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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/8/2026 has been entered.
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, 15, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, 13 of U.S. Patent No. 12, 439, 368. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 15 and 22 are claiming the same invention as recited in claims 1, 13 and 13 of U.S. Patent No. 12, 439, 368.
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 1-7, 15-27 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 15 and 22 recite wherein the first information is used to determine a first time period, and a time domain position of the first time period is associated with a time domain position of a second time period, wherein the first time period is located adjacent to the second time period, and that the first time period is located adjacent to the second time period comprises at least one of the following: the first time period and the second time period form a continuous time period; or a time interval between the first time period and the second time period is less than or equal to a first threshold, wherein the first threshold is less than or equal to: aT/N+a, T is a paging cycle, and N is a quantity of paging frames in one paging cycle; a=1 or a is predefined by a protocol, and a is determined based on a higher layer parameter or predefined by a protocol; and wherein the first time period is associated with positioning measurement or sounding reference signal (SRS) transmission, and the second time period is associated with the PEI. However, the “or” recited in the claim is not exclusive since the less than part of the claim includes zero which makes the first and second time period continuous.
The dependent claims are also rejected since they depend on rejected respective independent claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 6-7, 15-17, 20-24 is/are rejected under under 35 U.S.C. 103 as being unpatentable over He (hereinafter He)(US 2022/0225237) in view of Ma et al. (hereinafter Ma)(2021/0089921).
Regarding claim 1, He teaches a method, comprising: when a time of measurement overlaps with a detection time of a paging early indication (PEI), performing, by a terminal device, at least one of the measurement or detecting of the PEI(P[0056], UE for determining that the PEI occasion is invalid based on the PEI occasion overlapping with downlink reference signal; P[0068], reference signal measurements; also Fig. 1; base station to UE).
He did not teach specifically based on a priority of the PEI, at least one of the measurement or detecting of the PEI, transmitting, by the terminal device, first information to a positioning device in a core network, wherein the first information is used to determine a first time period, and a time domain position of the first time period is associated with a time domain position of a second time period, wherein the first time period is located adjacent to the second time period, and that the first time period is located adjacent to the second time period comprises at least one of the following: the first time period and the second time period form a continuous time period; or a time interval between the first time period and the second time period is less than or equal to a first threshold, wherein the first threshold is less than or equal to: aT/N+a, T is a paging cycle, and N is a quantity of paging frames in one paging cycle; a=1 or a is predefined by a protocol, and a is determined based on a higher layer parameter or predefined by a protocol; and wherein the first time period is associated with positioning measurement or sounding reference signal (SRS) transmission, and the second time period is associated with the PEI.
However, Ma teaches in an analogous art based on a priority of the PEI, at least one of the measurement or detecting of the PEI, transmitting, by the terminal device, first information to a positioning device in a core network, wherein the first information is used to determine a first time period, and a time domain position of the first time period is associated with a time domain position of a second time period, wherein the first time period is located adjacent to the second time period, and that the first time period is located adjacent to the second time period comprises at least one of the following: the first time period and the second time period form a continuous time period; or a time interval between the first time period and the second time period is less than or equal to a first threshold, wherein the first threshold is less than or equal to: aT/N+a, T is a paging cycle, and N is a quantity of paging frames in one paging cycle; a=1 or a is predefined by a protocol, and a is determined based on a higher layer parameter or predefined by a protocol; and wherein the first time period is associated with positioning measurement or sounding reference signal (SRS) transmission, and the second time period is associated with the PEI (P[0127], PEI detection opportunities overlaps with at least one of the following resource, an SSB resource, an SMTC window, measurement gap, positioning reference signal system message), a random response window, a CORESET 0, or a predefined time-frequency resource; [0340] When the data transmission resource is an SSB time-frequency resource, the priority of the data transmission resource and the priority of the first resource are determined by a PEI-related time-frequency resource; P[0344] For example, when a resource overlap/collision occurs between the PEI and another signaling/signal (including, but not limited to, the SSB, the CSI-RS), which results in a monitoring failure, the UE monitors the PO); P[0323]; [0047] A system frame number (SFN) of the PF satisfies the following condition:
(SFN+PF_offset)×T=(T/N)×(UE_ID×N); P[0048] SFN denotes the system frame number of the PF, PF offset denotes an offset for the PF, UE_ID denotes an identification (ID) number of the UE, and T denotes a discontinuous reception (DRX) cycle. N denotes the number of PFs within the DRX cycle).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method based on a priority of the PEI, at least one of the measurement or detecting of the PEI, transmitting, by the terminal device, first information to a positioning device in a core network, wherein the first information is used to determine a first time period, and a time domain position of the first time period is associated with a time domain position of a second time period, wherein the first time period is located adjacent to the second time period, and that the first time period is located adjacent to the second time period comprises at least one of the following: the first time period and the second time period form a continuous time period; or a time interval between the first time period and the second time period is less than or equal to a first threshold, wherein the first threshold is less than or equal to: aT/N+a, T is a paging cycle, and N is a quantity of paging frames in one paging cycle; a=1 or a is predefined by a protocol, and a is determined based on a higher layer parameter or predefined by a protocol; and wherein the first time period is associated with positioning measurement or sounding reference signal (SRS) transmission, and the second time period is associated with the PEI in order to have improved efficiency.
Regarding claim 2, He teaches all the particulars of the claim except the method, wherein the performing, by a terminal device, at least the measurement or detecting of the PEI is determined based on a priority of the measurement. However, Ma teaches in an analogous art wherein the performing, by a terminal device, at least the measurement or detecting of the PEI is determined based on a priority of the measurement(P[0334], overlaps and received data according to priority; P[0344], overlap/ collision PEI and CSI-RS signal; in the measurement gap). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method wherein the performing, by a terminal device, at least the measurement or detecting of the PEI is determined based on a priority of the measurement in order to have improved power saving.
Regarding claim 3, He in view of Ma teaches the method according to claim 2, wherein that the performing, by a terminal device, the at least one of the measurement or detecting of the PEI is determined based on a priority of the measurement comprises: if the priority of the measurement meets a first condition, performing, by the terminal device, the measurement, and skipping detecting of the PEI; or if the priority of the measurement does not meet a first condition, detecting, by the terminal device, the PEI, and skipping the measurement(P[0334], overlaps and received data according to priority; P[0344], overlap/ collison PEI and CSI-RS signal; in the measurement gap).
Regarding claim 6, He teaches the method according to claim 1, wherein the detection time of the PEI is: a time comprising a plurality of detection occasions of the PEI; or one detection occasion of the PEI(P[0040], PEI is sent one or more slots prior to a paging).
Regarding claim 7, He teaches the method according to claim 1, wherein the terminal device is in a radio resource control (RRC) idle state or an RRC inactive state(P[0073], UE is in the RRC idle or inactive mode).
Claims 15 and 22 are rejected for the same reason as set forth in claim 1.
Claims 20-21, 27 are rejected for the same reason as set forth in claims 6-7 and 6 respectively.
Claims 16-17, 23-24 are rejected for the same reason as set forth in claims 2-3 and 2-3 respectively.
Claim(s) 4-5, 18-19, 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (hereinafter He)(US 2022/0225237) in view of Ma et al. (hereinafter Ma)(2021/0089921) and Maleki et al. (hereinafter Maleki)(2021/0089921).
Regarding claim 4, He in view of Ma teaches all the particulars of the claim except the method, wherein the method further comprises: when the terminal device performs the measurement and skips detecting of the PEI, performing, by the terminal device, paging detection in a paging cycle indicated by the PEI. However, Maleki teaches in an analogous art wherein the method further comprises: when the terminal device performs the measurement and skips detecting of the PEI, performing, by the terminal device, paging detection in a paging cycle indicated by the PEI (P[0029-0034], skip monitoring of Pei occasions; measurements performed to determine the parameters shown in P[0030-0034]). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method wherein the method further comprises: when the terminal device performs the measurement and skips detecting of the PEI, performing, by the terminal device, paging detection in a paging cycle indicated by the PEI in order to have improved power saving.
Regarding claim 5, He in view of Ma and Maleki teaches the method according to claim 4, wherein at least one of a following behavior of the terminal device is predefined by a protocol: performing, by the terminal device, the measurement, and skipping detecting of the PEI; or when the terminal device performs the measurement and skips detecting of the PEI, performing, by the terminal device, the paging detection in the paging cycle indicated by the PEI (Maleki: P[0029-0034], skip monitoring of PEI occasions based on measurements performed to determine the parameters shown in P[0030-0034]).
Claims 18-19, 25-26 are rejected for the same reason as set forth in claims 4-5 and 4-5 respectively.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot in view of the new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUTHUSWAMY GANAPATHY MANOHARAN whose telephone number is (571)272-5515. The examiner can normally be reached 6:30am-3:00pm.
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, Alison T Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MUTHUSWAMY G MANOHARAN/Primary Examiner, Art Unit 2647
Prosecution Insights