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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12177835. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is substantially similar in nature with the patent No. 12177835.
Instant claim 1 is broader than the patent claim 1 because patent claim has further limitation on range and granularities of the range of the accumulative numbers of PDSCHs transmission.
Therefore, patent claim 1 is in essence a “species” of the generic invention of instant claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention.
TABLE 1: Teaching of Instant claim 1 by Patent claim 1
Instant Claim 1
Patent Claim 1
A terminal apparatus, comprising: a receiver which, in operation, receives a downlink assignment index (DAI) transmitted using a downlink control information (DCI) format used for scheduling of a first group of physical downlink shared channels (PDSCHs), the DAI indicating an accumulative number of transmitted PDSCHs included in a second group of PDSCHs;
A terminal apparatus comprising: a receiver which, in operation, receives, from a base station, a downlink assignment index (DAI) that is transmitted by means of a downlink control information (DCI) format, the DAI indicating an accumulative number of a transmitted physical downlink shared channel (PDSCH) included in a group of PDSCHs,
and a transmitter which, in operation, transmits hybrid automatic repeat request acknowledgement (HARQ-ACK) information based on the DAI.
and a transmitter which, in operation, transmits, to the base station, hybrid automatic repeat request acknowledgement (HARQ-ACK) information based on the DAI,
Same rejection of Claim 1 applies to Instant Claim 9 over Patent Claim 5 of U.S. Patent No. 12177835.
Claim Objections
Independent Claims 1 and 9 are objected to because the claims do not recite HARQ retransmission. However, DAI use in retransmission control in unlicensed band is the basis of the invention as disclosed in the Spec.
Claim 9 is objected to because the claim is missing an entity performing the method, such as a terminal apparatus.
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 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 7, claim feature “the defined value is indicated by a higher layer signaling” is not described in the specification. No disclosure is found for a process or algorithm for selecting a defined value and indicating it via a higher layer signaling.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by IDS reference, Li; Yingyang et al US 20200127796 A1, hereinafter Li.
Regarding claims 1 and 9, Li teaches, a terminal apparatus (see Li Fig. 24) comprising:
a receiver which, in operation, receives a downlink assignment index (DAI) transmitted using a downlink control information (DCI) format used for scheduling of a first group of physical downlink shared channels (PDSCHs), the DAI indicating an accumulative number of transmitted PDSCHs included in a second group of PDSCHs (see Li Fig.2 [65]-[70], Fig. 4 [82], Fig. 6, [85]-[86] teaching that DCI for scheduling a set of PDSCHs (i.e., first group of PDSCHs) comprises DAI, and the DCI further includes C-DAI of the set of PDSCHs that is retransmitted (i.e., second group of PDSCHs). C-DAI is known in the art (see also Li [64] as counter-DAI (i.e., accumulative DAI of the claim). It is also known in the art and 3GPP, DCI is sent in a DCI Format); and
a transmitter which, in operation, transmits hybrid automatic repeat request acknowledgement (HARQ-ACK) information based on the DAI (see Li Fig.2 [65]-[70]; Fig. 4 [82]; Fig. 6 [85]-[86] teaching HARQ-ACK is transmitted by the terminal based on the DAI in the DCI).
With respect to claim 9, claim recites the identical features of claim 1 for a corresponding method. Therefore, it is subjected to the same rejection.
Regarding claim 2, Li teaches the terminal, as outlined in the rejection of claim 1.
Li further teaches, wherein the first group of PDSCHs is transmitted in a first transmission period, and the second group of PDSCHs is transmitted in a second transmission period which is different from the first transmission period (see Li Figs, 2, 4, 6 teaching current set (i.e., first group) and previous set (i.e., second group) are transmitted at different periods).
Regarding claim 3, Li teaches the terminal, as outlined in the rejection of claim 2.
Li further teaches, wherein the second group of PDSCHs is not transmitted in the first transmission period (see Li Figs, 2, 4, 6).
Regarding claim 4, Li teaches the terminal, as outlined in the rejection of claim 2.
Li further teaches, wherein the DCI format includes information to identify a group of PDSCH from a plurality of groups of PDSCHs (see Li e.g., [65]-[70] teaching DCI includes Set Index to identify different sets of PDSCHs).
Regarding claim 5, Li teaches the terminal, as outlined in the rejection of claim 1.
Li further teaches, wherein the first group of PDSCHs and the second group of PDSCHs are scheduled in different transmission periods, respectively (see Li Figs, 2, 4, 6 teaching current set and previous set are transmitted at different periods).
Regarding claim 6, Li teaches the terminal, as outlined in the rejection of claim 1.
Li further teaches, wherein a value of the DAI is determined using modulo arithmetic with a defined value selected from a plurality of defined values (see Li [76], [86] teaching using modulo arithmetic for DAI with e.g., a defined value of 4).
Regarding claim 8, Li teaches the terminal, as outlined in the rejection of claim 1.
Li further teaches, wherein a time domain resource assignment is included in the DCI format, and the time domain resource assignment is associated with the first group of PDSCHs (see LI Claim 1 teaching DCI including resource assignments for the current set of PDSCHs. It is inherent in 3GPP that resource comprises time and frequency domain resource).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
GAO, US 20200280396 A1 - TRANSMISSION METHOD, DEVICE, TERMINAL, BASE STATION AND STORAGE MEDIUM; para [19], [20], [32] teaching independent claims 1 and 9;
Zhang, U.S. Publication No. 20220078827 - DOWNLINK DATA SCHEDULING HARQ-ACK CODEBOOK FEEDBACK AND GENERATION METHODS AND DEVICES, AND MEDIUM, para [111]-[112], [124]-[129], [158]-[159], [170]-[175].
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/MAHBUBUL BAR CHOWDHURY/Primary Examiner, Art Unit 2475
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