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 5/12/2026 have been fully considered but they are not persuasive.
Section 2114(II) of the MPEP states:
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
In claims 1 and 3-6, the applicant is claiming a device which is an apparatus. The claimed device comprises a processor circuit and memory circuit that stores instructions for the processor (claim 1) and an inactivity timer (claim 3). The second and third “wherein” clauses of claim 1 state what the processor does but they do not limit the structure of the processor or the instructions stored in the first wherein clause of claim 1. The fourth “wherein” clause states what the device does but does not limit the structure of the device. The fifth “wherein” clause does not limit the structure of the device in any manner.
The applicant makes the following argument regarding claim scope:
The Examiner notes that Figure 9 shows "the first two wherein clauses [memory clause and processor clause] of claim 1", and acknowledges that Figure 9 illustrates a generic arrangement of the memory and processor. The applicants concur that the claimed arrangement may be a "generic arrangement that would apply to any computer", and fail to understand why the claimed arrangement needs to be further distinguished from a generic arrangement.
With regard to "what the "arrangement" of the device is that causes it "to enter an inactive mode or sleep mode if a criterion is met"", the applicants note that the first clause of claim 1 recites "wherein the memory is arranged to store instructions for the processor circuit". The applicants respectfully maintain that one of skill in the art would recognize that a generic arrangement of processor and memory would "cause the device to enter an inactive mode or sleep mode if a criterion is met" if the instructions to do so were part of the "instructions for the processor circuit" in the memory.
The applicant’s claim interpretation is not correct because they applicant has not recited any relationship between the instructions stored in the memory and the actions recited as being performed by the processor. The applicant needs to explicitly claim that the instructions stored in the memory cause the processor to perform the claimed reception of a transmission, operation in a Discontinuous Reception mode, and entering an inactive or sleep mode in response to evaluation of a criterion in order to establish patentable weight for these features. As such, any computer with a processor and memory that stores instructions reads on the scope of claim 1 based on the guidance given to the examiner by section 2114(II) of the MPEP. As such Figure 22 of Yu shows the claimed apparatus. Figure 10 of Yu shows the inactivity timer.
Claims 46 and 53 present a method and medium storing instructions for performing the method. The method claimed is not coherent because none of the limitations are claimed as having anything to do with each other. The reception of the transmission in the first limitation has nothing to do with operating in a Discontinuous Reception mode in the second limitation. The third limitation has nothing to do with the particulars of the first and second limitations, aside from being part of the same method. Figure 10 of Yu clearly shows receiving a transmission over a sidelink and the unrelated concept of operation in a Discontinuous Reception mode.
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 46 and 53 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.
The applicant claims the following limitation:
wherein the criterion is selected from the group consisting of
The applicant did not disclose a method step of selecting a criterion from a group. Original claim 2 featured this limitation but in the context of a device but claim 2 had no limiting effect on the structure of the device (see section 2114(II) of the MPEP). The applicant disclosed that the criterion could comprise the claimed factors but the applicant did not disclose that the invention included an active step of selecting the criterion.
Claim Rejections - 35 USC § 112
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.
Claim 3 is rejected for claiming an arrangement of a processor circuit as explained on page 3 of the 2/18/2026 Office Action.
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.
Claim(s) 1, 3-6, 46, and 53 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipatated by U.S. Patent Application Publication Number 2019/0174411 by Xu et al.
As to claim 46, Xu teaches a method for operating a device (Network node in Figure 10) comprising: receiving a transmission from at least one second device over a sidelink (paragraph 101); operating in a Discontinuous Reception mode (Figure 10, shows a process of operation of the Network node in such a mode); and entering an inactive mode or sleep mode if a criterion is met (paragraph 104, sleep time shown in Figure 10 is dependent on timer criterion), wherein the criterion is selected from a group comprising: reception of an end of transmission signaling (number 3 in Figure 10), all transmissions announced from the at least one second device are received, successful reception of the at least one transmission, wherein the at least one transmission comprises resources reserved in the future for retransmissions of the at least one transmission (paragraph 101 describes the criterion related to a successful reception of a transmission and Figure 10 and paragraph 102 show the reservation of resources for retransmission), there is no ongoing transmission from another one of the at least one second device (in Figure 10, the device is not aware of any other transmission from any other device when (3) is received), there is no ongoing transmission from a group leader device or a device with an ID (in Figure 10, the device is not aware of any other transmission from any other device when (3) is received).
As to claim 53, the Network node in Figure 10 is a device which executes programs.
As to claim 1, Xu teaches a device comprising a processor circuit and memory circuit, wherein the memory circuit is arranged to store instructions for the processor circuit (Figure 22 and corresponding text, Figure 22 shows the same components and arrangement as applicant’s Figure 9). The processor circuit and device of Xu are “arranged” in the same manner as the disclosed by the applicant in on pages 42-44 and shown in Figure 9. The “wherein” clauses, even if claimed coherently, would not be patentable for the reasons given in the rejection of claim 46.
As to claims 3, 5, and 6, see Figure 10.
As to claim 4, see paragraph 101 and mapping in the rejection of claim 46.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached at 571-272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
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