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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/037,314
`
`09/29/2020
`
`Alexander Golitschek Edler von Elbwart
`
`736456.452C2
`
`1001
`
`Seed IP Law Group LLP/Panasonic (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`HAN, CLEMENCE S
`
`ART UNIT
`
`2414
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/03/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220129
`
`Application No.
`Applicant(s)
`17/037 ,314
`Golitschek Edler von Elbwart e
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CLEMENCE S HAN
`2414
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 09/29/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/037,314
`Art Unit: 2414
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Double Patenting
`
`2.
`
`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
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`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
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`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
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`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
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`agreement. See MPEP § 717.02 for applications subject to examination underthe first inventor tofile
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146et seq. for applications not subject
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`to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be
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`signed in compliance with 37 CFR 1.321(b).
`
`

`

`Application/Control Number: 17/037,314
`Art Unit: 2414
`
`Page 3
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`The USPTOInternet website contains terminal disclaimer forms which may be used. Pleasevisit
`
`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 maybefilled out completely online using web-screens. An eTerminal
`
`Disclaimer that meetsall 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-l.jsp.
`
`3.
`
`Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable
`
`over claims 1-18 of U.S. Patent No. 10,292,148. Although the claims at issue are not identical, they are
`
`not patentably distinct from each other because the application’s claims merely broaden the scope of
`
`the patented claims by not claiming some claim elements(i.e. first predetermined radio resourcesvs.
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`first radio resources).
`
`Anintegrated circuit which, in operation, controls|A method for allocating radio resources to a user
`
`DCI message of the particular format,
`
`a process of a communication apparatus for
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`terminal for performing communication between
`
`performing communication between the
`
`a radio control entity and the user terminal ina
`
`communication apparatus and a radio control
`
`communication system, the method being
`
`entity in a communication system, the process
`
`performedby the user terminal and comprising:
`
`comprising:
`
`receiving a downlink control information (DCI)
`
`receiving a DCI message of the particular format
`
`message of a particular format from the radio
`
`from the radio control entity, upon receiving the
`
`control entity;
`
`

`

`Application/Control Number: 17/037,314
`Art Unit: 2414
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`
`Page 4
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`identifying first radio resources associated with
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`identifying the first predetermined radio
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`the received DCI message of the particular
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`resources associated with this received DCI
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`format; and
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`message, and
`
`performing communication between the
`
`using the identified first predetermined radio
`
`communication apparatus and the radio control
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`resources for communication between the user
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`entity using the identified first radio resourcesvia
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`terminal and the radio control entity via the
`
`a particular carrier,
`
`particular carrier,
`
`wherein the particular carrier is an unlicensed
`
`wherein the particular carrier is an unlicensed
`
`carrier,
`
`carrier,
`
`wherein the first radio resources are defined
`
`wherein the first predetermined radio resources
`
`according to a particular resource allocation type,
`
`are defined according to a particular resource
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`(LTE) specification, or a further resource
`
`allocation type, and
`
`wherein the particular resource allocation typeis
`
`wherein at least first predetermined radio
`
`a resourceallocation type, from a plurality of
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`resources are configured in the user terminal for
`
`uplink and downlink resource allocation types,
`
`use in connection with a particular carrier and are
`
`which is specific to the first radio resources for
`
`associated with a particular format of a downlink
`
`use in connection with the particular carrier, and
`
`control information, DCI, message,
`
`wherein the plurality of uplink and downlink
`
`wherein the particular resource allocation typeis
`
`resource allocation types includes one or more of
`
`either: one of the downlink resource allocation
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`downlink resourceallocation types 0, 1, and 2
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`types0, 1, or 2, or uplink resource allocation
`
`according to a 3rd Generation Partnership Project
`
`types0, or 1 according to a 3rd Generation
`
`(3GPP) Long Term Evolution (LTE) specification
`
`Partnership Project (3GPP) Long Term Evolution
`
`and at least one of the one or more of downlink
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`

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`Application/Control Number: 17/037,314
`Art Unit: 2414
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`Page 5
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`resource allocation types 0, 1, and 2 is reused for|allocation type specific to the first predetermined
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`defining the first radio resources for use in
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`radio resources for use in connection with the
`
`particular carrier.
`connection with the particular carrier.
`
`
`4.
`
`Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable
`
`over claims 1-18 of U.S. Patent No. 10,827,479. Although the claims at issue are not identical, they are
`
`not patentably distinct from each other because one is describing the process and the other is
`
`describing the apparatus performing the same process.
`
`Anintegrated circuit which, in operation, controls|A communication apparatus for performing
`
`and
`
`a process of a communication apparatus for
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`communication with a radio control entity ina
`
`performing communication between the
`
`communication system, the communication
`
`communication apparatus and a radio control
`
`apparatus comprising:
`
`entity in a communication system, the process
`
`comprising:
`
`receiving a downlink control information (DCI)
`
`a receiver which, in operation, receives a
`
`message of a particular format from the radio
`
`downlink control information (DCI) message of a
`
`control entity;
`
`particular format from the radio control entity,
`
`and circuitry which, in operation,
`
`identifying first radio resources associated with
`
`identifies first radio resources associated with the
`
`the received DCI message of the particular
`
`received DCI messageof the particular format,
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`format; and
`
`

`

`Application/Control Number: 17/037,314
`Art Unit: 2414
`
`
`Page 6
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`performing communication between the
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`performs communication between the
`
`communication apparatus and the radio control
`
`communication apparatus and the radio control
`
`entity using the identified first radio resourcesvia
`
`entity using the identified first radio resourcesvia
`
`a particular carrier,
`
`a particular carrier,
`
`wherein the particular carrier is an unlicensed
`
`wherein the particular carrier is an unlicensed
`
`carrier,
`
`carrier,
`
`wherein the first radio resources are defined
`
`wherein the first radio resources are defined
`
`connection with the particular carrier.
`
`according to a particular resource allocation type,
`
`according to a particular resourceallocation type,
`
`wherein the particular resource allocation typeis
`
`wherein the particular resource allocation typeis
`
`a resourceallocation type, from a plurality of
`
`a resourceallocation type, from a plurality of
`
`uplink and downlink resource allocation types,
`
`uplink and downlink resource allocation types,
`
`which is specific to the first radio resources for
`
`which is specific to the first radio resources for
`
`use in connection with the particular carrier, and
`
`use in connection with the particular carrier, and
`
`wherein the plurality of uplink and downlink
`
`wherein the plurality of uplink and downlink
`
`resource allocation types includes one or more of
`
`resource allocation types includes one or more of
`
`downlink resourceallocation types 0, 1, and 2
`
`downlink resourceallocation types 0, 1, and 2
`
`according to a 3rd Generation Partnership Project
`
`according to a 3rd Generation Partnership Project
`
`(3GPP) Long Term Evolution (LTE) specification
`
`(3GPP) Long Term Evolution (LTE) specification
`
`and at least one of the one or more of downlink
`
`and at least one of the one or more of downlink
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`resourceallocation types 0, 1, and 2 is reused for
`
`resourceallocation types 0, 1, and 2 is reused for
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`defining the first radio resources for use in
`
`defining the first radio resourcesfor use in
`
`connection with the particular carrier.
`
`

`

`Application/Control Number: 17/037,314
`Art Unit: 2414
`
`Page 7
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`Allowable Subject Matter
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`5.
`
`Claims 1-7 would be allowable if the terminal disclaimer (for 10,292,148 and 10,827,479) is
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`timely filed to overcome the rejection based on nonstatutory double patenting, set forth in this Office
`
`action.
`
`6.
`
`The following is a statement of reasons for the indication of allowable subject matter: The prior
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`art in the record (in particular, US Pub. 2014/0211767 to Lunttila et al. (hereinafter “Lunttila”)) does not
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`disclose, with respect to claim 1, the plurality of uplink and downlink resource allocation types includes
`
`one or more of downlink resource allocation types 0, 1, and 2 according to a 3rd Generation Partnership
`
`Project (3GPP) Long Term Evolution (LTE) specification and at least one of the one or more of downlink
`
`resource allocation types 0, 1, and 2 is reused for defining the first radio resources for use in connection
`
`with the particular carrier as claimed. Rather, Lunttila teaches upon receiving the DCI message of the
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`particular format, identifying the first predetermined radio resources associated with this received DCI
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`message(“predetermined DL resources e.g. PDSCH corresponding to DCI format 1A” in [0056]).
`
`Conclusion
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`7.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
`
`Novlan et al. (US Pub. 2014/0328329) teaches reusing "Resource block assignment and hopping
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`resource allocation" field to indicate the allocation of D2D resource [0353].
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CLEMENCE S HAN whosetelephone number is (571)272-3158. The examiner can
`
`normally be reached Monday-Friday 8AM-5PM EST.
`
`Examiner interviewsare 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.
`
`

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`Application/Control Number: 17/037,314
`Art Unit: 2414
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Edan Orgad can be reached on (571)272-7884. The fax phone numberfor 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
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`https://www.uspto.gov/patents/docx for information aboutfiling 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.
`
`/CLEMENCE S HAN/
`Primary Examiner, Art Unit 2414
`
`