Status of Claims
Currently claims 1-7 are pending in this reissue proceeding. Claims 1, 5 and 6 are independent. Claims 1, 5, 6 and 7 have been amended. All claims remain rejected.
Priority
The 533 Patent is based upon U.S. Application No. 15/733,520 (“520 Application” or “the base application”), filed as PCT/EP2019/050677, on Jan. 11, 2019, and filed under §371 in the United States on Aug. 19, 2025. The 520 Application claims foreign priority to EP18157844, filed Feb. 21, 2018.
Accordingly, based upon the above chain of priority, the Examiner finds the effective filing date would be Feb. 21, 2018.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Objection – Specification
The changes made to the Specification by the Applicant, appear to remedy the objection raised in the Non-Final Rejection. Accordingly, the objection is withdrawn.
Objection – Claims
The Applicant has amended the claim markings, such that they now comply with the requirements set forth in 37 C.F.R §1.173. Consequently, the objection to claims is withdrawn.
Objection - Reissue Declaration
The Nov. 2022 Assignee Declaration, PTO/AIA /06, is objected to as not complying with MPEP §1414, §1444 and 37 CFR §1.175. In this regard
(1) The Error statement does not reference an error correctable by reissue. As will be noted below, the Examiner finds that the broadened material removed from independent claim 1 is matter surrendered during the original prosecution and thus violates the recapture rule. As such the error statement, which is referring to that broadened material, is referencing and error that is not correctable by reissue. For support the Examiner notes the following:
a) MPEP §1414 II. States:
Where the reissue oath/declaration does identify an error or errors, the oath/declaration must be checked carefully to ensure that at least one of the errors identified is indeed an “error” which will support the filing of a reissue, i.e., an “error” that will provide grounds for reissue of the patent. See MPEP § 1402.
- MPEP §1414 II, emphasis added.
b) As will be noted below in the section analyzing recapture, the Examiner finds that Applicant did indeed put the material identified in the error statement into the claims in the original prosecution via examine amendment to obtain allowance. As such, the evidence indicates that the claims being to narrow due that that feature, was not indeed an error.
Rejections – 35 U.S.C. § 251
A) Claims Based Upon a Defective Reissue Declaration
Claims 1-7 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the objection is set forth in the discussion above in this Office action.
B) Recapture
Claims 1-6 are rejected under 35 U.S.C. 251 as improperly attempting to recapture broadened claimed subject matter surrendered during prosecution of the Original Application for the patent upon which the present reissue is based. To support this position the Examiner notes the following.
As an initial matter, the Examiner finds that claims 1-6 are not directed to an Overlooked Aspect so as to not be subject to the recapture rule. For example, the Examiner finds that claims 1-6 are the patented claims with one broadening amendment. As such, they are directed to the same aspect as originally patented claims 1-6. See MPEP §1412 III.
With that said, the Examiner notes the following three step analysis from MPEP §1412:
1. First, independent claim 1 is broader in scope than patented independent claims 1 because independent claim 1 does not require the following claim elements of the patented claim 1.
(a) Broadened Element: “estimating, by the second base station, the mobility state of the UE based upon the one or more information elements to indicate the relative speed of the UE with respect to the reference object,” (Broadened Element), as in independent patented claims 1, and 23.
Accordingly, claim 1 satisfies step one of the three step test for recapture. (See MPEP §1412.02 II. A., §1412.03).
2. Second, the Examiner has reviewed the prosecution history of the 533 Patent and finds that during prosecution of the Original Application, the Broadened Element was amended into the claims to obtain allowability of the claims during prosecution of the Original Application, and therefore the Broadened Element is a surrender generating limitations. See for example the base application 15/733, 520 (“520 Application”), in the June 2022 Notice of Allowance. In the June 2022 Notice of Allowance the examiner makes and examiner amendments, one of which is adding the Broadened Claim Element to independent claim 13 of the 520 Application that subsequently becomes claim 1 of the 533 Patent. See June 2022 Notice of Allowance and June 2022 Issue Information including classification.
Accordingly the Broadened Feature of the Claims, identified above, a repeated directly below, is a surrender generating limitation.
Surrender Generating Limitation or SGL: “estimating, by the second base station, the mobility state of the UE based upon the one or more information elements to indicate the relative speed of the UE with respect to the reference object.” (“Surrender Generating Limitation”).
Accordingly, claim 1 satisfies step two of the three step test for recapture. (See MPEP §1412.02 II. B.).
3. Third, the Examiner finds that independent claim 1 of this instant application is not materially narrowed with respect to the originally filed claims in aspects related to the surrender generating subject matter. (See MPEP §1412.02 C.). For example, the Examiner acknowledges that independent claim 1 of this instant application does have additional features that were referenced by the Surrender Generating Limitation. For example the feature of “one or more information elements to indicate the relative speed of the UE with respect to the reference object.” However, the complete Surrender Generating Limitation required further active steps, i.e. “estimating, by the second base station, the mobility state of the UE,” based upon the “one or more information elements to indicate the relative speed of the UE with respect to the reference object,” now missing from the claim.
Accordingly, claim 1 satisfies step three of the three step test for recapture. (See MPEP §1412.02 II. C.).
Claims 5 and 6 have been rewritten into an independent form, however similarly to the independent claim 1, they also omit the Surrender Generating Limitation.
The Examiner acknowledges, that the Applicant amended independent claims 1, 5 and 6 to recite “initiating a handover of the UE … wherein message includes the first and/or second information elements … to estimate the mobility state of the UE”. However as easily can be recognized “to estimate the mobility state of the UE” is not equivalent to reciting “estimating, by the second base station, the mobility state of the UE based upon the one or more information elements to indicate the relative speed of the UE with respect to the reference object.”
More specifically, stating that the handover has been initiated so that the message is sent to estimate the mobility state is not the same as reciting the step of “estimating”. In other words, “to estimate” is an intended purpose or functional language in contrast to actual recitation of a method step.
4. Fourth, the Examiner finds that dependent claim 2-4 do not add features related to the Surrender Generating Limitation. Accordingly, claims 2-4 violate the recapture rule based upon dependency.
5. Fifth, the Examiner finds that the dependent claim 7, includes the Surrender Generating Limitation. For example the Applicant in this instant reissue application as now made the Surrender Generating Limitation a dependent claim. Accordingly, claim 7 would not violate the recapture rule.
Because: (1) claims 1-6 of this instant application are broader in at least one respect than the patented independent claims 1-6; (2) the broadening feature is a limitations that were surrendered, and are therefore surrender generating limitation; (3) claims 1-6 of this instant application are not materially narrowed with respect to the originally filed claims in aspects related to the surrender generating subject matter; and (4) because the claims are not directed to an overlooked aspect, the Examiner concludes that claims 1-6 attempt to recapture subject matter surrendered during prosecution of the Original Application.
6. Conclusion §251 Rejections
Accordingly, claims 1-7 are rejected under §251 for being based upon a defective declaration; and claims 1-6 are rejected under §251 for attempting to recapture subject matter surrendered during the original prosecution or the Original Application.
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
A) Lexicographic Definitions
A first exception, albeit optional, to the broadest reasonable interpretation standard occurs when there is lexicographic definition in the specification.
After a careful review of the original specification the Examiner cannot locate any other lexicographic definitions, express or implied, in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any other lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes that for terms other than those noted directly above the Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
B) ‘Sources’ for the ‘Broadest Reasonable Interpretation’
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how he is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. Base Station (BS): “A wireless term. A base station is the fixed device that a mobile radio transceiver (transmitter/receiver) talks to talk to allow a person or mobile device to get connection to the landline phone network, public or private.” Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
2. Channel: “(1) (A) (electric communication) A single path for transmitting electric signals, usually in distinction from other parallel paths. (B) (electric communication) A band of frequencies. Note: The word “path” is to be interpreted in a broad sense to include separation by frequency division or time division.” IEEE Authoritative Dictionary of IEEE Standards Terms, Seventh Edition, Standards Information Network IEEE Press, New York, NY, 2000.
3. Configuration “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
4. Configured: “to set up for operation esp. in a particular way.” Merriam - Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
5. Instruction: “An action statement in any computer language, most often in machine or assembly language.” Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994.
6. Mobile Station (MS): A mobile communication terminal, also called a user equipment (UE), with radio interface for communicating with a base station or wireless LAN access point. See the 256 Patent at C3:L30 - 35, and C4:L1316, describing a mobile terminal (MS) Figure 1, as a wireless device communicating with a WLAN or Public Land Mobile Access points.
7. Processor: “The part of a computer system that operates on data – called also a central processing unit.” Microsoft Press Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.2
8. Processing: “Manipulation of data within a computer system. Processing is the vital step between receiving data (input) and producing results (output) – the task for which computers are designed” Microsoft Press Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
9. Program: “A sequence of instructions that can be executed by a computer.” Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994.
10. Receiver: “one that receives as: a device for converting signals (as electromagnetic waves) into audio or visual form: as (1): a device in a telephone for converting electric impulses or varying current into sound (2): a radio receiver with a tuner and amplifier on one chassis.” Merriam - Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
11. Time-Division Multiplexing: “Sharing of a communication channel among several users by allowing each to use the channel for a given period of time in defined, repeated sequence.” IEEE Authoritative Dictionary of IEEE Standards Terms, Seventh Edition, Standards Information Network IEEE Press, New York, NY, 2000.
12. Time Slot: “In time division multiplexing, when time is divided into slots to route data from input to output.” IEEE Authoritative Dictionary of IEEE Standards Terms, Seventh Edition, Standards Information Network IEEE Press, New York, NY, 2000.
13. Transceiver: “The combination of radio transmitting and receiving equipment in a common housing, usually for portable or mobile use, and employing common circuit components for both transmitting and receiving.” IEEE Authoritative Dictionary of IEEE Standards Terms, Seventh Edition, Standards Information Network IEEE Press, New York, NY, 2000.
14. Transmitter: “one that transmits: as a: an apparatus for transmitting radio or television signals a device for converting signals.” Merriam - Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
15. User Equipment (UE): A mobile communication terminal, also called a mobile station (MS), with radio interface for communicating with a base station or wireless LAN access point. See the 256 Patent at C3:L30 - 35, and C4:L1316, describing a mobile terminal (MS) Figure 1, as a wireless device communicating with a WLAN or Public Land Mobile Access points.
35 U.S.C. §112(f)
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. §112(f). See MPEP § 2181 et seq. To invoke §112(f), a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 (I).
The following is a quotation of AIA §112(f) :
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 Examiner has evaluated the claims and finds the following:
I) The Examiner finds that claims 1-4 and 7 do not have any phrases that invoke§112(f). For support of this position the Examiner notes the following:
Claims 1-4, and 7 do not recite “means for” or “step for.” In addition, these claims do not recite any structural generic placeholder for “means for” nor any generic place holders for “step for.”
Therefore claims 1-4, and 7 fail Prong (A) as set forth in MPEP §2181 I. Because claims1-4, and 7, fail Prong (A) as set forth in MPEP §2181 I., the Examiner concludes that claims 1-4, and 7 do not invoke§112(f). See also Ex Parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008) (precedential).
II) The following phrases, from dependent claims 5 and 6 will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrases invoke§112(f)
If a phrase invokes§112(f), the corresponding structure will also be determined.
See MPEP §2181 and Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
As an initial matter, the Examiner notes that dependent claims 5 and 6, depend from claim 1 and call for “instructions which . . . cause the computer to carry out the method of claim 1,” as in claim 5, or “processor configured to implement the method of claim 1,” as in claim 6, without reciting the particular instructions or the particular configuration of the processor.
Accordingly, the Examiner finds the following.
In the following analysis of the Functional Phrases the Examiner notes:
“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase. [Emphasis added.]”
- MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019).
“[a] claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35U.S.C. 112, sixth paragraph does not apply. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1310,75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d1359, 1369, 62 USPQ2d 1658, 1664 (Fed. Cir.2002); Personalized Media Commc’ns, LLC v. ITC,161 F.3d 696, 703-04, 48 USPQ2d 1880, 1886–87(Fed. Cir. 1998). Williamson v. Citrix Online, LLC, 792 F.3d 1339, The presumption is overcome when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’“ 1339,1348 (sic), 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d877, 880 (Fed. Cir. 2000) …. [Emphasis added.]”
- MPEP § 2181 I.
Functional Phrase #1 (FP#1): “instructions which, . . . cause the computer to carry out . . . the first base station determining a relative speed of the UE with respect to a reference object, wherein the first base station is a mobile base station,” as in claim 5, lines 2-3, and claim 1 lines 4-5.
Functional Phrase #2 (FP#2): “instructions which, . . . cause the computer to carry out . . . the first base station retrieving data indicating a size of the coverage area of the first base station and further indicating a time the UE has been positioned within the coverage area of the first base station,” as in claim 5, lines 2-3, and claim 1 lines 6-8.
Functional Phrase #3 (FP#3): “instructions which, . . . cause the computer to carry out . . . setting, by the first base station, one or more of:
a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data,” as in claim 5, lines 2-3, and claim 1 lines 9-17.
Functional Phrase #4 (FP#4): “instructions which, . . . cause the computer to carry out . . . the first base station preparing a message to handover the UE to the second base station, the message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object, wherein a mobility state for the UE is estimable from the one or more information elements indicating the relative speed of the UE with respect to the reference object,” as in claim 5, lines 2-3, and claim 1 lines 18-22.
Functional Phrase #5 (FP#5): “instructions which, . . . cause the computer to carry out . . . the first base station initiating a handover of the UE from the first base station to the second base station by sending the message to the second base station, wherein the message includes the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object,” as in claim 5, lines 2-3, and claim 1 lines 23-26.
Functional Phrase #6 (FP#6): “processor configured to implement. . . the first base station determining a relative speed of the UE with respect to a reference object, wherein the first base station is a mobile base station,” as in claim 6, line 4, and claim 1 lines 4-5.
Functional Phrase #7 (FP#7): “processor configured to implement . . . the first base station retrieving data indicating a size of the coverage area of the first base station and further indicating a time the UE has been positioned within the coverage area of the first base station,” as in claim 6, line 4, and claim 1 lines 6-8.
Functional Phrase #8 (FP#8): “processor configured to implement. . . setting, by the first base station, one or more of:
a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data,” as in claim 6, line 4, and claim 1 lines 9-17.
Functional Phrase #9 (FP#9): “processor configured to implement . . . the first base station preparing a message to handover the UE to the second base station, the message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object, wherein a mobility state for the UE is estimable from the one or more information elements indicating the relative speed of the UE with respect to the reference object,” as in claim 6, line 4, and claim 1 lines 18-22.
Functional Phrase #10 (FP#10): “processor configured to implement. . . the first base station initiating a handover of the UE from the first base station to the second base station by sending the message to the second base station, wherein the message includes the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object,” as in claim 6, line 4, and claim 1 lines 23-26.
a) 3-Prong Analysis Prong (A):
In accordance with the MPEP, Prong (A) requires:
(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 ....
MPEP § 2181 I. — Prong (A).
As an initial matter, the Examiner finds that Functional Phrases #1 to #10 do not use the phrase “means for.” The issue arising under Prong (A) then becomes whether or not the claimed “instructions,” as in FP#1 to FP#5, and the claim “processor,” in FP#6 to FP#10 are generic placeholder for the phrase ‘means for,’ i.e., being applied as a generic means for performing the function. See MPEP 2181 I (C).
First, the Examiner has reviewed the specification and concludes that the specification does not provide a description sufficient to inform a PHOSITA that the term “instructions,” or “processor,” (alone) denotes sufficient structure to perform the claimed function. The best the Examiner can determine from reviewing the 533 Patent specification is that the term “instructions” refers to a general computer program instruction (“computer program product comprising instructions’ 533 Patent, at C2:L65-67), and the term processor is not described as any particular type of processor, rather simply a standard processor connected to memory (“processor 13 memory 15, and a second transceiver 17, all connected via a bus 19” 533 Patent at C3:L46-57.). However the Examiner finds that a PHOSITA understands that a general computer program instructions (alone), or a standard processor (by itself), cannot perform the entire claim function. Other structural elements are needed.
Second, the Examiner has reviewed the prior art for evidence to establish that the term “instructions” or a “processor” (alone) has achieved recognition as noun denoting sufficient structure to perform the entire claimed function. The best the Examiner can find in light of the description is technology specific dictionaries showing that instructions simply refers to a general processor instructions such as program for computer processor, and a processor is a general computer processor with the function of operating on data. See Examiner Sources for BRI above “Section XVI (B), titled “sources for broadest reasonable interpretation.” However a PHOSITA understands that a instructions referring to a general program to run a processor such as a computer processor (alone), and a processor such as a general computer processor (alone) cannot perform the claimed function. Other structural elements are needed.
Accordingly the Examiner concludes that the term “instructions,” as set forth in FP#1 to FP#5, and the term “processor,” as set forth in FP#6 to FP#10, above, are being used as a generic terms for a structure performing the function, and therefore a place holder for the phrase “means for” performing the recited function.
Because the terms the term “instructions,” as set forth in FP#1 to FP#5, and the term “processor,” as set forth in FP#6 to FP#10 are merely a generic placeholder having no specific structure associated therewith, FP#1 to FP#10 meet invocation Prong (A).
b) 3-Prong Analysis Prong (B):
In accordance with the MPEP prong (B) requires:
(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” ....
MPEP § 2181 I. — Prong (B).
Based upon a review of the claim, the Examiner finds that the functions associated with FP#1 to FP#10, are as follows:
Function of Functional Phrase #1 (FP#1): “the first base station determining a relative speed of the UE with respect to a reference object, wherein the first base station is a mobile base station.”
Function of Functional Phrase #2 (FP#2): “the first base station retrieving data indicating a size of the coverage area of the first base station and further indicating a time the UE has been positioned within the coverage area of the first base station.”
Function of Functional Phrase #3 (FP#3): “setting by the first base station, . . . one or more of:
a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data.”
Function of Functional Phrase #4 (FP#4): “the first base station preparing a message to handover the UE to the second base station, the message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object, wherein a mobility state for the UE is estimable from the one or more information elements indicating the relative speed of the UE with respect to the reference object.”
Function of Functional Phrase #5 (FP#5): “the first base station initiating a handover of the UE from the first base station to the second base station by sending the message to the second base station, wherein the message includes the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object.”
Function of Functional Phrase #6 (FP#6): “the first base station determining a relative speed of the UE with respect to a reference object, wherein the first base station is a mobile base station.”
Function of Functional Phrase #7 (FP#7): “the first base station retrieving data indicating a size of the coverage area of the first base station and further indicating a time the UE has been positioned within the coverage area of the first base station.”
Function of Functional Phrase #8 (FP#8): “setting by the first base station, . . . one or more of:
a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data.”
Function of Functional Phrase #9 (FP#9): “the first base station preparing a message to handover the UE to the second base station, the message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object, wherein a mobility state for the UE is estimable from the one or more information elements indicating the relative speed of the UE with respect to the reference object.”
Function of Functional Phrase #10 (FP#10): “the first base station initiating a handover of the UE from the first base station to the second base station by sending the message to the second base station, wherein the message includes the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object.”
Because FP#1 to FP #10 include the functions expressly noted above, the Examiner concludes that FP#1 to FP #10 meet invocation Prong (B). Additionally, the Examiner notes that because nothing in the written description contradicts the plain language describing the functions, the functions within the functional phrases will have their ordinary and accustomed meaning.
c) 3-Prong Analysis: Prong (C)
In accordance with the MPEP, Prong (C) requires:
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP § 2181 (I) — Prong (C)
Based upon a review of the entire FP#1 to FP #10, the Examiner finds that FP#1 to FP #10, do not contain sufficient structure for performing the entire claimed function that is set forth in those functional phrases. In fact, the Examiner finds that while FP#1 to FP #10 do in include some structure, and may imply some logic or steps that could amount to logic, the Examiner finds FP#1 to FP#10 recite very little structure (if any) for performing the claimed function.
Because FP#1 to FP #10 do not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 to FP#10 meet invocation Prong (C).
Because FP#1 to FP #10 meet the 3 Prong Analysis as set forth in MPEP §2181 I., the Examiner concludes that the phrases invokes § 112 ¶ 6.
d) Corresponding Structure
The Examiner notes that for computer-implemented means-plus-function limitations, a general purpose computer is only sufficient as the corresponding structure for performing a general computing function. When there is a specific function to be performed the specification is required to clearly link an algorithm to the functional phrase that will realized the function. See section ‘D’ below entitled ‘Computer Implemented Means Plus Function Limitations’ for a more detailed explanation of computer implemented means plus function limitations.
1. For Functional Phrase #1: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0005], [0007], [0009], [0013], [0034]-[0038], [0043] and [0044] of US Publication No. 2020/0389831 teach corresponding structure that would realize the Function of FP#1. For example, FP#1 requires “instructions which, . . . cause the computer to carry out . . . the first base station determining . . .”.
2. For Functional Phrase #2: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0009] and [0010] of US Publication No. 2020/0389831, teach corresponding structure that would realize the Function of FP#2. For example, FP#2 requires “instructions which, . . . cause the computer to carry out . . . the first base station retrieving . . .”.
3. For Functional Phrase #3: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0009]-[0012], [0034]-[0039] and [0043]-[0044] of US Publication No. 2020/0389831, teach corresponding structure that would realize the Function of FP#3. For example, FP#3 requires “instructions which, . . . cause the computer to carry out . . . setting by the first base station . . .”.
4. For Functional Phrase #4: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0031]-[0033] of US Publication No. 2020/0389831, teach corresponding structure that would realize the Function of FP#4. For example, FP#4 requires “instructions which, . . . cause the computer to carry out . . . the first base station preparing . . .”.
5. For Functional Phrase #5: Based upon a review of the original disclosure, the Examiner finds that paragraph [0031] of US Publication No. 2020/0389831, teaches corresponding structure that would realize the Function of FP#5. For example, FP#5 requires “instructions which, . . . cause the computer to carry out . . . the first base station initiating . . .”.
6. For Functional Phrase #6: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0005], [0007], [0009], [0013], [0034]-[0038] and [0043] of US Publication No. 2020/0389831 teach corresponding structure that would realize the Function of FP#6. For example, FP#6 requires “a processor configured to implement. . . the first base station determining . . .”.
7. For Functional Phrase #7: Based upon a review of the original disclosure, the Examiner finds that paragraph [0052] of US Publication No. 2020/0389831, teaches corresponding structure that would realize the Function of FP#7. For example, FP#7 requires “a processor configured to implement. . . the first base station retrieving . . .”.
8. For Functional Phrase #8: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0009]-[0012], [0034]-[0039] and [0043]-[0044] of US Publication No. 2020/0389831, teach corresponding structure that would realize the Function of FP#8. For example, FP#8 requires “a processor configured to implement. . . setting by the first base station . . .”.
9. For Functional Phrase #9: Based upon a review of the original disclosure, the Examiner finds that paragraphs [0031]-[0033] of US Publication No. 2020/0389831, teach corresponding structure that would realize the Function of FP#9. For example, FP#9 requires “a processor configured to implement. . . the first base station preparing . . .”.
10. For Functional Phrase #10: Based upon a review of the original disclosure, the Examiner finds that paragraph [0031] of US Publication No. 2020/0389831, teaches corresponding structure that would realize the Function of FP#10. For example, FP#10 requires “a processor configured to implement. . . the first base station initiating . . .”.
III) Dependent claims 2-4, and 7.
The Examiner has reviewed dependent claims 2-4, and 7, and finds that these claims make minor modifications to the functions and/or data of the functional phrases above, without removing the functional phrases from governance of §112(f).
Accordingly the Examiner finds that analysis of dependent claims 2-4, and 7 is the same as that for the functional phrases above.
D) Computer Implemented Means-Plus-Function Limitations
For computer-implemented means-plus-function limitations, a general purpose computer is only sufficient as the corresponding structure for performing a general computing function.
When there is a specific function to be performed, it is required that an algorithm for performing the function be disclosed, and the corresponding structure becomes a general purpose computer transformed into a special purpose computer by programming the computer to perform the disclosed algorithm. The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. See MPEP § 2181(II) (B).
As noted in the MPEP:
An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. [Citations and select quotations omitted.]
E) Conclusion Claim Interpretation
Accordingly, because of the Examiners’ findings above that except for the term “non control information,” the Applicant is not his own lexicographer and for functional phrases that invoke §112 sixth paragraph those phrases will be interpreted based upon the interpretation for the corresponding structures, outline above.
In addition any claim terms and phrases that do not invoke §112(f), will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984).
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP 2111.01(I).
It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP 2111.01(II).
Allowable Subject Matter
Except for the issues outlined above, the Examiner find that the claims would otherwise be allowable over the prior art of record, as set forth below.
Claim 1 is representative. The prior art of record fails to teach “setting, by the first base station, one or more of: a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data; the first base station preparing a message to handover the UE to the second base station, the message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object, wherein a mobility state for the UE is estimable from the one or more information elements indicating the relative speed of the UE with respect to the reference object,” as in claim 1.
Park et. al. (“Park”) (Pub. No.: US2017/0238243) is an exemplary reference discussing moving base stations (Park, Par [0022] [0023], discussing cell identifiers for cells that may be stationary or moving, where either or any of the cells may be moving. For example, the vehicle Figure 4 acts as a cell, i.e. base station, for the mobile device). Park teaches that the moving base station, i.e. a first base station, may detect a need for the mobile to handover to a new cell and sends a message to the mobile terminal (Park at [0081]). As shown in Figure 5, Figure 6, and Figure 7, the cells may communicate information between each other (e.g. X2 set-up req.) to allow the mobile (UE) to handoff from the moving cell to another cell (Park [0087] [0111] [0114] [0120].).
However, Park does not teach sending first and second information elements, representing a modified time and a modified size of a coverage, respectively, from the first base station to the second base station, as in claim 1, discussed directly above.
Accordingly, claim 1 would be allowable over the prior art.
Claims 2-7 depend from claim 1 and would be allowable over the prior art for the same reasoning.
Response to Arguments
Applicant's arguments filed January 29, 2026 have been fully considered and they are found persuasive in part.
Specification
The Examiner acknowledges the Applicant’s amendment to the specification reciting cross-reference to related application, hence the objection is withdrawn.
Claim Objections
The Examiner acknowledges Applicant’s changes to bracketing. Accordingly, the claim objections are withdrawn.
Objection to Reissue Declaration
The Examiner found the Applicant’s argument, addressing authority to sign, persuasive. Consequently, the objection with regards to those grounds has been withdrawn.
Claim Rejections under 35 U.S.C. §251
The Applicant’s Argument:
“The latest amendment to claim 1 clarifies that the handover step to the second base station includes the feature “to estimate the mobility state of the UE” … While the original amendment in the present application deleted the last clause of issued claim 1(i.e., “estimating, by the second base station, the mobility state of the UE …”), claim 1 has now been materially narrowed by the present second amendment in combination with features not deleted from claim 1 in the original reissue application that are duplicative of the deleted last clause of the originally issued claim 1 of the ‘533 Patent.
It is further noteworthy that the prior art relied upon during the prosecution of the ‘533 Patent does not teach the clause of claim 1 deleted from the originally filed reissue application. Support for this conclusion is provided on pages 38 and 39 of the present Office Action. For example, Section XVII. Allowable Subject Matter of the current Office Action states that the prior art of record fails to teach the setting acts of a “modified time by a first information element…” and a “modified size of a coverage area represented by a second information element …”- that is the relied upon distinguishing features for overcoming the prior art of record for claim 1during prosecution of the ‘533 Patent. Furthermore, nowhere does the Office Action refer to any teaching by the prior art of record of the deleted clause from issued claim 1of the ‘533 Patent or related clauses that recited the same or similar features”.
Examiner’s Response: The Examiner did not find the above argument persuasive. As the Applicant clearly recited himself in the passage cited above “the prior art relied upon during the prosecution of the ‘533 Patent does not teach the clause of claim 1 deleted from the originally filed reissue application”. Accordingly, the limitation “to estimate the mobility state of the UE” is not equivalent to reciting “estimating, by the second base station, the mobility state of the UE based upon the one or more information elements to indicate the relative speed of the UE with respect to the reference object”, alone or in combination with other limitations cited in reasons for allowance, overcame the cited prior art and therefore moved the claims toward allowance.
As clearly explained in the MPEP 1412.02:
Broadening Claim - A reissue claim is "broadened" where at least one limitation of the patent claims is either completely eliminated or is only presented in a broader way in the reissue claim relative to the broadest patented claim(s); see MPEP § 1412.03 for guidance as to the nature of a "broadening claim."
Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a "limitation" presented, argued, or stated to make the claims patentable (in the original application) and "generates" the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).
Based on the definitions of “broadening claim” and “surrender generating limitation” (SGL), it can be recognized that independent claims 1, 5 and 6 have been broadened since at least one limitation has been presented in a broader way” and secondly, the limitation “estimating, by the second base station, the mobility state of the UE based upon the one or more information elements to indicate the relative speed of the UE with respect to the reference object” has been relied upon, at least partially to overcome the cited prior art. Accordingly, this limitation constitutes surrendered subject matter.
The Examiner acknowledges that the Applicant has introduced the amendment and more specifically amended claims 1, 5 and 6 to recite “to estimate the mobility state of the UE”. While the Examiner agrees that this alteration is related to the deleted limitation, unequivocally the limitation does not positively recite the step of estimating. In other words, stating that one function is carried out to estimate, does not positively recite the step of “estimating”, instead it merely indicates intended purpose/function.
Furthermore, even though claim language suggests that the “message including the first and/or second information elements that indicate the relative speed of the UE with respect to the reference object” is send from the first base station to the second base station, there is no disclosure other than taught in the deleted limitation, that the second base station is estimating the mobility state of the UE.
Lastly, the Applicant contends that in the Non-Final Rejection issued on January 29, 2026, pp. 17, the Examiner has cited reasons for allowance in Section XVII listing limitations other than the deleted limitation. While the Examiner agrees that the reasons for allowance do not list omitted limitation, as it was not part of the claim during the filing, the Examiner would like to note that SGL is not determined based on the reasons for allowance by the Examiner during reissue prosecution but rather during the prosecution of the reissued patent3.
Accordingly, the Examiner maintains that there are multiple limitations surrendered during the prosecution of the ‘533 patent which are being omitted and therefore triggering recapture as explained above.
Claim Rejections under 35 U.S.C. § 112(a)
The arguments addressing claim rejection under 35 U.S.C 112(a) on pages 18-19 have been found persuasive. Accordingly, the rejection has been withdrawn.
Claim Rejections under 35 U.S.C. § 112(b)
The Applicant’s amendments to rewrite claims 5 and 6 into the independent form appear to overcome previously raised rejection. Consequently, the rejection is withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
Patent Center
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By Mail to: Mail Stop Reissue
Central Reexamination Unit
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By FAX to: (571) 273-9900
Central Reexamination Unit
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/ Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the 533 Patent, or in the prior art.
2 Based upon a review of the original disclosure, the art of record, and the knowledge of one of ordinary skill in this art as determined by the factors discussed in MPEP §2141.03 (where practical), the Examiner finds that the Microsoft Press Computer Dictionary is an appropriate technical dictionary known to be used by one of ordinary skill in this art. See e.g. Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1373, 65 USPQ2d 1865, 1872 (Fed. Cir. 2003) where the Federal Circuit used the Microsoft Press Computer Dictionary (3d ed.) as “a technical dictionary” to define the term “flag.” See also In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971) (noting that it’s appropriate to use technical dictionaries in order to ascertain the meaning of a term of art) and MPEP §2173.05(a) titled “New Terminology.”
3 See section Rejections – 35 U.S.C. § 251, pp. 4-7