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 .
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
First, it is considered that the amendments incorporate new matter as applied below.
Second, claim 23 is directed toward an apparatus patentably defined by its structure. The BRI of the apparatus is the recited circuitry enabled to “obtain” and “perform”. The newly amended wherein clause, reciting that the obtained information is “applicable” or able to be applied does not in any way shape or form alter or affect the structure of the apparatus as it at best recites an intended use and/or provides for nonfunctional descriptive limitations not carrying patentable weight.
Claim 43 recites a method corresponding to the apparatus of claim 23 and comprises steps of “obtaining” and “performing”. The wherein clause again similarly fails to patently limit the claim as the clause has no interaction with any part of the claim.
New Claims 52-54 are directed toward non-elected subject matter.
Applicant’s arguments with respect to claim(s) 32 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Election/Restrictions
Newly submitted claims 52-54 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Applicant previously elected claims limited to the realm of the UE (Group I) over claims in the realm of a network device (Group II). The new claims are clearly directed to a network device and not the UE and do not overlap in scope.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 52-54 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 23, 25-34, and 43-51 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.
Claims 23 and 43 recite that the “cell selection priority” is “applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type and claims 32 and 51 recite wherein the cell reselection priority is applicable per service or slicing information or UE mobility state, UE battery status, UE location, or UE device type.
The claims are directed toward an apparatus and corresponding method of using the apparatus. Heretofore, the instant specification disclosed (based on original claim 32 as of preliminary amendment 8/1/2023: “wherein the cell reselection indication is generated per service, slicing information, UE mobility state, UE battery status, UE location, UE device type, or cell load” which pertains to how the indication may be generated (by the another entity) but is silent to how the apparatus may or may not utilize or apply the received information.
Claims 23, 25-34, and 43-51 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 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.
Claims 23 and 43 recite that the “cell selection priority” is “applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type and claims 32 and 51 recite wherein the cell reselection priority is applicable per service or slicing information.
The claims are directed toward an apparatus and corresponding method of using the apparatus. Heretofore, the instant specification disclosed (based on original claim 32 as of preliminary amendment 8/1/2023: “wherein the cell reselection indication is generated per service, slicing information, UE mobility state, UE battery status, UE location, UE device type, or cell load” which pertains to how the indication may be generated (by the another entity) but is silent to how the apparatus may or may not utilize or apply the received information. Further, it is considered that “applicable” is overly broad and reads on any conceivable way to use the information and the specification provides for at most that which is disclosed. From what perspective is ‘applicable’ relevant? That is who or what determines or thinks the information is applicable and to what regard would it need able to be used for it to be applicable?
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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.
Claims 23, 25-34, and 43-51 are 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.
Claims 23 and 43 recite “…wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type”; and
Claims 32 recites “…wherein the cell reselection priority is applicable per service, or slicing information”.
Claim 51 recites “wherein the cell reselection priority is applicable per UE mobility state, UE battery status, UE location, or UE device type”.
The specification fails to recite or define “is applicable” and therefore it would be impossible for one of ordinary skill in the art to know the meets and bounds of what is to be considered “applicable”. Could one perform the steps of the claim without the information being applicable? Would the invention need apply the information for it to be considered applicable? Would the apparatus need be configured for such applicability? What if one of the network or apparatus considered the information applicable but the other did not? What exactly must be configured in the apparatus to consider the received information as applicable? Could the information be applicable to one apparatus but not another? Must it be applicable to the apparatus at hand or merely potentially applicable for some device? How would that affect the scope of the claims?
Further to claim 32 which depends from claim 23, Claim 23 recites “wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type”. While claim 32 recites “The apparatus of claim 23, wherein the cell reselection priority is applicable per service or slicing information.” Thereby bringing into question the scope of claim 32. Is the priority applicable per the limitations of claim 23 or 32?
Further to claim 51, which depends from claim 43, Claim 43 recites “wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type”. While claim 51 recites: “The method of claim 43, wherein the cell reselection priority is applicable per UE mobility state, UE battery status, UE location, or UE device type.” Thereby bringing into question the scope of claim 51. Is the priority applicable per the limitations of claim 43 or 51?
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 32 and 51 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 32, depending on claim 23, recites: “The apparatus of claim 23, wherein the cell reselection priority is applicable per service or slicing information”. However claim 32 already set forth Claim 23 recites “wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type”. Therefore the narrowest reading of the claim would result in An apparatus wherein the limitations of claim 32 override the limitations of 23 resulting in a possibility in which an apparatus would infringe claim 32 but not claim 23.
Claim 51, depending from claim 43, recites “The method of claim 43, wherein the cell reselection priority is applicable per UE mobility state, UE battery status, UE location, or UE device type”. However claim 43 aleady set forth “wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type”. Therefore the narrowest reading of the claim would result in An apparatus wherein the limitations of claim 51 would override the limitations of 43 resulting in a possibility in which an apparatus would infringe claim 51 but not claim 43.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23, 25-27, 29-30, 32, 43-46, 48-49, and 51 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Maattanen et al. (2023/0319661) hereinafter “Maattanen”.
As to claim 23, (Currently amended) Maattanen discloses An apparatus (110) comprising:
interface circuitry (114/120); and
processing circuitry (126/120) coupled with the interface circuitry, the processing circuitry (see Fig 6, [0131]-[0136]) to (Fig 10):
obtain ([0181]: “At step 506 the wireless device receives the parameter from the network node”), from a network device ([0179]: “At step 504 network node sends a parameter to a wireless device…”) via the interface circuitry, a cell reselection priority (“…The parameter is related to cell reselection… or prioritize an NTN network node… or a TN network node…”), wherein the cell reselection priority indicates whether a terrestrial network (TN) cell or a non-terrestrial network (NTN) cell is to be prioritized for cell reselection (see [0180]: “…the parameter comprises an indication that the wireless device is to search for terrestrial network (TN) network nodes even if a suitable NTN network node has been found… That is, the
parameter can be used to get the wireless device to switch between a TN and a NTN network node…”; and
perform ([0183]: “At step 510 the wireless device initiates cell reselection… based on the parameter…”) the cell reselection based on the cell reselection priority.
Regarding the amendment (wherein the cell reselection priority is applicable per service, slicing information, user equipment (UE) mobility state, UE battery status, or UE device type). In this case, it is considered that the cell reselection priority would be applicable (at least) per device type, as it would make no sense to an early generation apparatus (UE), nor an apparatus not configured for roaming and/or both TN and NTN communication. See [0026]-[0029], etc which provides for consideration that the UE device type would be compatible with the configured information.
Further, as discussed above, the BRI of the claim does not include the language of the wherein clause, but it has been treated for compact prosecution.
As to claim 25, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the processing circuitry is further to:
obtain a frequency reselection indication from the network device, wherein the frequency reselection indication indicates a range of frequencies to be used for communication (see [0107]-[0110]); and
perform the cell reselection based on the cell reselection priority within the range of frequencies indicated by the frequency reselection indication. See [0026]-[0029].
As to claim 26, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the processing circuitry is further to:
determine, based on the cell reselection priority, a camping cell for which the cell reselection is performed (see [0005], [0037], 0054];
obtain a frequency reselection indication from the network device, wherein the frequency reselection indication indicates a range of frequencies to be used for communication (see [0107]-[0110]);
determine whether the range of frequencies is shared by the camping cell (see [0026]-[0029]); and
perform (see [0032]) the cell reselection based on the cell reselection priority and said determining the range of frequencies is shared by the camping cell (intra-frequency).
As to claim 27, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the processing circuitry is further to:
receive network signaling to configure the cell reselection priority ([0181]-[0182]).
As to claim 29, (Currently amended) Maattanen discloses The apparatus of claim 27, wherein the network signaling is a cell-specific configuration of a cell on which a user equipment (UE) is currently camping. See [0179].
As to claim 30, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the cell reselection priority comprises a TN/NTN specific offset parameter, and to provide an offset in evaluating a criterion which determines whether the TN cell or the NTN cell is suitable to
serve as a camping cell for which the cell reselection is performed. See [0180],[0182], [0188]-[0190],[0198]-[0199],
As to claim 32, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the cell reselection priority is applicable per service or slicing information as applied above to claim 23.
As to claims 43-46, 48-49, and 51 it is considered that the apparatus of Maattanen as applied above to claims 23, 25-27, 29-30, & 32 respectively, produces the method comprising the corresponding steps as claimed.
Further to claim 51, (Currently amended) Maattanen discloses The method of claim 43, wherein the cell reselection priority is applicable per UE mobility state, UE battery status, UE location, or UE device type as applied above to claim 43.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 28 and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maattanen as applied to claims 27/46 above, and further in view of Cheng (2021/0068013).
As to claim 28, (Currently amended) Maattanen discloses The apparatus of claim 27, wherein the network signaling is a user equipment (UE-)-specific configuration [0179], is silent to yet in an analogous art Cheng discloses and the cell reselection priority further comprises a validity timer during which the UE-specific configuration is valid, and wherein the processing circuitry is further to:
discard the UE-specific configuration upon expiration of the validity timer. See [0156]-161]. Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Maattanen such that the cell reselection priority further comprises a validity timer during which the UE-specific configuration is valid, and wherein the processing circuitry is further to discard the UE-specific configuration upon expiration of the validity timer, as taught by Jung for the purpose of housekeeping.
As to claim 47, it is considered that the apparatus of Maattanen and Jung produces the method comprising the steps as claimed.
Claim(s) 31 and 50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maattanen as applied to claims 23/43 above, and further in view of Jeong et al. (2022/0353760) hereinafter “Jeong”
As to claim 31, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the cell reselection priority comprises a user equipment (UE-) dedicated priority for the TN cell and the NTN cell [0179], and Jeong discloses the processing circuitry is further to:
output, for transmission to the network device, UE subscription information (F10S4, [0143],[0144]); and
receive the cell reselection priority via non-access stratum (NAS) signaling (see [0137]). Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Maattanen such that the processing circuitry is further to: “output” and “receive” as taught by Jeong for the purpose of accommodating the various new services /applications / requirements of 5G or NR [0003].
As to claim 50, it is considered that the apparatus of Maattanen and Jeong produces the method comprising the steps as claimed.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maattanen as applied to claims 23 above, and further in view of Youtz et al. (2022/0338080) hereinafter “Youtz”.
As to claim 33, (Currently amended) Maattanen discloses The apparatus of claim 23, wherein the processing circuitry is further to:
receive a paging message (see [0005]) is silent to yet in an analogous art Youtz discloses receiving a paging message that indicates the cell reselection priority. See [0011]. Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Maattanen such that the paging indicates the cell reselection priority as taught by Youtz for the purpose of getting full use of the paging.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maattanen as applied to claims 23 above, and further in view of Dwyer et al. (2010/0265926) hereinafter “Dwyer”.
As to claim 34, (Currently amended) Maattanen discloses The apparatus of claim 23, is silent yet in an analogous art Dwyer discloses wherein the processing circuitry is further cause the UE to:
Indicate [0025], to the network device, a preference for the (network) TN cell or the NTN cell; and
Obtain [0054], from the network device, a redirection message that includes the cell reselection priority (preference). Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Maattanen such that the processing circuitry is further to: “Indicate” and “Obtain” as taught by Dwyer for the purpose of changing the priority information.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maattanen as applied to claim 23 above, and further in view of Jung et al. (2023/0055788) hereinafter “Jung”.
As to claim 32, (Currently amended) Maattanen discloses The apparatus of claim 23, however fails to explicitly recite wherein the cell reselection priority is applicable per service or slicing information. In an analogous art, Jung discloses the advantages of slicing and/or providing a virtual network or service, as well as a slice priority value. See [0127]-[0128], Fig.5, [0137], [0140], etc. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify the apparatus of Maattanen wherein the cell reselection priority is applicable per service or slicing information, as taught by Jung for the purpose of taking advantage of slicing.
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 LESTER KINCAID whose telephone number is (571)272-7922. The examiner can normally be reached M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yuwen Pan can be reached at 571-272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LESTER G. KINCAID
Primary Patent Examiner
Art Unit 2649
/LESTER G KINCAID/Primary Examiner, Art Unit 2649
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