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 (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.
Claim Objections
Applicant is advised that should claim 36 be found allowable, claim 39 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,160,386. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 21-39, the parent patent recites features such as a WRTU, method and base station for decoding DCI based on PDCCH candidates. However, the claims additionally recite a transceiver and a same number of PDCCH candidates. In removing the additional features, the scope of the claims is merely broadened by eliminating elements and their functions. It has been held that 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 (1963); In re Nelson, 95 USPQ 82 (CCPA 1952); and In re Eliot, 25 USPQ 111 (CCPA 1935). Also note Ex parte Rainu, 168 USPQ 365 (Bd. App. 1969) (omission of a reference element whose function is not needed would be obvious to one skilled in the art). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention (or at the time the invention was made, pre-AIA ) to not recite the additional features.
Claim Rejections - 35 USC § 102
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.
Claims 21-39 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chatterjee et al. (US 2019/0045533 as supported by the corresponding passages and figures of Provisional application No. 62/556,175).
Regarding claim 21, Chatterjee discloses a wireless transmit/receive unit (WTRU) (fig. 17, item 1701; fig. 15; para. 94) comprising: a processor configured at least to (paras. 95 and 98): receive configuration information that defines a first search space set and a second search space set (fig. 2-4 and para. 46; note: association rules for PDCCHs of search spaces and CORESETS), wherein the first search space set comprises a first plurality of physical downlink control channel (PDCCH) candidates and the second search space set comprises a second plurality of PDCCH candidates (fig. 4; para. 47; note: two PDCCH candidates in each CORESET), wherein the configuration information comprises information that indicates that the first search space set and the second search space set are linked (para. 46; note: PDCCH candidate association for PDCCHs of different search spaces and CORESETs indicated by RRC signaling), and wherein a number of the first plurality of PDCCH candidates corresponds to a number of the second plurality of PDCCH candidates (fig. 4; note: two PDCCH candidates per CORESET); monitor, based on the received configuration information, for a first transmission of downlink control information (DCI) using at least one of the first plurality of PDCCH candidates (figs. 3-4 and paras. 41-43); monitor, based on the received configuration information, for a second transmission of the DCI using at least one of the second plurality of PDCCH candidates (figs. 3-4 and paras. 41-43); and decode the DCI using any of the first transmission or the second transmission (paras. 46 and 58).
Regarding claim 22, Chatterjee discloses the WTRU of claim 21, wherein the processor is further configured to combine information of the first transmission with information of the second transmission (para. 44; note: soft combining DCIs of PDCCHs).
Regarding claim 23, Chatterjee discloses the WTRU of claim 21, wherein the first search space set is associated with a first aggregation level and the second search space set is associated with a second aggregation level, and wherein the second aggregation level that corresponds to the first aggregation level (fig. 4 and para. 47).
Regarding claim 24, Chatterjee discloses the WTRU of claim 21, wherein the configuration information indicates that each of the first plurality of PDCCH candidates is linked to a respective one of the second plurality of PDCCH candidates (fig. 4; paras. 46; note: association defined by RRC signaling; para. 47).
Regarding claim 25, Chatterjee discloses the WTRU of claim 21, wherein the first search space set is associated with a first control resource set (CORESET) and the second search space set is associated with a second CORESET (fig. 4 and paras. 46-47; note: a CORESET having a search space for PDCCH candidates; note: blind decoding).
Regarding claim 26, Chatterjee discloses the WTRU of claim 21, wherein the first transmission and the second transmission are received using different beams (para. 42; note: different beams for DCIs and their PDCCHs; figs. 3-4).
Regarding claims 27-32, these limitations are rejected on the same ground as claims 21-26, respectively.
Regarding claims 33-37 and 39, these limitations are rejected on the same ground as claims 21, 23-26 and 25, respectively, from the perspective of a base station having reciprocal functionality to perform the transmissions received by the WRTU. In addition, Chatterjee discloses a base station (fig. 17, item 1711) comprising: a processor configured at least to (fig. 15; para. 94) perform the transmissions received by the WRTU of claims 21 and 23-26.
Regarding claim 38, Chatterjee discloses the base station of claim 33, wherein the first transmission and the second transmission are transmitted using different orthogonal frequency division multiplexing (OFDM) symbols (figs. 3-4; paras. 32-33, 42 and 47; note: CORESETs using OFDM symbols; note: CORESETs and PDCCHs being time-division multiplexed in different symbols; note: corresponding PDCCHs having different aggregation levels).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gong et al. (US 2020/0154467 as supported by the corresponding passages and figures of Provision application No. 62/520,510) (fig. 7C and paras. 456, 464 and 507) and Moon et al. (US 2020/0221428 as supported by the corresponding passages and figures of KR 10-2017-0102634) (figs. 5B, 6, 9D and 10 and paras. 76, 100, 125, 127, 130 and 138-140) each disclose associated PDCCH candidates.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Harper whose telephone number is 571-272-3166. The examiner can normally be reached weekdays from 11:00 AM to 7:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Yemane Mesfin, can be reached at 571-272-3927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. For non-official communications, the examiner’s e-mail address is kevin.harper@uspto.gov (MPEP 502.03 – A copy of all received emails relating to an application including proposed amendments and excluding scheduling information for interviews will be placed informally into the application file).
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/Kevin C. Harper/
Primary Examiner, Art Unit 2462
Prosecution Insights