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 17-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12133201. Although the claims at issue are not identical, they are not patentably distinct from each other because the application’s claims merely broaden the scope of the patented claims by not claiming some claim elements (i.e., releasing the CG configuration for the SDT).
Claim 17 of Instant Application
Claim 1 of US 12133201
A method performed by a terminal in a wireless communication system, the method comprising:
A method performed by a terminal in a wireless communication system, the method comprising:
receiving, from a base station, a radio resource control (RRC) release message; identifying whether the RRC release message includes information related to a suspend configuration;
in case that the RRC release message includes the information related to the suspend configuration:
receiving, from a base station, a first radio resource control (RRC) release message including information related to a suspend configuration and information related to a configured grant (CG) configuration for a small data transmission (SDT);
identifying that the information related to suspend configuration includes information related to a small data transmission (SDT), and based on the information related to the SDT, performing an SDT procedure in an RRC inactive state; and
performing an SDT procedure based on the information related to the CG configuration for the SDT while the terminal is in an RRC inactive;
in case that the RRC release message does not include the information related to the suspend configuration, entering an RRC idle state.
receiving, from the base station, a second RRC release message without the information related to the suspend configuration; and releasing the CG configuration for the SDT based on the second RRC release message without the information related to the suspend configuration while the terminal is in an RRC idle state.
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 (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 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 17, 19, 21, 23, 25, 27, 29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US Pub. 2023/0389081) in view of Eleftheriadis et al. (US Pub. 2023/0388922).
Regarding claims 17, 21, 25 and 29, Singh teaches a method performed by a terminal in a wireless communication system, the method comprising: receiving, from a base station, a radio resource control (RRC) release message (step S3 in Figure 6); identifying whether the RRC release message includes information related to a suspend configuration (“‘RRCRelease’ message comprising a SuspendConfig IE” in [0093]); in case that the RRC release message includes the information related to the suspend configuration: identifying that the information related to suspend configuration
includes information related to a small data transmission (SDT) (“ConfigGrantforSmallDataTransmission IE (and/or the like) informing the UE 3 about the parameters/resources for Small Data Transmission using configured grant” in [0093]), and based on the information related to the SDT, performing an SDT procedure (step S4 in Figure 6) in an RRC inactive state (“RRC Inactive mode” in [0093]). Singh, however, does not teach in case that the RRC release message does not include the information related to the suspend configuration, entering an RRC idle state. Eleftheriadis teaches in case that the RRC release message does not include the information related to the suspend configuration, entering an RRC idle state (“RRCRelease (without using suspendConfig) from Control Node to UE from RRC_INACTIVE to RRC_IDLE state)” in [0065]). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Singh to have in case that the RRC release message does not include the information related to the suspend configuration, entering an RRC idle state as taught by Eleftheriadis in order to enables power savings [0007].
Regarding claims 19, 23, 27 and 31, Singh teaches performing the SDT procedure
further comprises: transmitting a random access preamble (step S5 in Figure 8); receiving a random access response message as a response to the random access preamble (step S6 in Figure 8); starting a time alignment timer based on the random access response message (“restart its TAT” in [0128]); transmitting uplink data associated with the SDT (step S8 in Figure 8); and in case that the SDT procedure is completed, stopping the time alignment timer (“expiry of the associated TAT” in [0097]).
Claims 18, 22, 26 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. in view of Eleftheriadis et al. and further in view of Kim et al. (US 12,004,029) and further in view of Kung et al. (US Pub. 2021/0045178).
Regarding claims 18, 22, 26 and 30, Singh in view of Eleftheriadis teaches the limitations in claims 17, 21, 25 and 29 as shown above. Singh in view of Eleftheriadis, however, does not teach the terminal enters the RRC idle state based on an integrity check failure, and wherein the terminal enters the RRC idle state based on a cell reselection. Kim teaches the terminal enters the RRC idle state based on an integrity check failure, and wherein the terminal enters the RRC idle state based on a cell reselection (“1> if the integrity protection check of the RRCReestablishment message fails: 2> perform the actions upon going to RRC_IDLE, with release cause ‘RRC connection failure’” in Column 18 Lines 6-9). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Singh in view of Eleftheriadis to have the terminal enters the RRC idle state based on an integrity check failure, and wherein the terminal enters the RRC idle state based on a cell reselection as taught by Kim in order to apply integrity protection to all subsequent messages received and sent by the UE (Column 18 Lines 13-15). Singh in view of Eleftheriadis and Kim, however, does not teach the terminal enters the RRC idle state based on a cell reselection. Kung teaches the terminal enters the RRC idle state based on a cell reselection (“going to RRC_IDLE was triggered by inter-RAT cell reselection” in [0166]). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Singh in view of Eleftheriadis and Kim to have the terminal enters the RRC idle state based on a cell reselection as taught by Kung in order to perform cell selection as specified in standard [0166].
Claims 20, 24, 28 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. in view of Eleftheriadis et al. and further in view of Tsai et al. (US Pub. 2021/0307055).
Regarding claims 20, 24, 28 and 32, Singh in view of Eleftheriadis teaches the limitations in claims 17, 21, 25 and 29 as shown above. Singh in view of Eleftheriadis, however, does not teach a time alignment timer is stopped based on entering the RRC idle state, and wherein the terminal enters the RRC idle state based on a timer configured for the SDT expires. Tsai teaches a time alignment timer is stopped based on entering the RRC idle state (“The timer may be stopped when the UE enters RRC connected state or RRC idle state” in [0216]), and wherein the terminal enters the RRC idle state based on a timer configured for the SDT expires (“When a timer, e.g., T301, T311 as introduced in 3GPP TS 38.331 V15.7.0, expires, the UE may enter RRC_IDLE state, and the UE may release/suspend the CG configuration (e.g., if the CG configuration is configured for RRC_INACTIVE state and/or for small data transmission)” in [0287]). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Singh in view of Eleftheriadis to have a time alignment timer is stopped based on entering the RRC idle state, and wherein the terminal enters the RRC idle state based on a timer configured for the SDT expires as taught by Tsai in order to control the release/suspension of the CG configuration [0206].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLEMENCE S HAN whose telephone number is (571)272-3158. The examiner can normally be reached Monday-Friday 8AM-5PM EST.
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/CLEMENCE S HAN/Primary Examiner, Art Unit 2414
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