DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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.
3. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,167,391. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application are transparently found in U.S. Patent No. 12,167,391 with obvious wording variations. Take an example of comparing independent claim 1 of the pending application and claim 1 of U.S. Patent No. 12,167,391:
Pending Application 18/926,931
U.S. Patent No. 12,167,391
“A method performed by a network node, the method comprising:”
“A method performed by an apparatus, the method comprising:”
“transmitting at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“receiving at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“performing at least one downlink transmission based on the at least one signal in response to the communication link being associated with downlink transmission; and”
“performing at least one uplink transmission based on the at least one signal in response to the communication link being associated with uplink transmission; and”
“performing at least one uplink reception based on the at least one signal in response to the communication link being associated with uplink reception, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
“performing at least one downlink reception based on the at least one signal in response to the communication link being associated with downlink reception, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
Claim 1 of the pending application 18/926,931 encompasses similar subject matter as claim 1 of U.S. Patent No. 12,167,391, except the former is from the vantage point of the network node, whereas the latter is from the vantage point of the client device. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of U.S. Patent No. 12,167,391 to be from the vantage point of the network node, in order to arrive at claim 1 of pending application 18/926,931, because a client device in the area of wireless communications operates in conjunction with a corresponding network node.
Take an example of comparing independent claim 1 of the pending application and claim 1 of U.S. Patent No. 12,167,391:
Pending Application 18/926,931
U.S. Patent No. 12,167,391
“A network node, comprising:”
“An apparatus, comprising:”
“at least one memory;”
“at least one memory;”
“and at least one processor coupled with the at least one memory and configured to cause the network node to:”
“and at least one processor coupled with the at least one memory and configured to cause the apparatus to:”
“transmit at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“receive at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“perform at least one downlink transmission based on the at least one signal in response to the communication link being associated with downlink transmission; and”
“perform at least one downlink reception based on the at least one signal in response to the communication link being associated with downlink reception; and”
“perform at least one uplink reception based on the at least one signal in response to the communication link being associated with uplink reception, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
“perform at least one uplink transmission based on the at least one signal in response to the communication link being associated with uplink transmission, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
Claim 10 of the pending application 18/926,931 encompasses similar subject matter as claim 10 of U.S. Patent No. 12,167,391, except the former is from the vantage point of the network node, whereas the latter is from the vantage point of the client device. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 10 of U.S. Patent No. 12,167,391 to be from the vantage point of the network node, in order to arrive at claim 10 of pending application 18/926,931, because a client device in the area of wireless communications operates in conjunction with a corresponding network node.
Take an example of comparing independent claim 19 of the pending application and claim 10 of U.S. Patent No. 12,167,391:
Pending Application 18/926,931
U.S. Patent No. 12,167,391
“A processor for wireless communication, comprising:”
“at least one processor coupled with the at least one memory and configured to cause the apparatus to:”
“at least one controller coupled with at least one memory and configured to cause the processor to:”
“at least one processor coupled with the at least one memory and configured to cause the apparatus to:”
“transmit at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“receive at least one signal indicating a slot format, wherein the slot format indicates at least one of:”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at a beginning of a sequence of consecutive symbols of the slot format transmitted or received over a communication link is reserved or is to be reserved, wherein the at least one symbol being reserved comprises the at least one symbol being unavailable so that no valid data is carried therein; and”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“whether at least one symbol at an end of the sequence of consecutive symbols of the slot format transmitted or received over the communication link is reserved or is to be reserved;”
“perform at least one downlink transmission based on the at least one signal in response to the communication link being associated with downlink transmission; and”
“perform at least one downlink reception based on the at least one signal in response to the communication link being associated with downlink reception; and”
“perform at least one uplink reception based on the at least one signal in response to the communication link being associated with uplink reception, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
“perform at least one uplink transmission based on the at least one signal in response to the communication link being associated with uplink transmission, wherein the at least one signal indicates whether simultaneous reception from a parent backhaul link of an integrated access and backhaul node and a child link of the integrated access and backhaul node is enabled, and the child link is a child backhaul link or an access link.”
Claim 19 of the pending application 18/926,931 encompasses similar subject matter as claim 10 of U.S. Patent No. 12,167,391, except the former is from the vantage point of the network node, whereas the latter is from the vantage point of the client device. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 10 of U.S. Patent No. 12,167,391 to be from the vantage point of the network node, in order to arrive at claim 19 of pending application 18/926,931, because a client device in the area of wireless communications operates in conjunction with a corresponding network node.
Dependent claims 2-9, 11-18, and 20 of the pending application 18/926,931 correspond to claims 2-9, 11-18, and 11, respectively, of U.S. Patent No. 12,167,391.
Conclusion
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W GENACK whose telephone number is (571)272-7541. The examiner can normally be reached Monday through Friday, 9:00 AM to 5:00 PM Eastern Time.
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/MATTHEW W GENACK/Primary Examiner, Art Unit 2645
