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.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of U.S. Patent No. 12192011 B2 (hereinafter “Patent ‘011”). Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application (instant application) are transparently found in the Patent ‘011 with obvious wording variations. Take an example of comparing claim 21 of the Instant application and claim 1 of the Patent ‘011:
Instant application 18/973,364
U.S. Patent No. 12,192,011
1.A non-transitory computer readable storage medium comprising a set of instructions, wherein the set of instructions when executed by a processor cause the processor of a user equipment (UE) to perform operations comprising: receiving, from a network, a plurality of Physical Downlink Shared Channel (PDSCH) transmissions in slots of a hybrid automatic repeating request acknowledgement (HARQ-ACK) window, wherein at least one of the plurality of PDSCH transmissions include a PDSCH grouping index (DGI) field configured to indicate a group index of scheduled PDSCH transmission or semi-persistent scheduling (SPS);
decoding each of the PDSCH transmissions in the slots of the HARQ window; determining a HARQ-ACK feedback for each PDSCH transmission in the HARQ-ACK window; bundling the HARQ-ACK feedback for at least two of the PDSCH transmissions; and reporting the bundled HARQ-ACK feedback for the HARQ window to the network.
21. (New) A processor configured to:
process, based on signaling received from a network, a plurality of Physical Downlink Shared Channel (PDSCH) transmissions in slots of a hybrid automatic repeating request acknowledgement (HARQ-ACK) window, wherein at least one of the plurality of PDSCH transmissions include a PDSCH grouping index (DGI) field configured to indicate a group index of scheduled PDSCH transmission or semi-persistent scheduling (SPS);
decode each of the PDSCH transmissions in the slots of the HARQ window; determine a HARQ-ACK feedback for each PDSCH transmission in the HARQ-ACK window; bundle the HARQ-ACK feedback for at least two of the PDSCH transmissions; and report the bundled HARQ-ACK feedback for the HARQ window to the network.
Claims 22-40 of the instant application are similarly rejected as being unpatentable over claims 2-16 of the Patent ‘011.
Claim Objection
Claims 21-40 are objected to because of the following informalities:
Regarding claims 21, 24, 26, 27,32, 34, 35 and 39, the “the HARQ window” should be replaced with - -the HARQ-ACK window-- to be consistent with the first citation of “HARQ-ACK window ".
Regarding claims 22, 23, 26, 30, 31, 37 and 38 the “the HARQ feedback” should be replaced with - -the HARQ-ACK feedback-- to be consistent with the first citation of “HARQ-ACK feedback ".
Regarding claims 22, 23, 30, 31, 37 and 38 the “PDSCH transmissions slots” should be replaced with - - PDSCH transmissions in slots -- to be consistent with the first citation of “PDSCH transmissions in slots ".
Claims 22-28, 30-35 and 37-40 are objected as being dependent of objected claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30, 31, 37 and 38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 30 and 31 depend from claim 29, which recites a base station having a processor configured to “generate, for transmission to the UE, a plurality of PDSCH transmissions.” Claims 30 and 31 subsequently recite that the plurality of PDSCH transmissions comprises “ a first set of PDSCH transmissions in slots received via a first component carrier (CC) and a second set of PDSCH transmissions slots received via a second CC”. It is unclear whether the transmissions are received by the UE, received by the claimed bases station or received by some other entity. Since, claim 29 characterized as base station is generating the PDSCH transmissions for transmission to the UE, whereas claims 30 and 31 characterize those same transmissions as being “received” without identifying the receiving entity.
Claims 37 and 38 depend from claim 36, which recites a base station having a processor configured to “generate, for transmission to the UE, a plurality of PDSCH transmissions.” Claims 30 and 31 subsequently recite that the plurality of PDSCH transmissions comprises “ a first set of PDSCH transmissions in slots received via a first component carrier (CC) and a second set of PDSCH transmissions slots received via a second CC”. It is unclear whether the transmissions are received by the UE, received by the claimed bases station or received by some other entity.
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, which can be found: http://www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax which can be found in the Conclusion section of this Office action; (2) regular postal mail; or (3) EFS WEB. Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AWET A HAILE whose telephone number is (571)270-3114. The examiner can normally be reached Monday through Friday 8:30 AM - 4:30 PM EST.
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/AWET HAILE/ Primary Examiner, Art Unit 2474
Prosecution Insights