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 disclosure is objected to because of the following informalities: the first paragraph of the specification should include that SN 17/652,303 is now US Patent Number 12,150,058.
Appropriate correction is required.
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.
Claims 11, 12, and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, claims 11 and 20 recite “a third parameter” without disclosure of a second parameter in the instant claims or the corresponding base claims from which they depend.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 2, 5-9, 13, 14, and 16-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Applicant’s submission of prior art, Koskela et al., US Patent Application Publication Number 2020/0351786 (hereinafter Koskela).
Regarding claims 1, 7, 13, and 17, Koskela discloses a method for signal monitoring, comprising: monitoring, by a terminal device, a Power Saving (PS) signal Physical Downlink Control Channel (PDCCH) in one or more than one monitoring time period prior to a Discontinuous Reception (DRX) ON time period and after a monitoring starting time point [paragraph 0116], wherein the one or more than one monitoring time period is determined by at least one configuration parameter of each PS signal search space of K PS signal search spaces, K being an integer more than or equal to 1 [paragraph 0119], wherein each of the one or more than one monitoring time period comprises M durations in a PS signal search space corresponding to the monitoring time period, M being an integer more than or equal to 1 [paragraph 0115] wherein all the M durations comprised in each of the one or more than one monitoring time period are complete durations [paragraph 0115].
Regarding claims 2, 14, and 18, Koskela discloses determining, by the terminal device, the monitoring starting time point based on a PS-offset and a starting time point of the DRX ON time period [paragraph 0116].
Regarding claim 5, Koskela discloses wherein each of the one or more than one monitoring time period does not comprise an incomplete duration [paragraph 0115].
Regarding claim 6, Koskela discloses wherein M=1 [paragraphs 0115 wherein it is inherent to include at least one duration].
Regarding claims 8, 16, and 19, Koskela discloses wherein each duration in the M durations comprises at least one monitoring time [paragraph 0115].
Regarding claim 9, Koskela discloses wherein each of the one or more than one monitoring time period comprises N monitoring times in a PS signal search space corresponding to the monitoring time period, N being an integer more than or equal to 1 [paragraphs 0115, 0119].
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,150,058. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 1 is taught in patented claims 1, 5, and 7. Instant independent claim 7 is taught in patented claims 10 and 11. Instant independent claim 13 is taught in patented claims 18 and 22. Instant independent claim 17 is taught in patented claims 24 and 16. The instant independent claims are slightly broader than the patented claims as they omit the limitations regarding the configuration parameters. Instant dependent claims 2, 14, and 18 are taught in patented dependent claims 2, 19, and 25, respectively. Instant dependent claim 3 is taught in patented claims 1, 3, and 4. Instant dependent claim 4 is taught in patented claim 6. Instant dependent claim 5 is taught in patented claim 8. Instant dependent claim 6 is taught in patented claim 9. Instant dependent claims 8, 16, and 19 are taught in patented claims 12, 23, and 27, respectively. Instant dependent claim 9 is taught in patented claim 13. Instant dependent claim 10 is taught in patented claims 14 and 15. Instant dependent claims 11 and 20 are taught in patented claims 16, and 28, respectively. Instant dependent claim 12 is taught in patented claim 17. Instant dependent claim 15 is taught in patented claims 18, 20 and 21.
Allowable Subject Matter
Claims 3 4, 10, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11, 12, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu et al., US Patent Number 12,035,242, disclose a PDCCH monitoring method and terminal.
Kuang et al., US Patent Number 12,309,703, disclose a signal monitoring skipping method and apparatus.
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/EAW/
July 6, 2026
/ERIKA A WASHINGTON/Primary Examiner, Art Unit 2644
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