DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/9/26 has been entered.
Response to Arguments
Applicant’s arguments, see section titled “Patentability of the Claims”, filed 12/5/25, with respect to claims 51, 66, and 69-70 have been fully considered and are persuasive. The rejections under 35 U.S.C. § 103 of claims 51, 66, and 69-70 has been withdrawn.
Claim Objections
Claim(s) 56 is/are objected to because of the following informalities: it is suggested to change “further comprises” in line 2 to “comprises” since neither claim 51 nor 55 has any sort of the step of receiving configuration information comprising. Appropriate correction is required.
Claim(s) 59 is/are objected to because of the following informalities: it is suggested to change “comprises” in line 2 to “further comprises” since claim 51 has “determining whether to configure…information comprises”. Appropriate correction is required.
Claim(s) 60 is/are objected to because of the following informalities: it is suggested to change “comprises” in line 9 to “further comprises” since claim 51 has “determining whether to configure…information comprises”. Appropriate correction is required.
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.
Claim(s) 58 is/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.
Regarding claim 58, Applicant has amended this claim to now recite “the step of determining…is performed according to a rule”. Applicant does not provide support for this amendment within the specification, nor has the Examiner found support for this amendment within the specification. The closest the Examiner could find that would support the above amendment is in ¶ 206 and ¶ 253-256 of the published specification. However, these paragraphs do not provide support that performing the determination is according to a rule. What these paragraphs appear to at best show is that the determination comprises the multiple “if” statements of claim 58.
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.
Claim(s) 55-58 and 60 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 55, it is unclear what “the individual configuration information” in lines 4-5 and 7 are referring to since there are “individual configuration information” in lines 16 and 21 of claim 51. Furthermore, it is unclear what “the value for the first field for the first SCell obtained from the individual configuration information” in lines 6-7 is referring to since there are “a value for the first field for the first SCell obtained from individual configuration information” in lines 15-16 of claim 51 and lines 20-21 of claim 51 and “a value for the first field for the first SCell obtained from the individual configuration information” lines 4-5 of claim 55.
Regarding claim 56, it is unclear what “the individual configuration information” in lines 2-4 are referring to since there are “individual configuration information” in lines 16 and 21 of claim 51.
Regarding claim 57, it is unclear what “the individual configuration information” in lines 3-4 are referring to since there are “individual configuration information” in lines 16 and 21 of claim 51 and lines 2-3 of claim 57. Furthermore, it is unclear what “the group configuration information” in line 5 is referring to since there are “group configuration information” in line 12 of claim 51 and line 3 of claim 57. Claim 58 fail to resolve the deficiency of claim 57 and is thus rejected under similar rationale.
Claim 60 recites the limitation "the previously-stored value of the field" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claim(s) 51-52, 59, 61-66, and 68-70 is/are allowed.
Claims 55-58 and 60 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and/or 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: this communication warrants no examiner' s statement of reasons for the indication of allowable subject matter as the prosecution history and/or applicant's remarks makes evident the reason(s) for allowance, satisfying the “record as a whole" as required by 37 CFR 1.104(e). In this case, the amendments made to the independent claims incorporating allowable subject matter cited in the final rejection indicates the reason(s) the claims are patentable over the prior arts of record. Thus, examiner's statement of reasons for the indication of allowable subject matter is not necessary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER P CHAU whose telephone number is (571)270-7152. The examiner can normally be reached 9:30 A.M - 6 P.M. ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ayaz Sheikh can be reached at 571-272-3795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER P CHAU/Primary Examiner, Art Unit 2476
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