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 .
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 submitted on 12/6/2024 and 1/17/2025 have been considered by the Examiner and made of record in the application file.
Preliminary Amendment
The present Office Action is based upon the original patent application filed on 12/6/2024, as modified by the preliminary amendment also filed on the same day. Claims 40-59 are now pending in the present application.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 40, 41, 43, and 44 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 4, 5, and 6 of U.S. Patent No. 12,167,423. This is a statutory double patenting rejection.
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 54, 55, 57, and 58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-6 of U.S. Patent No. 12,167,423. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 54, 55, 57, and 58 of the present application are a method claim versions of the apparatus claims 1 and 4-6 of U.S. Patent No. 12,167,423 as follows.
Claim 1 of U.S. Patent No. 12,167,423 includes all of the limitations of claim 54 of the present application as follows:
receiving a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP.
However, claim 1 of U.S. Patent No. 12,167,423 also includes the following limitations: memory configured to store information; and processing circuitry coupled with the memory.
Nonetheless, the removal of said limitations from claim 54 of the present application makes claim 54 of the present application a broader version of claim 1 of U.S. Patent No. 12,167,423. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 54 of the present application is not patentably distinct from claim 1 of U.S. Patent No. 12,167,423.
Claim 4 of U.S. Patent No. 12,167,423 claims exactly the same limitations as claim 55 of the present application, namely “receiving a second multimedia broadcast message in a second MBMS transmission as a point-to-point transmission, wherein MBMS data transmissions have a common packet data convergence protocol (PDCP) entity and different respective radio link control (RLC) entities when switching between point-to-point and point-to-multipoint transmissions.”.
Claim 5 of U.S. Patent No. 12,167,423 claims exactly the same limitations as claim 57 of the present application, namely “wherein the community activity comprises at least one of joint implementation of an application, sharing content implemented by the user with a user of the counterpart mobile device, and transmitting and receiving content between users”.
Claim 6 of U.S. Patent No. 12,167,423 claims substantially the same limitations as claim 58 of the present application, namely “generating capability information that indicates support of simultaneous reception of MBMS and unicast transmissions”.
Claims 47, 50, and 51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-14 of U.S. Patent No. 12,167,423 in view of Lee et al. (U.S. Patent Application Publication No. 2023/0049784 A1) (hereinafter Lee).
Claim 12 of U.S. Patent No. 12,167,423 includes the limitations of the claim 47 of the present application as follows:
A base station, comprising:
circuitry configured to: transmit a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP.
Claim 12 of U.S. Patent No. 12,167,423 does not explicitly disclose memory configured to store information; and processing circuitry coupled with the memory.
In analogous art, Lee discloses memory configured to store information; and processing circuitry coupled with the memory (Figure 12 and paragraphs 0209 and 0211 disclose the second wireless device 200 may correspond to the BS 200. The second wireless device 200 may include one or more processors 202 and one or more memories 204. The memory(s) 204 may be connected to the processor(s) 202 and may store a variety of information related to operations of the processor(s) 202. For example, the memory(s) 204 may store software code including commands for performing a part or the entirety of processes controlled by the processor(s) 202 or for performing the descriptions, functions, procedures, proposals, methods, and/or operational flowcharts disclosed in this document).
It 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 a memory and a processor, as described in Lee, with the base station, as described in Claim 12 of U.S. Patent No. 12,167,423, because doing so is combining prior art elements according to known methods to yield predictable results. Combining a memory and a processor of Lee with the base station of Claim 12 of U.S. Patent No. 12,167,423 was within the ordinary ability of one of ordinary skill in the art based on the teachings of Lee.
Therefore, it 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 combine the teachings of Claim 12 of U.S. Patent No. 12,167,423 and Lee to obtain the invention as specified in claim 47 of the present application.
Regarding claim 50 of the present application, as applied to claim 47 above, claim 13 of U.S. Patent No. 12,167,423, as modified by Lee, further discloses transmit a second multimedia broadcast message in a second MBMS transmission as a point-to-point transmission; wherein MBMS data transmissions have a common packet data convergence protocol (PDCP) entity and different respective radio link control (RLC) entities when switching between point-to-point and point-to-multipoint transmissions.
Regarding claim 51 of the present application, as applied to claim 47 above, claim 14 of U.S. Patent No. 12,167,423, as modified by Lee, further discloses receive capability information from the UE that indicates support of simultaneous reception of MBMS and unicast transmissions.
Allowable Subject Matter
Claims 42, 45, 46, 48, 49, 52, 53, 56, and 59 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.
The following is a statement of reasons for the indication of allowable subject matter:
Considering claims 42 and 56, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of receiving a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, receiving an indication that the first BWP with UE-specific configuration is used for MBMS transmissions; and receiving corresponding scheduling configuration information including control resource set (CORESET) and search space information in combination with and in the context of all of the other limitations in claims 42 and 56.
Considering claim 45, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of receiving a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, wherein the capability information includes a first indication of support of reception of MBMS and unicast transmissions overlapping in time in combination with and in the context of all of the other limitations in claim 45.
Considering claims 46 and 59, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of receiving a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, wherein the UE dedicated BWP configuration is a UE specific configuration in combination with and in the context of all of the other limitations in claims 46 and 59.
Considering claim 48, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of transmit a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, wherein the MBMS transmission is a point-to-multipoint data transmission in combination with and in the context of all of the other limitations in claim 49.
Considering claim 49, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of transmit a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, transmit an indication that the first BWP with UE-specific configuration is used for MBMS transmissions; and transmit corresponding scheduling configuration information including control resource set (CORESET) and search space information in combination with and in the context of all of the other limitations in claim 49.
Considering claim 52, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of transmit a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, wherein the capability information includes a first indication of support of reception of MBMS and unicast transmissions overlapping in time in combination with and in the context of all of the other limitations in claim 52.
Considering claim 53, the best prior art found during the prosecution of the present application, Lee, fails to disclose, teach, or suggest the limitations of transmit a multimedia broadcast and multicast service (MBMS) message in a MBMS transmission in a connected state during a wireless communication over first frequency resources within a first bandwidth part (BWP), wherein the first BWP is configured as a user equipment (UE) dedicated BWP configuration and the first frequency resources are specifically allocated for MBMS transmissions within the first BWP, wherein the UE dedicated BWP configuration is a UE specific configuration in combination with and in the context of all of the other limitations in claim 53.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Zhang et al. (U.S. Patent Application Publication No. 2018/0288746 A1) discloses methods and systems for resource configuration of wireless communication systems;
Lee et al. (U.S. Patent Application Publication No. 2022/0046690 A1) discloses a method and apparatus for transmitting/receiving wireless signal in wireless communication system; and
Dai et al. (U.S. Patent Application Publication No. 2023/0397299 A1) discloses a method and apparatus for multicast and broadcast services.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to MARK G. PANNELL whose telephone number is (303) 297-4245. The Examiner can normally be reached Monday through Friday 8:00 am to 3:00 pm (Mountain Time).
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, Rafael Perez-Gutierrez can be reached on (571) 272-7915. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Mark G. Pannell/Primary Examiner, Art Unit 2642
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