Detailed Final Action
Introduction
1. For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” 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.
2. This Office Action addresses U.S. Application No. 17/949,105 (hereinafter also referred to as ‘105 or the instant application), filed September 20, 2022, which is a reissue application of U.S. Patent No. 10,791,527 (hereinafter also referred to as ‘527 or the original patent), issued September 29, 2020 on U.S. Non-Provisional Patent Application No. 16/599,939 (hereinafter also referred to as ‘939 or the parent application), entitled “APPARATUS FOR SIGNALING OF CONTROL MESSAGES FOR FRONTHAUL INTERFACE”, filed October 11, 2019.1 The original ‘527 patent claims the benefit of U.S. Provisional Application No. 62/746,795 filed on October 17, 2018.2
3. With regard to litigation involving ‘527, see Litigation Search Report of record. Also based upon the Examiner’s independent review of ‘527 itself and the prosecution history, the Examiner cannot locate any other previous reexaminations, supplemental examinations, or certificates of correction.
4. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 4, 2025 has been entered. Claims 1, 6, 9, 14, 21, 23, 25, and 29 were amended. Claims 12 and 27 are canceled. An amended drawing and an IDS was filed.
On July 17, 2026 another IDS was filed.
5. As of the date of this Office Action, the status of the claims is:
Claims 1, 5-6, 9-10, 13-14, 21-23 and 25-26, and 28-29 are pending.
Claims 1, 5-6, 9-10, 13-14, 21-23 and 25-26, and 28-29 are examined.
Claims 1, 5-6, 9-10, 13-14, 21-23 and 25-26, and 28-29 are objected to and/or rejected as set forth infra.
Notice of Pre-AIA or AIA Status
6. Because the effective filing date of claims of the instant application is after March 16, 2013, see prior paragraph 2, the AIA First Inventor to File (“AIA -FITF”) provisions apply thereto. See also paragraph 1, supra.
ADS
7. The Application Data Sheet (ADS) filed June 10. 2025 is accepted.
Information Disclosure Statement/Publication Versions
8. An IDS was filed September 20, 2022 setting forth the publication date as being April 2018. On August 4, 2025, another "corrected" IDS was filed setting forth a "corrected" publication date of December 2018. The “corrected” IDS was filed along with accompanying remarks including an image of a "Revision History" which history at best indicates a revision v02.01.04 had a revision date of "2018.11.30", not a "publication date" of "December 2018". See also the discussion in the Response to Arguments, paragraph 13 below. The correct publication date of the version of the xRan document provided as an NPL should be provided along with collaborating evidence of the asserted publication date of the version of the xRan document provided as an NPL.
Specification
9. The disclosure is objected to because of the following informalities:
With respect to the Incorporation by Reference section at col. 3, lines 59-65, it is noted these documents are not US patents or patent applications. Note MPEP 608.01, I, A., with regard to "Essential material".
Also, the XRAN document so incorporated is identified as version 2.01, i.e. "v02.01". As discussed above in the IDS section, a revision history in the remarks of the 8/4/2025 response indicates multiple revisions and revision dates. It does not indicate a version "v2.01" as set forth. Furthermore, the '795 provisional application document also incorporated a XRAN document but that document was referred to as version "v02.00". In other words, the version of the XRAN document incorporated by the provisional application having the filing date of October 17, 2018 is different than the version of the XRAN document set forth in this '105 application filed October 11, 2019. Applicant is requested to clarify whether the different versions of the XRAN document incorporated in the respective applications are accurate and if so, which "v2.01" version is being incorporated by this '105 application.
The amendments filed July 9, 2025, i.e. after FINAL, were not entered. The 8/4/25 response did not request entry thereof nor resubmit such amendments. Accordingly, the paragraph at col.1, lines 8-11 still includes a typographical error on lines 3 and 4, i.e. "17/648,005" rather than -- 18/648,005--. Continuing, there are still typos in the amended paragraph at col. 6, lines 17-24, i.e. line 4 thereof should be --configurations. However, gNB[ ]s come in a wide variety of configurations, and--.
Finally, dependent claims 5, 13, 22 and 24, respectively recite "the scale field includes a value of 11 bits or a value of 15 bits". However, the description in specification at col. 9, lines 49-52 is not commensurate ("In one example, the PwrScaleOffset (e.g., mcSCaleOffset) field includes a value of 11 bits. If the value of 11 bits is unavailable, a size of the bit may be changed to 15 bits and zero padding is applied to match 4 bytes alignment."). (Emphasis added.)
Appropriate correction is required.
Drawings
10. The drawings filed August 4, 2025 are accepted.
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.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or 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 limitation(s) is/are:
a transmitter device configured to: generate a control message including a section extension type field, a resource element (RE) mask field, and a scale field, and transmit the control message via a fronthaul interface of the base station as claimed in independent claim 1,
a receiver device configured to: receive a control message via a fronthaul interface of the base station, and identify a section extension type field, a resource element (RE) mask field, and a scale field,, which are included in the control message as claimed in independent claim 9,
a receiver device is further configured to: determine the power scaling value for the REs based on the scale field; and perform decompression by multiplying the power scaling value to an IQ sample corresponding to the REs as claimed in dependent claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A transmitter device as claimed in claim 1 is interpreted under 35 USC 112(f) as a processor of a base band of a base station in a wireless communication system connected to a transceiver and one or more computer programs embodied in a computer readable medium which is executed by the processor to accomplish the claimed function and equivalents thereof. See 1:35-51, 1:66-2:13, 2:47-3:2, 12:39-55, 13:4-43, and patent claims 1 and 17.
A receiver device as claimed in claim 9 is interpreted under 35 USC 112(f) as a processor in a radio interface of a base station in a wireless communication system connected to a transceiver and one or more computer programs embodied in a computer readable medium which is executed by the processor to accomplish the claimed function and equivalents thereof. See 1:52-2:13, 2:47-3:2, 12:39-55, and patent claims 10-14.
Aa receiver device as further claimed in dependent claim 10 is interpreted under 35 USC 112(f) as a processor in a radio interface of a base station in a wireless communication system connected to a transceiver and one or more computer programs embodied in a computer readable medium which is executed by the processor to accomplish the claimed function and equivalents thereof. See 1:52-2:13, 2:47-3:2, 12:23-55, and patent claim 15.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
11. Claims 1, 5-6, 9, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over “XRAN Fronthaul Working Group Control, User and Synchronization Plane Specification”, XRAN-FH_CUS 0-v02 01 (hereinafter also referred to as xRan3 in view of US 2015/0244430 to Shattiil and US 2019/0116568 to Fertonani.
Claim 1
A transmitter device in a base station in a wireless communication system, the transmitter device configured to:
generate a control message…; and
transmit the control message via a fronthaul interface of the base station,
See xRan at, e.g., page 10, lines 1-9, Fig. 2-1, element lls-CU in eNB/gNB, page 11, Figure 2-2, “xRAN FH”, page 16, Table 2-3 and Fig. 2-8, element 2a, page 8, lines 6-7, page 6, lines 14-17. See also pages 30-31, sections 3.1-3.1.3, pages 41-42, line 7, sections 5.1-5.3.2, and pages 50-51, line 30, sections 5.4-5.4.2. Therefore, xRan describes or obviously describes a device in a base station, e.g. element lls-CU in eNB/gNB, in a wireless network, e.g. LTE and 5G, configured to generate a control message, e.g. “data-associated control information required for processing of user data (e.g. scheduling and beamforming commands)”, element 2a, and transmit such via a fronthaul interface, e.g. “xRAN FH”, of the base station, i.e. a transmitter device as claimed .
However, xRan does not explicitly describe the structure of the transmitter device of the base station performing such generation and transmitting, see Claim Interpretation section above i.e. processor of a base band of a base station in a wireless communication system connected to a transceiver and one or more computer programs embodied in a computer readable medium which is executed by the processor to accomplish the claimed function and equivalents thereof. However, see ‘430 at Figs. 9-11A, [0055]-[0057], [0077], [0081], [0083]-[0084] [0174]-[0179] and ‘568 at Figs. 3-4, [0014], [0026]-[0029] and [0070]-[0084] which describe a transmitter device of a base station having at least one processor and program/instructions executed thereby for performing any function of the transmitter device and the processor connected to a transceiver and a fronthaul for transmitting control messages. To the extent xRan does not teach the components of the transmitter device, ‘430 and ‘568 remedy any such perceived deficiency. A POSITA would have been motivated to modify the base station CU of xRan to include a processor/program/instructions, connected to the fronthaul and a transceiver, for generating and transmitting control messages as described by xRan. As such, the proffered modification is merely combining prior art elements, i.e. xRans system/ ‘430 and ‘568’s base station structure) according to known methods (using a processor/instructions, transceiver, fronthaul) to yield predictable results (control message generation and transmission).
generate a control message including a section extension type field, a resource element (RE) mask field, and a scale field; and…
wherein the section extension type field indicates a section extension type,
wherein the RE mask field indicates respective positions of REs with same power scaling within a physical resource block (PRB), and
wherein the scale field indicates a power scaling value used for the REs.
See xRan at, e.g., pages 50-51, line 30, sections 5.4-5.4.2, page 74 and pages 83-84, section 5.4.7.5--5.4.7.5.3. xRan, as best understood (see paragraphs 1 and 13-14 above), describes or obviously suggests a control message including a section extension type field indicating a section extension type, e.g. “extType=5”, a RE mask field, e.g., mcScaleReMask, indicating a position of REs, as best understood (see paragraphs 1 and 13-14 above), with same power scaling within a physical resource block (PRB), e.g. 1111 1111 1111, and a scale field, e.g. mcScaleOffset, indicating a power scaling value used for the REs.
Claim 5
The transmitter device of claim 1, wherein the scale field includes a value of 11 bits or a value of 15 bits.
See xRan, page 84, line 16.
Claim 6
The transmitter device of claim 5, wherein the scale field includes the value of 15bits and a zero padding is applied to match a 4-bytes alignment.
See the discussion of claim 5 as well as page 79, section 5.4.7.2.8 of xRan.
Claim 9
A receiver device in a base station in a wireless communication system, the receiver device configured to:
receive a control message via a fronthaul interface of the base station, and
See xRan at, e.g., page 10, lines 1-9, Fig. 2-1, elements RU in eNB/gNB, page 11, Figure 2-2, “xRAN FH”, page 16, Table 2-3 and Fig. 2-8, element 2a, page 8, lines 6-7 and 40-41, page 6, lines 14-17. See also pages 30-31, sections 3.1-3.1.3, pages 41-42, line 7, sections 5.1-5.3.2, and pages 50-51, line 30, sections 5.4-5.4.2. Therefore, xRan describes or obviously describes a device in a base station, e.g. element RU in eNB/gNB, in a wireless network, e.g. LTE and 5G, configured to receive a control message, e.g., element 2a, via a fronthaul interface, e.g. “xRAN FH”, of the base station, i.e. a receiver device as claimed.
identify a section extension type field, a resource element (RE) mask field, and a scale field included in the control message
See xRan at, e.g., page 11, Fig. 2-2(“IQ Decompression”) and page 142, last paragraph, pages 83-84, section 5.4.7.5--5.4.7.5.3. and page 143. Therefore, since xRan describes or obviously suggests that during decompression by the RU “for each RE in the PRB (using section extention=5)”, the “mcScale Offset” value is fetched, the RU must “identify” the “mcScale Offset” value, and in doing so, also “identify” the section extension type and the mcScaleReMask of each RE, i.e. extType=5 and bitsettings of the mcScaleReMask.
However, xRan does not explicitly describe the structure of the receiver device of the base station performing such identification and receiving, see Claim Interpretation section above i.e. processor of a base band of a base station in a wireless communication system connected to a transceiver and one or more computer programs embodied in a computer readable medium which is executed by the processor to accomplish the claimed function and equivalents thereof. However, see ‘430 at Figs. 9-11A, 12, [0055]-[0057], [0059], [0077], [0081], [0083]-[0084] [0174]-[0179], [0203] and ‘568 at Figs. 3-4, [0014], [0026]-[0029] and [0070]-[0084] which describe a receiver device of a base station having at least one processor and program/instructions executed thereby for performing any function of the transmitter device and the processor connected to a transceiver and fronthaul for transmitting control messages. To the extent xRan does not teach the components of the transmitter device, ‘430 and ‘568 remedy any such perceived deficiency. A POSITA would have been motivated to modify the base station CU of xRan to include a processor/program/instructions, connected to a fronthaul and transceiver, for identifying and receiving control messages as described by xRan. As such, the proffered modification is merely combining prior art elements, i.e. xRans system/ ‘430’s and ‘568’s base station structure) according to known methods (using a processor/instructions, transceiver, fronthaul) to yield predictable results (control message identification and reception).
wherein the section extension type field indicates a section extension type,
wherein the RE mask field indicates a respective position of REs with same power scaling within a physical resource block (PRB); and
wherein the scale field indicates a power scaling value used for the REs.
See discussion of similar language in claim 1.
Claim 10
The receiver device of claim 9, wherein the receiver device is further configured to: determine the power scaling value for the REs based on the scale field; and
See the discussion of claim 9 above, esp. pages 83-84, section 5.4.7.5--5.4.7.5.3.
perform decompression by multiplying the power scaling value to an IQ sample corresponding to the REs.
See xRan at, e.g., page 143 lines 11-15.
Claim 13
The receiver device of claim 9, wherein the scale field includes a value of 11 bits or a value of 15 bits.
See discussion of similar language of claim 5.
Claim 14
The receiver device of claim 13, wherein the scale field includes a value of 15 bits and a zero padding is applied to match a 4-bytes alignment.
See discussion of similar language of claim 6.
12. Claims 21-23, 25-26 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over “XRAN Fronthaul Working Group Control, User and Synchronization Plane Specification”, XRAN-FH_CUS 0-v02 01 (hereinafter also referred to as xRan.4
Claim 21
A method performed by a transmitter device in a base station in a wireless communication system, the method comprising:
generating a control message including a section extension type field, a resource element (RE) mask field, and a scale field; and
transmitting the control message via a fronthaul interface of the base station,
wherein the section extension type field indicates a section extension type,
wherein the RE mask field indicates a position of REs with same power scaling within a physical resource block (PRB), and
wherein the scale field indicates a power scaling value used for the REs.
See discussion of similar language of claim 1. Therefore, xRan teaches or obviously suggests the device in a base station, e.g. element lls-CU in eNB/gNB, in a wireless network, e.g. LTE and 5G, performs a method comprising the generation of a control message, e.g. “data-associated control information required for processing of user data (e.g. scheduling and beamforming commands)”, element 2a, including a section extension type field, a resource element (RE) mask field, and a scale field, and transmission of such via a fronthaul interface, e.g. “xRAN FH”, of the base station.
Claim 22
The method of claim 21, wherein the scale field includes a value of 11 bits or a value of 15 bits.
See discussion of similar language of claim 5 and claim 21.
Claim 23
The method of claim 22, wherein the scale field includes a value of 15 bits and a zero padding is applied to match a 4-bytes alignment.
See discussion of similar language of claim 6 and claim 21.
Claim 25
A method performed by a receiver device in a base station in a wireless communication system, the method comprising:
receiving a control message via a fronthaul interface of the base station; and
identifying a section extension type field, a resource element (RE) mask field, and a scale field included in the control message,
wherein the section extension type field indicates a section extension type,
wherein the RE mask field indicates a position of REs with same power scaling within a physical resource block (PRB), and
wherein the scale field indicates a power scaling value used for the REs.
See discussion of similar language of claim 9. Therefore, xRan describes or obviously describes the device in a base station, e.g. element RU in eNB/gNB, in a wireless network, e.g. LTE and 5G, performs a method of receiving a control message via a fronthaul interface, e.g. “xRAN FH”, of the base station and identifying a section extension type field, a resource element (RE) mask field, and a scale field included in the control message.
Claim 26
The method of claim 25, further comprising:
determining the power scaling value for the REs, based on the scale field; and
performing decompression by multiplying the power scaling value to an IQ sample corresponding to the REs.
See discussion of similar language of claim 10 and claim 9.
Claim 28
The method of claim 25, wherein the scale field includes a value of 11 bits or a value of 15 bits.
See discussion of similar language of claim 13 and claim 9.
Claim 29
The method of claim 28, wherein the scale field includes a value of 15 bits and a zero padding is applied to match a 4-bytes alignment.
See discussion of similar language of claim 14 and claim 21.
Response to Arguments
13. The remarks filed August 4, 2025 have been considered in their entirety. Specifically:
The status of claims discussed on page 11 has been noted.
The discussion of support on pages 11-12 has been considered.
The discussion of the ADS on page 12 has been considered and is persuasive.
The discussion of the preliminary amendment objection, drawing objection, rejections under 251 and 35 USC 112(a) and (d) on pages 12- 14, respectively, has been considered. The objections and rejections set forth in the FINAL have not been maintained.
The discussion of the specification on page 13 has been noted. See paragraph 9 above.
The discussion of the rejection under 35 USC 112(b) has been considered. The rejection set forth in the final has not been maintained.
Finally, with regard to the prior art rejection, on pages 15-16 Patent Owner (PO) first argues the present application is entitled to the benefit of the provisional application 62/746,795 filed October 17, 2018 and such supports the claims of the present application. It is noted that the provisional application is not an exact copy of the instant application. Specifically, PO asserts “[b]y way of example, fronthaul signaling of control messages is disclosed on pages 1 and 2 of ‘795 provisional; the control message including a section extension type field, a resource element (RE) mask field, and a scale field as well what is claimed as indicated thereby are disclosed on pages 1-3 of '795 provisional.” See, however, by way of example, page 3, third full paragraph (“Current message structure also does not allow channels with different modulation order also to be specified. My invention proposes a new section extension header which consists of one or more sets of new section extension type, a new position indicator (pwrScaleReMask in the figure) and a new scalar value (pwrScaleOffsert) along with a one bit field (csf).” See also page 1, last full paragraph. Cf. claim 1 (“generate a control message including a section extension type field, a resource element (RE) mask field, and a scale field;”). See also paragraph 9 above with regard to the incorporation by reference of an XRAN document and the different versions and Patent Owner’s assertions discussed in following paragraphs. Therefore, it is not agreed that the present application is entitled to the benefit of the provisional application 62/746,795 filed October 17, 2018 and such supports the claims of the present application.
Continuing, during prosecution, on September 20, 2022 Patent Owner filed a publication, “'XRAN Fronthaul Working Group Control, User and Synchronization Plane Specification", XRAN-FH.CUS.0-v02.01” and on an accompanying IDS the date “April 2018” was provided with regard thereto.5 Following the 11/18/2024 FINAL in which such publication was applied in the 103 rejection of the claims, an after FINAL response was filed 6/10/2025 in which it was asserted “[h]owever, as noted in the document, xRANv02.01 was not published until after October 30, 2018. In the revision history listed on page 2 of xRANv02.01 (excerpted for convenience below), the document author, identified as M. Garyantes, was still revising xRANv02.01 as of October 30, 2018. Thus, it would not be possible for xRANv02.01 to have been published before the effective filing date of October 17, 2018 in order to qualify as prior art to the present application.” (Emphasis added.) The assertion was found not persuasive (i.e. “Therefore, PO's conclusion that "it would not be possible for xRAN v02.01 to have been published before the effective filling date of the instant application", i.e. that only final versions of xRAN not still being revised, are published is not collaborated by the evidence of record, i.e. the revision history, the copyright date of the 2.01 version/revision and the 9/20/22 IDS.”)6
Assuming arguendo that the claims are entitled to the filing date of October 17, 2018, Patent Owner now asserts xRANv2.01 is not prior art because it was still being revised as of November 30, 2018 (“As noted in the document , xRANv02.01 could not have been published until after November 2018. In the revision history listed on page 2 of xRANv02.01 (excerpted for convenience below), the document author, identified as M. Garyantes, was still revising xRANv02.01 as of November 30, 2018. It is not reasonable for xRANv02.01 to have been published before it was finished being revised nor before the effective filing date of October 17, 2018 in order to qualify as prior art to the present application.”). (Emphasis added.) Patent Owner has now further filed a “CORRECTED IDS” which provides a copy of the 9/20/2022 IDS with the date “April 2018” with regard to such publication now changed to December of 2018. On pages 18-19, Patent Owner further states “The Final Office Action and Advisory Action reference an April 2018 date listed in the IDS filed with the as-filed reissue application. See Final Office Action, page 10 and note 4. However, this date is not the date of publication of the version 02.01 of the xRAN document (i.e., the xRAN Fronthaul Working Group Control, User and Synchronization Plane Specification). Nor could April 2018 be the publication date of version 02.01 as the document was still being revised well after as noted above. Rather, as annotated above, this date is indicative of the publication of the first version of the xRAN document (i.e., version 01.00 of the xRAN Fronthaul Working Group Control, User and Synchronization Plane Specification7), which does not contain all the disclosures relied upon in the §103 rejection. The Applicant has filed herewith an IDS to correct the date listed for xRANv02.01, which to the best of Applicant's knowledge would not have occurred until after November 2018. Moreover, the Applicant does not admit or concede that xRANv02.01 was published within the meaning of 35 U.S.C. § 102(a)(1) and MPEP 2128 in December 2018.”)8 (Emphasis added.)
Therefore, the publication date of the document first provided as being April 2018 by Patent Owner and now challenged by Patent Owner (i.e. “which to the best of Applicant's knowledge would not have occurred until after November 2018. Moreover, the Applicant does not admit or concede that xRANv02.01 was published within the meaning of 35 U.S.C. § 102(a)(1) and MPEP 2128 in December 2018) is not clear. The Patent Owner’s representation of what is depicted by the revision history is not collaborated by objective facts and evidence. The correct publication date of the version of xRan provided as an NPL should be provided along with collaborating objective evidence of the asserted publication date of the asserted version.
Conclusion
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Amendments
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.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,115,313 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 appraise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Inquiries:
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karin M Reichle whose telephone number is (571)272-4936. The examiner can normally be reached on 6:00-6:00 M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
All correspondence relating to this proceeding may be submitted via:
Electronically: Registered users may submit via Patent Center
https://patentcenter.uspto.gov/.
By Mail to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
Central Reexamination Unit
By hand: United States Patent and Trademark Office
Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
For Patent Center transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4) , and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
/Karin Reichle/Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
1 The term of the patent was extended or adjusted by 0 days.
2 It is noted that the entire invention must be supported (per 35 USC 112) in a single document relied upon for benefit of filing date.
3 This reference has a publication date of April 2018 according to the 9/20/22 PTO-1449.
4 This reference has a publication date of April 2018 according to the 9/20/22 PTO-1449.
5 See MPEP 609, 37 CFR 1.98(b)(5) (“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”).
6 Note MPEP 2128, I (“When a document is cited in a rejection of a claim in an examination of a patent application or during an reexamination proceeding, an applicant or patent owner may challenge its public availability and/or the date it became publicly accessible, even when the document itself contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132 that includes facts and evidence to support the applicant or patent owner's position. See MPEP § 716 et seq.”).
7 See the 8/4/2025 response, paragraph bridging pages 17-18 with regard to the advisory action. Regarding the first published version. It is initially noted that such document shows the “[f]irst published version” with the date “2018.03.28”, not April 2, 2018 as asserted. Furthermore, Revision 01.00.00 was not applied with regard to the claims.
8 Page 18 of the 8/4/2025 additionally discusses the 2018 copyright of the “document”. The copyright collaborates neither the April 2018 nor the December 2018 set forth in the IDSs.
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