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 .
Response to Arguments
Applicant’s arguments (05/19/2026) with respect to the art rejection of amended independent claims 1, 18 and 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 3, 13, 16, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 20 of U.S. Patent No. U.S. 12,170,562. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. 12,170,562 claims the subject matter claimed by instant claims 1, 3, 13 and 16. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 of U.S. 12,170,562 claims the subject matter claimed by instant claim 18.
Refer to the table below for a detailed mapping of the nonstatutory double patenting rejections:
18/978354
U.S. 12,170,562
PNG
media_image1.png
377
622
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Greyscale
PNG
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92
277
media_image2.png
Greyscale
PNG
media_image3.png
309
271
media_image3.png
Greyscale
PNG
media_image4.png
85
277
media_image4.png
Greyscale
PNG
media_image5.png
62
644
media_image5.png
Greyscale
PNG
media_image6.png
102
622
media_image6.png
Greyscale
PNG
media_image7.png
149
534
media_image7.png
Greyscale
PNG
media_image8.png
217
546
media_image8.png
Greyscale
PNG
media_image9.png
149
554
media_image9.png
Greyscale
PNG
media_image10.png
94
546
media_image10.png
Greyscale
PNG
media_image11.png
334
271
media_image11.png
Greyscale
PNG
media_image12.png
30
277
media_image12.png
Greyscale
PNG
media_image13.png
50
266
media_image13.png
Greyscale
Claims 2, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 20 of U.S. Patent No. 12,170,562 in view of Medra et al. (U.S. 2022/0052764).
With respect to instant claim 2, claim 4 of U.S. 12,170,562 does not claim:
wherein the relay includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
In the same field of endeavor, Medra et al. disclose: a relay includes an array of reconfigurable elements ([0054]-[0056] describe what an RIS is (including RIS 420) and how it works, also refer to Fig. 1 and its detailed description. Refer to the disclosed “A Reconfigurable Intelligent Surface (RIS)….is an array of configurable elements”, lines 1-5 of [0054], also [0055] in particular the approximate middle of [0055] disclosing control the configurable elements), the reconfigurable elements having a reconfigurable electromagnetic characteristic (refer to at least to the approximate second half of [0056], [0060], [0065]) the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic (reflection characteristic, refer to the portions already cited), a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the relay of claim 4 of U.S. 12,170,562 based on the cited teachings of Medra et al. to be a relay that includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic (relay described in Medra et al. at least lines 1-5 of [0054], also [0055], second half of [0056], [0060], [0065]) and has the ability to manipulate the incident wave, has low cost, require small bias voltages, and maximizes SNR at the direction of the destination (receiver)(Medra et al., at least [0056]).
With respect to instant claim 19, claim 20 of U.S. 12,170,562 does not claim:
wherein the relay includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
In the same field of endeavor, Medra et al. disclose: a relay includes an array of reconfigurable elements ([0054]-[0056] describe what an RIS is (including RIS 420) and how it works, also refer to Fig. 1 and its detailed description. Refer to the disclosed “A Reconfigurable Intelligent Surface (RIS)….is an array of configurable elements”, lines 1-5 of [0054], also [0055] in particular the approximate middle of [0055] disclosing control the configurable elements), the reconfigurable elements having a reconfigurable electromagnetic characteristic (refer to at least to the approximate second half of [0056], [0060], [0065]) the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic (reflection characteristic, refer to the portions already cited), a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the relay of claim 20 of U.S. 12,170,562 based on the cited teachings of Medra et al. to be a relay that includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic (relay described in Medra et al. at least lines 1-5 of [0054], also [0055], second half of [0056], [0060], [0065]) and has the ability to manipulate the incident wave, has low cost, require small bias voltages, and maximizes SNR at the direction of the destination (receiver)(Medra et al., at least [0056]).
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)(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.
Claims 1, 3, 5, 8, 18, 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (WO 2022/015965).
With respect to claim 1, Wang et al. disclose: A receiver (e.g. refer to the UE 110 of Fig. 6A, an embodiment of which is shown on the left side of Fig. 2) for wireless communication, comprising: a memory (e.g. refer to Fig. 2 the CRM 216 (memory disclosed in [0021]) comprising UE APD manager 220, lines 1-2, 4-6 of [0022]); and one or more processors (214), coupled to the memory (as shown in Fig.3 and refer to [0021]), configured to (the UE is configured to)): receive a signal that is transmitted by a transmitter (e.g. refer to Fig. 5A, at least lines 8-10 of [0054], lines 1-10 of [0056]. Refer to the transmitted reference signal (e.g. [0057], signal on signal ray 531 transmitted by the base station 120 (transmitter) to the relay (APD 181) which reflects (reflection 532) that signal to the receiver (UE) and 15-21 of [0064], [0065]), the signal including an indication of a relay (APD 181, corresponds to the claimed relay, refer to at least lines 2-5 of [0002]) when the signal is received via an indirect communications link that includes the relay (at least lines 4-7 of [0056] “…APD-specific identification information the enables the UE 110…to identify a source of the reference signal or reflection.”, at least lines 9-11, 13-16 of [0058] “…reflected beam ID modulation 504 (e.g., APD identifier (APD-ID) of table 501)”, Fig. 6A, reflection ID 506, lines 1-3, 6-11, 16-20 of [0066] refer to the “By coordinating or synchronizing respective timing of a transmission of wireless signals (e.g., reference signal 631) and RIS reconfigurations at the APD 181 that implement beam sweeping, each reflection 514 may have and/or correspond with a reflection identifier 506 (reflection ID 506) useful by the UE 110 and/or base station 120 to identify an APD 180 and phase vector 606 associated with the reflection”, and refer to the reflection angle in table 601), and the indication of the relay indicating a beam direction associated with the signal (Reflection ID 506 includes ID 504 or IDs 504 and 502 , lines 16-17 of [0064], lines 6-9, 12-end of [0066], e.g. (beam APD reflected beam ID ) reflection angle (608 in table 601) of the APD 181 associated with the phase vector used by the APD); and perform an action associated with communicating with the transmitter based at least in part on whether the signal is received via a direct communications link between the receiver and the transmitter or the indirect communications link (refer to the reflected signal quality measurement (RSRP) performed by the receiver (UE) and the signal is received (as a reflected signal) via the indirect communications link, lines 8-9 of [0056], lines 1-12 of [0068]).
With respect to claim 3, Wang et al. disclose: wherein the one or more processors are further configured to: demodulate the signal to detect a sequence associated with a signature of the relay (line 3 of [0068] “decode or demodulate…”, lines 1-3 of [0093]); and determine that the signal includes the indication of the relay based at least in part on detecting the sequence (based on the demodulate or decode).
With respect to claim 5, Wang et al. disclose:
wherein the one or more processors, to perform the action associated with communicating with the transmitter, are configured to: determine one or more of the beam direction associated with the signal or a beam state associated with the signal based at least in part on the signature of the relay lines 14-end of [0066], lines 1-3 of [0076] refer to the determined beam reflection/reflective angle), wherein the relay is configured to redirect or reflect signals to the receiver using different beam states or beam directions, wherein each beam state or beam direction is associated with a different signature (refer to Fig. 6A, beam sweeping pattern, beam states or beam directions (APD 181 reflection angles 608) are associated with a different signature (Reflection ID 506), last sentence of [0092] “…reflections that correspond to portions the reference signal that are each encoded with a reflection identifier 506 toward the UE 110 at different respective directions or angles”).
With respect to claim 8, Wang et al. disclose:
wherein the one or more processors are further configured to: decode the signal to detect a sequence associated with a signature of the relay (line 3 of [0068] “decode or demodulate…”, lines 1-3 of [0093] ; and determine that the signal includes the indication of the relay based at least in part on detecting the sequence associated with the signature of the relay (based on the demodulate or decode).
Method claim 18 is rejected based on the rationale used to reject apparatus claim 1.
Claim 20 is rejected based on the rationale used to reject claim 18 above and refer to page 65, Example 21, and lines 4-7 of [0021] the “computer-readable storage media” of Wang et al. excludes propagating signals and may include any suitable memory e.g., ROM memory.
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.
Claims 2, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (WO 2022/015965) in view of Medra et al. (U.S. 2022/0052764).
Medra et al. (U.S. 2022/0052764)
With respect to claim 2, although Wang et al. discloses the relay (APD, 181 of Fig. 6A, and at least [0002]) includes an array of elements (the illustrated boxes within APD 181) and that the relay includes RISs (at least [0002]), Wang et al.
do not expressly disclose:
wherein the relay includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
In the same field of endeavor, Medra et al. disclose: a relay includes an array of reconfigurable elements ([0054]-[0056] describe what an RIS is (including RIS 420) and how it works, also refer to Fig. 1 and its detailed description. Refer to the disclosed “A Reconfigurable Intelligent Surface (RIS)….is an array of configurable elements”, lines 1-5 of [0054], also [0055] in particular the approximate middle of [0055] disclosing control the configurable elements), the reconfigurable elements having a reconfigurable electromagnetic characteristic (refer to at least to the approximate second half of [0056], [0060], [0065]) the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic (reflection characteristic, refer to the portions already cited), a scattering characteristic, an absorption characteristic, or a diffraction characteristic.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the APD 181 of Wang et al. based on the cited teachings of Medra et al. to be a relay that includes an array of reconfigurable elements, the reconfigurable elements having a reconfigurable electromagnetic characteristic, the reconfigurable electromagnetic characteristic including one or more of a reflection characteristic, a scattering characteristic, an absorption characteristic, or a diffraction characteristic (relay described in Medra et al. at least lines 1-5 of [0054], also [0055], second half of [0056], [0060], [0065]) and has the ability to manipulate the incident wave, has low cost, require small bias voltages, and maximizes SNR at the direction of the destination (receiver)(Medra et al., at least [0056]).
Claim 19 is rejected based on the reasoning used to reject claim 2 above.
Allowable Subject Matter
Claims 4, 6-7, 9-12, 14-15, 17 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
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SOPHIA VLAHOS
Examiner
Art Unit 2633
/SOPHIA VLAHOS/Primary Examiner, Art Unit 2633 06/26/2026
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