3DETAILED 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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on September 23, 2025 has been entered.
Election/Restrictions
Newly submitted claims 30-33 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claim(s) 1, 5, 6, 25-29, 34, drawn to user equipment.
Group II, claim(s) , drawn to a radio access network node.
The reasons for which the inventions are not so linked as to form a single general inventive concept are as follows:
The technical features of the independent claims of the first invention are neither the same nor corresponding with the technical features of the independent claims of the second invention.
The features of the two inventions solve two different problems by means of different special technical features:
The problem to be solved by the first invention is to have a user equipment configuration according to the used capabilities. The features which solve this problem are maintain a primary capability to be used when one subscription identity of the user equipment is active and a secondary capability to be used when more than one subscription identity of the user equipment is active. Transmit, based on Radio Resource Connection status of one or more subscription identities of the user equipment, to a Radio Access Network (RAN) node the user equipment is connected to, an indication as to which capability selected from the primary or secondary capability is to be used, which are considered to be the potential special technical features of the first invention.
The problem to be solved by the second invention is to define which capability will be used by the user equipment. The features which solve this problem are receive from a user equipment an indication that the user equipment is able to communicate using more than one capability. Transmit to the user equipment minimum requirements for a secondary capability, which are considered to be the potential special technical features of the second invention.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 30-33 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the step of update the secondary capability based on the minimum requirements received from the network must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use or not the use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961).
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002). “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
In the context of patent claims, one or more of A and B" generally means "one of A and one of B," requiring the presence of at least one of each element, not just one or the other. Ex parte Jung, 2016-008290 PTAB Mar. 22, 2017 and SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).
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, 5, 6, 25-29, 34 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.
The specification does not originally support and inadequately describes the now claimed update the secondary capability based on the minimum requirements received from the network and an indication to the RAN node is transmitted when the capability to be used is changed based on new Radio Resource Connection status of the one or more subscription identities. The specification states that “….the AMF is configured to send to the UE a message 508 informing the minimum set of requirements.” And, “…the message is a NAS message, such as a configuration update command, including a MinimumCapability field. The UE is configured to create 510 secondary capability based on the message sent by the AMF and transmit an indication 512 to AMF that the secondary capability has been created. Also the specification states, “In an embodiment, user equipment comprises at least one processor; and at least one memory including computer program code, the at least one memory and computer program code configured to, with the at least one processor, cause the apparatus to perform: maintain a primary capability to be used when one subscription identity of the user equipment is active and a secondary capability to be used when more than one subscription identity of the user equipment is active and transmit, based on Radio Resource Connection status of one or more subscription identities of the user equipment, to a Radio Access Network (RAN) node the user equipment is connected to, an indication as to which capability selected from the primary or secondary capability is to be used. In an embodiment, a Radio Access Network RAN node comprises at least one processor; and at least one memory including computer program code, the at least one memory and computer program code configured to, with the at least one processor, cause the apparatus to perform: receive from a user equipment an indication of a primary or secondary capability to be used based on Radio Resource Connection status of one or more subscription identities of the user equipment and transmit to the user equipment a Radio Resource Control reconfiguration message in accordance with the capability to be used.” These are the only passages that even mentions Radio Resource Connection status and there is nothing in these passages even mention about a new Radio Resource Connection status.
A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” is sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that “[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.”)
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.
Claims 1, 5, 6, 25-29, 34 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.
In the independent claims, the term “the capability” is confusing since which capability are referring to, the primary, secondary, or more than one capability?
In claim 6, the term “further based” is confusing because the “creating” was never mentioned before.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 25, 26, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2016/0301790 (Kanamarlapudi, et al) in view of over United States Patent Application Publication 2021/0045177 (Lee, et al).
Kanamarlapudi, et al discloses user equipment (figure 1, #12) comprising at least one processor (#20) and at least one memory (#62) including computer program code. The at least one memory (62) and the computer program code configured to, with the at least one processor (#20), cause the user equipment (#12) at least to perform maintain a primary capability to be used when one subscription identity (#19) of the user equipment (#12) is active and a secondary capability to be used when more than one subscription identity (#23) of the user equipment is active (¶19-20). Indicate, to a network (#24, 26), that the user equipment (@12) is able to communicate using more than one capability (¶32, figure 3, #302). Receive, from the network (#24, 26), minimum requirements for the secondary capability (figure 2, #210, ¶36). Transmit, based on Radio Resource Connection status of one or more subscription identities (#19, 23) of the user equipment (#12), to a Radio Access Network (RAN) node (#14, 16) the user equipment (#12) is connected to, an indication as to which capability selected from the primary or the secondary capability is to be used for the one or more subscription identities (#19, 23, 308, ¶39), and receive, from the RAN node (#14, 16), at least one Radio Resource control (RRC) reconfiguration message in accordance with the capability to be used (#208, ¶5-7, 22, 36-37).
Kanamarlapudi, et al does not disclose update the secondary capability based on the minimum requirements received from the network and the indication to the RAN node is transmitted when the capability to be used is changed based on new Radio Resource Connection status of the one or more subscription identities. Lee, et al teaches the use of updating the secondary capability based on the minimum requirements received from the network and the indication to the RAN node is transmitted when the capability to be used is changed based on new Radio Resource Connection status of the one or more subscription identities for the purpose of transmitting a first tracking area update request that includes a UE radio capability information update needed information element (IE), figure 11, ¶127-28). Hence, it 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 to incorporate the use of updating the secondary capability based on the minimum requirements received from the network and the indication to the RAN node is transmitted when the capability to be used is changed based on new Radio Resource Connection status of the one or more subscription identities for the purpose of transmitting a first tracking area update request that includes a UE radio capability information update needed information element (IE), as taught by Lee, et al in the user equipment of Kanamarlapudi, et al in order to receive a UE capability enquiry based at least in part on transmitting the first tracking area update request that includes the UE radio capability update needed.
Regarding claim 25, this is the inherent method to the claimed apparatus since this claim repeats and have the same functions of the apparatus and hence, it is also rejected for the same reasons stated above.
Regarding claim 26, note paragraphs 11 and 12 above.
Regarding claim 27, note paragraph 10 above.
Regarding claim 34, note ¶11-13 in Kanamarlapudi, et al.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 5 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2016/0301790 (Kanamarlapudi, et al) in view of over United States Patent Application Publication 2021/0045177 (Lee, et al) as applied to claims above, and further in view of United States Patent Application Publication 2020/0170030 (Sano, et al).
Kanamarlapudi, et al in view of Lee, et al discloses all subject matter, note the above paragraphs, except for an indication comprises an enumerated value indicating which capability is to be used. Sano, et al teaches the use of an indication comprises an enumerated value indicating which capability is to be used for the purpose of UL (Uplink) resources and DL (Downlink) resources can be flexibly configured (set) in the time domain compared to LTE, figures 4, 6, ¶32, 66-70.
Hence, it 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 to incorporate the use of an indication comprises an enumerated value indicating which capability is to be used for the purpose of UL (Uplink) resources and DL (Downlink) resources can be flexibly configured (set) in the time domain compared to LTE, as taught by Sano, et al, in the user equipment of Kanamarlapudi, et al in view of Lee, et al in order for transmission with higher maximum transmission power, performs UL transmissions, it becomes necessary to control a UL transmission rate in the time domain in order to meet SAR (Specific Absorption Rate) related requirements.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not disclose or make obvious the now claimed creating the secondary capability is based on one or more of processor and memory capabilities of the user equipment, radio frequency capabilities of the user equipment, physical layer capabilities of the user equipment, and protocol layer capabilities of the user equipment. In combination with in a user equipment comprising at least one processor and at least one memory including computer program code. The at least one memory and the computer program code configured to, with the at least one processor, cause the user equipment at least to perform maintain a primary capability to be used when one subscription identity of the user equipment is active and a secondary capability to be used when more than one subscription identity of the user equipment is active. Indicate, to a network, that the user equipment is able to communicate using more than one capability. Receive, from the network, minimum requirements for the secondary capability. Update the secondary capability based on the minimum requirements received from the network. Transmit, based on Radio Resource Connection status of one or more subscription identities of the user equipment, to a Radio Access Network (RAN) node the user equipment is connected to, an indication as to which capability selected from the primary or the secondary capability is to be used for the one or more subscription identities. The indication to the RAN node is transmitted when the capability to be used is changed based on new Radio Resource Connection status of the one or more subscription identities and receive, from the RAN node, at least one Radio Resource control (RRC) reconfiguration message.
Claims 6 and 29 would be allowable if rewritten to overcome the rejection(s) under 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.
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
Prosecution Insights