DETAILED ACTION
This action is responsive to the application filed May 26, 2023. The instant application is a reissue continuation of reissue application 15/367,206 (now Patent No. RE49,539), filed December 2, 2016 as a reissue application of US Patent 8,902,859 to Park et al. (“the ‘859 Patent”), which issued December 2, 2014 from U.S. Patent App. Ser. No. 13/751,633, filed January 28, 2013 as a continuation of U.S. Patent App. Ser. No. 12/439,223, filed August 31, 2007 from PCT/KR2007/004211 (now U.S. Patent 8,391,250), with an earliest foreign priority date of September 1, 2006 based on priority to KR10-2006-0084087.
Claims 1-20 were initially pending in the instant reissue application. By way of a preliminary amendment, claims 1-20 are canceled and independent apparatus claim 21 is added.
Claim 21 is pending.
This action is non-final.
Reissue
The Examiner has found that no pending continuations, other pending reissues, applications related to the instant reissue application, reexaminations, post-grant reviews, or active litigation exists as to the instant ‘859 Patent.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) and 37 CFR 1.56 to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘859 Patent is or was involved and any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These proceedings would include interferences, reissues, reexaminations, and litigation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404 and 1442.01-04.
Because the instant application has an effective date prior to March 16, 2013, the pre-AIA “First to Invent” provisions apply, instead of the America Invents Act First Inventor to File (“AIA -FITF”) provisions. See 35 U.S.C. § 100 (note). In the event the determination of the status of the application as subject to pre-AIA 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis 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.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
Here, the person who signed the consent did not provide a title.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Specification
The amendment to the specification filed with this application is objected to for the following:
37 CFR 1.177(a) requires, in the case of multiple reissues filed over the same patent, that the specification be amended in the first sentence to identify all applications by serial number, filing date, and relationship. Here the amendment does not do so in the first sentence of the disclosure.
Reissue Declaration
The reissue declaration of May 26, 2023 is objected to for the following:
The declaration filed with this application fails to identify a broadened claim. 37 CFR 1.175, MPEP § 1414.
A new reissue declaration is required in response to this Office action.
Claim Interpretation
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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 claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when § 112 ¶ 6 is invoked.
As explained in MPEP § 2181 I., claim limitations that meet the following three-prong test will be interpreted under § 112 ¶ 6:
(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;
(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”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with § 112 ¶ 6. The presumption that the claim limitation is interpreted under § 112 ¶ 6, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with § 112 ¶ 6. The presumption that the claim limitation is not interpreted under § 112 ¶ 6, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under § 112 ¶ 6, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under § 112 ¶ 6, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112 ¶ 6, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 21, “a mapper configured to generate a first sequence and a second sequence, the first sequence being determined by a basic sequence and a first cyclic shift value among a plurality of cyclic shift values including the first cyclic shift value, a second cyclic shift value, a third cyclic shift value, and a fourth cyclic shift value, and the second sequence being determined by the basic sequence and the second cyclic shift value”.
Here, the term “mapper” is asserted by the Examiner to be a generic placeholder (also called a “nonce” term or a non-structural term having no specific structural meaning) for performing the claimed function.
Under the three-pronged approach above, it is thus determined by the Examiner that 1) the claims use a term used as a substitute for “means” for performing the claimed function; 2) the term is modified by the functional language “configured to”; and 3) the term is not modified by sufficient structure for performing the claimed function.
Thus the Examiner looks to the disclosure to construe the claim limitations to cover the corresponding structure described therein and equivalents thereof.
Based upon a review of the original disclosure, the Examiner finds that the corresponding structure for limitation #1 is a device or combination of devices forming a programmable Code Division Multiplexer (CDM) with inherent working memory and program forming a specialized processing device including an algorithm in accordance with step S17 with underlying instructions to perform Equation 2 disclosed in the '859 patent specification at 5:4-13, the CDM with inherent working memory holding the algorithm forming a specialized programmed CDM device (See '859 patent at 4:49-67 and 5:1-20).
Because this/these claim limitation(s) is/are being interpreted under § 112 ¶ 6, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under § 112 ¶ 6, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under § 112 ¶ 6 (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under § 112 ¶ 6.
The Examiner further notes that claim 21 further recites “a transmitter configured to transmit the first sequence at a first transmission time and transmit the second sequence at a second transmission time after the first transmission time”. As the term “transmitter” is determined by the Examiner to be a term that implies structure, and the function of transmitting data in accordance with the claim would be understood to be an inherent function of a transmitter (as transmitters are agnostic as to the specifics of the data they transmit), the Examiner accordingly finds that said claim limitation is not being interpreted under § 112 ¶ 6, and so it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If the reissue applicant intends to have this limitation interpreted under § 112 ¶ 6, the reissue applicant may: (1) amend the claim limitation to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation does not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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.
Claim 21 is rejected under 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 21 recites an apparatus at a terminal of a first user in a wireless system. Claim 21 at 1-2. However, claim 21 further includes a limitation “wherein at a terminal of a second user being different from the first user, a sequence…is transmitted at the first transmission time and a sequence…is transmitted at the second transmission time”. This limitation is towards a second terminal and thus it is unclear how the limitation further limits the apparatus of a first user. Further, as the limitation is towards an operation occurring outside of the structure claimed, it creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
Claim Rejections - 35 USC § 251
Claim 21 is 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 declaration is set forth in the discussion above in this Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 8,391,250. Although the claims at issue are not identical, they are not patentably distinct from each other because independent product claim 21 recites the same structures or broader versions of the structures as recited in product claim 25 of the '250 patent. Accordingly, although the claims at issue are not identical, they are not patentably distinct from each other because one or more of the claims of the '250 patent read on or are fully encompass claim 21 of this instant application.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 27 of U.S. Patent No. RE49,539. Although the claims at issue are not identical, they are not patentably distinct from each other because independent product claim 21 recites the same structures or broader versions of the structures as recited in product claim 27 of the '539 reissue. Accordingly, although the claims at issue are not identical, they are not patentably distinct from each other because one or more of the claims of the '539 reissue read on or are fully encompass claim 21 of this instant application.
Allowable Subject Matter
Claim 21 would be allowable if rewritten or amended 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 as well as if a timely terminal disclaimer were filed to obviate the rejection under double patenting above and a proper reissue declaration to obviate the rejection under § 251.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 21 recites an apparatus for transmitting an uplink signal at a terminal of a first user in a wireless communication system, the method comprising: a mapper configured to generate a first sequence and a second sequence, the first sequence being determined by a basic sequence and a first cyclic shift value among a plurality of cyclic shift values including the first cyclic shift value, a second cyclic shift value, a third cyclic shift value, and a fourth cyclic shift value, and the second sequence being determined by the basic sequence and the second cyclic shift value, and a transmitter configured to transmit the first sequence at a first transmission time and transmit the second sequence at a second transmission time after the first transmission time, wherein at a terminal of a second user being different from the first user, a sequence determined by the basic sequence and the third cyclic shift value is transmitted at the first transmission time and a sequence determined by the basic sequence and the fourth cyclic shift value is transmitted at the second transmission time.
The prior art of record teaches a similar system, namely U.S. Pat. PGPUB 2005/0201326 to Lakkis (discussed and applied to similar claims in the original prosecution), which teaches developing sequences using an existing sequence and cyclical shift. See, inter alia, Lakkis at FIGS 5A and 5B However, references such as Lakkis discuss primarily a base station transmitting said packet and the UE obtaining the packed with the appropriate sequence with the cyclical shift. Claim 21 requires the UE transmit using the mapper and transmitter to determine the sequences by way of appropriate cyclical shift as well as a second terminal doing so using a different sequence determined by a different one of the cyclical shifts. Other references such as U.S. Pat. PBPUB 2008/0259892 to Li discuss a single cyclical shift applied to all UEs.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Charles Craver whose telephone number is (571) 272-7849. The Examiner can normally be reached on Monday - Friday 8:30-5:30 PT Pacific Time.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Signed,
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
Conferees:
/ROBERT J HANCE/ Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992