37 C.F.R. § 1.198 Reopening after a final decision of the Patent Trial and Appeal Board
When a decision by the Patent Trial and Appeal Board (“the Board” hereafter) on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
The examiner has specific knowledge of the existence of particular references that indicate non- patentability of the appealed claims. Therefore, prosecution is reopened, and a new art rejection on the merits is presented below. See MPEP § 1214.04
A Technology Center Director has authorized re-opening prosecution under 37 C.F.R. § 1.198 for the purpose of entering the new rejection.
/Colleen Fauz/Director, Art Unit 2400
Status of Claims
Claims 1 and 3-8 remain unpatentable as rejected in final office action mailed September 19, 2023 and affirmed by the Board on July 25, 2025, and although the rejections of claims 9-11, 14 and 16 were reversed by the Board, these claims now stand unpatentable as rejected below. Claims 2, 12-13, and 15 were canceled.
Claim Rejections - 35 USC § 112
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 9 - 10, and 11 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.
The specification does not provide adequate written description to support the limitation reciting "ascertain a probability (W) of at least one transmission error during a future data transmission …" (hereafter the “ascertain” limitation), at “computing device” claim 9, “system” claim 10, and “non-transitory computer readable storage medium (SM)” claim 11.
The specification does not provide adequate written description to support the “ascertain” limitation, nor does the specification does not indicate that the inventor had possession of the details of how a probability (w) of at least one transmission error during a future data transmission is ascertained, as claimed. Although the specification discloses that ascertaining the probability of at least one transmission error in a future data transmission (step 100 of Fig. 2A) comprises at least one of the following elements: a) evaluating contextual information that indicates, e.g. a temporary degradation of the future data transmission, b) evaluating current knowledge regarding existing communication characteristics associated with data transmission via the transmission medium (¶0005, and similar description at ¶0039). Such evaluation fails to describe the necessary steps to particularly, ascertain a probability (W) of at least one transmission error during a future data transmission. The specification further discloses knowledge of a position of an object which is currently moving in the range of the transmission medium, e.g. which moves through a communication line (e.g. between transmitter and receiver), at least in some regions, by means of the transmission medium as another example of the information that is evaluated associated with the “ascertain” limitation (at ¶0006, and similar description at ¶0040). Similarly, such evaluation fails to describe the necessary steps to particularly, ascertain a probability (W) of at least one transmission error during a future data transmission, as claimed. The specification further discloses that in other exemplary embodiments, the evaluation of current knowledge regarding existing communication characteristics associated with data transmissions via the transmission medium may comprise the following, for example: in the case of earlier packet errors in a first communication direction (e.g. the uplink (UL) direction), e.g. in a preceding communication cycle, where it can be concluded, for example on account of the reciprocity in time-division duplex (TDD)-based systems, that a probability of transmission errors in a second communication direction opposite to the first communication direction (e.g. the downlink (DL) direction) is also increased (¶0009, and similar description at ¶0043). In this exemplary embodiment, the inference that a probability of transmission errors in a second communication is also increased fails to describe the necessary steps to particularly, ascertain a probability (W) of at least one transmission error during a future data transmission. The specification further discloses where in the event of an error an increased/lower probability of error can be assumed (¶0067-0069), yet that assumption fails to describe the necessary steps to particularly, ascertain a probability (W) of at least one transmission error during a future data transmission, as claimed. Additionally, even if it is assumed that a computer or CPU is inherent for implementing any of the steps of fig. 2A, this figure does not provide a sufficient algorithm corresponding to the "ascertain" the claimed limitation. It is noted that the written description requirement under 35 U.S.C. § 112(a) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed functions. For written description, the specification as filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps or procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. The specification does not indicate that the inventors had possession of the details of particular software or instructions that would implement the "ascertain" limitation. One of ordinary skill in the art would recognize that ascertaining a probability (W) of at least one transmission error during a future data transmission may be implemented in different ways to achieve a variety of results. In this case, the specification is silent as to how the inventor has chosen to perform this function.
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-AlA 35 U.S.C. § 102 and § 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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 9, 10, 11 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by Key et al. (US 7,843,828 B2, hereinafter “Key”).
With respect to claims 9 and 10, Key teaches a computing device and/or a system comprising a computing device (col. 9, lines 61-64 define the method of Figure 10 as being performed by a sending device in the form of a personal computer, server etc.) for transmitting data (D), wherein the computing device is configured to:
ascertain a probability of at least one transmission error during a future data transmission (steps 1000, 1002, 1004, and 1006 in Figure 10, col. 9, line 65-col. 10, line 23, the device determines the how likely congestion occurs. Network congestion includes packet loss which is a “transmission error”, see col. 10, lines 1- 6);
determine, based on the probability, whether the future data transmission should be at least temporarily suspended (step 1006 then ascertains whether, in view of the estimated network congestion (and, where appropriate, the confidence in that estimate), a packet is likely to encounter congestion); and
if the outcome of the determination is that the future data transmission should be at least temporarily suspended, suspend the future data transmission for a specifiable time period (step 1010, col. 10, lines 23- 26, “The packet can be delayed for any suitable time period”), and/or if the outcome of the determination is that the future data transmission should not be suspended, execute the future data transmission (step 1008, “If the estimation provided by step 1002 indicates that the packet is not likely to encounter network congestion, then step 1008 sends or transmits the packet”, col 10, lines 21-24).
Regarding claim 11, Key teaches a non-transitory computer-readable storage medium comprising commands which when executed by a computer, cause the computer to (see col.5, lines 49-60):
ascertain a probability of at least one transmission error during a future data transmission (steps 1000, 1002, 1004, and 1006 in Figure 10, col. 9, line 65-col. 10, line 23, the device determines the how likely congestion occurs. Network congestion includes packet loss which is a “transmission error”, see col. 10, lines 1- 6);
determine, based on the probability, whether the future data transmission should be at least temporarily suspended (step 1006 then ascertains whether, in view of the estimated network congestion (and, where appropriate, the confidence in that estimate), a packet is likely to encounter congestion); and
if the outcome of the determination is that the future data transmission should be at least temporarily suspended, suspend the future data transmission for a specifiable time period (step 1010, col. 10, lines 23- 26, “The packet can be delayed for any suitable time period”), and/or if the outcome of the determination is that the future data transmission should not be suspended, execute the future data transmission (step 1008, “If the estimation provided by step 1002 indicates that the packet is not likely to encounter network congestion, then step 1008 sends or transmits the packet”, col 10, lines 21-24).
Claim Rejections – 35 U.S.C. § 103
Claims 14 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Key in view of WO 2014/000650 by Jheng et al. (Jheng hereafter).
As to claims 14 and 16, Key teaches the subject matter of claims 9 and 10, respectively, discussed above. However, Key does not explicitly teach that the temporary suspension includes: releasing communication resources allocated for the future data transmission, using the released communication resources for another data transmission.
In a similar field of endeavor, Jheng teaches that a temporary suspension at a transmitting device can include:
releasing communication resources allocated for the future data transmission (Upon receiving the SCRI with the "UE requested PS data suspension" cause, the network decides whether; to release the RRC connection based on the suspension reason, suspension period, and/or other information, pg. 6 Lines 21-31) and using the released communication resources for another data transmission (method proposes that UE sends an indication to network when a suspension event is received to trigger the UE to switch the RF resources away from a first network to a second network during the suspension, pg. 3 lines 1-14).
It would have been obvious to one of ordinary skill in the network communication art, at the time of the applicant’s filing, to modify the teachings of Key regarding temporarily suspending a transmission with the teachings of Jheng (regarding releasing a communication resource for another transmission). The rationale is: Jheng shows how transmission resources of the sending device of Key (col. 8, lines 15-26 of Key covers wireless mediums) could be used on a differing wireless network during a suspension from transmission.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIHAD KAMAL BOUSTANY whose telephone number is (571)270-0251. The examiner can normally be reached M-F: 8:30 AM - 5:00 PM.
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/J.K.B/Examiner, Art Unit 2454
/GLENTON B BURGESS/Supervisory Patent Examiner, Art Unit 2454
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