Detailed Action
1. This Office Action is in response to the Applicant’s preliminary amendment filed on 12/18/2024. In virtue of this communication, claims 1-9 are currently pending in this Office Action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Applicant’s claim for the continuation benefit of prior-filed applications as ADS filed on 12/18/2024 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Double Patenting
4. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 5 of U.S. Patent No. 12,213,072 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because from the comparison, the patent claims includes many more elements and more specific, and thereby, the patent claims encompass the broader scope of the instant claims. Accordingly, allowing the broader instant claims could cause unjustified or improper timewise extension of the “right to exclude” granted by a patent and possible harassment by multiple assignees.
5.1. Patent Claim 1 renders the instant claim limitations obvious or anticipates the instant limitations of instant claim 1 as follows:
transmitting, by a base station (BS), a first discontinuous reception (DRX) configuration for a first DRX group to a user equipment (UE) (lines 43-44 of co. 31, a network or a cell typically represents an access point or a base station or a network node, it’s to note that instant claim is for a transmitting network or BS side and patent claims is for a receiving side or a UE); and
transmitting, by the BS, a second DRX configuration for a second DRX group to the UE (lines 45-46 of col. 31),
wherein the first DRX configuration comprises i) a first drx-onDurationTimer which is related to a duration at a beginning of a DRX cycle, ii) a first drx-InactivityTimer which is related to a duration after a physical downlink control channel (PDCCH) occasion in which a PDCCH indicates a new uplink or downlink transmission, and iii) parameters which are related to a DRX operation (lines 51-58 of col. 31),
wherein the second DRX configuration comprises only i) a second drx-onDurationTimer which is related to a duration at a beginning of a DRX cycle and ii) a second drx-InactivityTimer which is related to a duration after a PDCCH occasion in which a PDCCH indicates a new uplink or downlink transmission, among DRX related parameters (lines 59-65 of col. 31), and
wherein the parameters are common to the first DRX group and the second DRX group (lines 66-67 of col. 31 & lines 1-2 of col. 32).
5.2. The instant claims 4 & 7 recite the similar scopes of the respective limitations of the instant claim 1. Accordingly, the instant claims 4 & 7 can be compared to the patent claim 1 or 3 in the same way that the instant claim 1 is compared to the patent claim 1 set forth above.
5.3. The fact that the instant dependent claims are not discussed in details here is due to the following reasons: the patented dependent claims might render the dependent claims obvious; filing terminal disclaimer, TD, would overcome the obviousness type double patenting, ODP, rejection under 35 USC 101; without TD, amendment made to the claims in the future would necessitate determination again if ODP will still exist for the amended claims.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jose et al. Pub. No.: US 2020/0100183 A1 disclose DRX configuration including parameters such as DRX Cycle, Inactivity Timer, On Duration (see fig. 1-8).
He et al. Pub. No.: US 2020/0045768 A1 disclose DRX configuration for parameters for DRX groups (see fig. 6-9 & 12).
Baldemair et al. Patent No.: US 9,603,091 B2 disclose DRX configuration for short cycle and long cycle (fig. 2-7).
Contact Information
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN A HTUN whose telephone number is (571)270-3190. The examiner can normally be reached on Monday - Thursday 7 AM - 5 PM.
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, Jinsong Hu can be reached on 5712723965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAN HTUN/
Primary Examiner, Art Unit 2643
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