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 .
Initial Examination
Applicant's submission filed on 12/02/24 has been entered.
Claims 1-20 are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statements are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over their respective claims of U.S. Patent Nos. 12206605, 12302312, and 12245246. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely slightly broader versions of the claims in the aforementioned patents. For instance, the instant claim and the aforementioned claims all disclose similar relationships between TCI states/codepoints, including a first and second TCI state associated with a first pair of lists, selecting TCI codepoints, and ultimately communicating with TRPs. The aforementioned patents disclose those limitations, as wells as third/fourth lists/states and second pair of lists (‘605, ‘312) and TCI state subsets (‘246).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over their respective claims of copending Application No. 19/033,962 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely slightly broader versions of the claims in the aforementioned application. For instance, the instant claim and the aforementioned claims all disclose similar relationships between TCI states/codepoints, including a first and second TCI state associated with a first pair of lists, selecting TCI codepoints, and ultimately communicating with TRPs. The aforementioned application discloses those limitations, as wells introducing a second message and bit sets.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-6, 7-9, 10-12, and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and pending resolution of the above DP Rejection).
The following is a statement of reasons for the indication of allowable subject matter: the cited references fail to anticipate or render the claimed subject matter (combined with other limitations claimed in the claimed subject matter) obvious over any of the prior art of record, either alone or in combination. Therefore, when taken as a whole application, and incorporating all the respective limitations, none of the prior art discloses the features as claimed. For instance, although Zhu and Liu disclose TCI states/codepoints, lists, and TRPs, they do not disclose the detailed limitations and specific relationships as recited in dependent claims 2, 7, 10, or 13. Consequently, these claims are allowable.
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.
Claims 1, 15-17 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20230050480 A1, cited by Applicant of Record) in view of Liu (US 20240195573 A1, cited by Applicant of Record).
Regarding claim 1, Zhu discloses a method [fig. 14], comprising:
receiving, from a cellular network, a first message specific to a first pair of lists indicating a first subset of transmission control indication (TCI) states (Network configures UE with lists/sets/pools of TCI states [fig. 14 no. 1410-1420, fig. 11, par. 0168]);
determining, based on the first message, a first association between respective TCI codepoints and respective TCI states according to the first pair of lists (DCIs contain at least one TCI codepoint used for indication of TCI states (i.e., association) [fig. 14 no. 1410, 430, par. 0168, 487]);
receiving, from the cellular network, a … message indicating a first TCI codepoint (One or more messages, including TCI codepoints [par. 0168, 487]);
selecting, based on the first TCI codepoint and the first association between respective TCI codepoints and respective TCI states [fig. 14 no. 1410-1430]:
a first TCI state from a first list of the first pair of lists [fig. 10-11 “TCI #1-63”, where Examiner notes this could also read on “TCI #3, TCI #5” as the illustration in fig. 11 is merely one example]; and
a second TCI state from a second list of the first pair of lists [fig. 10-11 “TCI #3, TCI #5”]; and
communicating with the cellular network via a plurality of transmission and reception points (TRPs) using the first TCI state and the second TCI state [fig. 1, 8-11, 12-13, par. 0168].
Although Zhu discloses TCI codepoints associated with TCI states, including messages, as discussed above, Zhu does not explicitly disclose a second message indicating a first TCI codepoint. However, these concepts are well known as disclosed by Liu.
In the same field of endeavor, Liu discloses:
a second message indicating a first TCI codepoint [fig. 1-8, par. 0102-110].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhu with Liu. One of ordinary skill in the art would have been motivated to perform such a modification given the benefit of mapping TCI codepoints and associated TCI states [Liu Abstract].
Regarding claim 18, it is substantially similar to claim 1, except is in apparatus claim format, and is rejected under substantially similar reasoning, where Zhu further discloses an apparatus [fig. 3 no. 116], comprising: a processor [fig. 3 no. 340] configured to, when executing instructions [fig. 3 no. 361-362] stored in a memory [fig. 3 no. 360].
Regarding claim 19, Zhu and Liu disclose everything claimed, as applied above.
Zhu further discloses:
further comprising a radio [fig. 3 no. 305-315, 325] operably coupled to the processor.
Regarding claim 20, it is substantially similar to claim 1, except is from the perspective of the network, and is rejected under substantially similar reasoning.
Regarding claim 15, Zhu and Liu disclose everything claimed, as applied above.
Zhu further discloses wherein:
the first message comprises a media access control (MAC) control element (MAC-CE) [par. 0168]; and
the second message comprises a downlink control information (DCI) message [par. 0168].
Regarding claim 16, Zhu and Liu disclose everything claimed, as applied above.
Liu further discloses:
wherein said selecting the first TCI state is based on a position of the first TCI state corresponding to the first TCI codepoint according to the first association between respective TCI codepoints and respective TCI states [fig. 6, par. 0102].
Regarding claim 17, Zhu and Liu disclose everything claimed, as applied above.
Liu further discloses:
wherein said selecting the second TCI state is based on a position of the second TCI state being immediately subsequent to the position of the first TCI state according to the first association between respective TCI codepoints and respective TCI states [fig. 6 “TCI state ID(s)”].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Walter J DiVito whose telephone number is (571)272-2556. The examiner can normally be reached M-R: 8 am - 6 pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Mui can be reached at 571-270-1420. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WALTER J DIVITO/Primary Examiner, Art Unit 2465
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