DETAILED ACTION
This action is responsive to the request for continued examination and amendment of March 4, 2026.
The instant 17/744,655 application is an application for reissue of U.S. Patent 9,025,520 to Kim et al. (“the ‘520 Patent”), which issued May 5, 2015 from U.S. Pat. App. Ser. No. 13/265,917, filed April 23, 2010 based on PCT/KR2010/002576 filed April 23, 2010.
Claims 11-25 are pending and are rejected below.
This action is non-final.
Reissue
The Examiner has determined that there are no other continuations, reissues, reexaminations, inter partes reviews, or other AIA trials or appeals currently pending with respect to the ‘520 Patent. A litigation search has determined there to be no pending litigation as to the ‘520 Patent.
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. 9,025,520 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 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.
Because the instant ‘520 Patent is deemed to contain claims having an effective date prior to March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions do not apply, rather the pre-AIA provisions do. See 35 U.S.C. § 100 (note) and 35 U.S.C. § 100 (pre-AIA ). In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of any statutory basis for a 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.
Terminal Disclaimer
The Terminal Disclaimer filed March 4, 2026 has been entered and obviates the previous rejection under Double Patenting, which is hereby withdrawn by the Examiner.
Reissue Declaration
The Declaration of May 14, 2022 is objected to for the following:
The Declaration filed with this application fails to identify a broadened claim. Note that the Declaration speaks of claim 1, however claim 1 stands canceled in this application.
A new reissue Declaration PTO/AIA /05 is required in response to this Office action.
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 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.
The Examiner notes that the amendment to claims removes the apparatus claims from the ambit of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph in comparison to the final office action.
Claim Rejections – 35 USC § 251
Claims 11-25 are rejected 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.
Allowable Subject Matter
Claims 11-25 would be allowable if the rejection above under §251 were overcome.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 11, 16, and 21, Lee et al. (Pub. No.: US 2010/0048124) and Fischer ( Pub. No.: US 2008/0207201) and Gao (Pub. No.: US 2010/0128646) are exemplary references now of record. Lee discloses a method and circuitry of receiving, by a terminal, a Multimedia Broadcast Multicast Service (MBMS) (See Lee Par [0002] [0009] [0042]), receiving, from a base station, a first message, the first message comprising location information of radio resource for an MBMS Control Channel (MCCH) and modulation and coding information applied to the MCCH (See Lee "to user equipment" Par [0042], thus received by the user equipment UE. And See Lee Par [0042] Par [0043] [0045]).
Fischer teaches configuration information for MBMS channels, such at the MCCH (Fischer, Par [00422]), and Fischer teaches a step and structure of receiving Media Access Control (MAC) header comprising the identification information of the MCCH (See Fischer, Par [0051] discussing the MCCH is a logical channel, and Par [0057] discussing the MAC Header used for logical channel type identification.
Accordingly, Lee as modified by Fischer disclose receiving, from the base station, the MCCH based on the location information and the modulation and coding information, wherein the MCCH comprises control information associated with an MBMS Traffic Channel (MTCH) (See Lee Par [0036] [0045] [0046] [0047] [0048] the MCCH is transmitted on the MCH received by the mobile. See Fischer Par [0053], discussing the MCCH indicates the FACH on which the MTCH is transmitted. And See Fischer, Par [0045] [0049] [0051] [0052] [0056] [0057] the UE receives a MAC Control Header identifying the logical channel and receives logical channels such as the MCCH mapped to a specific forward access channel 'FACH.').
However, the Examiner finds that Lee and Fischer, and other references within the Examiners search for which Lee and Fischer are representative, do not teach wherein the MCCH and the MTCH are transmitted within a same sub-frame," as in independent claims 11, 16, and 21.
Accordingly, the Examiner finds that claims 11, 16, and 21 would be allowable over the prior are of record if the § 251 rejection above is overcome. Regarding claims 12-15, 17-20, and 22-25, these claims dependent from claims 11, 16, and 21, respectively, and would be allowable based upon the same reasoning above.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Patent Owner provides arguments with his amendment (“Remarks”).
As to previous rejections under §§112b and 251 (recapture), as well as the rejection under Double Patenting, such are all withdrawn in light of the amendment and terminal disclaimer filed. As to the rejection under §251 (declaration), the rejection is not held in abeyance as, unlike in a regular nonprovisional application filed under §111, a reissue application filed under §251 must contain a proper oath or declaration before the application can proceed to allowance. MPEP §§ 1410, 1414.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Charles Craver whose telephone number is (571) 272-7849. The Examiner can normally be reached on Monday - Friday 8:30-5:30 PT Pacific Time.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed,
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
Conferees:
/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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