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 .
Background
The present Reissue application U.S. Application No. 17/302,052, filed April 22, 2021, addresses original U.S. Application No. 15/968,569 (the “’569 Application”) issuing as U.S. Patent No. 10,270,573 B2 to John Wilson et al. (hereinafter the "Wilson" patent) on April 23, 2019. Based upon review of the ‘569 Application, the application was filed on May 1, 2018, claiming the entitlement of domestic priority to U.S. Provisional Application No. 62/710,295, filed on Feb. 16 ,2018, No. 62/595,028, filed Dec. 5, 2017, No. 62/591,116 filed Nov. 27, 2017 and No. 62/506,960 filed May 16, 2017.
The Wilson patent issued with original claims 1-31.
A preliminary amendment was filed concurrently with the present reissue application. The Amendment amended all independent claims and added new claims 32-69.
Thus, claims 1-69 are pending.
A non-final Office action was mailed April 5, 2023 rejecting all claims.
In response, an personal interview was held on June 8, 2023. See both the Patent Owner and Examiner interview summaries for further details.
The Patent Owner also filed a response on July 5, 2023 requesting reconsideration of the prior rejections and seeking to amend the specification (hereinafter the “Response” and “Amendment to the Specification”).
The reasons discussed infra, the Patent Owner arguments were carefully considered, but not deemed fully persuasive. Thus, the rejection from the prior non-final Office action are repeated below, except where any new objection or new grounds of rejection is due the Patent Owner’s amendment in the Response.
Informal Amendment
The Amendment, filed April 22, 2021, does not comply with 37 CFR 1.173. Specifically, amended claims do not comply with 37 CFR 1.173(b)2 & (c).
The Remarks do not show the specific teachings to the specific amended limitations of the claims. Rather, the Patent Owner cites to the specification in a very generalized manner. For example, support for the changes to claims 1, 3, 6, 11, 13, 14, 16, 21, 23, 26 and 28 is cited with a bare referral to “col. 12, ln. 21-31.” Amendment, 17.
Any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(c) (emphasis added):
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
As seen in MPEP 1453 V. D. Amendment of New Claims, the status of a claim shows specific claims limitations amended and specifically maps those new and amended limitations to the sections of the specification that teach the amended claim limitation. The following is an example from MPEP 1453 V. D. Amendment of New Claims:
First Amendment (wherein claim 11 was first presented):
Claim 11 (New). A knife comprising a handle portion and a notched blade portion.
In the Remarks (supplied on a separate page):
Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has added new independent claim 11. Support for this new claim is found in column 4, lines 26-41, column 5, lines 3-18, and column 6, lines 5-15.
Second Amendment (wherein claim 11 is amended):
Claim 11 (New, amended). A fishing knife comprising a bone handle portion and a notched blade portion.
In the Remarks (supplied on a separate page):
Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has amended new independent claim 11 as described below.
Claim 11: Claim 11 is amended to add "fishing" before "knife" and "bone" before "handle". Support for these changes is found in column 4, lines 34-41 and column 6, lines 5-8, respectively.
If the next response does not comply with 37 CFR 1.173, the response will be held “Non-Compliant” and a shortened statutory period for reply to this letter is set to expire ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of the next Office Action.
Claim Rejections - 35 USC § 112 (New Matter)
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-69 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
To satisfy the original patent requirement where a new invention is sought by reissue, "the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention" under the original patent requirement, as discussed in Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d at 1363 (Fed. Cir. 2014). See also Forum US, Inc., v. Flow Valve, LLC (Fed. Cir. 2019). See also MPEP 1412.01.
However, and as discussed above in the informal amendment section, the Amendment contains insufficient statements of written description support. Indeed, the Amendment filed April 22, 2021 appears to contain no specific statements of support (i.e., claim mapping as discussed above) nor does there appear to be written description support of the newly amended subject matter.
The Examiner is not able to determine whether the claims as amended are properly supported, especially in the context of the heightened “clearly and unequivocally” separate invention requirements of Antares.
For example, the set of original claims 1-31 (and new dependent claims 32 and 33) were amended to introduce the limitation “(SS) block that does not include a . . . (RMSI) control resource set (CORESET) configuration” and “the first SS block indicates an offset for obtaining a second SS block that includes the RMSI CORESET configuration.” Illustrative claim 1 (emphasis added).
However, nowhere does the written description indicate receiving a SS block that does not include RMSI-CORESET configuration. In fact, the word CORESET is used only twice in the description and once in Fig. 5, where this presence of the term is merely used indicate where the CORESET configuration, or a bit indicating the RMSI-CORESET, may be found.
Although the Patent Owner has shown in the Response that a SS block can include RMSI CORESET and that a SS block is received that does not include RMSI, the Patent Owner has not shown that Wilson supports receiving a SS block that does not include RMSI CORESET. For example, the plain language of the claims clearly encompass receiving a SS block that includes RMSI data, but not more specifically the RMSI CORESET data. The Patent Owner has not shown this. Moreover, although the Patent Owner has shown not receiving RMSI data, but has not shown not receiving RMSI CORESET data specifically. See the Response to Arguments section below for additional details.
The new set of claims 34-69 recite (emphasis added) “receiving a . . . (SS) that is not paired with a common search space (CSS) for a downlink control channel.” However, the written description fails to disclose a CSS at all, only stating CSS in terms of a U.S. Provisional Patent Application No. 62/506,960 entitled “Techniques and Apparatuses for Common Search Space Determination.” However, this bare citation to a provisional does not serve as a basis for written description support for the newly introduced claims. Moreover, the cited provisional application contains minimal disclosure, mostly an unsupported set of claims that differ materially from the newly introduced claims. For example, the claims (disclosure) in the provisional application fail to recite “receiving a first synchronization signal (SS) that is not paired with a common search space (CSS) for a downlink control channel” as recited in illustrative and newly introduced, independent claim 34.
The Patent Owner cited to said provisional in the arguments set forth in the Response, but those cited section recite transmitting unpaired SS signals on the downlink control channel, not receiving the unpaired SS. Although it may have been obvious to receive and process the transmitted unpaired signal on the downlink control channel, the Patent Owner has not cited to a section of the written description that explicitly discloses this feature. An applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572(Fed. Circ. 1997).
Further highlighting the difference between transmitting an unpaired CSS and receiving an processing an unpaired CSS, the abstract and Fig. 10 of said provisional describes receiving a CSS that “indicates” that the SS is “not associated with a CSS.” A CSS that indicates a lack of association with an SS is distinct from a CSS that is not paired with a CSS. For example, a CSS may be associated with the SS (allowing for many-to-one correspondences), but not specifically “paired” (which indicates a much stronger one-to-one correspondence). Both the said provisional and the instant claims use both the “associated” and “paired” terms raising a presumption that both of these terms were used to mean something different, which is a fairer interpretation than presuming different terms to mean the same thing. Finally, the differences between transmitting versus receiving are found in the instant claims themselves. The claims impose specific processing requirements upon the received unpaired SS signal that do not appear to be described in said provisional that only discloses generically transmitting unpaired SS signals.
the first SS being associated with an indicator that identifies a location of a second SS that is paired with the CSS for the downlink control channel; and determining the location of the second SS based at least in part on the indicator.’
Illustrative, claim 34.
See the Response to Arguments section below for additional details.
Claim Rejections - 35 USC § 251 (New Matter)
Claims 1-69 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent, as explained in the 35 USC 112(a), 1st paragraph rejection above.
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.
Claim Rejections - 35 USC § 251 (Original Patent Requirement)
Claims 34-69 are rejected under 35 U.S.C. 251 as not being directed to the same general invention. The originally filed specification is clearly and wholly directed to receiving a first synchronization signal (SS) block that does not include a remaining minimum system information (RMSI) configuration to provide critical advantages, such as to reduce unnecessary scanning. See, e.g., the title, abstract, 12:45-47, 155:1-2 and the claims.
Thus, the reissue claims must be for the same invention as that disclosed in the original patent, namely virtual guard bands. If a different embodiment is claimed during reissue prosecution, that different embodiment must be disclosed in the specification in an “explicit and unequivocal manner.” MPEP 1412.01.I, citing Antares Pharma Inc. v. Medac Pharma Inc. (Fed. Cir. 2014). Here, the Patent Owner has amended to claims to no longer recite receiving a first synchronization signal (SS) that is not paired with a common search space (CSS) for a downlink control channel. However, this is not for the same RMSI configuration invention disclosed in the original patent. Moreover, common search space (CSS) for a downlink control channel that is not paired with the SS is not disclosed in an “explicit and unequivocal manner” and indeed does not appear to be disclosed at all. See the new matter rejections above.
Reissue claims broadening a limitation (see the Reissue Declaration, filed April 22, 2021) to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical or essential part of the invention do not meet the original patent requirement. In re Float’N’Grill. 2202-1438 (Fed. Cir. 2023).
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.
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 26-31 recite the claim limitation “means for receiving a first synchronization (SS) block that does not include a remaining minimum system information (RMSI) control resource set (CORESET) configuration.” However, 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, as discussed in the new matter rejections above. 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.
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., 38 F.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 1-69 as amended of the present reissue application, as discussed above in the new matter rejections.
Moreover, the Examiner has inspected the remaining U.S. Provisional Application No. 62/710,295, 62/595,028, 62/591,116 and they also fail to cure the new matter deficiencies discussed above with respect to claims 1-69 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.
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 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.
Claims 1-3, 11-13, 21-23 and 26-28 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) block that does not include a remaining minimum system information (RMSI) control resource set (CORESET) configuration, where the first SS block indicates an offset for obtaining a second SS block that includes the RMSI CORESET configuration
The 3GPP WG1 Meeting #91 teaches that there may be a case where a SS block is received with no RMSI CORESET 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 a location of the second SS block based at least in part on the offset.
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-CORESET (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.
Response to Arguments
Written Description Support for a SS Block that Does Not Include RMSI-CORESET Configuration
The Patent Owner asserts that the Wilson patent for which reissue is sought provides written description support for the claim limitation “obtaining a second SS block that includes the RMSI CORESET configuration.” Illustrative claim 1. Specifically, the Patent Owner asserts Wilson teaches that the “remaining minimum system information (RMSI), such as an RMSI control resource set (CORESET configuration.” Response, 25 (citing to Fig. 5 and 12:25-28). The Patent Owner also asserts Wilson teaches that “the UE 120 receives an SS block that does not include RMSI.” Id. (citing Fig. 5 and 12:33, 34, 48-50). From this, the Patent Owner concludes that Wilson teaches receiving a SS block that does not include RMSI-CORESET configuration information. Response, 25, 26.
The Patent Owner’s arguments have been carefully considered, but they are not deemed fully persuasive. The Patent Owner has shown that a SS block can include RMSI CORESET and that a SS block is received that does not include RMSI. However, the Patent Owner has not shown that Wilson supports receiving a SS block that does not include RMSI CORESET. For example, the plain language of the claims clearly encompass receiving a SS block that includes RMSI data, but not more specifically the RMSI CORESET data. The Patent Owner has not shown this. Moreover, although the Patent Owner has shown not receiving RMSI data, but has not shown not receiving RMSI CORESET data specifically.
Written Description Support for Receiving a First . . . SS that is Not Paired with
a . . . CSS for a Downlink Control Channel
The Patent Owner asserts that the Wilson patent for which reissue is sought provides written description support for the claim limitation “receiving a synchronization (SS) that is not paired with a common search space (CSS) for a downlink control channel.” Illustrative claim 34. Specifically, the Patent Owner asserts paragraph 91 of the incorporated U.S. Provisional Application No. 62/506,960
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provides support for this claim limitation:
Response, 26, 27.
However, paragraph 91 above and Fig. 9 of said provisional disclose only transmitting unpaired SS on the downlink control channel, not receiving the unpaired SS. Although it may have been obvious to receive and process the transmitted unpaired signal on the downlink control channel, the Patent Owner has not cited to a section of the written description that explicitly discloses this feature. An applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572(Fed. Circ. 1997).
Further highlighting the difference between transmitting an unpaired CSS and receiving an processing an unpaired CSS, the abstract and Fig. 10 of said provisional describes receiving a CSS that “indicates” that the SS is “not associated with a CSS.” A CSS that indicates a lack of association with an SS is distinct from a CSS that is not paired with a CSS. For example, a CSS may be associated with the SS (allowing for many-to-one correspondences), but not specifically “paired” (which indicates a much stronger one-to-one correspondence). Both said provisional and the instant claims use both the “associated” and “paired” terms raising a presumption that both of these terms were used to mean something different, which is a fairer interpretation than presuming different terms to mean the same thing.
Finally, the differences between transmitting versus receiving are found in the instant claims themselves. The claims impose further processing requirements upon the received unpaired SS signal that do not appear to be described in said provisional that only discloses transmitting unpaired SS signals.
the first SS being associated with an indicator that identifies a location of a second SS that is paired with the CSS for the downlink control channel; and determining the location of the second SS based at least in part on the indicator.’
Illustrative, claim 34.
Original Patent Requirement
The Patent Owner’s arguments regarding the original patent requirement are based on the arguments addressed above and thus deemed not fully persuasive for the reasons above. Moreover, as discussed in the 35 USC 251 rejection, the newly claimed embodiment in a reissue application must be disclosed in an “explicit and unequivocal manner.” The Patent Owner’s attempts here to piece together sections from a provisional application by amendment into the originally filed specification goes against the newly claimed embodiment being disclosed in explicit and unequivocal manner. Moreover, as previously discussed, the originally filed specification is clearly and wholly directed to receiving a first synchronization signal (SS) block that does not include a remaining minimum system information (RMSI) configuration to provide critical advantages, such as to reduce unnecessary scanning. See, e.g., the title, abstract, 12:45-47, 155:1-2 and the claims. Reissue claims broadening a limitation (see the Reissue Declaration, filed April 22, 2021) to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical or essential part of the invention do not meet the original patent requirement. In re Float’N’Grill. 2202-1438 (Fed. Cir. 2023).
35 USC 112(b) Corresponding Structure and Priority
The Patent Owner’s arguments regarding corresponding structure in the originally filed specification and priority are based on the arguments addressed above and thus deemed not fully persuasive for the reasons above.
Rejection Based on 3GPP WG1 Meeting #91 (aka OPPO)
The Patent Owner asserts “OPPO’s frequency offset is not for obtaining a second SS block that included the RMSI CORESET configuration as claimed.” Response, 36. Specifically, the Patent Owner asserts that “[w]hile OPPO generically refers to the RMSI CORESET information bits in PBCH being used to indicate other SS block information associated with RMSI (the alleged ‘second SS block that includes the RMSI CORESET configuration’), OPPO does not suggest that an offset is used to make such an indication.” Response, 37.
The Examiner has carefully considered the Patent Owner’s arguments, but the arguments are not deemed fully persuasive. As noted by the Patent Owner, OPPO teaches that the RMSI CORSET information bits are used to indicate other SS block information associated with RMSI CORESET. OPPO teaches that the CORESET information includes a frequency offset to identify the CORSET information in the related SS bock. OPPO, section 2, p. 2. OPPO teaches that if the frequency range according to the offset is too large, the SS block will “not be associated with a RMSI.” Id. OPPO then offers a solution in this case, “[f]or a SS block without associated RMSI, the RMSI CORESET information bits in PBCH can be used to indicate other SS block information, which is associated with RMSI” allowing “many-to-one association between multiple SS blocks and one RMSI.” Id. at 3. A fair reading of this disclosure is that the associating of RMSI information is performed in the second case using the protocol-based offset mechanism as explicitly described in the first case rather than using some undisclosed, non-protocol based mechanisim.
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 Roland Foster whose telephone number is (571) 272-7538. The examiner can normally be reached on Mon-Fri, 9:30 AM – 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on 571-270-1367. 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.
Signed:
/ROLAND G FOSTER/ Primary Examiner, Art Unit 3992 (571) 272-7538
Conferee(s):
/DAVID E ENGLAND/ Primary Examiner, Art Unit 3992
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