DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is in response to the submission filed 2026-01-07 (herein referred to as the Reply) where claim(s) 1, 17, 41-42 are pending for consideration.
35 USC §112(a) – Claim Rejections
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim(s) is/are rejected under 35 U.S.C. 112(a)
Claim(s) 1, 17 and 41-42
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim limitations explicitly recite a negative limitation. Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion.
The independent claims were amended to recite:
the first transmission being without an expressed grant of transmitting the first transmission on the first frequency region from the network entity;
“Without an expressed grant” is effectively a negative limitation equivariant to “no expressed grant.”
The Reply alleges para. 0034 of provisional ‘988 application supports the negative limitation but para. 0034 has nothing to do with the instant feature:
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It appears the Reply incorrectly cited the wrong paragraph in provisional ‘988 application. The Reply also provided a replication of what is the alleged para. 0034:
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However, even this paragraph does not explicitly recite “without an expressed grant” or equivalent thereof. In fact, the word “grant” does not show up at all. The mere absence of a positive recitation is not basis for an exclusion. Furthermore, nothing in the paragraph is inherently grant less. The example phase “the UE reserves the FDM region” is not an inherent disclosure of “without an express grant.”
Consequently, any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. See MPEP 2137.05(i) for more details.
Dependent claims do not cure the deficiencies of the base/intervening claims as discussed herein and are therefore rejected for at least the same reasons.
Relevant Cited References
US20170290052
Response to Arguments
The Reply’s arguments have been considered but are moot because the arguments do not apply to the rejection(s), which was necessitated by the Applicant’s amendments, being used in the current rejection.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDRE TACDIRAN whose telephone number is 571-272-1717. The examiner can normally be reached on M-TH, 10-5PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Rutkowski can be reached on 571-270-1215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/ANDRE TACDIRAN/
Primary Examiner, Art Unit 2415
Prosecution Insights