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 .
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 1-12 of U.S. Patent No. 10517113. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent 10517113 anticipate the limitations of the instant application as shown in the table below.
Claim 1 of instant application
Claim 1 of patent 10517113
A method performed by a base station in a wireless communication network for handling a data transmission from a user equipment, the method comprising: scheduling one or more resources for carrying an uplink data transmission from the user equipment over a channel, and for carrying a feedback transmission of a downlink data transmission from the base station over the same channel; and transmitting a control message to the user equipment, which control message indicates the one or more resources scheduled for carrying the uplink data transmission and the feedback transmission over the same channel.
A method performed by a base station in a wireless communication network for handling a data transmission from a user equipment, the method comprising: scheduling one or more resources for carrying an uplink data transmission from the user equipment over a channel, and one or more resources for carrying a feedback transmission for a downlink data transmission from the base station, over the same channel; transmitting a single downlink control information (DCI) message to the user equipment, wherein the DCI message indicates the one or more resources scheduled for carrying the uplink data transmission and the one or more resources scheduled for carrying the feedback transmission over the same channel; and reading feedback information received over the channel according to the scheduled feedback transmission, wherein the feedback information is mapped to the one or more resources scheduled for carrying the feedback transmission and uplink data is rate matched around the one or more resources scheduled for carrying the feedback transmission, such that the uplink data is not destroyed by the feedback information, wherein the feedback information is not punctured with the uplink data of the uplink data transmission over the same channel.
The claims are also rejected under double patenting over the following:
Claims 1-12 of patent 10973048
Claims 1-12 of patent 11601969
Claims 1-10 of patent 12133328
Appropriate correction required.
Claim Objections
Claims 3 and 10 are objected to because of the following informalities: The claims recite (305) which is a reference to a drawing. The value (305) should be removed.
Appropriate correction is required.
Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5, 6, 12, 13, 18, 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite the control message is a DCI that includes an UL grant. At best the specification only supports the notion of a generic control message, which is not inherently DCI and thus the spec lacks support to claim a single DCI is transmitted. The only mention of DCI is in paragraph 33 of the published specification, however this paragraph does not describe how DCI is used as claimed. In fact, this paragraph makes it clear the UL grant can be separate from the DCI. DCI is particular information transmitted on the PDCCH and the current application does not appear to describe the PDCCH in detail which would lead one to understand the control information to be purely DCI. The Examiner suggests amending the claims to recite a single control message.
Appropriate correction required.
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-15, 18-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Aiba et al. “Aiba” US2011/0092240.
Regarding claims 1 and 8, Aiba teaches a method and a base station comprising:
Transceiver circuitry for communicating with a UE and processing circuitry configured to:
schedule one or more resources for carrying an uplink data transmission from the user equipment over a channel, and for carrying a feedback transmission of a downlink data transmission from the base station, over the same channel (the base station schedules the mobile for transmitting UL data and feedback; Paragraphs 10 and 97. Further the PUSCH is used to transmit the UL data, feedback, set. Thus the same channel is utilized); and
transmit a control information message to the user equipment, wherein the control message indicates the one or more resources scheduled for carrying the uplink data transmission and the feedback transmission over the same channel (the base station transmits a UL grant to the wireless device which notifies the device of the resource allocation of a shared channel; Paragraph 96. This information is sent on the PDCCH which is the channel used for carrying DCI; Paragraph 96).
Regarding claims 2 and 9, Aiba teaches reading feedback information received over the channel as scheduled (the feedback report is transmitted over the channel to the base station based on the scheduling information; Paragraph 97. This is viewed as the feedback being received/read).
Regarding claims 3 and 10, Aiba teaches determining, based on the read feedback, whether to retransmit data or not (Paragraphs 10 and 140-141 disclose the use of ACK/NACK/HARQ for purposes of determining retransmission).
Regarding claims 4 and 11, Aiba teaches feedback information is not punctured with the uplink data of the UL transmission over the same channel (in the prior art ACK/NACK is mapped by puncturing uplink data; Paragraph 17; however, now the SR is puncturing the feedback channel; Paragraph 216. Thus the uplink data is not punctured with the feedback).
Regarding claims 5, 6, 12, 13, Aiba teaches the control information includes an UL grant and the channel is a PUSCH (Paragraph 96 teaches UL grants and utilizing PUSCH).
Regarding claims 7 and 14, Aiba teaches the feedback information is multiplexed with uplink data (Paragraph 17 teaches UL data is multiplexed with feedback ACK/NACK).
Regarding claim 15, Aiba teaches a user equipment, comprising: transceiver circuitry configured for communication with a base station in a wireless communication network; and processing circuitry operatively associated with the transceiver circuitry and configured to:
receive, from the base station, a single control message, wherein the control message indicates one or more physical resources scheduled for carrying an uplink data transmission over a channel and one or more physical resources scheduled for carrying a feedback transmission over the same channel, wherein the feedback transmission is for a downlink data transmission from the base station (the base station transmits a UL grant to the wireless device which notifies the device of the resource allocation of a shared channel for the transmission of UL data and feedback information; Paragraph 96. This information is sent on the PDCCH which is the channel used for carrying DCI; Paragraph 96); and
perform the uplink data transmission and the feedback transmission to the base station over the same channel using the physical resources indicated in the control message (Paragraphs 96-97 teach the UE transmitting UL data and feedback based on the received information from the base station).
Regarding claims 18, 19, Aiba teaches the control information includes an UL grant and the channel is a PUSCH (Paragraph 96 teaches UL grants and utilizing PUSCH).
Regarding claim 20, Aiba teaches the feedback information is multiplexed with uplink data (Paragraph 17 teaches UL data is multiplexed with feedback ACK/NACK).
Claim Rejections - 35 USC § 103
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.
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.
Claims 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aiba in view of Earnshaw et al. “Earnshaw” US 2010/0135181.
Regarding claim 16, Aiba teaches reading feedback information received over the channel according to the scheduled feedback transmission wherein the feedback is mapped to the resources for carrying the transmission (the feedback report is transmitted over the channel to the base station based on the scheduling information; Paragraph 97). Aiba does not expressly disclose rate matching UL data around resource for carrying feedback. However, Earnshaw teaches rate matching UL data and feedback information; Paragraph 30.
Thus it would have been obvious to one of ordinary skill in the art at the time of the effective filing to modify the teachings of Aiba to include rate matching UL data and feedback as taught by Earnshaw.
One would be motivated to make the modification such that data can be punctured and multiplexed as taught by Earnshaw; Paragraph 30.
Regarding claim 17, Aiba teaches feedback information is not punctured with the uplink data of the UL transmission over the same channel (in the prior art ACK/NACK is mapped by puncturing uplink data; Paragraph 17; however, now the SR is puncturing the feedback channel; Paragraph 216. Thus the uplink data is not punctured with the feedback).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M RENNER whose telephone number is (571)270-3621. The examiner can normally be reached Monday-Friday 7am-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Derrick Ferris can be reached at (571)-272-3123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRANDON M RENNER/Primary Examiner, Art Unit 2411
Prosecution Insights