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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/21/2023 and 12/03/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 8 of copending Application No. 18/273,482 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention being claimed has a broader disclosure than the claims filed in the reference copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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:
Claim 1 recites “a control unit that configures”
Claim 6 recites “a control unit that allocates”; “a transmission unit that transmits”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
“Control unit that configures” appears to be a processor (see para. [0112][0113] of the specification)
“Control unit that allocates” appears to be a processor (see para. [0112][0113] of the specification)
“Transmission unit that transmits” appears to be a transmitter (see para. [0107] of the specification)
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 3, 5 - 8, and 10 - 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (WO 2017135419, attached machine translation is used for the mapping herein).
Regarding Claim 1, Takeda et al. discloses A terminal (Takeda et al. discloses the NB IoT terminal (FIGS. 4, 9, and 10)) comprising: a control unit (Takeda et al. discloses that the control unit 401 may specify a second narrow band by, e.g., a PRACH set across narrow bands by an SIB received from the radio base station 10 (page 17 last paragraph to page 18 1st paragraph; FIG. 9 and 10). The baseband signal processing unit 204 performs FFT processing, error correction decoding, and retransmission control reception processing for an input baseband signal (page 16, 4th paragraph under the heading of “User terminal”; FIG. 9). The baseband signal processing unit 204 of the user equipment 20 includes at least a control unit 401 (page 17, paragraph 4th paragraph; FIG. 10)) that configures bandwidth resources narrower than a normal minimum unit when specific condition is met or specific notification is received (Takeda et al. discloses that FIG. 1 is a diagram illustrating exemplary allocation of the band used in the NB-IoT terminal (page 3, paragraph 2nd paragraph; FIG. 1). Any band may be used in the NB-IoT terminal as long as it is a band narrower than the system band of the existing LTE system, such as 1.4 MHz that is equal to the minimum system band of the existing LTE system, or a band narrower than 180 kH (page 6, paragraph 2nd paragraph). The radio base station transmits an SIB for setting narrow bands, as illustrated as FIG. 4. The NB-IoT terminal selects a set resource of a PRACH set across the narrow bands by the SIB (page 6, last paragraph before the heading of “First transition method”; FIG. 4)); and a transmission unit that performs transmission operation with the bandwidth resources configured (Takeda et al. discloses that the transmission and reception unit 203 converts the baseband signal output from the baseband signal processing unit 204 into a radio frequency band and transmits it (page 17, 2nd paragraph; FIG. 9). The transmission/reception unit is configured by a transmitter/receiver (page 16, 3rd paragraph under the heading of “User Terminal”) A radio frequency signal received by the transmission and reception antenna 201 is amplified by the amplification unit 202. The transmission and reception unit 203 receives a downlink signal amplified by the amplification unit 202 (page 16, 2nd paragraph under the heading “User terminal”; FIG. 9). The NB-IoT terminal selects a set resource of a PRACH set across the narrow bands by the SIB, and transmits a random access preamble (PRACH) (Message 1) by the selected set resource of the PRACH (page 6, last paragraph before the heading “First transition method”; FIG. 4)).
Regarding Claim 2, Takeda et al. discloses The terminal according to claim 1, and further the reference discloses wherein the specific notification is a notification from a base station related to allocation of the narrower bandwidth resources (Takeda et al. discloses that SIB (System Information Block) may be defined as system information for NB-IoT terminals, and the SIB may be called M-SIB (MTC SIB), NB-SIB. (page 4, paragraph 5). The radio base station transmits an SIB for setting a plurality of narrow bands (page 6, paragraph 4; FIG. 4). The use band of the NB- IoT terminal is limited to 180 kHz (1 PRB), which is a narrower band than the minimum system band (1.4 MHz) of the existing LTE system. Absent. As long as the band used by the NB-IoT terminal is narrower than the system band of the existing LTE system, for example, 1.4 MHz equal to the minimum system band of the existing LTE system or a band narrower than 180 kHz, any band may be used. Bandwidth may be used (page 6, paragraph 2)).
Regarding Claim 3, Takeda et al. discloses The terminal according to claim 1, and further the reference discloses wherein the specific notification is a notification by at least one of RRC, SIB, MIB and SS from a base station (Takeda et al. discloses that the radio base station transmits an SIB for setting a plurality of narrow bands (page 4, paragraph 5; FIG. 4)).
Regarding Claim 5, Takeda et al. discloses The terminal according to claim 1, and further the reference discloses wherein the control unit assumes transmission of an aperiodic signal from a base station after transmission by the transmission unit (Takeda et al. discloses that when receiving the message 3, the radio base station transmits a contention resolution message to the user terminal (message 4). The NB-IoT terminal completes the random access process by the above procedure and establishes a connection (page 6, 1st paragraph above the header “First transition method”). [Examiner Note: Since Random Access Response procedures do not involve periodic signals, the Message 4 is not a periodic signal and will be sent as an aperiodic signal in response to receiving Message 3]).
Regarding Claim 6, Takeda et al. discloses A base station (Takeda et. discloses wireless base station 10 (page 14, paragraph 1; FIG. 8)) comprising: a control unit (Takeda et. discloses a control unit 301 (page 14, paragraph 1; FIG. 8). The control unit 301 notifies the user terminal 20 of various pieces of information for specifying the second narrowband as a transition destination from the first narrowband within the system band before the random access is completed. (page 14, paragraph 6; FIG. 8)) that allocates to a terminal bandwidth resources narrower than a normal minimum unit for transmission (Takeda et. discloses FIG. 1 is a diagram showing an example of arrangement of used bands of NB-IoT terminals (page 3, paragraph 2; FIG. 1). The use band of the NB- IoT terminal is limited to 180 kHz (1 PRB), which is a narrower band than the minimum system band (1.4 MHz) of the existing LTE system. Absent. As long as the band used by the NB-IoT terminal is narrower than the system band of the existing LTE system, for example, 1.4 MHz equal to the minimum system band of the existing LTE system or a band narrower than 180 kHz, any band may be used. Bandwidth may be used. (page 6, paragraph 2). The radio base station transmits an SIB for setting a plurality of narrow bands, as illustrated in FIG. 4.); and a transmission unit (Takeda et. discloses that the transmission signal generation unit 302 (page 5, paragraph 4; FIG. 7 and 8)) that transmits a notification related to allocation of the narrower bandwidth resources to the terminal (Takeda et. discloses that the radio base station transmits an SIB for setting a plurality of narrow bands (page 4, paragraph 5; FIG. 4). The transmission signal generation unit 302 generates a downlink signal (PDCCH, PDSCH, downlink reference signal, SIB, random access procedure message, etc.) based on an instruction from the control unit 301 (page 5, paragraph 4; FIG. 7 and 8) The transmission/reception unit is configured by a transmitter/receiver (page 12, 1st paragraph)).
Regarding Claim 7, Takeda et al. discloses A communication method of a terminal (Takeda et al. discloses the NB IoT terminal (FIGS. 4, 9, and 10)), including the steps of: configuring bandwidth resources narrower than a normal minimum unit when specific condition is met or specific notification is received (Takeda et al. discloses that FIG. 1 is a diagram illustrating exemplary allocation of the band used in the NB-IoT terminal (page 3, 2nd paragraph; FIG. 1). The control unit 401 of the terminal may specify a second narrow band by, e.g., a PRACH set across narrow bands by an SIB received from the radio base station 10 (page 17 last paragraph to page 18 first paragraph; FIG. 9 and 10). Any band may be used in the NB-IoT terminal as long as it is a band narrower than the system band of the existing LTE system, such as 1.4 MHz that is equal to the minimum system band of the existing LTE system, or a band narrower than 180 kH (page 6, 2nd paragraph). The radio base station transmits an SIB for setting narrow bands, as illustrated as FIG. 4. The NB-IoT terminal selects a set resource of a PRACH set across the narrow bands by the SIB (page 6, last paragraph before the heading of “First transition method”; FIG. 4)); and performing transmission operation with the bandwidth resources configured (Takeda et al. discloses that the transmission and reception unit 203 converts the baseband signal output from the baseband signal processing unit 204 into a radio frequency band and transmits it (page 17, 2nd paragraph; FIG. 9). A radio frequency signal received by the transmission and reception antenna 201 is amplified by the amplification unit 202. The transmission and reception unit 203 receives a downlink signal amplified by the amplification unit 202 (page 16, 2nd paragraph under the heading “User terminal”; FIG. 9). The NB-IoT terminal selects a set resource of a PRACH set across the narrow bands by the SIB, and transmits a random access preamble (PRACH) (Message 1) by the selected set resource of the PRACH (page 6, last paragraph before the heading “First transition method”; FIG. 4)).
Regarding Claim 8, Takeda et al. discloses A communication method of a base station (Takeda et. discloses wireless base station 10 (page 14, paragraph 1; FIG. 4 and 8)), including the steps of allocating to a terminal bandwidth resources narrower than a normal minimum unit for transmission (Takeda et. discloses FIG. 1 is a diagram showing an example of arrangement of used bands of NB-IoT terminals (page 3, paragraph 2; FIG. 1). The control unit 301 of the base station notifies the user terminal 20 of various pieces of information for specifying the second narrowband as a transition destination from the first narrowband within the system band before the random access is completed. (page 14, paragraph 6; FIG. 8). The use band of the NB- IoT terminal is limited to 180 kHz (1 PRB), which is a narrower band than the minimum system band (1.4 MHz) of the existing LTE system. Absent. As long as the band used by the NB-IoT terminal is narrower than the system band of the existing LTE system, for example, 1.4 MHz equal to the minimum system band of the existing LTE system or a band narrower than 180 kHz, any band may be used. Bandwidth may be used. (page 6, paragraph 2). The radio base station transmits an SIB for setting a plurality of narrow bands, as illustrated in FIG. 4)); and transmitting a notification related to allocation of the narrower bandwidth resources to the terminal (Takeda et. discloses that the radio base station transmits an SIB for setting a plurality of narrow bands (page 4, paragraph 5; FIG. 4). The transmission signal generation unit 302 generates a downlink signal (PDCCH, PDSCH, downlink reference signal, SIB, random access procedure message, etc.) based on an instruction from the control unit 301 (page 5, paragraph 4; FIG. 7 and 8)).
Regarding Claim 10, Takeda et al. discloses The terminal according to claim2, and further the reference discloses wherein the control unit assumes transmission of an aperiodic signal from a base station after transmission by the transmission unit (Takeda et al. discloses that when receiving the message 3, the radio base station transmits a contention resolution message to the user terminal (message 4). The NB-IoT terminal completes the random access process by the above procedure and establishes a connection (page 6, 1st paragraph above the header “First transition method”). [Examiner Note: Since Random Access Response procedures do not involve periodic signals, the Message 4 is not a periodic signal and will be sent as an aperiodic signal in response to receiving Message 3]).
Regarding Claim 11, Takeda et al. discloses The terminal according to claim 3, and further the reference discloses wherein the control unit assumes transmission of an aperiodic signal from a base station after transmission by the transmission unit (Takeda et al. discloses that when receiving the message 3, the radio base station transmits a contention resolution message to the user terminal (message 4). The NB-IoT terminal completes the random access process by the above procedure and establishes a connection (page 6, 1st paragraph above the header “First transition method”). [Examiner Note: Since Random Access Response procedures do not involve periodic signals, the Message 4 is not a periodic signal and will be sent as an aperiodic signal in response to receiving Message 3]).
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.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (WO 2017135419, wherein attached machine translation is used for mapping) and further in view of Wei et al. (U.S. Patent Application Publication No. US 20200137731 A1).
Regarding Claim 4, Takeda et al. discloses The terminal according to claim 1, and although teaching that the NB-IoT terminal is assumed to be limited to 180 kHz (1 PRB) that is narrower than the minimum system band, Takeda et al. does not explicitly disclose wherein the bandwidth narrower than the normal minimum unit is less than one resource block or one or more subcarriers. Wei et al. discloses such a limitation.
Wei et al. is directed to Switch Between SUB PRB and Normal PRB Allocations for eMTC. More specifically, Wei et al. discloses that in some aspects, 3 tones, 4 tones, or 6 tones in a PRB may be allocated to the UE 402 for UL data transmissions from the UE 402 to the base station 404. Thus, the frequency allocation would be a sub RB sized frequency allocation since less than all of the tones (e.g., less than the 12 tones for typical LTE technology) of the PRB are allocated to the UE 402 (para. [0083]). In LTE technology (e.g., eMTC) each RB has 12 tones and a total bandwidth of 180 kHz in the RB. Thus, the RB sized frequency allocation may be an RB allocation where a particular PRB is assigned to the UE 402 and thus a set of 12 tones with a bandwidth of 180 kHz (para. [0081]). The PRB 502 has several sub PRB sized frequency allocations. The UE 402 (i.e., UE1) has one of the sub PRB size frequency allocations (para. [0120]; FIG. 5)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Takeda et al. so that bandwidth narrower than the normal minimum unit is less than one RB, as taught by Wei et al. The modification would have allowed for improved battery performance by reducing the frequencies that the terminal transmits on (see Wei et al., para. [0075]).
Regarding Claim 9, Takeda et al. discloses The terminal according to claim 2, and although teaching that the NB-IoT terminal is assumed to be limited to 180 kHz (1 PRB) that is narrower than the minimum system band, Takeda et al. does not explicitly disclose wherein the bandwidth narrower than the normal minimum unit is less than one resource block or one or more subcarriers. Wei et al. discloses such a limitation.
Wei et al. is directed to Switch Between SUB PRB and Normal PRB Allocations for eMTC. More specifically, Wei et al. discloses that in some aspects, 3 tones, 4 tones, or 6 tones in a PRB may be allocated to the UE 402 for UL data transmissions from the UE 402 to the base station 404. Thus, the frequency allocation would be a sub RB sized frequency allocation since less than all of the tones (e.g., less than the 12 tones for typical LTE technology) of the PRB are allocated to the UE 402 (para. [0083]). In LTE technology (e.g., eMTC) each RB has 12 tones and a total bandwidth of 180 kHz in the RB. Thus, the RB sized frequency allocation may be an RB allocation where a particular PRB is assigned to the UE 402 and thus a set of 12 tones with a bandwidth of 180 kHz (para. [0081]). The PRB 502 has several sub PRB sized frequency allocations. The UE 402 (i.e., UE1) has one of the sub PRB size frequency allocations (para. [0120]; FIG. 5)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Takeda et al. so that bandwidth narrower than the normal minimum unit is less than one RB, as taught by Wei et al. The modification would have allowed for improved battery performance by reducing the frequencies that the terminal transmits on (see Wei et al., para. [0075]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS RICHARD GRAEPEL whose telephone number is (571)272-5213. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Song can be reached at (571) 270-3667. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.R.G./Examiner, Art Unit 2417
/REBECCA E SONG/Supervisory Patent Examiner, Art Unit 2417
Prosecution Insights