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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,170,983 (hereinafter Pat-983). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 for instance, as shown in the following table, claim 1 of Pat-983 recites all the claimed limitations of the claim 1.
Pat-983 Language
Claims / App Language
1. A method performed by a network device, comprising:
transmitting, to a terminal device, information of a resource for a data transmission, wherein the information is determined based on a first resource unit and a second resource unit, wherein the first resource unit is different from the second resource unit, the first resource unit is associated with a first subcarrier spacing and the second resource unit is with a second subcarrier spacing which is different from the first subcarrier spacing; and
transmitting the data transmission based on the information,
wherein a length of the information is used by the terminal device to determine the resource.
1. A method performed by a network device, comprising:
transmitting, to a terminal device, information of a resource for a data transmission,
wherein a length of the information is used by the terminal device to determine the resource; and transmitting the data transmission based on the information.
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.
Claim 1-3 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.
Claim 1, for instance, recites, in relevant part: “transmitting, to a terminal device, information of a resource for a data transmission, wherein a length of the information is used by the terminal device to determine the resource.” The limitation “a length of the information is used by the terminal device to determine the resource” requires the terminal device to use the length of the transmitted information itself in determining the resource. However, the specification describes determining an allocated resource using timing values conveyed by the information, rather than using the length of the information itself. Specifically, [0037] states: “The time information indicates the time domain positions of the resource region and may be represented by a starting position, an ending position, the length of the resource region, and/or the like.” The same paragraph further describes: “determining a number of scheduling units occupied by the resource region as the length of the resource region.” Thus, [0037] identifies the relevant length as the duration of the resource region, expressed through a number of occupied scheduling units. It does not describe the length of the transmitted information as a basis for determining that resource.
Consistent with this distinction, [0038] states: “Upon receipt of the time information of the resource region, the terminal device 120 may determine the starting scheduling unit, the ending scheduling unit and the number of scheduling units occupied by the resource region as the start position, the end position and the length of the resource region, respectively.” Accordingly, [0038] describes the terminal determining resource timing from the values conveyed by the time information, not from the length of that information.
In the specific example in [0052], the time information conveys a duration value of six scheduling units. The disclosed duration is the length of the resource region, not the length of the information used to convey the resource allocation. Although [0050] discusses information size, stating: “In this way, the payload size used to index different scheduling unit can be reduced.”, the surrounding disclosure concerns selecting a scheduling unit such that the scheduled time-domain resources are multiples of that unit. [0050] does not describe the terminal device using the resulting indexing-payload size to determine the allocated resource. Consequently, the disclosed reduction in payload size does not establish possession of the claimed relationship between information length and resource determination. Additionally, [0058] describes omission of an unnecessary fine-granularity portion when the resource specific numerology and reference numerology are the same. They do not describe the terminal determining the resource based on the length of the received information. The possibility that omitting a portion affects signaling length does not, by itself, disclose use of that length in the claimed resource determination.
Therefore, the disclosures concerning resource duration in [0037], [0038] and [0052], indexing payload reduction in [0050], and an optional second portion in [0058] do not reasonably convey position of the claimed use of “a length of the information” to determine the resource. Claim 1 therefore fails to satisfy the written description requirement. This rejection rests on the absence of the support for the claimed functional relationship, rather than merely the absence of identical terminology.
Claims 2 and 3 similarly recite, thus carry no support from the written specification as discussed above for claim 1.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2016/0143008, “Lee”) in view of Maheshwari et al. (US 2010/0008314, “Maheshwari”).
Examiner’s note: in what follows, references are drawn to Lee unless otherwise mentioned. For purposes of this proposed rejection, “a length of the information” is interpreted as the bit length of the resource-allocation information, including an allocation field, rather than the duration of the allocated resource. Lee is applied to the resource-allocation signaling and corresponding data transmission, and Maheshwari is applied to the variable-length allocation-field encoding and mobile-station decoding.
Lee and Maheshwari comprise the following features:
With respect to independent claims:
Regarding claim 1, a method performed by a network device, comprising:
transmitting, to a terminal device, information of a resource for a data transmission ([0093] “The BS 1 transmits control information to the terminals through the configured PDCCH regions (S120). Here, when the control information is transmitted, while transmitting a resource allocation message in a shortframe in which a PDCCH transmitting control information is present”),
wherein a length of the information is used by the terminal device to determine the resource ([Maheshwari, 0029] “the burst length field 404 may indicate the duration or total number of resource blocks in the resource block allocation assigned to the receiving MS”, and [Maheshwari, 0038] “a total burst length number of bits column 606 that represents the size of the total burst length field 404, and a possible allocation blocks column 608 that represents the possible number of resource blocks that may be allocated or the values of the burst length field 404 given the size of the burst length field 404.” See also [Maheshwari, 0039, 0044, 0051]. These passages teach an allocation field having a length-dependent encoding structure: the number of bits in the variable portion relates to the allocation magnitude, and the mobile station decodes the fixed and variable portions to determine the indicated allocation.); and
transmitting the data transmission based on the information ([0089] “While transmitting a resource allocation message in a shortframe in which a PDCCH transmitting control information is present, a start field is added to the resource allocation message and transmitted. The start field indicates that a position of resource in which data is actually transmitted”).
Therefore, it is obvious to a PHOSITA to modify Lee’s resource allocation signaling using Maheshwari’s variable-length burst-length field in order to adapt the allocation-information size to the communication configuration such that “selecting a size of a burst length field based in part upon a bandwidth and a number of orthogonal frequency-division multiplexing (OFDM) symbols used to communicate with the MS” [Maheshwari, 0007].
Regarding claim 2, it is a method claim at a terminal device corresponding to the method claim 1 in a reciprocal way, and is therefore rejected for the similar reasons set forth in the rejection of claim 1.
Regarding claim 3, it is a terminal device claim corresponding to the method claim 2, except the limitations, “at least one processor configured to control the terminal device” ([0107 and Fig. 11] “As illustrated in FIG. 11, a control information transmitting apparatus 100 according to an exemplary embodiment of the present invention includes a processor 110, a memory 120, and a radio frequency (RF) converter 130. The processor 110 may be configured to implement the methods described above with reference to FIGS. 1 through 10.”), and is therefore rejected for the similar reasons set forth in the rejection of claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Harry H. Kim whose telephone number and email address are as follows; 571-272-5009, harry.kim2@uspto.gov.
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/HARRY H KIM/ Primary Examiner, Art Unit 2411
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