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 .
This office action is in response to the Applicant’s communication filed on 12/03/2025. Claims 7 – 10 are currently pending in this application.
In view of applicant’s amendment and arguments regarding rejection of claims 7 – 10 under 35 U.S.C. 101, set forth in the previous Office Action, the rejection(s) is/are hereby withdrawn.
The applicant’s arguments have been considered but are moot in view of new ground(s) of rejections necessitated by the applicant’s amendment.
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 7 – 10 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 7, as amended, recites:
“the control section applies the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA.”
On page 5 of the Remarks, the Applicant states that support for the amendment may be found in paragraphs 0060 – 0067 and 0072. However, while the Examiner was able to find support in cited paragraphs for other claim amendments, the Examiner was not able to find any support for the amendment cited above. Particularly, no support was found for applying “the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA.”
The same argument applies to similarly worded claims 9 and 10.
Therefore, the examiner considers claims 7, 9 and 10 as containing new matter. To overcome this rejection, the applicant is required to point out the exact place in the specification as filed which would provide support for the subject matter cited above or to amend the claims to bring them in conformance with the specification.
Claim 8 is also rejected as being dependent from the rejected base claim.
Claim Rejections - 35 USC § 103
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 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.
Claims 7 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020095455 (references are given according to US 20210392536) (FUJIMURA) in view of US 20190104476 (Lim).
Regarding claim 9, FUJIMURA teaches “A system (shown in FIG 1 and 2), comprising:
a terminal (user device 20 in FIG 1 and 2) that generates Capability information including a Power Class of the terminal, and transmits the Capability information (paragraphs 0036 – 0037: the user device 20 transmits a UE Capability report (UE Capability Information) to the base station device 10. Generation of this capability is implicit. FIG. 3 is a diagram illustrating an example of UE capacity. The “RF-Parameters” illustrated in FIG. 3 is an information element used for transmitting UE capability related to RF in NR operation from the user device 20 to the base station device 10. The “RF-Parameters” include capability supported on a per-band basis. “ue-PowerClass” is defined as pc1, pc2, pc3, and pc4 (“including a Power Class of the terminal”).); and
a base station (base station 10 in FIG 1 and 2) that receives the Capability information (reception of this information is shown as S12 in FIG 2),
wherein Max TRP (Total Radiated Power) and Max EIRP (Equivalent Isotropic Radiated Power) are specified for each of the Power Classes (Par. 0033 and Table 3 showing Max TRP and Max EIRP per power class PC of the user equipment)…”
FUJIMURA does not teach “for inter-band CA (Carrier Aggregation) using a first component carrier in a first band and a second component carrier in a second band different from the first band, a specified value of the Max TRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band, the terminal applies the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA.”
On the other side, Lim in FIG 5 with corresponding description in paragraphs 0083 – 0085 teaches “inter-band CA (Carrier Aggregation) using a first component carrier in a first band and a second component carrier in a second band different from the first band.” Additionally, Lim teaches or fairly suggests “a specified value of the Max TRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band (paragraph 0178: for the UE configured for simultaneous E-UTRA uplink (“the first band”) and NR uplink (“the second band”) transmissions for inter-band EN DC bands, the UE may determine its configured maximum output power PCMAX,c,E-UTRA and PCMAX,c,NR for the configured E-UTRA uplink carrier and the configured NR carrier, respectively. Thus, the UE “specifies” these values by the virtue of determination. Additionally, determination of maximum output power PCMAX,c,E-UTRA for the configured E-UTRA uplink carrier and separate determination of maximum output power PCMAX,c,NR for the configured NR carrier corresponds to the requirement that the “specified value of the Max TRP” “is defined separately for the first band and the second band”, where the first band is E-UTRA band and the second band is NR band. With respect to “corresponding to at least one of the Power Classes”, this is implicit since the UE by default falls under one of the power classes. Particularly, Lim mentions Power Class 2 (see at least paragraphs 0184 and 0197)),
the terminal applies the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA (with respect to application of PCMAX,c,E-UTRA “for the first band”, see paragraph 0179 where it is used in sub-frame p for the configured E-UTRA uplink carrier. With respect to application of PCMAX,c,NR “for the second band”, see paragraph 0193 where it is used in slot q for the configured NR carrier).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Lim power calculation for carriers in different bands for inter-band carrier aggregation, in the system of FUJIMURA. Doing so would have allowed to utilize FUJIMURA’s user equipment in a carrier aggregation scenario.
Regarding claim 7, this claim for a terminal is rejected because of the same reasons as set forth in the rejection of claim 9 because claim 7 has similar but broader limitations. Claim 7 additionally recites “a control section”. This is disclosed by FUJIMURA as control unit 240 in FIG 8 and paragraph 0083.
Regarding claim 10, this claim for a method is rejected because of the same reasons as set forth in the rejection of claim 9 because claim 10 has similar but broader limitations.
Regarding claim 8, FUJIMURA does not teach “for the inter-band CA, a specified value of the Max EIRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band.”
However, this claim merely represents non-functional descriptive material. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 F. App’x 959 (Fed. Cir. 2006). In particular, the limitation “for the inter-band CA, a specified value of the Max EIRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band” is construed as having no patentable weight. That is, the message contents in the italicized limitation does not need to distinguish the claim over prior art including parameters with different content and, therefore, the content does not need to be shown in the prior art to render the claim anticipated or obvious.
Claims 7 – 10 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over WO 2020095455 (references are given according to US 20210392536) (FUJIMURA) in view of ETSI TS 138 101-1 V16.5.0 (published 2020-11) (ETSI).
Regarding claim 9, FUJIMURA teaches “A system (shown in FIG 1 and 2), comprising:
a terminal (user device 20 in FIG 1 and 2) that generates Capability information including a Power Class of the terminal, and transmits the Capability information (paragraphs 0036 – 0037: the user device 20 transmits a UE Capability report (UE Capability Information) to the base station device 10. Generation of this capability is implicit. FIG. 3 is a diagram illustrating an example of UE capacity. The “RF-Parameters” illustrated in FIG. 3 is an information element used for transmitting UE capability related to RF in NR operation from the user device 20 to the base station device 10. The “RF-Parameters” include capability supported on a per-band basis. “ue-PowerClass” is defined as pc1, pc2, pc3, and pc4 (“including a Power Class of the terminal”).); and
a base station (base station 10 in FIG 1 and 2) that receives the Capability information (reception of this information is shown as S12 in FIG 2),
wherein Max TRP (Total Radiated Power) and Max EIRP (Equivalent Isotropic Radiated Power) are specified for each of the Power Classes (Par. 0033 and Table 3 showing Max TRP and Max EIRP per power class PC of the user equipment)…”
FUJIMURA does not teach “for inter-band CA (Carrier Aggregation) using a first component carrier in a first band and a second component carrier in a second band different from the first band, a specified value of the Max TRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band, the terminal applies the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA.”
On the other side, ETSI teaches “for inter-band CA (Carrier Aggregation) using a first component carrier in a first band and a second component carrier in a second band different from the first band (p. 123, Sec. 6.2A.1.3: inter-band carrier aggregation with uplink assigned to two NR bands), a specified value of the Max TRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band (p. 123, Sec. 6.2A.1.3: The maximum output power is specified in Table 6.2A.1.3-1. Table 6.2A.1.3-1 pages 124 – 125 shows values for UE Power Class for uplink inter-band CA (two bands). As an example consider the first line of the table, also shown below:
3GPP TS 38.101-1 version 16.5.0 Release 16
ETSI TS 138 101-1 V16.5.0 (2020-11)
Uplink CA Configuration
Class 1 (dBm)
Tolerance (dB)
Class 2 (dBm)
Tolerance (dB)
Class 3 (dBm)
Tolerance (dB)
Class 4 (dBm)
Tolerance (dB)
CA_n1A-n3A
23
+2/-32
The first line shows that for the inter-band CA with bands n1A and n3A, for the Power Class 3, the maximum output power is specified at 23 dBm for both bands. However, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that specifying a single number for both bands or separating the bands and specifying the same number individually per band is simply a matter of choice of information presentation. For example, the following reformatted table would convey exactly same information:
3GPP TS 38.101-1 version 16.5.0 Release 16
ETSI TS 138 101-1 V16.5.0 (2020-11)
Uplink CA Configuration
Band
Class 1 (dBm)
Tolerance (dB)
Class 2 (dBm)
Tolerance (dB)
Class 3 (dBm)
Tolerance (dB)
Class 4 (dBm)
Tolerance (dB)
CA_n1A-n3A
n1A
23
+2/-32
n3A
23
+2/-32
However, in case of the second table, while showing the same information as the first table and thus being disclosed by the reference, the second table shows “a specified value of the Max TRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band”, as required by the limitation), the terminal applies the Max TRP for the first band and the Max TRP for the second band that correspond to the Power Class to execute the inter-band CA (implicit, since this is generally the purpose of this value).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by ETSI power limitations for carriers in different bands for inter-band carrier aggregation, in the system of FUJIMURA. Doing so would have allowed to utilize FUJIMURA’s user equipment in a carrier aggregation scenario.
Regarding claim 7, this claim for a terminal is rejected because of the same reasons as set forth in the rejection of claim 9 because claim 7 has similar but broader limitations. Claim 7 additionally recites “a control section”. This is disclosed by FUJIMURA as control unit 240 in FIG 8 and paragraph 0083.
Regarding claim 10, this claim for a method is rejected because of the same reasons as set forth in the rejection of claim 9 because claim 10 has similar but broader limitations.
Regarding claim 8, FUJIMURA does not teach “for the inter-band CA, a specified value of the Max EIRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band.”
However, as explained in the rejection of claim 9 above, FUJIMURA in par. 0033 and Table 3 teaches Max TRP and Max EIRP per power class PC of the user equipment, while ETSI teaches specifying Max TRP for inter-band carrier aggregation. It was also shown above that specifying separately Max TRP for different bands is simply a matter of information presentation, nothing more, by merely modifying a known table and rearranging information within the table. The device of combined FUJIMURA and ETSI’s disclosures would have been able to utilize inter-band carrier aggregation while adhering to the power limits specified for each band.
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the application, similar to an obvious variation in specification of Max TRP for each band as was explained in the rejection of claim 9 above, to implement the same method of information presentation for Max EIRP as well, by specifying it separately for each band. Doing so would have been merely a matter of choice and presentation technical information.
As an example, FUJIMURA in Table 3 specifies Max EIRP per power class PC of the user equipment, such as for Power Class 3, the Max EIRP is shown to be 43 dBm and Max TRP is shown to be 23 dBm. On the other side ETSI in Table 6.2A.1.3-1 also shows for inter-band CA for the same Power Class 3, the maximum output power for the specific combination of CA_n1A-n3A is the same 23 dBm for each band. In the rejection of claim 9 above it was shown that the same information may simply be presented as separate indication of 23 dBm for each band. Following this, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to also present Max EIRP of 43 dBm in the following manner:
Band
Max EIRP
n1A
43
n3A
43
thus meeting the limitation of the claim.
Additionally or alternatively, this claim merely represents non-functional descriptive material. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 F. App’x 959 (Fed. Cir. 2006). In particular, the limitation “for the inter-band CA, a specified value of the Max EIRP corresponding to at least one of the Power Classes is defined separately for the first band and the second band” is construed as having no patentable weight. That is, the message contents in the italicized limitation does not need to distinguish the claim over prior art including parameters with different content and, therefore, the content does not need to be shown in the prior art to render the claim anticipated or obvious.
Conclusion
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 GENNADIY TSVEY whose telephone number is (571)270-3198. The examiner can normally be reached Mon-Fri 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wesley Kim can be reached at 571-272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENNADIY TSVEY/ Primary Examiner, Art Unit 2648
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