DETAILED ACTION
Response to Arguments
This is a response to Applicant’s remarks and amendment filed 01/05/2026. Claims 1-30 are pending.
With respect to the 112(a) rejection of claims 1-130, applicant argues that it is not necessary to "enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect." And cites CFM, Inc. v. Yieldup Int'l Corp. It is noted that the 112(a) rejection of claim 1-30 does not require the disclosure to "enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect." The 112(a) rejection follows the text of 35 USC 112(a) to simply require requires that 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. In other words, the specification has to show how to make and use the invention. In this instant application, the specification does not 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. It is further noted that in the case of CFM, Inc. v. Yieldup Int'l Corp, the specification provides a clear teaching to enable one skill in the art to make and use the cleaning process for semiconductor wafers. On the other hand, this instant application fails to provide a teaching of how to determine the scaling factor and how to use the scaling factor to obtain an estimate of the CLI measurement as claimed.
Next, applicant further argues that the test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue and cites In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). In Angstadt, the claimed invention involves a method of catalytically oxidizing secondary or tertiary alkylaromatic hydrocarbons to form a reaction mixture comprising the corresponding hydroperoxides. The method employs as the catalyst an organometallic complex formed between hexaalkylphosphoramides and metal salts, the complex having the formula MX(n)(HAPA)(m), wherein HAPA is a hexaalkylphosphoramide, MX is a metal salt, m is an integer of from 1 to 8, and n is an integer of from 1 to 4. The claims call for the preparation of a reaction mixture comprising the hydroperoxides, using the metal salt complexes as the catalyst. However, the specification states that not all of the complexes will produce hydroperoxides and neither discloses which of the complexes will not work nor gives any information as to how the operative catalysts might be determined, without undue experimentation. The rejection states that the specification leaves too much to conjecture, speculation and experimentation and is insufficient in law to support the present claims containing the disputed language. However, it is clear that the rationale for 112(a) rejection in this case is totally different than the one cited in Angstadt. The rationale for 112(a) rejection here is based on a simple and clear requirement from 35 USC 112(a) that the specification provides a teaching of how to determine the scaling factor and how to use what is being claimed, i.e. how to determine the scaling factor and how to use the scaling factor to obtain an estimate of the CLI measurement.
Next, Applicant also argues that In re Wands, described at least eight factors-among others-for determining whether experimentation would be undue and that it is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner's analysis must consider all the evidence related to each of these factors, and any conclusion of non-enablement must be based on the evidence as a whole.
In the case of In re Wands, the antibodies needed to perform the immunoassays could be made from readily available starting materials using methods that were well known in the antibody art. The rationale for rejection was based on the presented data in which the production of antibodies was unpredictable and unreliable and that it would require undue experimentation for one skilled in the art to make the antibodies. However, it is quite different in this case wherein the determination of a scaling factor and how to use the scaling factor to obtain an estimate of the CLI measurement is not known in the art.
In this case, the invention, as recited in claim 1, is to obtain an estimate of a cross-link interference (CLI) measurement that is based at least in part on an application of a cross-link interference measurement scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell.
Applicant’s specification fails to provide sufficient teaching of how to determine the scaling factor and how to use the scaling factor to obtain an estimate of the CLI measurement as claimed.
The claim recites an estimate of cross-link interference measurement is based in part on an application of a cross-link interference scaling factor. Neither the claim nor the specification provides sufficient teaching of how to estimate the cross-link interference measurement based on applying a scaling factor, such that a person skilled in the art can make and use the invention. Furthermore, neither the claim nor the specification provides sufficient teaching of how to determine the scaling factor based on the difference between communication characteristics between the first cell and second cell, that can be then used as a scaling factor to estimate a CLI measurement, such that a person skilled in the art can make and use the invention.
The applicant fails to teach how a scaling factor is applied to a CLI measurement that results in an estimate CLI measurement, and how the scaling factor is constructed such that it can be applied as a scaling factor that results in an estimate CLI measurement. The applicant’s disclosure is absent of some manner of applying, such as an equation or a sequence of steps, a factor (mathematical or logical or otherwise) fails to provide sufficient support that one skilled in the art must be enabled to make and use the claimed invention (MPEP § 2164).
Applicant cites various paragraphs to indicate that the Specification explains support for “wherein the estimate of the cross-link interference measurement is based at least in part on an application of a cross-link interference measurement scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell”.
Examiner respectfully disagrees.
Paragraph [26] states that the CLI measurement may be determine based on a “scaling factor that is applied” to measurements in a report. There is no further clarification on how the scaling factor is applied. This passage does not provide a sufficient support that would enable one skilled in the art to make and use the invention.
Paragraph [48] states that a scaling factor may be applied to the PCell measurement to determine the SCell CLI. There is no further clarification on how the scaling factor is applied to the measurement. This passage does not provide a sufficient support that would enable one skilled in the art to make and use the invention.
Paragraph [89] states that the CLI measurement “may be scaled” based on a frequency location of a first serving cell and one other cell. There is no further clarification on how the CLI measurement is scaled. This passage does not provide a sufficient support that would enable one skilled in the art to make and use the invention.
Paragraph [107] states in some cases, a scaling factor may be applied to measurements of the reported CLI 545 to determine the CLI estimate 550. For example, the scaling factor may be based on a frequency location of the PCell 530 and SCell 535 (e.g., measurements are scaled according to a frequency difference based on different signal fading of different relative frequencies). This passage does not provide a sufficient support that would enable one skilled in the art to determine a scaling factor and how to apply it to estimate the CLI measurement as claimed. How one can determine the scaling factor based on a frequency location of the PCell 530 and SCell 535? How is the scaling factor work according to a frequency difference based on different signal fading of different relative frequencies?
Paragraph [111] states that the coupling loss may be estimated for FR1 based on the reported CLI measurements 620 in FR1 and that the coupling loss for FR2 may then be estimated based on the estimated FR1 coupling loss, by adjusting the terms in link-budget equation based on modeled or expected loss differences based on the frequencies of the PCell 610 and SCell 615. Based on the estimated FR2 coupling loss, the CLI estimate 625for FR2 may be determined based on the reported CLI measurements 620 in FR1 and the differences in coupling loss between FR1 and FR2. However, the specification does not explain how by adjustment of the terms in link-budget equation based on modeled or expected loss differences based on the frequencies of the PCell 610 and SCell 615 works in the estimate of coupling loss fir FR2.
Paragraph [146] states that the measurement of the reference signal is scaled. There is no further clarification on how the measurement is scaled. This passage does not provide a sufficient support that would enable one skilled in the art to make and use the invention.
Paragraph [179] states that the CLI measurement for the second cell is determined based on a scaling factor that is applied to the measurement. There is no further clarification on how the scaling factor is applied. This passage does not provide a sufficient support that would enable one skilled in the art to make and use the invention.
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 1-30 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 1-18, 35 USC 112(a) clearly requires that 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. In other words, the specification has to show how to make and use the invention.
In this case, the invention, as recited in claim 1, is to obtain an estimate of a cross-link interference (CLI) measurement that is based at least in part on applying a cross-link interference measurement scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell. The specification fails to provide sufficient teaching of how to determine the scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell and how to use the scaling factor to obtain an estimate of the CLI measurement as claimed.
Particularly, claim 1 recites wherein the estimate of the cross-link interference measurement is based at least in part on an application of a cross-link interference measurement scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell. However, the disclosure fails to provide sufficient teaching of how to determine the scaling factor that is based at least in part on a difference between communication characteristics between the first cell and the second cell how to use the scaling factor to obtain an estimate of the CLI measurement as claimed.
While para [0089, 0048, 0107, 111, 0146] teaches that the CLI measurement may be scaled based on the frequency location used by the first cell and other cells, and on the bandwidth difference, applicant fail to specifically teach how determine the scaling factor based on the frequency location and/or bandwidth difference. Thus, the disclosure fails to provide a sufficient support that would enable one skilled in the art to make and use the invention.
Similarly Claims 19-30 are also rejected for the same rationale as claim 1.
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 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.
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HUY D. VU
Supervisory Patent Examiner
Art Unit 2461
/HUY D VU/Supervisory Patent Examiner, Art Unit 2461