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 .
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.
DETAILED ACTION
1. The application of Xu et al. for the "RRC-BASED USER DATA TRANSMISSION IN AN INACTIVE STATE" filed 10/01/2024 has been examined. This application is a Continuation of 17/438,196, filed 09/10/2021 now U.S. Patent # 12,114,389 which is a National Stage entry of PCT/CN2020/122751, International Filing Date: 10/22/2020. Claims 1-20 are pending in the application.
2. The applicant should use this period for response to thoroughly and very closely proof read and review the whole of the application for correct correlation between reference numerals in the textual portion of the Specification and Drawings along with any minor spelling errors, general typographical errors, accuracy, assurance of proper use for Trademarks TM, and other legal symbols @, where required, and clarity of meaning in the Specification, Drawings, and specifically the claims (i.e., provide proper antecedent basis for “the'' and “said'' within each
claim). Minor typographical errors could render a Patent unenforceable and so the applicant is
strongly encouraged to aid in this endeavor.
Specification
3. The disclosure is objected to because of the following informalities: The status of the related applications USSN#17/438,196 filed 09/10/2021 noted on the “Priority Information ”, page 1. Paragraph [0001] needs to be updated. This application is now U.S. Patent#12,114389. Appropriate correction is required.
Claim Objections
4. Claims 1 disclose different steps of a method for “transmitting”, “receiving”, but fail to indicate the device actually performing each of the steps. It is not clear which entity performs the above functions. The claims should be redrafted to positively recite the method and system of a device carrying out each of the steps. Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 3-4, 13-14, 18-19 are 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 pre-AIA the applicant regards as the invention.
Claims 3, 13, 18 recite the limitation “msg 4 of a RA procedure” on lines 7. The term "msg 4 of a RA” is not defined by the claims, does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what constitutes such “msg 4 of a RA” are or what is involved in determining the steps of a random access that carry RRC information. Appropriate correction required.
Claims 4, 14, 19 recite the limitation “msg 3 of a RA procedure” on lines 7. The term "msg 3 of a RA” is not defined by the claims, does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what constitutes such “msg 3 of a RA” are or what is involved in determining the steps of a random access that carry RRC information. Appropriate correction required.
Claim Rejections - 35 USC § 102
7. 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 sate. or otherwise available to the public before the effective filing date of the claimed invention
8. Claim(s) 1-5, 9-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chou et al. (US#10,728,927).
In so far as understood, regarding to claims 1, 16, the references disclose a novel system and method for handling time alignment for a small data transmission in RRC Inactive state, according to the essential features of the claims. Chou et al. (US#10,728,927) discloses a method for operating in a UE/BS comprising: encoding a first transmission to a network, in a Radio Resource Control (RRC) inactive state, the first transmission including an RRC resume request message and first user data (Figs. 3B, 12; Col. 7, line 14 – Col. 18, line 20: UL/DL packet transmission from an RRC Inactive UE to a base station using a 4-step random access procedure. In the 4-step random access procedure, UE 302 may send a UE ID (e.g., RRC Resume ID) in MSG3, such that base station 306 may identify UE 302 after receiving the RRC Resume Request message in MSG3); performing subsequent user data exchange with the network while in the RRC inactive state (Fig. 3B; Col. 7, lines 44-62: the UE may implement the subsequent random access procedure e.g., MSG3 transmission and MSG4 reception based on the pre-configured BWP configuration. The base station may require the UE to transition to RRC Connected state, instead of staying RRC Inactive state, for the subsequent packet transmission); and receiving, from the network, an RRC release message with a suspend indication (Fig. 3B; Col. 7, line 63 to Col. 8, line 8: In action 340, base station 306 may send MSG4 to UE 302, where MSG4 may include an RRC Response message (e.g., ACK/NACK message) to UE 302. MSG4 may include a Random Access Response message having an RRC Resume message, which may cause UE 302 to transition from RRC Inactive state to RRC Connected state).
As to claims 2, 17, Chou et al. (US#10,728,927) further teaches wherein in response to the first transmission, receiving, from the network, a message to enable the subsequent user data exchange with the network (Fig. 3B; Col. 7, lines 44-62: in action 338, UE 302 may also transmit data packet(s) e.g., small data packet(s) on indicated resource grant e.g., radio resources granted by base station 306 in action 334).
As to claims 3, 18, Chou et al. (US#10,728,927) further teaches wherein the message to enable the subsequent user data exchange with the network is a msg 4 of a random access procedure (Fig. 3B; Col. 7, line 63 to Col. 8, line 8: base station 306 may send MSG4 to UE 302, where MSG4 may include an RRC Response message e.g., ACK/NACK message to UE 302)
As to claims 4, 19, Chou et al. (US#10,728,927) further teaches wherein the first transmission is a msg 3 of a random access procedure (Fig. 3B; Col. 7, lines 40-43: in action 336, RRC Inactive UE 302 may send MSG3 to base station 306 include an RRC connection resume request).
As to claims 5, 20, Chou et al. (US#10,728,927) further teaches wherein encoding the first transmission is in response to a small data transmission (SDT) procedure being triggered (Fig. 3B; Col. 7, lines 27-39: the UE 302 to deliver an RRC Connection Resume Request and small data packets in MSG3).
Regarding claim 9, Chou et al. (US#10,728,927) further teaches wherein performing subsequent user data exchange with the network while in the inactive state uses a subsequent transmit configuration, which is provided in a previous connected mode from the network (Fig. 3B; Col. 7, lines 44 - Col. 8, line 8).
Regarding claim 10, Chou et al. (US#10,728,927) further teaches wherein the first transmission includes a buffer status report. As seen in Fig. 3B, Its noted that the initial transmission 336 includes an RRC connection resume request, a BSR, and positioning measurement data in an SDT are well known in the art.
As to claims 11-15, they are apparatus claims corresponding to the method claims 1-5 examined above. Therefore, Claims 11-15 are analyzed and rejected as previously discussed in paragraph above with respect to claims 1-5.
Claim Rejections - 35 USC § 103
9. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10. This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
11. Claims 7-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Chou et al. (US#10,728,927) in view of Agiwal et al. (US#12,543,240).
Regarding claims 7, Chou et al. (US#10,728,927) discloses a method for operating in a UE/BS as examined in the paragraph 8 above. However, Chou reference does not disclose expressly wherein the SDT procedure includes selecting a PRACH resource for transmission. In the same field of endeavor, Agiwal et al. (US#12,543,240) teaches a Contention Based/Free Random Access RA, in which the UE transmits the RA preamble on a PRACH and a payload on a PUSCH using the CFRA resources i.e., a dedicated preamble/PUSCH resource/PRACH occasion are provided by the gNB (Col. 5; lines 53-67: dedicated preamble/PUSCH resource/PRACH occasion).
Thus, It would have been obvious to a person of ordinary skill in the art before the effective filing data of the claimed invention to combine Agiwal’s novel use of the RRC connection for small data transmission in RRC_INACTIVE into Chou’s performing data packet delivery in RRC Inactive state with the motivation being to provide a system and method for enabling a UE device to perform user data transmission/reception while remaining in an inactive state.
Regarding claim 8, Agiwal et al. (US#12,543,240) further teaches wherein the SDT procedure includes selecting a pre-configured physical uplink shared channel (PUSCH) resource for transmission (Col. 35; lines 56-67: the UE can perform SDT using preconfigured PUSCH resource).
Allowable Subject Matter
12. Claim 6 is 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.
13. The following is an examiner's statement of reasons for the indication of allowable subject matter: The closest prior art of record fails to disclose or suggest wherein the SDT procedure is triggered in response to a condition being fulfilled, wherein the condition includes a data amount available for transmission is less than a configured threshold., as specifically recited in the claims.
Double Patenting
14. A rejection based on double patenting of the ''same invention'' type finds its support in
the language of 35 U.S.C. 101 which states that ''whoever invents or discovers any new and
useful process ... may obtain : patent therefor ...'' (Emphasis added). Thus, the term ''same
invention'' in this context, means an invention drawn to identical subject matter. See Miller v.
Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957);
and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
15. 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'' ranted by a patent and to prevent possible
harassment by multiple assignees. See 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); and, 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claim an invention made as a result of activities undertaken with the scope of a join research agreement A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
16. Claims 1, 10 of the present application Serial No. 18/903,932 (hereinafter Application ‘932) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 of U.S. Patent #12,114,389 (hereinafter ‘389) since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The claims are identical and they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent, since the patent and the application are claiming common subject matter. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims are equivalent in scope and embodiment. The language of the two claims is substantially identical and is equivalent in functioning. All of the structural elements of the patent claims are present in the pending claims, defined with either identical or equivalent language. Additionally, the functional language, scope and embodiment reflect identical operation, purpose, application, and environment.
With respect to the specific limitations, claims 1, 2 of U.S. Patent ‘389 are equivalent to the pending claims 1, 10 of Application ‘932 for performing small data transmission while remaining in an Inactive state. Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Da Silva et al. (US#11,924,693) is cited to show the resume request followed by release and redirect.
The Da Silva et al. (US#11,937,131) is cited to show resume request followed by release and redirect.
The Huang et al. (US#2022/0086946) show method and apparatus for small data transmission in a wireless communication system.
The Ou et al. (US#2022/0078875) show method and apparatus for timer control for RRC connection resume procedure in a wireless communication system.
The Yue et al. (US#2023/0413207) shows methods and apparatuses for handling time alignment for a SDT procedure.
18. Applicant's future amendments need to comply with the requirements of MPEP § 714.02, MPEP § 2163.04 and MPEP § 2163.06.
"with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims." See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). See In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) In re Wertheim, 541 F.2d at 262,191 USPQ at 96 (emphasis added). "The use of a confusing variety of terms for the same thing should not be permitted.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification." Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01 (i) and § 1302.01.
Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1,75(d)(1 ). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced."
"USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure." In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,1027-28 (Fed. Cir. 1997). MPEP § 2106. "
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. Phan whose telephone number is (571) 272-3149. The examiner can normally be reached on Mon - Fri from 6:00 to 3:00.
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, Chirag Shah, can be reached on (571) 272-3144. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-2600.
20. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have any questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at toll free 1-866-217-9197.
Mphan
09/21/2026
/MAN U PHAN/Primary Examiner, Art Unit 2477
Prosecution Insights