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 .
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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
Response to Arguments
Applicant’s arguments filed 24 February 2026 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Alfarhan.
The indicated allowability of claims 9-10 is withdrawn in view of the newly discovered reference(s) to Gaal. Rejections based on the newly cited reference(s) follow.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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 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.
Claim 20 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, based on the following guidance.
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 structure described in the specification at least in paras. 85 and 87, and fig. 9B is generally recognized in the electric art (such as a computer, processor, specialized hardware, specialized software, etc., to realize the invention). Therefore, Examiner finds the claims are reasonably supported by the structure described in the specification pertaining to 35 U.S.C. 112 (a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, whether or not 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 and 11-22 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong et al. (US 2024/0172272, as supported by the corresponding figures and passages of U.S. Provisional application No. 63/185,064) in view of Alfarhan et al. (US 2024/0381429 as supported by the corresponding figures and passages of US Provisional application No. 63/228,903). For dependent claims herein, the motivation to combine is the same as the parent claim unless otherwise noted.
Regarding claim 1, Xiong discloses a method, comprising: indicating, by a User Equipment (UE) (fig. 1, Msg1), a characteristic of the UE (fig. 6; paras. 55-71; note: a preamble and/or RACH occasion (RO) indicating a combination of RedCap / non-RedCap and Msg3 repetition / no Msg3 repetition; note: PRACH resources as reserved preambles and/or SSBs for the different characteristic types), the characteristic of the UE including at least one of the following: the UE is a reduced-capability UE and has a Msg3 repetition capability, the UE is a reduced-capability UE and lacks a Msg3 repetition, the UE is not a reduced-capability UE and has a Msg3 repetition capability, and the UE is not a reduced-capability UE and lacks a Msg3 repetition capability (paras. 55-71; note: one or more preambles and/or one or more ROs assigned to the different characteristics; para. 14, especially the second and last three sentences; para. 33; note: PRACH resources as separate occasions, reserved preambles and/or SSBs)
However, Xiong fails to disclose wherein the indicating of the characteristic of the UE comprises: transmitting a first preamble indicating whether the UE is a reduced-capacity UE, and transmitting a second preamble indicating whether the UE has a Msg3 repetition capability. Alfarhan discloses a UE sending two preambles in different ROs to indicate a feature or capability of the UE (figs. 2-5; paras. 5, 93, 95 and 98; para. 82, RedCap indication for reduced capacity and Covenh indication for Mgs3 repetition). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have wherein the indicating of the characteristic of the UE comprises: transmitting a first preamble indicating whether the UE is a reduced-capacity UE, and transmitting a second preamble indicating whether the UE has a Msg3 repetition capability in the invention of Xiong. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, providing separate signaling over time to indicate a feature or capability as is known in the art (Alfarhan, figs. 2-5 and paras. 5, 82, 93, 95 and 98; note: avoiding exponential growth of RACH partitions based on the number of feature combinations; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Regarding claim 2, Xiong in view of Alfarhan teaches and makes obvious the method of claim 1, wherein the indicating comprises indicating the characteristic implicitly (Xiong, paras. 55-71 and 149; note: a shared RO for sending a preamble implicitly indicates a characteristic partially).
Regarding claim 3, Xiong in view of Alfarhan teaches and makes obvious the method of claim 2, wherein the indicating comprises sending a preamble in a Random Access Channel (RACH) Occasion (RO), the RO corresponding to the characteristic (Xiong, paras. 55-71 and 149; note: shared ROs partially indicating a characteristic (i.e., RedCap / non-RedCap) with different preambles in the RO completing the characteristic (i.e., Msg3 repetition / no Msg3 repetition; Alfarhan, para. 95 and fig. 3A).
Regarding claim 4, Xiong in view of Alfarhan teaches and makes obvious the method of claim 2, wherein the indicating comprises sending a preamble in a Random Access Channel (RACH) Occasion (RO), the preamble corresponding to the characteristic (Xiong, paras. 55-71 and 149; note: shared ROs partially indicating a characteristic (i.e., RedCap / non-RedCap) with different preambles in the RO completing the characteristic (i.e., Msg3 repetition / no Msg3 repetition).
Regarding claim 5, Xiong in view of Alfarhan teaches and makes obvious the method of claim 2, wherein the indicating comprises sending a preamble in a Random Access Channel (RACH) Occasion (RO), the combination of the preamble and the RO corresponding to the characteristic (Xiong, paras. 55-71 and 149; note: shared ROs partially indicating a characteristic (i.e., RedCap / non-RedCap) with different preambles in the RO completing the characteristic (i.e., Msg3 repetition / no Msg3 repetition; note: preamble selection as an explicit indicator – fig. 6).
Regarding claim 6, Xiong in view of Alfarhan teaches and makes obvious the method of claim 1, comprising sending the first preamble in a Msg1 transmitted in a first Random Access Channel (RACH) Occasion (RO) (Xiong, paras. 55-71 and 149; note: shared ROs partially indicating a characteristic (i.e., RedCap / non-RedCap) with different preambles in the RO completing the characteristic (i.e., Msg3 repetition / no Msg3 repetition); Alfarhan, para. 98).
Regarding claim 7, Xiong in view of Alfarhan teaches and makes obvious the method of claim 1, wherein the indicating comprises sending the second preamble, after sending the first preamble (Alfarhan, para. 7, last sentence and para. 95).
Regarding claim 8, Xiong in view of Alfarhan teaches and makes obvious the method of claim 6, wherein the indicating comprises sending the second preamble in a second RO corresponding to the first RO (Alfarhan, para. 7, last sentence and para. 95; note: a second RO following the first RO in time).
Regarding claim 11, Xiong in view of Alfarhan teaches and makes obvious the method of claim 6, wherein the indicating comprises sending a sequence-based transmission, after sending the first preamble (Alfarhan, para. 95; note: a (second Msg1) preamble is a sequence-based transmission as noted in para. 81 of the specification of the instant application).
Regarding claims 12-19, these limitations are rejected on the same ground as claims 1-8, respectively. In addition, Xiong discloses a User Equipment (UE), comprising (fig. 8, item 802; paras. 114-115 and 118): a processing circuit; and memory, operatively connected to the processing circuit and storing instructions that, when executed by the processing circuit, cause the UE to perform (paras. 221-222) the method of claims 1-6.
Regarding claim 20, these limitations are rejected on the same ground as claim 12 where the means is processing circuitry.
Regarding claim 21, Xiong in view of Alfarhan teaches and makes obvious the method of claim 1, wherein: the UE that is a reduced-capacity UE and has a Msg3 repetition capability corresponds to a first resource set, the first resource set is selected from resources overlapping a first group of resources and a second group of resources; the UE that is a reduced-capacity UE and lacks a Msg3 repetition capability corresponds to a second resource set, the second resource set is selected from resources in the first group of resources excluding the resources in a first resource set; and the UE that is not a reduced-capacity UE and has a Msg3 repetition capability corresponds to a first resource set, the third resource set is selected from resources in the second group of resources excluding the resources in the first resource set (Xiong, fig. 6; paras. 55-71; note: preambles indicating different characteristics, for example in fig. 6, preambles 0-19 are a first and second group of overlapping resources by association with SSB#0, and a first group of preambles is 0-15 with preambles 0-7 as a first resource set, preambles 8-15 as a second resource set, and a second group of preambles is 16-19 with preambles 16-19 as a third resource set, where combinations of RedCap / non-RedCap and Msg3 repetition / no Msg3 repetition are indicated by preambles – para. 55 for further partitioning and differentiating types of UEs).
Regarding claim 22, these limitations are rejected on the same ground as claim 21.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong in view of Alfarhan as applied to claim 6 above, and further in view of Gaal et al. (US 20170202028). For dependent claims herein, the motivation to combine is the same as the parent claim unless otherwise noted.
Regarding claim 9, Xiong in view of Alfarhan fails to teach and make obvious the method of claim 6, wherein the indicating comprises sending a first unmodulated signal occupying a first resource element, after sending the first preamble. However, Gaal discloses this feature (fig. 3, preamble 1 followed by preamble 3; note: the preambles are single-tone (unmodulated) signals as noted in the specification of the instant application in para. 74; paras 7 and 62 (last two sentences); note: a resource block comprises resource elements as is known in the art; para. 76 of the specification of the instant application). Therefore, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have wherein the indicating comprises sending a first unmodulated signal occupying a first resource element, after sending the first preamble in the invention of Xiong in view of Alfarhan. The motivation to have the modification and/or well-known benefits of the modification include, but are not limited to, transmitting signaling in resource blocks as is known in the art (Gaal, fig. 3, and paras. 7, 62 and 67; MPEP 2143(I)(A)(B)(C)(D) - note: e.g., applying known techniques having predictable results).
Regarding claim 10, Xiong in view of Alfarhan and Gaal teaches and makes obvious the method of claim 9, wherein the indicating further comprises sending a second unmodulated signal occupying a second resource element, after sending the first unmodulated signal (Gaal, fig. 3, and paras. 7, 62 and 67; note: a second preamble comprises unmodulated signals transmitted in different resource blocks (and hence elements)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kwak et al. (US 20220321166) discloses repeating a preamble based on a frequency hopping pattern (para. 117 and fig. 7; note: the combination of Xiong and Kwak discloses transmitting first and second (identical) preambles where both preambles indicate whether a UE is reduced-capacity and has Msg3 repetition capability). Hwang et la. (US 2016/0302080) discloses repeating a Msg1 preamble (para. 177 and fig. 12; note: the combination of Xiong and Hwang discloses transmitting first and second (identical) preambles where both preambles indicate whether a UE is reduced-capacity and has Msg3 repetition capability).
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 Kevin Harper whose telephone number is 571-272-3166. The examiner can normally be reached weekdays from 11:00 AM to 7:00 PM ET.
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/Kevin C. Harper/
Primary Examiner, Art Unit 2462
Prosecution Insights