DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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, 3-5, 7-9, 11-13, and 15-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-8, 11-14, 17-20, and 23-24 of U.S. Patent No. 12,114,308. Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims are not identical to those of the patent, they are directed to similar inventive concepts related to random access in user equipment of different capabilities.
Regarding claim 1 12,114,308 discloses a method, comprising: receiving, by a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (claim 1); selecting, by the UE, a preamble from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (claim 1); transmitting, by the UE, a random access channel (RACH) message including the preamble selected from the second set of preambles (claim 1); and receiving, by the UE, a RACH reply message in response to the RACH message (claim 1).
Regarding claim 3 12,114,308 discloses the method of claim 1, the method further comprising: monitoring, by the UE, a first search space to receive a first physical downlink control channel (PDCCH) carrying scheduling information associated with the configuration information (claims 1, 2, 6); and monitoring, by the UE, a second search space to receive a second PDCCH carrying allocation information of a shared channel for the RACH reply message (claims 1, 2, 6).
Regarding claim 4 12,114,308 discloses the method of claim 1, the RACH message further including an identifier of the UE for indicating the capability of the UE (claim 5).
Regarding claim 5 12,114,308 discloses a method, comprising: transmitting, by a base station to a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (claim 7); receiving, by the base station, a random access channel (RACH) message including a preamble, the preamble selected from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (claim 7); and transmitting, by the base station, a RACH reply message in response to the RACH message (claim 7).
Regarding claim 7 12,114,308 discloses the method of claim 5, the method further comprising: transmitting, by the base station in a first search space, a first physical downlink control channel (PDCCH) carrying scheduling information associated with the configuration information (claims 7, 8, 12); and transmitting, by the base station in a second search space, a second PDCCH carrying allocation information of a shared channel for the RACH reply message (claims 7, 8, 12).
Regarding claim 8 12,114,308 discloses the method of claim 5, the RACH message further including an identifier of the UE for indicating the capability of the UE (claim 11).
Regarding claim 9 12,114,308 discloses a user equipment (UE), comprising: at least one processor (claim 13); and a non-transitory computer readable storage medium storing programming, the programming including instructions that, when executed by the at least one processor (claim 13), cause the UE to perform operations including: receiving configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (claim 13); selecting a preamble from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (claim 13); transmitting a random access channel (RACH) message including the preamble selected from the second set of preambles (claim 13); and receiving a RACH reply message in response to the RACH message (claim 13).
Regarding claim 11 12,114,308 discloses the UE of claim 9, the operations further comprising: monitoring a first search space to receive a first physical downlink control channel (PDCCH) carrying scheduling information associated with the configuration information (claims 13, 14, 18); and monitoring a second search space to receive a second PDCCH carrying allocation information of a shared channel for the RACH reply message (claims 13, 14, 18).
Regarding claim 12 12,114,308 discloses the UE of claim 9, the RACH message further including an identifier of the UE for indicating the capability of the UE (claim 17).
Regarding claim 13 12,114,308 discloses a base station, comprising: at least one processor (claim 19); and a non-transitory computer readable storage medium storing programming, the programming including instructions that, when executed by the at least one processor (claim 19), cause the base station to perform operations including: transmitting, to a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (claim 19); receiving a random access channel (RACH) message including a preamble, the preamble selected from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (claim 19); and transmitting a RACH reply message in response to the RACH message (claim 19).
Regarding claim 15 12,114,308 discloses the base station of claim 13, the operations further comprising: transmitting, in a first search space, a first physical downlink control channel (PDCCH) carrying scheduling information associated with the configuration information (claims 19, 20, 24); and transmitting, in a second search space, a second PDCCH carrying allocation information of a shared channel for the RACH reply message (claims 19, 20, 24).
Regarding claim 16 12,114,308 discloses the base station of claim 13, the RACH message further including an identifier of the UE for indicating the capability of the UE (claim 23).
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 pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1-2, 4-6, 8-10, 12-14, and 16 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Webb et al. (WO 2013/110331; hereinafter Webb).
Regarding claim 1 Webb discloses a method, comprising: receiving, by a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs are configured by a network node with a set of preambles that correspond to the UE capability and bandwidth capability); selecting, by the UE, a preamble from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs select, at least, a preamble in accordance with the UEs capabilities); transmitting, by the UE, a random access channel (RACH) message including the preamble selected from the second set of preambles (page 4, lines 26-28; page 13; page 20, line 7 – page 21, line 14; the UE will use the preamble for PRACH); and receiving, by the UE, a RACH reply message in response to the RACH message (page 4, lines 30-34; page 18, lines 1-4; wherein as part of the RACH procedure, the network node responds with a RAR).
Regarding claim 2 Webb discloses the method of claim 1, wherein the second UE capability is a maximum bandwidth capability of 20MHz (page 20, line 25 – page 21, line 6; wherein the UE capability includes a maximum LTE bandwidth of 20 MHz).
Regarding claim 4 Webb discloses the method of claim 1, the RACH message further including an identifier of the UE for indicating the capability of the UE (page 13, lines 1-17; page 15, lines 15-21; the RACH message includes a unique identifier associated to the UE).
Regarding claim 5 Webb discloses a method, comprising: transmitting, by a base station to a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs are configured by a network node with a set of preambles that correspond to the UE capability and bandwidth capability); receiving, by the base station, a random access channel (RACH) message including a preamble, the preamble selected from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (page 4, lines 26-28; page 13; page 20, line 7 – page 21, line 14; the UE will use the preamble for PRACH); and transmitting, by the base station, a RACH reply message in response to the RACH message (page 4, lines 30-34; page 18, lines 1-4; wherein as part of the RACH procedure, the network node responds with a RAR).
Regarding claim 6 Webb discloses the method of claim 5, wherein the second UE capability is a maximum bandwidth capability of 20MHz (page 20, line 25 – page 21, line 6; wherein the UE capability includes a maximum LTE bandwidth of 20 MHz).
Regarding claim 8 Webb discloses the method of claim 5, the RACH message further including an identifier of the UE for indicating the capability of the UE (page 13, lines 1-17; page 15, lines 15-21; the RACH message includes a unique identifier associated to the UE).
Regarding claim 9 Webb discloses a user equipment (UE), comprising: at least one processor (fig. 2A); and a non-transitory computer readable storage medium storing programming (fig. 2A), the programming including instructions that, when executed by the at least one processor, cause the UE to perform operations including: receiving configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs are configured by a network node with a set of preambles that correspond to the UE capability and bandwidth capability); selecting a preamble from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs select, at least, a preamble in accordance with the UEs capabilities); transmitting a random access channel (RACH) message including the preamble selected from the second set of preambles (page 4, lines 26-28; page 13; page 20, line 7 – page 21, line 14; the UE will use the preamble for PRACH); and receiving a RACH reply message in response to the RACH message (page 4, lines 30-34; page 18, lines 1-4; wherein as part of the RACH procedure, the network node responds with a RAR).
Regarding claim 10 Webb discloses the UE of claim 9, wherein the second UE capability is a maximum bandwidth capability of 20MHz (page 20, line 25 – page 21, line 6; wherein the UE capability includes a maximum LTE bandwidth of 20 MHz).
Regarding claim 12 Webb discloses the UE of claim 9, the RACH message further including an identifier of the UE for indicating the capability of the UE (page 13, lines 1-17; page 15, lines 15-21; the RACH message includes a unique identifier associated to the UE).
Regarding claim 13 Webb discloses a base station, comprising: at least one processor (fig. 2A); and a non-transitory computer readable storage medium storing programming (fig. 2A), the programming including instructions that, when executed by the at least one processor, cause the base station to perform operations including: transmitting, to a user equipment (UE), configuration information indicating a first set of preambles and a second set of preambles, wherein the first set of preambles corresponds to a first group of UEs having a first UE capability, and the second set of preambles corresponds to a second group of UEs having a second UE capability (page 13; page 20, line 7 – page 21, line 14; wherein UEs are configured by a network node with a set of preambles that correspond to the UE capability and bandwidth capability); receiving a random access channel (RACH) message including a preamble, the preamble selected from the second set of preambles in accordance with a capability of the UE, wherein the capability of the UE corresponds to the second UE capability (page 4, lines 26-28; page 13; page 20, line 7 – page 21, line 14; the UE will use the preamble for PRACH); and transmitting a RACH reply message in response to the RACH message (page 4, lines 30-34; page 18, lines 1-4; wherein as part of the RACH procedure, the network node responds with a RAR).
Regarding claim 14 Webb discloses the base station of claim 13, wherein the second UE capability is a maximum bandwidth capability of 20MHz (page 20, line 25 – page 21, line 6; wherein the UE capability includes a maximum LTE bandwidth of 20 MHz).
Regarding claim 16 Webb discloses the base station of claim 13, the RACH message further including an identifier of the UE for indicating the capability of the UE (page 13, lines 1-17; page 15, lines 15-21; the RACH message includes a unique identifier associated to the UE).
Allowable Subject Matter
Claims 3, 7, 11, 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.
These claims recite language, that when in combination with the elements recited in the independent claims, is not met by the prior art. When combined with the independent claims, these claims also comprise language similar to that indicated as allowable in the parent cases.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Application Publication 2013/0083753 to Lee et al. – that discloses the network may reserve a special set of RACH preambles (e.g. random-access-preamble-group-c) for the use of the narrower bandwidth devices and the narrower bandwidth device may select one of them for random access (e.g. an initial random access). For preamble partitioning, existing RACH preambles may be partitioned and a subset of RACH preambles may be used for a device such as a UE or a MTC device such that an eNB or network component may differentiate a narrower bandwidth device before transmitting RA response. Alternatively, a combination of preamble partitioning and additional PRACH resources may be used. Additional RACH preambles may further be provided and partitioned such that some of such preambles may be used for a narrower bandwidth device.
Conclusion
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/Aixa Guadalupe-Cruz/
Examiner
Art Unit 2466
/FARUK HAMZA/Supervisory Patent Examiner, Art Unit 2466
Prosecution Insights