DETAILED ACTION
1. Claims 1-9 are pending in this application for reissue of US Patent 11,356,865 (“the '865 patent”) issued from application no. 16/709,155 (“the ‘155 application”). This Office Action is responsive to amendments and arguments filed on December 24, 2025 in response (“the Response”) to the Office Action issued on September 24, 2024. Claims 1-8 are patented claims. Claim 9 has been added in this reissue application. Claim 8 has been previously amended. Claims 4, 8, and 9 have been amended in the Response. Claims 1-9 are currently pending.
Notice of Pre-AIA or AIA Status
2. The present application is being examined under the pre-AIA first to invent provisions.
Prior or Concurrent Proceedings
3. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘865 patents is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
4. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Response to Amendments and Arguments
Claim Objections - 37 C.F.R. 1.173
5. Claims 4 and 8 have been amended to address objections to the claims. Corresponding objections are withdrawn.
Claim Rejections - 35 USC §§ 112, 251
6. Claim 9 has been amended to overcome the outstanding rejections under 35 USC 112 and 251. Corresponding rejections are withdrawn. However, amended claim 9 is rejected on new grounds of rejections as discussed below.
Claim Rejections - 35 USC § 102
7. Applicant’s arguments have been fully considered but they are not persuasive. Applicant admits that the small cell base station 121a reports or notifies that it belongs to the large base station, but argues that it does not report or notify that the small cell base station 121 a type “capable of communicating” with the large cell base station 111a. This is not a persuasive argument because the claims do not require such notification. Claims require notification of information indicating that a type of the first base station is a type capable of performing, in association with the second base station, the radio communication with the user equipment. Applicant further argues that claim 1 requires information indicating that the base station is a type capable of communicating with the user equipment, while the part of the cited art describes one base station and another base station. This is not a persuasive argument either because a base station is inherently capable of communicating with a user equipment because its main purpose is to communicate with the user equipment (see Fig. 2). A report from a small cell base station to a large cell base station that it belongs to the large cell clearly conveys information to the large cell base station that it is a type of base station (i.e., small cell base station) that is a type capable of, in association with the large cell base station, the radio communication with the user equipment (communicating with the user equipment is the main function of a base station).
Claim Objection - 37 C.F.R. 1.173
8. 37 CFR 1.173 (g) states:
g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
Claim amendments are objected to because amendments to claim 9 were not made relative to the patent claims which were in effect as of the date of filing of the reissue application. Appropriate correction is required.
Rejection under 35 U.S.C. 251 – Original Patent
9. The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as follows:
Examiners should review the reissue application to determine if:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
In Forum US, Inc. v. Flow Valve, LLC, Appeal 2018-1765 (Fed. Cir. June 17, 2019) Federal Circuit stated,
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus. Chems., 315 U.S. at 676 (emphasis added). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. We apply the standard set forth in Industrial Chemicals and Antares to this case and hold that the reissue claims are invalid.”
(emphasis added).
10. Claim 9 is rejected under 35 USC 251 for claiming subject matter that is not directed to the invention disclosed in the original patent.
Claim 9 recites the limitation “wherein a network equipment, which receives a capability of the first base station, selects a configuration parameter suitable for the capability of the first base station.” The original patent does not clearly and unequivocally disclose a network equipment that receives a capability of the first base station.
Claim Rejections - 35 USC § 112
11. 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.
12. Claim 9 is 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. The claim requires a network equipment to receive a capability of the first base station. The specification may disclose a network equipment receiving information regarding the capability of another network equipment, but does not disclose how to make and/or use a network equipment can receive a capability of another equipment.
13. Claim 9 is 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 9 recites the limitation “wherein a network equipment, which receives a capability of the first base station, selects a configuration parameter suitable for the capability of the first base station.” There’s no written description support for this limitation in the specification.
Claim Rejections - 35 USC § 102
14. 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.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
15. Claims 1-2 and 5-8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US Pub. 2012/0178467 (“Fujii”).
16. With respect to claim 1, Fujii discloses a mobile communication system comprising:
a user equipment (FIG. 12, Terminal 112b), and
a first base station (Small Cell Base Station 121a) and a second base station (Large Cell Base Station 111a) configured to perform radio communication with the user equipment,
wherein information indicating that a type of the first base station (step 11 and paragraph [0046]) is a type capable of performing (base station 121a is capable of performing radio communication with terminals, such as 112b, under it’s control), in association with the second base station, the radio communication with the user equipment (see paragraphs [0046]-[0064], the small cell base station 121a works in association with the large cell 111a for resource allocation to communicate with the terminal 112b) is notified from the first base station to the second base station (step 11), and
the first base station is configured to perform, in association with the second base station, the radio communication with the user equipment (step 18 and paragraph [0059], “the large cell base station 111a and the small base station 121a determines resources to be assigned to the mobile terminal apparatus carrying out communication under the control of the own cell (step 18)”).
17. With respect to claims 6-8, see the rejection of claim 1 above.
18. With respect to claim 2, Fujii discloses the mobile communication system according to claim 1, wherein the information indicating that the type of the first base station is the type capable of performing, in association with the second base station, the radio communication with the user equipment is notified using an interface between base stations (see FIG. 12, step 11).
19. With respect to claim 5, Fujii discloses the mobile communication system according to claim 1, wherein the information indicating that modes supported by the first base station include the mode capable of performing, in association with the second base station, the radio communication with the user equipment is notified from the first base station to the second base station (see paragraph [0058], dedicated or shared resource modes are supported both of which are modes capable of performing, in association with the large cell base station, radio communication with the user equipment).
Claim Rejections - 35 USC § 103
20. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
21. Claims 3-4 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fujii in view of “Scenarios and Benefits of Dual Connectivity” Intel Corporation, 3GPP TSG RAN WG2 Meeting #81 R2-13570, January 21-February 1, 2013 (“Intel”).
22. With respect to claim 3, Fujii discloses all of the limitations of the parent claim 1 as discussed above. However, Fujii does not specifically disclose that the first base station is configured to perform the radio communication with the user equipment without establishing a control connection. On the other hand, Intel discloses the benefits of dual connectivity, where a large cell is used for control and a small cell is used for data, when small cell nodes are deployed under the coverage of one or more than one overlaid macro-cell layer (see Table 1, Figure 2, and 2.2 Architecture for Dual Connectivity). It would have been obvious to one skilled in the art at the time of the invention to adopt Intel’s teaching of dual connectivity for better mobility performance (see 2.6 Challenges and Benefits).
23. With respect to claim 4, Fujii and Intel disclose the mobile communication system according to claim 1, wherein to perform the radio communication, the first base station performs data plane communication with the user equipment, and the second base station performs control plane communication with the user equipment that is not performed by the first base station (see the rejection of claim 3 above).
Conclusion
24. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Woo H Choi whose telephone number is (571)272-4179. The examiner can normally be reached 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Woo H. Choi/
Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992