DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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. 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.
Status of Claims
1. The following is a non-final office action in response to the applicant’s submission received on 10/14/2024.
2. Claims 1 – 3 are currently pending and have been examined.
Foreign Priority/Domestic benefit
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed under 35 U.S.C. §119 for Korean Patent Application Nos. 10-2022-0015439, filed on February 7, 2022, 10-2022-0015440, filed on February 7, 2022, 10-2022-0015441, filed on February 7, 2022, 10-2022-0015442, filed on February 7, 2022, 10-2022-0015443, filed on February 7, 2022, 10-2022-0015444, filed on February 7, 2022, and 10-2022-0015445, filed on February 7, 2022
Domestic benefit is claimed with regards to continuation of U.S. Patent Application No. 18/542,785, filed on December 18, 2023, which is a continuation of International Application No. PCT/KR2023/001710, filed on February 7, 2023.
Oath/Declaration
1. The applicant’s oath/declaration filed on 10/14/2024 has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
1. The information disclosure statement filed on 10/14/2024 is in compliance with the provision of 37 CFR 1.97, 1.98 and MPEP § 609. It has been placed in the application file and the information referred to therein has been considered as to the merits.
Drawings
1. The applicant’s drawings submitted on 10/14/2024 are acceptable for examination purposes.
Claim interpretation
1. Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted "in view of the specification" without importing limitations from the specification into the claims unnecessarily) [MPEP 2106 Sec I, C]. “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). [MPEP 2111.01 Sec II]. Thus, the Examiner interprets Applicant’s claims "in view of the specification" and does not “import into a claim limitations that are not part of the claim”.
2. When multiple limitations are connected with “OR”, one of the limitations does not have any patentable weight since both of the limitations are optional.
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 – 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 – 3 and 5 of U.S. Patent No. 12, 144, 034. Although the claims at issue are not identical, they are not patentably distinct from each other, the analysis in the table below:
Patent: 12, 144, 034
18/915, 317
5. A method performed by a base station, the method comprising:
transmitting, by the base station, a System Information Block1 (SIB1), wherein the SIB1 comprises one or more random access channel configuration common (RACH-ConfigCommon) parameters, wherein each of the one or more RACH-ConfigCommon parameters comprises zero or one or more pieces of feature-combination-related information, wherein each of the one or more pieces of feature-combination-related information comprises feature-combination information, wherein the feature-combination information of at least one of the one or more pieces of feature-combination-related information comprises:
a reduced capability (redcap) field;
a small data (smallData) field;
a message3 repetition field; and a slice-related field, and wherein each of the redcap field, the smallData field, and the message3 repetition field comprises one bit indicating a single value, respectively; and
performing, by the base station with a terminal, a random access, wherein a piece of feature-combination-related information of the one or more pieces of feature-combination-related information is selected, wherein feature-combination information that comprises at least one feature that triggers the random access is selected based on feature-combination-related information corresponding to feature-combination information that comprises all features triggering the random access not existing, and wherein the random access is based on the selected piece of feature-combination-related information and first information in a RACH-ConfigCommon parameter, of the one or more RACH-ConfigCommon parameters, that comprises the piece of feature-combination-related information.
1. A base station in a wireless communication system, the base station comprising:
a transceiver configured to transmit and receive a signal; and
a controller configured to control the transceiver to:
transmit a System Information Block1 (SIB1), wherein the SIB1 comprises one or more random access channel configuration common (RACH-ConfigCommon) parameters, wherein each of the one or more RACH-ConfigCommon parameters comprises zero or one or more pieces of feature-combination-related information, wherein each of the one or more pieces of feature-combination-related information comprises feature-combination information, wherein the feature-combination information of at least one of the one or more pieces of feature-combination-related information comprises:
a reduced capability (redcap) field;
a small data (smallData) field;
a message3 repetition field; and
a slice-related field, and wherein each of the redcap field, the smallData field, and the message3 repetition field comprises one bit indicating a single value, respectively; and
perform, with a terminal, a random access procedure, wherein a piece of feature-combination-related information of the one or more pieces of feature-combination-related information is selected, wherein feature-combination information that comprises at least one feature that triggers the random access is selected based on feature-combination-related information corresponding to feature-combination information that comprises all features triggering the random access not existing, and wherein the random access is based on the selected piece of feature-combination-related information and first information in a RACH-ConfigCommon parameter, of the one or more RACH-ConfigCommon parameters, that comprises the piece of feature-combination-related information.
2. The method of claim 1, wherein the first information is a physical random access channel configuration index (prach-ConfigurationIndex) parameter.
2. The base station of claim 1, wherein the first information is a physical random access channel configuration index (prach-ConfigurationIndex) parameter.
3. The method of claim 1, wherein: redcap is a part of a feature combination based on the redcap field being present in the feature-combination information, small data transmission is a part of a feature combination based on the smallData field being present in the feature-combination information, and a message 3 repetition is a part of a feature combination based on the message3 repetition field being present in the feature-combination information.
3. The base station of claim 1, wherein: redcap is a part of a feature combination based on the redcap field being present in the feature-combination information, small data transmission is a part of a feature combination based on the smallData field being present in the feature-combination information, and a message 3 repetition is a part of a feature combination based on the message3 repetition field being present in the feature-combination information.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHARISHI V KHIRODHAR whose telephone number is (571)270-7909. The examiner can normally be reached 6:00 AM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nawaz M Asad can be reached at 571-272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAHARISHI V. KHIRODHAR
Examiner
Art Unit 2463
/MAHARISHI V KHIRODHAR/Primary Examiner, Art Unit 2463
Prosecution Insights