DETAILED ACTION
This office action is in reply communication filed on 12/31/2025.
Claims 4, 5, and 12 are cancelled.
Claims 1-3 and 6-11 are pending.
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 Argument
Applicant’s arguments filled on 12/31/2025 with respect to 35 U.S.C. §112 rejection of claims 1-3 and 6-11 have been fully considered and are persuasive. The rejection of 35 U.S.C. §112 has been withdrawn.
Applicant’s arguments filled on 12/31/2025 with respect to 35 U.S.C. §103 rejection of claims 1, 3, and 7-11 have been fully considered but not persuasive.
Regarding claims 1 and 10-11, Applicant argues that “The Examiner's reliance on Toh to supply this missing limitation is misplaced. Toh's A- PCI list is fundamentally different from the claimed list of base stations that configure the base station group. Toh's A-PCI list is "a list of Physical Cell Identifiers (hereinafter referred to as PCI) of CSG cells that the mobile terminal 140 is permitted to access." Toh et al., paragraph [0060]. This access-permission-based list allows "the mobile terminal [to] verify an accessible CSG cell without the need of receiving system information that includes a CSG identification." Toh et al., paragraph [0110]. Toh's A-PCI list is generated specifically for each mobile terminal based on that terminal's access rights and subscription profile, not based on geographic location grouping of base stations. Toh et al., paragraphs [0058], [0060], [0080].
One of ordinary skill in the art would not be motivated to combine Toh's access-control list with Nair's location-based grouping because they serve entirely different purposes and are based on different criteria…The Examiner has not provided adequate reasoning why one of ordinary skill in the art would modify Nair's location-based group identifier to include a list of base stations within the group, particularly when Nair's representative BSID approach already achieves the stated objective of managing femto and macro base station co-deployments. Nair et al., paragraphs [0044], [0045].” on page 9.
In response to Applicant’s argument, the examiner respectfully disagrees with the argument above. According to previous OA, Nair organizes and group the plurality of femto base station 102F into a plurality groups (G1-G6) based on/according to geographic location characteristics (see Nair, ¶¶ 41-42). Toh also teaches the HeNB-GW 120 can create a list of the CSG IDs and HeNBs 130 and 150 corresponding to the CSG IDs in which the HeNBs 130 and 150 provide with the corresponding location information (see Toh, Fig. 3C, ¶¶ 62-63).
Regarding “One of ordinary skill in the art would not be motivated to combine Toh's access-control list with Nair's location-based grouping …The Examiner has not provided adequate reasoning why one of ordinary skill in the art would modify Nair's location-based group identifier to include a list of base stations within the group”, Examiner believe that in establishing a background for determining obviousness, one of ordinary skill in the pertinent art would considering objective evidence present in the application indicating obviousness or nonobviousness (see Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).
Further, Applicant argues that “Moreover, Applicant respectfully submits that these references are unrelated and would not have been combined as alleged by the Examiner since the configuration defined in the claims is much more precise than the generic functional difference articulated by the Examiner in the rejection. Thus, a person of ordinary skill in the art would not have considered combining these disparate references, absent impermissible hindsight.” on page 8.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, Applicant argues that “Further, Applicant submits that there is no motivation or suggestion in the references or elsewhere (and thus no predictability for one of ordinary skill in the art) to urge the combination as alleged by the Examiner. Indeed, these references clearly do not teach or suggest their combination. Therefore, Applicant respectfully submits that one of ordinary skill in the art would not have combined the references as alleged by the Examiner.
Therefore, Applicant respectfully submits that one with ordinary skill in the art would not have combined the cited references, and even if combined, the alleged combination would not have taught or suggested (or rendered obvious) each and every feature of the claims. Therefore, Applicant respectfully requests the Examiner to reconsider and withdraw this rejection.” on page 8.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Toh would able to provide a base station controller with which a mobile terminal can immediately be connected to a CSG cell that the mobile terminal is permitted to access and the mobile terminal can verify a CSG cell that the mobile terminal is permitted to access based on A-PCI list information without the need of receiving system information that includes a CSG identification. Therefore, it is advantageously possible to reduce time required for access verification of the mobile terminal (see Toh ¶¶ 13,16).
And Furthermore, Applicant argues of claims 2 and 6, please refers to previous OA and response of claim 1 set forth above.
And furthermore, Applicant argues that “Indeed, claims 2-3 and 6-9 each depend, either directly or indirectly, from independent claim 1. They are believed to be patentably distinguished for at least the same reasons as expressed above in relation to the independent claim from which each depends, as well as for the additional elements recited therein and in any intervening claim…. Accordingly, Applicant respectfully requests that the rejections of Claims 2-3 and 6-9 be withdrawn, and that these claims be passed to allowance.” on page 9.
In response to Applicant’s argument, the examiner respectfully disagrees with the argument above. Since claim 1 is not allowable over the combined references Nair and Toh as set forth in previous OA and response above, the rejections of Claims 2-3 and 6-9 are remain sustained.
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 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) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 7-11 are rejected under 35 U.S.C. 103 unpatentable over Nair et al. (US 2011/0047029) in view of Toh et al. (US 2012/0088505).
Regarding claim 1, Nair discloses a mobile communication system [see Fig. 1, 2, ¶¶ 37-41, 46; a mobile communication system] comprising:
a user equipment [see ¶ 40; mobile station 104MS]; and
a base station [see ¶ 40; macro or pico base station 102M] configured to perform radio communication with the user equipment [see ¶ 40; managing femto and macro base station co-deployments and/or initiating handoff of a mobile station],
wherein the base station is configured to notify the user equipment of base station group information [see Fig. 2, ¶¶ 47; at step S214 the macro base station 102M advertises its respective neighbors in an advertisement message/(base station group information)],
wherein the base station group information includes an identifier of a base station group [see ¶ 47; wherein the advertisement message/(base station group information) is a neighbor advertisement message such as the NBR-ADV message including the base station group identifier assigned to each of the groups] that is grouped in accordance with a location of the base station [see Fig. 3, ¶¶ 41-42; S210, the macro base station 102M organizes and groups the plurality of femto base stations 102F into a plurality of femto groups G1 through G6 based on/(according to) femto grouping characteristics/geographic location characteristics] including two or more of the base stations [see Fig. 1, ¶ 38, Fig. 3, ¶ 44; including a few femto base stations 102F, a few femto cells 100F].
Nair does not explicitly disclose wherein the base station group information includes a list of base stations configuring a base station group.
However, Toh discloses wherein the base station group information includes an identifier of a base station group [see ¶ 60; the HeNB-GW 120 generates an A-PCI list (S20); wherein the A-PCI list is a list of Physical Cell Identifiers (hereinafter referred to as PCI) of CSG cells], that is grouped in accordance with a location of the base station [see Fig. 3C, ¶¶ 62-63; the HeNBs 130 and 150 also provide the HeNB-GW 120 with the corresponding location information]
wherein the base station group information includes a list of base stations that configured the base station group [see ¶¶ 145-151; wherein the base station group information/(common A-PCI list information) includes a list of base stations/(CSG cells divided into different groups) configuring an updated common A-PCI list information for the group of CSG cells with an updated group PCI ID].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention was made to provide “wherein the base station group information includes a list of base stations configuring a base station group” as taught by Toh in the system of Nair, so that it would provide to access based on A-PCI list information without the need of receiving system information that includes a CSG identification that would reduce time required for access verification of the mobile terminal [see Toh; ¶ 16].
Regarding claim 3, the combined system of Nair and Toh discloses the mobile communication system according to claim 1.
Nair does not explicitly disclose wherein the base station group information is notified from the base station to the user equipment by using a Radio Resource Control (RRC) signaling.
However, Toh discloses wherein the base station group information is notified from the base station to the user equipment by using a Radio Resource Control (RRC) signaling [see ¶¶ 67, 71, 101, 121; wherein the A-PCI list/(base station group information) is notified from the HeNB 130/(base station) to the mobile terminal 140/(user equipment) by using a Radio Resource Control (RRC) signaling/(RRC Connection Reconfiguration message)].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention was made to provide “wherein the base station group information is notified from the base station to the user equipment by using a Radio Resource Control (RRC) signaling” as taught by Toh in the system of Nair, so that it would provide to access based on A-PCI list information without the need of receiving system information that includes a CSG identification that would reduce time required for access verification of the mobile terminal [see Toh; ¶ 16].
Regarding claim 7, the combined system of Nair and Toh discloses the mobile communication system according to claim 1.
Nair further discloses wherein the base station group information is information determined by the base station [see ¶¶ 47; wherein the base station information/advertisement message is information determined by the macro base station 102M].
Regarding claim 8, the combined system of Nair and Toh discloses the mobile communication system according to claim 1.
Nair further discloses wherein the base station group information is information indicating a base station group to which the base station belongs [see ¶ 47; wherein the base station group information/advertisement message is information indicating a base station group to which the base station belongs].
Regarding claim 9, the combined system of Nair and Toh discloses the mobile communication system according to claim 1.
Nair further discloses wherein the base station group information is notified from the base station to the user equipment as a broadcast information [see ¶ 48; wherein the base station group information/advertisement message is notified from the base station to the user equipment as a broadcast information].
Regarding claim 10, the claim recites a base station configured to perform radio communication with a user equipment to perform the functions of the mobile communication system recited as in claim 1; therefore, claim 10 is rejected along the same rationale that rejected in claim 1.
Regarding claim 11, the claim recites a user equipment configured to perform radio communication with a base station to perform the functions of the mobile communication system recited as in claim 1; therefore, claim 11 is rejected along the same rationale that rejected in claim 1.
Claim 2 is rejected under 35 U.S.C. 103 unpatentable over Nair et al. (US 2011/0047029) in view of Toh et al. (US 2012/0088505), and further in view of Tadashi et al. (JP2006-05597).
Regarding claim 2, the combined system of Nair and Toh discloses the mobile communication system according to claim 1, but does not explicitly disclose wherein the base station group information is notified from the base station to the user equipment by using a signal for dedicatedly notifying the user equipment of information.
However, Tadashi discloses wherein the base station group information is notified from the base station to the user equipment by using a signal for dedicatedly notifying the user equipment of information [see ¶ 79; such as a method using a notification channel for transmitting notification information and a method using an individual channel message for each mobile communication terminal].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention was made to provide “wherein the base station group information is notified from the base station to the user equipment by using a signal for dedicatedly notifying the user equipment of information” as taught by Tadashi in the combined system of Nair and Toh, so that it would provide probability of the failure of the incoming call can be reduced, and the frequency of changing the base station receiving the information can be reduced to prevent the increase of current consumption [see Tadashi; ¶ 27].
Claim 6 is rejected under 35 U.S.C. 103 unpatentable over Nair et al. (US 2011/0047029) in view of Toh et al. (US 2012/0088505), and further in view of Siomina et al. (US 2012/0040696).
Regarding claim 6, the combined system of Nair and Toh discloses the mobile communication system according to claim 1, but does not explicitly disclose wherein the list is a list of identification information for identifying base stations configuring the base station group.
However, Siomina discloses wherein the list is a list of identification information for identifying base stations configuring the base station group [see ¶¶ 57-58; wherein the order of cells 103 in the list provided with the assistance data and at least the grouping principle and/or the number and/or the size of groups].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention was made to provide “wherein the list is a list of identification information for identifying base stations configuring the base station group” as taught by Siomina in the combined system of Nair and Toh, so that it would improve positioning techniques, for example, providing increased speed and/or efficiency [see Siomina; ¶ 4].
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG LA whose telephone number is (571)272-2588. The examiner can normally be reached on Monday through Friday from 7:30 A.M. to 4:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IAN MOORE can be reached on 571-272-3085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PHONG LA/Primary Examiner, Art Unit 2469
Prosecution Insights