; UE 515 may transition a state of a secondary cell from deactivated to a dormant state in paragraph 0141).
Regarding claims 16 and 18-20, claims 16 and 18-20 claim a WTRU that is in communication with a network node claimed in claims 2-6 and 9-13 where the process is in reverse. Claims 16 and 18-20 are, therefore, subject to the same ejection.
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ang in view of Chen et al (2021/0168636).
Regarding claim 17, Ang discloses all the claimed subject matter as described in previous paragraphs except for beam failure recovery (BFR) and beam failure detection. However, Chen discloses these features (see beam failure recovery (BFR) and beam failure detection in the abstract and paragraphs 0061-0062, 0067, 0100. Note that it is obvious that when the WTRU is in an activated dormant state for the SCell, the WTRU can be configured to: not monitor PDCCH, not transmit PUCCH, and not transmit SRS). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
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 2-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,126,577. Although the claims at issue are not identical, they are not patentably distinct from each other because all the features claimed in claims 16-20 are described in claims 1-20 and claims 2-15 claim a method and a network node that is obvious in view of a method and a WTRU described in claims 1-20 of 12,126,577.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D NGUYEN whose telephone number is (571)272-3084. The examiner can normally be reached Monday-Friday 8:00 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khaled Kassim can be reached at 571-270-3770. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D NGUYEN/Primary Examiner, Art Unit 2475
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