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 .
Oath/Declaration
The Oath or Declaration is being considered by examiner and complies with PTO requirements.
Drawings
The drawings were received on 11/21/2024. These drawings are reviewed and accepted by the Examiner.
Information Disclosure Statement
The information disclosure statements (IDSs), submitted on 03/18/2025, 06/19/2025, 09/29/2025 and 11/23/2025, are in compliance with the provisions of 37 CRR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means for receiving downlink control information …”; “means for using the received beam format information in claim 1; “means for transmitting downlink control information …” in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
U.S. Pat. 12,191,965
U.S. Appl. 18/955,572
1. An apparatus comprising: at least one memory storing instructions; at least one processor configured to execute the instructions and cause the apparatus to perform the following operations: receiving, from an access node, downlink control information, wherein the downlink control information comprises beam format information relating to the access node, the beam format information comprising information relating to beam configurations that are scheduled for use by the access node; and adapting communication with the access node on at least one channel, the adapting communication comprising: based on the beam format information, adapting reception from the access node by only monitoring for transmission from the access node during slots or symbols for which the beam format information indicates that a beam directed towards the apparatus is scheduled for use.
3. The apparatus as claimed in claim 1, wherein the beam format information relates to the slots or the symbols following a slot or symbol in which the downlink control information is received; and wherein the computer-executable instructions further cause the processor to use the beam format information to adapt transmission to the access node or the reception from the access node in one or more of the symbols or the slots to which the beam format information relates.
4. The apparatus as claimed in claim 1, wherein the downlink control information is common to a plurality of apparatus, the downlink control information comprising a Group Common Physical Downlink Control Channel (GC-PDCCH) payload.
5. The apparatus as claimed in claim 1, wherein the adapting communication with the access node comprises at least one of: adapting timing of an Uplink Configured Grant (UL CG) transmission; preventing an UL CG payload being transmitted if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for the UL CG transmission; and postponing transmission of the UL CG payload if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for the UL CG transmission.
6. The apparatus as claimed in claim 5, wherein the transmission of the UL CG payload is postponed until a next available slot or symbol.
7. The apparatus as claimed in claim 1, further comprising a plurality of beam pair links; and wherein the apparatus is caused to use the beam format information to select one or more of the beam pair links for transmission.
8. The apparatus as claimed in claim 1, wherein the beam format information comprises information on a configuration of the beam that is used by the access node for specified uplink symbols or slots or downlink symbols or slots.
9. The apparatus as claimed in claim 1, wherein the beam format information is transmitted as at least one of: part of a Synchronisation Signal Block (SSB) beam; and with Slot Format Indicator (SFI).
10. The apparatus as claimed in claim 1, wherein the apparatus is a user equipment.
1, 6, 12, 13, 14. An apparatus comprising means for: receiving downlink control information common to a plurality of apparatus wherein the downlink control information comprises beam format information relating to an access node; and using the received beam format information to adapt transmission to the access node or reception from the access node on at least one channel; wherein adapting reception from the access node comprises using the beam format information to configure the apparatus to only monitor for transmission from the access node during slots or symbols for which the beam format information indicates that a beam directed towards the apparatus is scheduled for use.
2, 15. The apparatus as claimed in claim 1, wherein the beam format information relates to a plurality of slots or symbols following the slot or symbol in which the downlink control information is received and the apparatus is configured to use the beam format information to adapt transmission to the access node or reception from the access node in one or more of the symbols or slots to which the beam format information relates.
3. The apparatus as claimed in claim 2, wherein the downlink control information common to a plurality of apparatus comprises a Group Common Physical Downlink Control Channel (GC-PDCCH) payload.
4. The apparatus as claimed in claim 1, wherein adapting transmission to the access node comprises at least one of: adapting timing of an Uplink Configured Grant (UL CG) transmission; preventing a UL CG payload being transmitted if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for UL CG transmission; and postponing transmission of a UL CG payload if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for UL CG transmission.
5. The apparatus as claimed in claim 4 wherein transmission of the UL CG payload is postponed until the next available slot or symbol.
7. The apparatus as claimed in claim 1, wherein the apparatus is configured with a plurality of beam pair links and the apparatus is configured to use the beam format information to select one or more of the beam pair links for transmission.
8. The apparatus as claimed in claim 1, wherein the beam format information comprises information on the beam configuration that is used by the access node for specified uplink symbols or slots or downlink symbols or slots.
9. The apparatus as claimed in claim 1, wherein the beam format information is transmitted as at least one of: part of a Synchronisation Signal Block (SSB) beam; and with Slot Format Indicator (SFI).
10. A User Equipment (UE) comprising an apparatus as claimed in claim 1 and at least one Subscriber Identity Module (SIM).
Claims 1-10, 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-10 of U.S. Pat. 12,191,965. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10, 12-15 of the instant application merely broadens the scope of the claims 1,3-10 of U.S. Pat. 12,191,965 by eliminating the elements and their functions of the claims 1,3-10 of U.S. Pat. 12,191,965. It has been held that the omission an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson,136 USPQ 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.
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 (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 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.
Claims 1-4, 8, 10-15 are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Huang et al (US 2019/0053227) hereinafter Huang.
Regarding claims 1, 11, 12, 13, Huang discloses an apparatus comprising means for: receiving downlink control information common to a plurality of apparatus wherein the downlink control information comprises beam format information relating to an access node; and using the received beam format information to adapt transmission to the access node or reception from the access node on at least one channel (see [0231] illustrates that "the UE has multiple UE beams. Furthermore, the UE communicates with a NW via the UE beams and the NW beams. A NW can indicate slot format information (of each group) through semi-static configuration. The NW can indicate slot format information (of each group) through GC PDCCH. The NW can indicate slot format information (of each group) through DCI indication"); using the received beam format information to adapt transmission to the access node or reception from the access node on at least one channel (see [0255] illustrates that Rule 6 "if the UE is scheduled or configure for downlink data reception on downlink symbol(s) of a specific slot indicated by a first SFI and is scheduled or configured for uplink data
transmission on uplink symbol(s) of the specific slot (or another slot) indicated by a
second SFI, wherein the downlink symbol(s) and the uplink symbol(s) may be partially or fully overlapped, the UE could determine whether to receive the downlink data or
transmit the uplink data based on reception timing of scheduling information associated
with the data.").
Regarding claim 2, Huang discloses wherein the beam format information relates to a plurality of slots or symbols following the slot or symbol in which the downlink control information is received and the apparatus is configured to use the beam format information to adapt transmission to the access node or reception from the access node in one or more of the symbols or slots to which the beam format information relates (see [0090], [0091]).
Regarding claim 3, Huang discloses wherein the downlink control information common to a plurality of apparatus comprises a Group Common Physical Downlink Control Channel (GC-PDCCH) payload (see [0231] illustrates that "A NW can
indicate slot format information (of each group) through semi-static configuration. The
NW can indicate slot format information (of each group) through GC PDCCH. The NW
can indicate slot format information (of each group) through DCI indication).
Regarding claim 4, Huang discloses wherein adapting transmission to the access node comprises at least one of: adapting timing of an Uplink Configured Grant (UL CG) transmission; preventing a UL CG payload being transmitted if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for UL CG transmission; and postponing transmission of a UL CG payload if the beam format information indicates that a receiving beam of the access node is directed in a different direction to the apparatus for at least one slot or symbol originally intended for UL CG transmission (see [0251], [0255] illustrates that "For example, in FIG. 8, the UE is
configured to transmit UL control signal on uplink symbols of the slot indicated by SFI 2
comprising collision symbols and configured to receive downlink signal which is not
delay sensitive on downlink symbols of the slot indicated by SFI 1 comprising collision
symbols. The UE transmits the UL signal on uplink symbols of the slot indicated by SFI
2"). Thereby, different directions are used to ([0234], [0236]) and uplink transmission a
wrong time is prevented).
Regarding claim 8, Huang discloses wherein the beam format information comprises information on the beam configuration that is used by the access node for specified uplink symbols or slots or downlink symbols or slots (see [0231] to [0234]).
Regarding claim 10, Huang fails to explicitly disclose a user Equipment (UE) comprising an apparatus as claimed in claim 1 and at least one Subscriber Identity Module (SIM) (see [0110])..
Regarding claim 11, Huang discloses the apparatus comprising a Mobile
Terminal (MT) (see [0004]).
Regarding claim 14, Huang discloses an Access Node comprising means for: transmitting downlink control information common to a plurality of apparatus wherein the downlink control information comprises beam format information relating to the access node (see Abstract, [0005], [0233], [0228]).
Regarding claim 15, Huang discloses wherein the beam format information enables an apparatus to adapt transmission to the access node or reception from the access node on at least one channel (see [0255] illustrates that Rule 6 "if the UE is scheduled or configure for downlink data reception on downlink symbol(s) of a specific slot indicated by a first SFI and is scheduled or configured for uplink data transmission on uplink symbol(s) of the specific slot (or another slot) indicated by a second SFI, wherein the downlink symbol(s) and the uplink symbol(s) may be partially or fully overlapped, the UE could determine whether to receive the downlink data or transmit the uplink data based on reception timing of scheduling information associated with the data.").
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Huang et al
(US 2019/0053227) hereinafter Huang in view of Astrom et al (US 2020/0205095) hereinafter Astrom.
Regarding claim 9, Huang discloses fails to explicitly disclose wherein the beam
format information is transmitted as at least one of: with Slot Format Indicator (SFI) (see
Abstract, [0230]). Huang fails to explicitly disclose wherein the beam format information
is transmitted as at least one of: part of a Synchronisation Signal Block (SSB) beam.
Astrom discloses wherein the beam format information is transmitted as at least
one of: part of a Synchronisation Signal Block (SSB) beam (see [0012], [0054]). It
would have been obvious to one of ordinary skill in the art before the effective filing date
of the claimed invention to transmit the beam format information by part of a
Synchronisation Signal Block (SSB) beam as taught by Astrom in the teachings of
Huang in order to perform a certain bandwidth coverage, as illustrated by the extension
along the frequency axis and the purpose of improving coverage or beam finding).
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.
Takeda et al (US 2021/0235481) disclose a user terminal and radio communication method.
Jung et al (US 2020/0313793) disclose a method and apparatus for determining a duration of a repetition of a transport block.
Fu et al (US 2019/0349898) disclose methods, base station, ue and computer medium for transmitting data, HARQ-ACK, and OFDM symbols.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHAI TRAN whose telephone number is (571)272-3019. The examiner can normally be reached until 4:00PM.
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, Chieh Fan can be reached at 571-272-3042. 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.
/KHAI TRAN/Primary Examiner, Art Unit 2632
KTMarch 25, 2026