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 Frenne et al. for the "DELAYING TRANSMISSION DEPENDING ON TRANSMISSION TYPE AND UE PROCESSING CAPABILITIES" filed 10/23/2024 has been examined. This application is a Continuation of 18/330,634, filed 06/07/2023 now U.S. Patent #12,160,930 which is a Continuation of 17/521,934, filed 11/09/2021 now U.S. Patent # 11,716,609 which is a Continuation of 16/707,444 filed 12/09/2019 now U.S. Patent # 11,202,196 which is a Continuation of 16/242,209 filed 01/08/2019 now U.S. Patent # 10,771,960 which is a Continuation of 16/095,121 filed 10/19/2018 which is a National Stage entry of PCT/SE2016/051178, International Filing Date: 11/29/2016 which Claims Priority from Provisional Application 62324914 filed 04/20/2016. 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 application USSN#18/330,634 noted on page 1, paragraph [0001] needs to be updated. This application is now US Patent#12,160,930. Appropriate correction is required.
Claim Objections
4. Claim 4 should depend on claim 3 instead claim 2 for the consistency with the other set of claim (claim 14 depends on claim 13). Appropriate correction 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. Claim 4 is 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.
Claim 4 recites the limitation "the set of default delay" on line 1. There is insufficient antecedent basis for this limitation in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 103
7. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
8. This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, 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 and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
9. Claims 1-8. 11-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee et al. (US#8,266,491) in view of Cho et al. (US#2018/0020431).
Regarding claim 11, the references disclose a system and apparatus for performing data transmission to/from radio network node of the wireless network, in accordance with the essential features of the claim. Lee et al. (US#8,266,491) discloses a UE comprising processing circuitry and a memory, wherein the processing circuitry is configured to: receive from a radio network node, a control message that configures the UE with the set of one or more delay values (Lee et al.: See Figs. 2A-B, 4; Col. 7, line 34 to Col. 9, line 22); receive, from the radio network node, an indication that indicates a delay value from a set of delay values for a transmission of data from the UE (See the Abstract & Fig. 3; Col. 2, lines 29-39 & Col. 8, lines 27-55), wherein the delay value comprises a value of a delay that is to occur between when the UE receives a scheduling message and when the UE performs a transmission of data scheduled by that scheduling message (See Figs. 2A-B, 4; Col. 7, line 34 to Col. 8, line 55 & Col. 8, line 56 to Col. 12, line 19); and perform a transmission of data to the radio network node, with a timing based on the indicated second delay value (See Figs. 6, 8; Col. 12, lines 40-46 & Col. 13, lines 38-46).
However, Lee does not disclose expressly the determined delay values that transmitted to the UE. In the same field of endeavor, Cho et al. (US#2018/0020431) teaches an UL resource request system using previously defined UL resource grant time information depending on the capability type of a UE. Cho teaches that the UL resources are allocated based on a previously defined processing delay value and an UL grant offset value depending on the UE capability type (see the Abstract & para [0005], [0010]-[0012]).
Thus, It would have been obvious to a person of ordinary skill in the art before the effective filing data of the claimed the invention to combine Cho’s novel use of the uplink (UL) resource allocation method for a UE to transmit UL data to an evolved nodeB (eNB) into Lee’s teaching of system and method for transmitting and receiving a signal on the basis of Hybrid Automatic Repeat reQuest (HARQ) in a wireless mobile communication system with the motivation being to provide a method and apparatus for delaying transmission depending on transmission type and UE processing capabilities.
Regarding claim 12, Lee in view of Cho teaches the apparatus of claim 11 examined above, Lee et al. (US#8,266,491) further teaches wherein performing the transmission of data to the radio network node, with a timing based on the indicated delay value, if the indicated delay value is greater than or equal to a minimum delay value with which the user equipment is capable of processing data (Lee et al.: Figs. 5-7; Col. 9, line 23 to Col. 13, line 24).
Regarding claim 13, Lee in view of Cho teaches the apparatus of claim 11 examined above, Lee et al. (US#8,266,491) further teaches wherein the reference further teaches wherein the set of delay values is a set of default delay values (Lee et al.: Fig. 8; Col. 13, lines 38-46).
Regarding claim 14, Lee in view of Cho teaches the apparatus of claim 11 examined above, Lee et al. (US#8,266,491) further teaches wherein the set of delay values is stored in a table at the UE (Lee et al.: Fig. 8; Col. 13, lines 38-46).
Regarding claims 15-16, the use of semi-static signaling such as radio resource control (RRC) signaling, and dynamic signaling, such as downlink control information (DCI) together provide a feedback configuration for a particular transmission and are well known in the art (Cho et al. : see Figs. 5-6, para [0020]-[0023]).
Regarding claims 17-18, Lee in view of Cho teaches the apparatus of claim 11 examined above, Lee et al. (US#8,266,491) further teaches wherein the indication is based on a capability of the UE related to a processing time for processing received data from the RNC (Lee et al.: see Figs. 3-6, Col. 8, line 24 to Col. 9, line 65 & Col. 12, lines 40-46).
Regarding claims 1-8, they are method claims corresponding to the apparatus claims 11-18 examined above. Therefore, claims 1-8 are analyzed and rejected as previously discussed with respect to claims 11-18.
Allowable Subject Matter
10. Claims 9, 19 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.
Claims 10, 20 depend on the objected claims above.
11. 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 before receiving the control message: receiving a first indication from the radio network node, wherein the user equipment comprises a set of one or more default delay values and wherein the first indication indicates a first delay value from the set of one or more default delay values for a transmission of data from the user equipment; and performing a first transmission of data from the user equipment to the radio network node, wherein a timing of the first transmission is based on the indicated first delay value, as specifically recited in the claims.
Double Patenting
12. 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). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
13. 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. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Fongi, 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© may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(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.
14. Claims 1-20 of the present application Serial No. 18/923,773 (hereinafter Application ‘773) rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,160,930 (hereinafter patent ‘930), claims 1-15 of U.S. Patent No. 11,716,609 (hereinafter patent ‘609), claims 1-26 of U.S. Patent No. 11,202,196 (hereinafter patent ‘196) and claims 1-26 of U.S. Patent No. 10,771,960 (hereinafter patent ‘960) since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. 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 reflects identical operation, purpose, application, and environment.
With respect to the specific limitations, claims 1-20 of patent’930, claims 1-15 of patent’609, claims 1-26 of patent ‘196 and ‘960 are equivalent to the combination from pending claims 1-20 of Application ‘773 for performing data transmission to/from radio network node of the wireless network.
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
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Bergstrom et al. (US#10,469,213) shows network node, a wireless device and methods therein for handling ARQ feedback information.
The Andersson et al. (US#10,517,113) shows radio network node, wireless device and methods performed therein.
The Wiberg et al. (US#10,516,463) shows method for indicating a transmission time offset of a feedback message.
The Wiberg et al. (US#10,624,087) shows radio network node, wireless device and methods for feedback based retransmission.
The Kazmi et al. (US#10,178,573) shows methods, network node and wireless device for managing operational behavior of wireless device after measurement gap.
The Zee et al. (US#2020/0344767) shows methods, network assistance node, wireless device, network node, and opposite node, for handling data communication between the wireless device and the opposite node.
The Enbuske et al. (US#2020/0037280) shows systems and methods for synchronous control of HARQ configurations.
The Andersson et al. (US#2020/0100281) shows radio network node, wireless device and methods performed therein.
The Frenne et al. (US#2019/0150007) shows delaying transmission depending on transmission type and UE processing capabilities.
16. 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. "
17. 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.
18. 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
09/22/2026
/MAN U PHAN/Primary Examiner, Art Unit 2477
Prosecution Insights