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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered.
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 16, 17, 19-22, 24-27, 29-32, 34, and 35 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 claims 16, 21, 26, and 31, the limitation, "the PEI being a network-configured identifier", introduces new matter because the specification of the present application fails to disclose, suggest, or otherwise support this limitation. Applicant cites discussions in the specification around Figures 10 and 11 as supporting this limitation, but these portions of the specification do not support this limitation. Specifically, although the specification discloses (at 0173) that the base station may configure a paging message including identification information, this statement supports the base station configuring the paging message, but does not appear to support the base station configuring the identification information.
Regarding claims 16, 21, 26, and 31, the limitation, "the UE stores the PEI", where the PEI is received in a paging message, introduces new matter because the specification of the present application fails to disclose, suggest, or otherwise support this limitation. Applicant cites discussions in the specification around Figures 10 and 11 as supporting this limitation, but these portions of the specification do not support this limitation. Nothing in the cited portions of the specification appears to disclose the UE storing a PEI received in a paging message.
Regarding claims 16, 21, 26, and 31, the limitation, "a PDCCH paging message", introduces new matter because the specification of the present application fails to disclose, suggest, or otherwise support this limitation. Applicant cites discussions in the specification around Figures 10 and 11 as supporting this limitation, but these portions of the specification do not support this limitation. Nothing in the cited portions of the specification appears to disclose a PDCCH paging message.
Regarding claims 16, 21, 26, and 31, the limitation, "compares the PEI included in a PDCCH paging message with the stored PEI", where the PEI is received in a paging message, introduces new matter because the specification of the present application fails to disclose, suggest, or otherwise support this limitation. Applicant cites discussions in the specification around Figures 10 and 11 as supporting this limitation, but these portions of the specification do not support this limitation. Nothing in the cited portions of the specification appears to disclose comparing a PEI included in a PDCCH paging message with a PEI that was received in a paging message and then stored.
Regarding claims 16, 21, 26, and 31, the limitation, "the UE … suppresses a paging response when no match is found", introduces new matter because the specification of the present application fails to disclose, suggest, or otherwise support this limitation. Applicant cites discussions in the specification around Figures 10 and 11 as supporting this limitation, but these portions of the specification do not support this limitation. Nothing in the cited portions of the specification appears to disclose the suppresses a paging response when no match is found.
Claims 17, 19, 20, 22, 24, 25, 27, 29, 30, 32, 34, and 35 are also rejected by virtue of their dependency on claims 16, 21, 26, and 31.
Response to Arguments
Applicant’s arguments with respect to claims 16, 17, 19-22, 24-27, 29-32, 34, and 35 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to MARK G. PANNELL whose telephone number is (303) 297-4245. The Examiner can normally be reached Monday through Friday 8:00 am to 3:00 pm (Mountain Time).
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, Rafael Perez-Gutierrez can be reached on (571) 272-7915. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Mark G. Pannell/Primary Examiner, Art Unit 2642