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 .
Information Disclosure Statement
Applicant has submitted large amount of Information Disclosure Statements and/or huge number of references and/or reference(s) which are very hefty. Where applicant points the Examiner to large reference or references without citing a specific portion or page, the Examiner will not pour over the documents to extract the relevant information, Ernst Haas Studio, Inc. v. palm Press, Inc. 164 F.3rd 110, 112 (2d Cir. 1999), Winer International Royalty Corp. v. Wang, 202 F3d 1340, 1351 (Fed. Cir. 2000). It is not true, if applicant presents an overload of irrelevant or non-probative references, somehow the irrelevancies will add up to relevant evidence, DeSilva v. DiLeonardi, 181 F.3d 865, 867. Information Disclosure Statements must make all relevant information accessible to the Examiner, rather ask him to play archaeologist with the references, Shiokawa v. Maienfisch, 56 USPQ2d 1406, 1413 and LeVeen v. Edwards 57 USPQ2d 1406, 1413. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). With this in mind, the Information Disclosure Statement has been considered.
Drawings
Figures 2 and 3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the steps of receiving a timing advance, and determining the time adjustment value based on the position of the terminal device, the position of the network device, and the timing advance; sending a first timing advance, wherein the first timing advance is used to determine the time adjustment value; sending a first receiving time, wherein the first receiving time is a time at which the network device expects to receive the random access preamble, and the first receiving time is used to determine the time adjustment value must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur, and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11-20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without communication unit or interface (#803, 903, 1003), which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). A processor, by definition, only processes data, and cannot send or receive a radio signal. According to the specification, this is done by communication unit or interface (#803, 903, 1003), not the processor.
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.
Claims 1-7, 10-20 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 2, 11, 12, the claim language “time adjustment value or an adjusted time adjustment value” is ambiguous. It is unclear whether the “adjusted time adjustment value” narrows the claim because the “adjusted time adjustment value” can always be omitted. The use of “or” does not specify whether these alternatives are mutually exclusive or may coexist. As a result, a person of ordinary skill in the art would not be able to determine, with reasonable certainty, the scope of the claimed invention, as required by 35 U.S.C. § 112(b) and as interpreted by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This ambiguity is further reflected in dependent claims 2, 12, which rely on the unclear antecedent basis, compounding the indefiniteness. Applicant is advised to amend the claims to clarify the relationship between the alternatives, specify whether both types of addresses can be present, and provide clear antecedent basis to resolve the ambiguity.
In claims 3 and 13, the term “a time adjustment value” is confusing. Is this term same as the “a time adjustment value” in claims 1 or claim 10 or is it a second and different “time adjustment value”? Also, in claims 1 and 10 already determines the time adjustment value based on the position of the terminal device, based on the position of the network device, is there a second and different determining the time adjustment value based on the position of the terminal device and the position of the network device or are they the same?
In claims 4 ,14, the term “a MSG3” is confusing. Is this term same as the “a MSG3” in claim 1 or is it a second and different “MSG3”.
Regarding claims 5, 15, the claim language “time adjustment value or an adjusted time adjustment value” is ambiguous. It is unclear whether the “time adjustment value or an adjusted time adjustment value” narrows the claim because the adjusted time adjustment value can always be omitted and vice versa. The use of “or” does not specify whether these alternatives are mutually exclusive or may coexist. As a result, a person of ordinary skill in the art would not be able to determine, with reasonable certainty, the scope of the claimed invention, as required by 35 U.S.C. § 112(b) and as interpreted by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This ambiguity is further reflected in dependent claim 5, which relies on the unclear antecedent basis, compounding the indefiniteness. Applicant is advised to amend the claims to clarify the relationship between the alternatives, specify whether both types of addresses can be present, and provide clear antecedent basis to resolve the ambiguity.
Claims 10 and 20 recites the limitation “the receiving, the time adjustment value or an adjusted time adjustment value during random access procedures” and "the second timing advance". There is insufficient antecedent basis for this limitation in the claim.
Claims 11-20, “A claim which describes the most crucial element in a ‘new’ combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid as a violation of [the indefiniteness requirement].” Halliburton v. Walker, 329 U.S. 1 (1946). A purely functional claim language is not allowable unless done within the scope of 112(f). This general prohibition against the use of “purely functional claim language” (and the more specific Halliburton rule) has not been completely eliminated. Rather, “purely functional claim language” is now permissible but only under the conditions of 35 U.S.C. § 112(f), i.e., if its scope is limited to the corresponding structure, material, or act disclosed in the specification and equivalents thereof. Ex Parte Miyazaki, 89 USPQ2d 1207 (B.P.A.I. 2008). The apparatus is only a processor and it’s functions.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4-6, 8-11, 14, 15, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN109788548 in view of United States Patent Application Publication 2017/0374689 (Liu, et al).
The claims are confusing and do not make much sense, note the above paragraphs, the Examiner will try to apply art to these perplexing claims.
CN109788548 discloses communication method (Abstract), applied to a terminal device (¶ 136-137 or page 30 in English translation), comprising determining a time adjustment value based on a position of the terminal device and a position of a network device (¶137 or pages 14, 15, 18, 23, 27, 31, etc. in English translation). Sending a random access preamble based on the time adjustment value and a random access channel (RACH) resource (¶137 or pages 23, 30-32 in English translation) and sending the time adjustment value or an adjusted time adjustment value during random access procedures, wherein the adjusted time adjustment value is obtained by the terminal device by adjusting the time adjustment value (¶137, 232 or pages 23, 30-32 in English translation). CN109788548 does not disclose sending an MSG 3 based on a scheduling delay, wherein the scheduling delay indicates a time domain position for sending the MSG 3. Liu, et al teaches the use of sending an MSG 3 based on a scheduling delay, wherein the scheduling delay indicates a time domain position for sending the MSG 3 for the purpose of when the UL Delay information is indicative of delaying sending the Msg3 message, the second type node determines a delay time T for sending the Msg3 message, note ¶162-163, 173-191, 230, etc. Hence, it 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 to incorporate the use of disclose sending a MSG 3 based on a scheduling delay, wherein the scheduling delay indicates a time domain position for sending the MSG 3 for the purpose of when the UL Delay information is indicative of delaying sending the Msg3 message, the second type node determines a delay time T for sending the Msg3 message, as taught by Liu, et al, in communication method of CN109788548 in order the RAR information of the node includes resource allocation information required for the node to send the Msg3 message.
Claims 2, 12 are optional, note paragraph 5 above.
Regarding claims 4, 14, note Abstract, figure 4, and page 4 of CN109788548.
Regarding claims 5, 10, 15, 20, note ¶ 52-63 in Liu, et al.
Regarding claims 6, 9, 19, note ¶162, 191, 225, 240, etc. in Liu, et al.
Regarding claim 8, CN109788548 shows a communication method, applied to a network device (¶ 136-137 or page 30 in English translation), comprising broadcasting a random access channel (RACH) resource (¶137 or pages 23, 30-32 in English translation). Receiving a random access preamble, wherein the random access preamble is sent based on a selected RACH resource and a time adjustment, and the time adjustment value is determined based on a position of a terminal device and a position of the network device value (¶137 or pages 23, 30-32 in English translation). Sending a second timing advance carried in a random access response (RAR)and receiving the time adjustment value or an adjusted time adjustment value during random access procedures ((¶137, 232 or pages 23, 30-32 in English translation). CN109788548 does not disclose receiving a scheduling delay, wherein the scheduling delay indicates a time domain position for sending an MSG 3. Liu, et al teaches the use of disclose receiving a scheduling delay, wherein the scheduling delay indicates a time domain position for sending an MSG 3 for the purpose stated above and would have been obvious for the same reasons stated above.
Regarding claims 11 and 18, these claims are the inherent apparatus version of the above method claims since apparatus claims are reciting the same functions of the method and are rejected for the same reasons stated above. Also note ¶333 in Liu, et al.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to these confusing claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
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 1, 8, 11, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,156,260. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of the application claims are to be found in patent claims (as the application claims fully encompasses patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus, the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims are anticipated by claims of the patent, it is not patentably distinct from claims of the patent.
CURRENT APPLICATION
1.A communication method, applied to a terminal device, comprising: determining a time adjustment value based on a position of the terminal device and a position of a network device; sending a random access preamble based on the time adjustment value and a random access channel (RACH) resource; sending the time adjustment value or an adjusted time adjustment value during random access procedures, wherein the adjusted time adjustment value is obtained by the terminal device by adjusting the time adjustment value, and sending a MSG 3 based on a scheduling delay, wherein the scheduling delay indicates a time domain position for sending the MSG3.
8. A communication method, applied to a network device, comprising broadcasting a random access channel (RACH) resource; receiving a random access preamble, wherein the random access preamble is sent based on a selected RACH resource and a time adjustment value, and the time adjustment value is determined based on a position of a terminal device and a position of the network device; sending a second timing advance carried in a random access response (RAR);receiving the time adjustment value or an adjusted time adjustment value during random access procedures; and receiving a scheduling delay, wherein the scheduling delay indicates a time domain position for sending a MSG 3.
U.S. Patent No. 12,156,260
1. A random access method, comprising: obtaining, by a terminal device, a position of the terminal device and a position of a network device; determining, by the terminal device, a time adjustment value based on the position of the terminal device and the position of the network device; and sending, by the terminal device, a random access preamble via a first message (MSG 1) based on the time adjustment value and a random access channel (RACH) resource configured by the network device; and sending, by the terminal device, the time adjustment value or an adjusted time adjustment value to the network device through a third message (MSG 3) from the terminal device to the network device, a fourth message from the terminal device to the network device or a combined message (MSG A) as a combination of the first message (MSG 1) and the third message (MSG 3), wherein the adjusted time adjustment value is obtained by the terminal device by adjusting the time adjustment value, wherein the method further comprises: receiving, by the terminal device, a scheduling delay and an uplink grant from the network device, wherein the scheduling delay and the uplink grant indicate a time domain position for sending the MSG 3; or receiving, by the terminal device, a scheduling delay from the network device, wherein the scheduling delay indicates a time domain position for sending the MSG 3.
4. The random access method according to claim 1, further comprising: when receiving from the network device both the scheduling delay and the uplink grant that indicate the time domain position for sending the MSG 3, sending, by the terminal device, the MSG 3 to the network device based on the scheduling delay and the uplink grant; or when receiving from the network device the scheduling delay indicating the time domain position for sending the MSG 3, sending, by the terminal device, the MSG 3 to the network device based on the scheduling delay.
7. A random access method, comprising: broadcasting, by a network device, a random access channel (RACH) resource; and receiving, by the network device, a random access preamble via a first message (MSG 1) from a terminal device, wherein the random access preamble is sent based on a selected RACH resource and a time adjustment value, and the time adjustment value is determined based on a position of the terminal device and a position of the network device; sending a first timing advance carried in a second message (MSG 2) to the terminal device; and receiving, by the network device, the time adjustment value or an adjusted time adjustment value from the terminal device through a third message (MSG 3) from the terminal device to the network device, a fourth message from the terminal device to the network device, or a combined message (MSG A) as a combination of the first message (MSG 1) and the third message (MSG 3), wherein the adjusted time adjustment value is obtained by the terminal device by adjusting the time adjustment value based on the first timing advance sent by the network device, wherein the method further comprises; sending, by the network device, a scheduling delay and an uplink grant to the terminal device, wherein the scheduling delay and the uplink grant indicate a time domain position for sending the MSG 3; or sending, by the network device, a scheduling delay to the terminal device, wherein the scheduling delay indicates a time domain position for sending the MSG 3.
Regarding claims 11 and 18, these claims are the inherent apparatus version of the above method claims since apparatus claims are reciting the same functions of the method and are rejected for the same reasons stated above and these claims also correspond to claims 10 and 16 of the patent.
Applicants MUST either traverse the nonstatutory double patenting rejection or file a terminal disclaimer. The requirement for terminal disclaimer will NOT be held in abeyance.
eTerminal Disclaimer
The United States Patent and Trademark Office is pleased to announce the release of eTerminal Disclaimer in EFS-Web. The new eTerminal Disclaimer provides applicants with many advantages and promotes greater efficiency in the patent examination process. This web-based eTerminal Disclaimer can be filled out completely online through web-screens and no EFS-Web fillable forms are required. eTerminal Disclaimers are auto-processed and approved immediately upon submission if the request meets all of the requirements.
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Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
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