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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/11/24 and 2/25/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus, whereas the conflicting patent claims a method of [using/making] the same apparatus. The only difference between the instant application and the conflicting patent is the statutory category of invention.
Claim 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 17 of the instant application discloses a scheduler, or the transmitting device configured to send [specific data/signal]. The conflicting patent differs from the reference claim only by reciting a terminal configured to receive [the specific data/signal]. Specifically, transposing a wireless operation such that a terminal receives what a base station receives is a routine, reciprocal communication design choice. One of ordinary skill in the art would expect such a modification to function in a predictable, upside-down manner to achieve the same underlying wireless exchange, thereby yielding a predictable result.
Claim 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 18 of the instant application discloses a scheduler, or the transmitting device configured to send [specific data/signal]. The conflicting patent differs from the reference claim only by reciting a terminal configured to receive [the specific data/signal]. Specifically, transposing a wireless operation such that a terminal receives what a base station receives is a routine, reciprocal communication design choice. One of ordinary skill in the art would expect such a modification to function in a predictable, upside-down manner to achieve the same underlying wireless exchange, thereby yielding a predictable result.
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 19 of the instant application discloses a scheduler, or the transmitting device configured to send [specific data/signal]. The conflicting patent differs from the reference claim only by reciting a terminal configured to receive [the specific data/signal]. Specifically, transposing a wireless operation such that a terminal receives what a base station receives is a routine, reciprocal communication design choice. One of ordinary skill in the art would expect such a modification to function in a predictable, upside-down manner to achieve the same underlying wireless exchange, thereby yielding a predictable result.
Claim 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,207,248. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 20 of the instant application discloses a scheduler, or the transmitting device configured to send [specific data/signal]. The conflicting patent differs from the reference claim only by reciting a terminal configured to receive [the specific data/signal]. Specifically, transposing a wireless operation such that a terminal receives what a base station receives is a routine, reciprocal communication design choice. One of ordinary skill in the art would expect such a modification to function in a predictable, upside-down manner to achieve the same underlying wireless exchange, thereby yielding a predictable result.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yang et al. (US Publication 2020/0107336) disclosed 62/738,528.
Regarding Claim 1, Yang teaches a terminal, comprising:
a processor, and a memory for storing instructions; wherein the processor is configured to execute the instructions to: (i.e. fig. 2 shows a UE (120) and a base station (110) performing wireless communications, the UE comprising a processor, memory and transceiver for executing programmed instructions; see paragraphs 43)
receive a piece of control information, the control information comprising multiple pieces of time-frequency resource information and the control information is used to indicate time-frequency resources of at least two terminals; (i.e. fig. 7a shows a single group-common DCI message may be transmitted to a plurality of UEs (element 720), the DCI message may comprise a plurality of resource blocks (time-frequency resources) that the UEs may use for uplink/downlink communications; see paragraphs 82, 83)
determine a time-frequency resource from multiple time-frequency resources indicated by the multiple pieces of time-frequency resource information as a transmission resource of the terminal; and send or receive data according to the transmission resource. (i.e. fig. 7a shows the UE may select and utilize allocated resource blocks for uplink/downlink communications (element 730); see paragraphs 83 - 85)
Regarding Claim 17, Yang teaches a scheduling device, comprising:
a processor, and a memory for storing instructions; wherein the processor is configured to execute the instructions to: (i.e. fig. 2 shows a UE (120) and a base station (110) performing wireless communications, the base station comprising a processor, memory and transceiver for executing programmed instructions; see paragraphs 42)
send a piece of control information to a terminal, the control information comprising multiple pieces of time-frequency resource information and the control information is used to indicate time-frequency resources of at least two terminals; (i.e. fig. 7a shows a single group-common DCI message may be transmitted to a plurality of UEs (element 720), the DCI message may comprise a plurality of resource blocks (time-frequency resources) that the UEs may use for uplink/downlink communications; see paragraphs 82, 83) and
send indication information to the terminal, the indication information being used to indicate the terminal to determine a time-frequency resource from multiple time-frequency resources indicated by the multiple pieces of time-frequency resource information. (i.e. fig. 7a shows the UE may select and utilize allocated resource blocks for uplink/downlink communications (element 730); see paragraphs 83 - 85)
Allowable Subject Matter
Claim 2 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.
Claim 3 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 6 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 7 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 9 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 10 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 12 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 13 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 14 – 16 allowable over prior art.
Claim 18 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.
Claim 19 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 objected to as being dependent upon a objected claim which would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J LOPATA whose telephone number is (571)270-5158. The examiner can normally be reached Mon-Fri 10-7 EST.
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ROBERT J. LOPATA
Primary Examiner
Art Unit 2471
/ROBERT J LOPATA/
September 16, 2026Primary Examiner, Art Unit 2471
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