Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Reissue Applications
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. RE47,338 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application.
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). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
In response to the previous office action, Applicant has amended claims 36, 39, 40, 43, 44, 47, 48, and 51 and cancelled claims 38, 42, 46, and 50. Claims 36, 39, 40, 43, 44, 47, 48, and 51 have been examined.
Priority
The instant application has been filed as a continuation of U.S. Patent Application No. 16/669,339, filed 30 November 2019, which is a non-broadening reissue of U.S. Patent No. RE47,338 (hereinafter the ‘338 reissue), granted on 2 April 2019. The instant application has also been filed as a broadening reissue of the ‘338 reissue.
The ‘338 reissue, which was filed as Application No. 14/832,839, was granted on 2 April 2019 and was filed as a broadening continuation of U.S. Patent Application No. 14/276,750, now U.S. Patent No. RE46,161 (hereinafter the ‘161 reissue), was which filed as a broadening reissue of U.S. Patent No. 8,369,885 (hereinafter the ‘885 patent), issued on 5 February 2013. The ‘885 patent was filed as U.S. Application No. 12/753,364 on 2 April 2010, claiming priority to U.S. Provisional Patent Application No. 61/212,659, filed 14 April 2009.
The ’338 reissue, from which the instant application is for reissue, contains claims 12-35. Although it appears that Applicant has never intended to prosecute those claims here, there is no version of the claims in the file wrapper in which those claims were actually cancelled. Clarification is required. For purposes of this office action, it is being presumed that claims 12-35 are cancelled.
Declaration
The reissue declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The declaration does not explicitly point to any claim by number in the ‘338 reissue. It is insufficient to simply point to “each independent claim.” Although the instant application is a continuing reissue application, it may not use its parent application’s declaration because the instant application seeks to enlarge the scope of the claims of the original patent. See MPEP 1410.01.
Claim Interpretation
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 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 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 pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 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 pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 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 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 pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“control unit” in claims 40 and 48.
“communication unit” in claims 40 and 48.
In each case, the term contains a generic placeholder (“unit”) modified by functional language (“control,” “communication”) with the recitation of structure, material, or acts performing the function.
An analysis of the specification of the ‘338 reissue shows support for the means-plus-functions as follows:
“control unit” –
Referring to FIG. 18, in step 1801, the MS [mobile station] determines the multiplexing that is used for DRS signaling. That is, the MS determines if either TDM or FDM, CDM, or a hybrid of CDM with TDM or FDM is used. If it is determined in step 1801 that either TDM or FDM is used for DRS signaling, the MS proceeds to step 1803 and determines if N_DRS is known. That is, the MS determines if the field N_DRS is provided in signaling received from the BS. If the MS determines in step 1803 that the field N_DRS is known, then the MS proceeds to step 1805 and sets the power ratio γ[dB]=−10 log.sub.10(N_DRS). On the other hand, if the MS determines in step 1803 that the value of N_DRS is not known, then the MS proceeds to step 1807 and determines if M is known. That is, the MS determines if a value of M is provided from the BS in the DCI signaling or otherwise. If it is determined in step 1807 that the value of M is known, then the MS proceeds to step 1809 and sets the power ratio γ[dB]=−10 log.sub.10(M). Alternatively, if it is determined in step 1807 that the value of M is not known by the MS, the MS proceeds to step 1811 and sets the power ratio γ[dB]=0 dB. In an alternative exemplary implementation, the BS may set the power ratio of γ[dB]=0 dB despite that the values of N_DRS and M are known. In that case, the BS would provide information regarding the power ratio γ[dB]=0 dB to the MS.
If it is determined in step 1801 that DRS signaling is made using pure CDM, that is, all DRS are CDMed together in the same set of REs, then the MS proceeds to step 1811 and sets the power ratio γ[dB]=0 dB.
Lastly, if it is determined in step 1801 that DRS signaling is made using a hybrid of CDM and either FDM or TDM, for example as illustrated in FIG. 15, the MS proceeds to step 1813 and determines if N_DRS is known. That is, the MS determines if the field N_DRS is provided in signaling received from the BS. If it is determined in step 1813 that the value of N_DRS is known, the MS sets the power ratio γ[dB]=−10 log.sub.10(N_DRS)+10 log.sub.10(N_SF), wherein N_SF is the Walsh code spreading length. On the other hand, if it is determined in step 1813 that the value of N_DRS is not known, the MS proceeds to step 1817 and determines if the value of N_SET is known. If the value of N_SET is known to the MS, the MS proceeds to step 1809 and sets the power ratio γ[dB]=−10 log.sub.10(N_SET), wherein N_SET is number of CDMed set as discussed above. On the other hand, if the value of N_SET is not known, the MS proceeds to step 1811 and sets the power ratio γ[dB]=0 dB. In an alternative exemplary implementation, the BS may set the power ratio of γ[dB]=0 dB despite that the values of N_DRS and N_SET are known. In that case, the BS would provide information regarding the power ratio γ[dB]=0 dB to the MS. In yet another exemplary implementation as illustrated below, for a transmission with odd rank, a combination of two equations can be used to determine the power ratio γ[dB].
See figure 18 and column 16, line 42 to column 17, line 47. This is being treated as a computer-implemented mans-plus-function limitation.
“communications unit” –
One-, two-, and four-antenna systems, disclosed throughout the specification.
Because these claim limitations are being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The previous rejection under 35 U.S.C. 112, first paragraph is withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 251
The following is a quotation of the appropriate subsections of 35 U.S.C. 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 36, 39, 40, 43, 44, 47, 48, and 51 are rejected under 35 U.S.C. 251 as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claims 36, 39, 40, 43, 44, 47, 48, and 51 are also rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
All of the independent claims of the instant application are broader in scope than any of the claims of the original ‘885 patent, because they do not recite, for example, “if the type of multiplexing is determined to be one of Time Division Multiplexing (TDM) and Frequency Division Multiplexing (FDM), determining if the number of DRSs transmitted by the BS is known; if the number of transmitted DRSs is known, setting the Physical Downlink Shared Channel (PDSCH) data to DRS power ratio to correspond to the number of transmitted DRSs; if the number of transmitted DRSs is not known, determining if the maximum number of DRSs that may be transmitted is known,” which is in all of the claims of the ‘885 patent. It is noted that the respective independent claims include further limitations that are likewise not recited by the claims of the instant application.
All of the independent claims of the instant application are also broader in scope than any of the claims of the ‘338 reissue, because they are not directed to methods that recite, for example, determining “a ratio of physical downlink shared channel (PDSCH) energy per resource element (EPRE) to mobile specific reference signal EPRE based on a number of layers,” which is in all of the claims of the ‘338 reissue.
Because the instant application is broadening in scope over the ‘338 reissue (as well as every preceding patent in its family), the two-year rule under 35 U.S.C. 251(d) must be considered. Since this application is not a continuation or a divisional of any copending broadening reissue application under 35 U.S.C. 120, it does not inherit any satisfaction of the two-year statutory requirement from its predecessors. The date for the two-year rule to be applied in a broadening reissue of a reissued patent is to the original patent from which all were reissued, the ‘885 patent, which is 5 February 2013. Since the instant application was filed well over two years past the issuance of the ‘885 patent, the claims are rejected.
Response to Arguments
Applicant's arguments filed 7 August 2026 have been fully considered but they are not persuasive.
A claim is considered to be broadening under 35 U.S.C. 251 if is greater in scope than each previous claim of the original patent in any respect, even if the claim is narrowing in other respects. In the present case, the claims as amended continue to be broadening for the reasons stated above.
Regarding the broadening vis-à-vis the ‘338 reissue, there is a paucity of precedents regarding situations in which a reissue of a reissue is broadening over an original patent, but narrowing with respect to the parent reissue. The discussion of that topic herein is meant to establish that such a situation is not applicable with respect to the instant application.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 MATTHEW E HENEGHAN whose telephone number is (571)272-3834. The examiner can normally be reached M-F 8-5.
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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.
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/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
Conferees:
/Ovidio Escalante/
Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
