DETAILED NON-FINAL OFFICE ACTION
This action is responsive to Applicant’s filing a Request for Continued Examination in the instant application, dated 01/08/2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The instant application is a reissue application of U.S. Patent No. 10,270,573, hereinafter “the ‘573 Patent”. Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the ‘573 Patent itself and its prosecution history, the Examiner finds that he cannot locate any ongoing proceeding before the Office or current ongoing litigation involving the ‘573 Patent. Furthermore, based upon the Examiner's independent review of the ‘573 Patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations, supplemental examinations, or certificates of correction.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2024 has been entered.
Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This reissue application was filed 04/22/2021. Thus, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 made in this application are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,270,573 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Response to Amendment
Amended claims has been reviewed. The amendments filed in the Response do not comply with 37 CFR 1.173.
The applicant must rectify the following formatting and procedural errors:
Formatting of the Specification and Claims Improper Specification Format (37 CFR 1.173(b)(2) and 1.173(g)):
Amendments to the specification must be made relative to the original patent in effect at the time of the reissue filing. The applicant is expressly prohibited from using the "revert by deletion" method (e.g., using brackets to remove previous reissue-added text to return to original text). Instead, the applicant must provide a clean, unmarked replacement paragraph for each section of the specification being changed. The Applicant has only stated that they intent to amend but have not supplied the appropriate replacement pages showing such an amendment.
Drawing Requirements (37 CFR 1.173(b)(3)):
Physical alteration of original drawing sheets is strictly forbidden. To revert a figure to its original state, the applicant must submit a formal "Replacement Sheet" showing the figure as it appeared in the original patent, or file a "Withdrawal/Cancellation" of previously filed replacement sheets.
Procedural Impact of Formatting Errors Incorrect markings create an ambiguous public record, making it impossible for the Office or the public to determine the exact boundaries of the "original" vs. "amended" subject matter. Such ambiguity is a primary driver of litigation regarding "intervening rights" under 35 U.S.C. 252. If the public cannot rely on the markings to determine what was surrendered and what was retained, the resulting reissue patent fails its statutory notice function.
Specification
Said Amendment to the Specification filed with said Response is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material in both the amendment to the written description and to the drawing which is not supported by the original disclosure is directed to the new matter described above (receiving a first SS not paired with a CSS and processing of the received CSS/ SS block that does not include RMSI-CORESET Configuration). Applicant is required to cancel the new matter in the reply to this Office Action. Applicant has not officially amended out the specification changes as they said they did in their Remarks.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. - An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word "means" (or "step") in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word "means" (or "step") in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre- AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word "means" (or "step") are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word "means" (or "step") are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Corresponding Structure or Materials
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 99 USPQ2d 1936 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333, 1334, [69 USPQ2d 1481, 1486] (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is `corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” In re Aoyama, , 99 USPQ2d at 1939 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210, [68 USPQ2d 1263, 1267] (Fed. Cir. 2003).
Based upon a review of the Reissue Application itself, the Examiner concludes that the corresponding structure for the “means for receiving” is “one or more antennas and/or the receiving processor 258”, and the “means for determining” is at least the “user equipment”, as stated by the Applicant in their Remarks, 12/30/2025.
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 26 – 30 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.
Claim limitations “means for receiving” and “means for determining” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the Applicant’s remarks in 12/30/2025 and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function, emphasis added.
Applicant states that the “means for receiving” could be the “user equipment”, antenna, and/or “receiving processor”. This is extremely confusing since they are all very different components, with the “user equipment” having all these components. Furthermore, if the “means for receiving” is the “user equipment”, then what would be the “apparatus for wireless communication”, i.e., you are claiming a “user equipment” inside a “user equipment”. The means for determination is equally vague and is not clarified by the Applicant’s remarks.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 26 is further rejected for its indefiniteness since it is unclear if the corresponding means are just an antenna or a complex device. This yield very different interpretations. Applicant is asked to specifically define a clear definition of their “means for receiving” and “means for determining”.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. V. Performance Contracting, Inc., 38F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, U.S. Provisional Application No. 62/506,960, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for claims 1-33 as amended of the present reissue application, as discussed above in the new matter rejections.
More specifically, the claim limitation of, “receiving a first synchronization signal (SS) having an indicator that the SS is not associated with a common search space (CSS) for a downlink control channel used for a physical down link shared channel (PDSCH) to deliver remaining minimum system information (RMSI)”, is not found in the Provisionals. Applicant attempts to show support in the ‘960 Provisional on page 4. However, there is no specific teaching of this limitation.
Moreover, the Examiner has inspected the remaining U.S. Provisional Application No. 62/710,295, 62/595,028, 62/591,11 and they also fail to cure the new matter deficiencies discussed above with respect to claims 1-33 as amended.
The, the present reissue application is entitled to the benefit of domestic priority on as of its filing date of May 1, 2018. Applicant is asked to provide clearer support for the amended claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 11-13, 21-23 and 26-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by OPPO: "Remaining Details of NR PBCH Contents", 3GPP TSG RAN WG1 Meeting #91, R1-1720790, 3GPP, Reno, USA, 2017.11.18, 5 pages, 20171127-20171201, 6 Pages, Section 2.3 (as disclosed by the Patent Owner) (hereinafter the "3GPP WG1 Meeting #91"). The 3GPP WG1 Meeting #91 is available as prior art because the Wilson patent, for which reissue is sought, is only entitled to the benefit of domestic priority as of the date it was filed, which is May 1, 2018, as discussed in the priority section above.
Regarding independent claim 1,
A method of wireless communication performed by a user equipment (UE) comprising:
The 3GPP WG1 Meeting #91 teaches a method of wireless communication performed by a UE. Fig. 1.
receiving a first synchronization signal (SS) having an indicator that the SS is not associated with a common search space (CSS) for a downlink control channel used for a physical downlink shared channel (PDSCH) to deliver remaining minimum system information (RMSI), where the first SS includes information identifying a location of a second SS that is associated with the CSS; and
The 3GPP WG1 Meeting #91 teaches that there may be a case where a SS block is received with no RMSI information. P.3. In this case, information bits indicate other SS block (SSB) information, which is associated with RMSI. Pp. 3, 4. The association between the SS block and an RMSI is via a frequency offset. Pp. 2, 3.
determining the location of the second SS based at least in part on the indicator.
The 3GPP WG1 Meeting #91 teachings above allow reduces RMSI overhead, such that there is no longer a one-to-one correspondence between the SS and the RMSI (i.e., the frequency offset of a second SSB can be determined based on the first offset above). P. 2.
Independent claim 11 differs substantively from claim 1 above in that claim 11 recites user equipment (UE) for performing the functions of claim 1. However, the 3GPP UE disclosed by the 3GPP WGP Meeting #91 includes the recited "memory" and "processor" to fetch and execute 3GPP protocol software stored in the memory. See the claim 1 rejection above for further details.
Independent claim 21 differs substantively from claims 1 and 11 above in that claim 21 recites a non-transitory computer readable medium, which reads on the 3GPP protocol software instructions stored in the memory of the UE processor, as discussed in the claim 11 rejection.
Independent claim 26, although reciting means plus function, when interpreted does not differ in scope from claim 11 above because the specification fails to disclose any corresponding structure for the means (see the 112 rejections above). Thus, see the claim 11 rejection for further details.
Regarding claims 2, 12, 22 and 27, see the claim 1 rejection above regarding obtaining a second SS block (SSB) based on frequency offset location.
Regarding claims 3, 13, 23 and 28, the control bits indicate no RMSI SORESET as discussed in the claim 1 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E. ENGLAND whose telephone number is (571)272-3912. The examiner can normally be reached M-F 8:00-5:00.
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DAVID E. ENGLAND
Primary Examiner
Art Unit 3992
/DAVID E ENGLAND/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights