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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Response to Amendment
The amendment filed on 11/24/2025 has been entered. Claims 1, 4, 16-17, and 19-20 are amended. Claims 1-20 are pending and addressed below.
Applicant’ amendment has overcome claim objections and claim rejections, previously set forth in the last office action.
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 1-20 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.
Claim 1 limitation in the amendment “when the format of the first MAC CE is a candidate format in the first candidate format set, the first condition set comprises that the first signaling comprises a first Hybrid Automatic Repeat Request (HARQ) process number and comprises a toggled New Data Indicator (NDI) field, and the first HARQ process number is a HARQ process number allocated to a PUSCH occupied by the first MAC CE” is not disclosed in the original Spec. Throughout the Spec., it is only disclosed that a condition that the first signaling comprises NDI and a HARQ process number of a PUSCH is based on the format of MAC-CE being first or second format meaning that the condition may be related to either format. It does not disclose that the above target condition is only related to the first MAC-CE format. See for example, Spec para [481] “whether the first condition set comprises a first target condition is related to whether the format of the first MAC CE is a candidate format in the first candidate format set or a candidate format in the second candidate format set; the first target condition is that the first signaling comprises a first HARQ process number and comprises a toggled NDI field, and the first HARQ process number is a HARQ process number allocated to a PUSCH occupied by the first MAC CE; the first candidate format set comprises at least a first candidate format, … the second candidate format set comprises at least a second candidate format …”. Therefore, it is a new matter situation.
Independent claims 16, 19-20 that recite the above limitation are subjected to the same rejection.
Dependent claims are subjected to the same rejection by virtue of their dependency on the rejected independent claims above.
Claims 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 expressions in the first paragraph “the first MAC CE being used to determine a first candidate Reference Signal (RS) resource”, and ”the second candidate format set comprises at least a second candidate format, and a maximum number of candidate RS resources that can be indicated by the second candidate format for a serving cell is greater than 1” implies that a determination of a single candidate Reference Signal (RS) resource from a plurality of candidate RS resources in MAC-CE is performed, when the format of MAC-CE is the second format comprising multiple RS resources. However, applicant’s disclosure in the Spec does not describe a method or process of determining a single candidate RS resource from multiple RS resources, to enable an ordinary skilled person in the art to perform this determination operation.
Independent claims 16, 19-20 that recite the above expressions are subjected to the same rejection.
Dependent claims are subjected to the same rejection by virtue of their dependency on the rejected independent claims above.
Claim Rejections - 35 USC § 112
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 1-20 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.
Claim 1, as understood, recites the following steps:
1) UE (first node) sends BFR MAC CE (a first radio signal) in one of the two MAC CE formats to a network node (second node) comprising one or more candidate Reference Signal (RS) resources, MAC-CE being used to determine a first candidate Reference Signal (RS) resource (see paragraph 1 of the claim).
2) Network (second node) transmits in response a PDCCH (a first signal) identified with UE id (RNTI) and comprising information such as NDI and HARQ of the PUSCH of the MAC CE, depending of received format of MAC CE (see paragraph 2 of the claim).
3) Then, UE monitors CORSET based on QCL of the determined first candidate RS after a specific time upon receiving the PDCCH in step-2 above (see paragraph 2 of the claim).
The invention as recited in the claim is not clear. The limitations in the claim do not provide the complete understanding of the inventive concept. Merely, sending a first radio signal, receiving a first signal in response, and monitoring CORESET do not a provide an inventive concept of an operational method.
It is not understood, from step-3 limitation, the purpose of monitoring CORESET in the invention, and the type or identity of the messages or signals that the UE monitors CORESET for, towards an operational purpose.
It is further not understood the purpose of PDCCH having NDI and HARQ information (step-2 above) in the invention.
It is also not clear about the role or purpose of having two MAC-CE formats in the invention.
It is not understood about the UE (first node) knowing or obtaining the single candidate RS resource (the first candidate RS resource) to be used as QCL for monitoring as recited in the limitation of step-3, when the UE reported plurality of candidate RS resources to the network in MAC-CE second format.
Independent claims 16, 19-20 that recite the same limitations and expressions are also subjected to the same rejection above.
Dependent claims are subjected to the same rejection by virtue of their dependency on the rejected independent claims above.
Claim 3 expression “a PDCCH” raise an antecedent issue as it is not clear whether this is a separate PDCCH than the one in claim 1.
Examiners Note
USC 112(a) and USC 112(b) rejections, and lack of clear recitation of claim limitations to define the inventive concept, makes prior art search difficult.
Response to Arguments
Applicant’s arguments filed on 11/24/2025 have been considered but are moot because of new ground of rejections under 112(a) and 112(b).
Conclusion
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/MAHBUBUL BAR CHOWDHURY/Primary Examiner, Art Unit 2472