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 .
This office action is in response to remarks filed 09/11/2025.
Claims 16, 18, 21 and 28 are pending. Claims 1-15, 17, 19-20, 22-27, 29 are cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16, 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 16, 28, the originally filed specification fails to disclose “transmit, to a network device exclusively via a media access control control element (MAC-CE) message outside of a synchronization signal block (SSB) measurement timing configuration (SMTC) window, a first information indicating whether the terminal device has scheduling restriction related to intra frequency measurements” and “wherein the first information indicates: a first information indicating that the terminal device will initiate intra- frequency measurements when the serving cell SS-RSRP falls below the s- MeasureConfig threshold; and a first information I-1" indicating that the terminal device will no longer perform intra-frequency measurements when the serving cell SS-RSRP exceeds the s-MeasureConfig threshold.” Applicant amended the claim but does not describe where the amended subject matter can find support. Additionally, cursory review of specification was made, but above subject matter could not be located. As such, above subject matter is new matter.
Claim Rejections - 35 USC § 112
Claims 16, 18, 21, 28 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.
Regarding claim 16, the recites “wherein the first information indicates: a first information indicating that the terminal device will initiate intra- frequency measurements when the serving cell SS-RSRP falls below the s- MeasureConfig threshold; and a first information I-1" indicating that the terminal device will no longer perform intra-frequency measurements when the serving cell SS-RSRP exceeds the s-MeasureConfig threshold.” However, the two information are contradictory to each other and cannot be together at the same time. In other words, it cannot indicate to perform and to not perform at the same time. Similar issues exists with claims 21, 28.
Regarding claim 18, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 21 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Da Silva et al. (US 2023/0327790 A1).
Regarding claim 21, Da Silva discloses a network device, comprising:
at least one processor (see para. 0466), and
at least one memory storing instructions which, when executed by the at least one processor (see para. 0466), cause the network device to:
transmit an indication request to a terminal device, the indication request instructing the terminal device to transmit a first information (see fig. 8, 801, para. 0391, discloses configuring conditional reporting requesting measurement);
receive the first information from the terminal device, wherein the first information indicating whether the terminal device has scheduling restrictions related to intra-frequency measurements (see fig. 8, 804, para. 0391, discloses UE transmitting measurement report including RSRP, see para. 0033, 0210. The RSRP when compared to configured S-measureconfig threshold, i.e. search threshold indicates if the measurement will be performed or not, thereby indicating if the UE is allowed to perform measurement or not. See para. 0328-0334),
wherein the first information comprises:
signaling from the terminal device indicating that the terminal device will initiate the intra-frequency measurements (See para. 0328-0334, the measurement indicates if the threshold is exceeded or not and performing the measurement or not), and
singling from the terminal device indicating that the terminal device will no longer perform the intra-frequency measurements (see Id.); and
based on the first information, perform scheduling for the terminal device (See Id.).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16, 18, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Da Silva in view of Teng et al. (US 2014/0204791).
Regarding claims 16, 28, Da Silva (US 2023/0327790 A1) discloses a terminal device, comprising:
at least one processor (see para. 0449); and
at least one memory storing instructions which, when executed by the at least one processor (see para. 0449), cause the terminal device to:
transmit to a network device a message outside of a synchronization signal block (SSB) measurement timing configuration (SMTC) window, a first information indicating whether the terminal device has scheduling restrictions related to intra-frequency measurements (see fig. 8, 804, para. 0391, discloses UE transmitting measurement report including RSRP, see para. 0033, 0210. The RSRP when compared to configured S-measureconfig threshold, i.e. search threshold indicates if the measurement will be performed or not, thereby indicating if the UE is allowed to perform measurement or not. See para. 0328-0334. Additionally, the reporting of measurement is regardless of SMTC window);
wherein the terminal device is configured with 3GPP s-MeasureConfig search threshold that specifies a serving cell reference signal received power (S-RSRP) level controlling when the terminal device performs intra-frequency measurements of non- serving cells on the serving carrier (see para. 0328-0334); and
wherein the first information indicates:
a first information indicating that the terminal device will initiate intra- frequency measurements when the serving cell SS-RSRP falls below the s-MeasureConfig threshold (see para. 0328-0334); and
a first information I-1" indicating that the terminal device will no longer perform intra-frequency measurements when the serving cell SS-RSRP exceeds the s-MeasureConfig threshold (see para. 0328-0334).
Da Silva fails to disclose but Teng (US 2014/0204791) discloses transmit to a network device exclusively via a media access control control element (MAC-CE) message (see para. 0043).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify to include transmitting to a network device exclusively via a MAC CE message as described by Teng.
The motivation for doing so would be to allow signaling to a network device utilizing well known protocol.
Regarding claim 18, Da Silva discloses the terminal device wherein the first information is transmitted using a) layer 3 signaling, for example radio resource control, RRC, signaling, b) layer 2 signaling, for example medium access control, MAC, signaling, and c) layer 1 signaling (see para. 0419, discloses at least RRC message).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu et al. (US 2021/0329483 A1) – discloses signalling of capability information which includes S-Measure threshold, indicative of when UE can perform measurement based on RSRP.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NISHANT B DIVECHA whose telephone number is (571)270-3125. The examiner can normally be reached 8:00 AM-6:00 PM.
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NISHANT B. DIVECHA
Supervisory Primary Examiner
Art Unit 2419
/Nishant Divecha/ Supervisory Patent Examiner, Art Unit 2419
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