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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
For claims 17-20, it seems Applicants are claiming a machine (tangible computer-readable device), however, from the way the claims are written (lack of any hardware part, hardware component for such device; such device can be considered as purely software (non-statutory subject matter) and not a machine (statutory subject matter).
Examiner recommends Applicants to amend the claim language to claim a manufacture instead. For example, to change “tangible computer-readable device” to “non-transitory tangible computer-readable medium”.
Applicants are reminded that MPEP 2106 describes a “machine” as “Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863). This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854).”
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 obviousness-type 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); 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(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
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).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 8-14, 16-18 of patent 12166609 (application 17427498).
Although the conflicting claims are not identical, they are not patentably distinct from each other in light of the following evidences.
Current application’s claims:
1. A user equipment, UE, comprising: a memory; and a processor, coupled to the memory, configured to: receive, from a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, wherein a duration of the one or more gaps is counted toward a duration of the COT structure in response to the duration of the one or more gaps being less than or equal to a threshold; and based on the SFI, transmit the UL symbols or receive the DL symbols between the base station and UE.
Patent’s claims:
1. A base station, comprising: radio front end circuitry; and processor circuitry coupled to the radio front end circuitry and configured to: generate a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, wherein a duration of the one or more gaps is counted toward a duration of the COT structure in response to the duration of the one or more gaps being less than or equal to a threshold; and transmit, using the radio front end circuitry, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
2. The UE of claim 1, wherein the duration of the one or more gaps is not counted toward a duration of the COT structure in response to the duration of the one or more gaps being greater than the threshold.
2. The base station of claim 1, wherein the duration of the one or more gaps is not counted toward the duration of the COT structure in response to the duration of the one or more gaps being greater than the threshold.
3. The UE of claim 1, wherein one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure.
3. The base station of claim 1, wherein one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure.
4. The UE of claim 1, wherein the COT further includes one or more discovery signals (DRSs) within a DRS window.
4. The base station of claim 1, wherein the COT structure further includes one or more discovery signals (DRSs) within a DRS window.
5. The UE of claim 1, wherein the COT is defined on multiple subbands (SBs).
5. The base station of claim 1, wherein the COT structure is defined on multiple subbands (SBs).
6. The UE of claim 5, wherein the COT comprises a plurality of switching points from the UL symbols to the DL symbols and from the DL symbols to the UL symbols on the multiple SBs.
6. The base station of claim 5, wherein the COT structure comprises a plurality of switching points between the UL symbols to the DL symbols and the DL symbols to the UL symbols on the multiple SBs.
7. The UE of claim 1, wherein the processor is configured to transmit the UL symbols to the base station based on the SFI.
1. … transmit, using the radio front end circuitry, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
8. The UE of claim 1, wherein the processor is configured to receive the DL symbols from the base station based on the SFI.
8. The base station of claim 1, wherein the processor circuitry is configured to transmit, using the radio front end circuitry, the DL symbols to the UE based on the SFI.
9. A method, comprising: receiving, by a user equipment, UE, and from a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, wherein a duration of the one or more gaps is not counted toward a duration of the COT structure in response to the duration of the one or more gaps being greater than a threshold; and based on the SFI, transmitting the UL symbols or receiving the DL symbols between the base station and UE.
9. A method, comprising: generating, by a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, wherein a duration of the one or more gaps is not counted toward a duration of the COT structure in response to the duration of the one or more gaps being greater than a threshold; and transmitting, by the base station, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
10. The method of claim 9, wherein the duration of the one or more gaps is counted toward the duration of the COT structure in response to the duration of the one or more gaps being less than or equal to the threshold.
10. The method of claim 9, wherein the duration of the one or more gaps is counted toward the duration of the COT structure in response to the duration of the one or more gaps being less than or equal to the threshold.
11. The method of claim 9, wherein one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure.
11. The method of claim 9, wherein one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure.
12. The method of claim 9, wherein the COT further includes one or more discovery signals (DRSs) within a DRS window.
12. The method of claim 9, wherein the COT structure further includes one or more discovery signals (DRSs) within a DRS window.
13. The method of claim 9, wherein the COT is defined on multiple subbands (SBs).
13. The method of claim 9, wherein the COT structure is defined on multiple subbands (SBs).
14. The method of claim 13, wherein the COT comprises a plurality of switching points from the UL symbols to the DL symbols and from the DL symbols to the UL symbols on the multiple SBs.
14. The method of claim 13, wherein the COT structure comprises a plurality of switching points between the UL symbols to the DL symbols and the DL symbols to the UL symbols on the multiple SBs.
15. The method of claim 9, further comprising: receiving the DL symbols from the base station based on the SFI.
9. … transmitting, by the base station, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
16. The method of claim 9, further comprising: transmitting the UL symbols to the base station based on the SFI.
9. … transmitting, by the base station, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
17. A tangible computer-readable device having instructions stored thereon that, when executed by a processing device of a user equipment, UE, causes the UE to perform operations comprising: receiving, from a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, wherein a duration of the one or more gaps is counted toward a duration of the COT structure in response to the duration of the one or more gaps being less than or equal to a threshold and the duration of the one or more gaps is not counted toward a duration of the COT structure in response to the duration of the one or more gaps being greater than the threshold; and based on the SFI, transmitting the UL symbols or receiving the DL symbols between the base station and UE.
16. A base station, comprising: a memory configured to store program instructions; and a processor, upon executing the program instructions, configured to: generate a slot format indicator (SFI) associated with a channel occupancy time (COT) structure, wherein the SFI indicates whether one or more slots associated with the COT structure are to be used for downlink (DL) symbols, uplink (UL) symbols, or flexible symbols, wherein the flexible symbols form one or more gaps in the COT structure in response to the flexible symbols not being overridden as a DL transmission or a UL transmission, and wherein a duration of the one or more gaps is counted toward a duration of the COT structure in response to the duration of the one or more gaps being less than or equal to a threshold and the duration of the one or more gaps is not counted toward the duration of the COT structure in response to the duration of the one or more gaps being greater than the threshold; and transmit the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
18. The tangible computer-readable device of claim 17, wherein: one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure, and the COT further includes one or more discovery signals (DRSs) within a DRS window.
17. The base station of claim 16, wherein one or more of the flexible symbols that are overridden as the DL transmission or the UL transmission are counted toward the duration of the COT structure.
18. The base station of claim 16, wherein the COT structure further includes one or more discovery signals (DRSs) within a DRS window.
19. The tangible computer-readable device of claim 17, wherein the operations further comprise transmitting the UL symbols to the base station based on the SFI.
16. … and transmit the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
20. The tangible computer-readable device of claim 17, wherein the operations further comprise receiving the DL symbols from the base station based on the SFI.
16. … and transmit the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.
For double patenting to exist as between the rejected claims and patent claims, it must be determined that the rejected claims are not patentably distinct from the patent claims. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and the patent claims and, if so, whether those differences render the claims patentably distinct.
The differences between the rejected claims and the patent claims (as shown in the table above) don’t render the claims patentably distinct because the claims of the instant application merely broaden the scope of the claims of the patent. It had 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 USQ 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.
Also, according to MPEP 804 under Anticipation Analysis, "The analysis required is different in situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims. Both of these situations require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)"
Clearly, "one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application".
For example, one of ordinary skills in the art would, on reading: “A base station, comprising: radio front end circuitry; and processor circuitry coupled to the radio front end circuitry and configured to: generate a slot format indicator (SFI) associated with a channel occupancy time (COT) structure… and transmit, using the radio front end circuitry, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.” (Patent claim 1) at once envisage “A user equipment, UE, comprising: a memory; and a processor, coupled to the memory, configured to: receive, from a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure… and based on the SFI, transmit the UL symbols or receive the DL symbols between the base station and UE” (Current application claim 1)
For example, one of ordinary skills in the art would, on reading: “A method, comprising: generating, by a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure… and transmitting, by the base station, the SFI to a user equipment (UE) to enable communication of the UL symbols or the DL symbols between the base station and UE.” (Patent claim 9) at once envisage “A method, comprising: receiving, by a user equipment, UE, and from a base station, a slot format indicator (SFI) associated with a channel occupancy time (COT) structure… and based on the SFI, transmitting the UL symbols or receiving the DL symbols between the base station and UE.” (Current application claim 9).
In summary, as discussed in details above, clearly the differences between the rejected claims and the patent claims don’t render the claims patentably distinct.
Allowable Subject Matter
Claims 1-16 would be allowable if a Terminal Disclaimer is filed to overcome the rejection(s) under Double Patenting, set forth in this Office action.
Claims 17-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and a Terminal Disclaimer is filed to overcome the rejection(s) under Double Patenting, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHOA B HUYNH whose telephone number is (571)270-7185. The examiner can normally be reached Monday - Friday 1:00 PM - 9:35 PM.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KHOA HUYNH/Primary Examiner, Art Unit 2462
Prosecution Insights