DETAILED ACTION
Acknowledgements
This is a Non-Final Office Action addressing U.S. Application No. 18/369,198. Based upon a review of the instant application, the actual filing date of the instant application is September 18, 2023. Since the instant application was filed after September 16, 2012, the statutory provisions of the America Invents Act ("AIA ") will govern this proceeding.
The instant application is a reissue application of U.S. Patent No. 9,982,911 (“The ‘911 Patent”). The ‘911 Patent matured from U.S. Patent Application 13/672,041, filed November 8, 2012. The ‘911 Patent was a continuation of application No. 12/487,847 filed on Jun 19, 2009, now U.S. Patent No. 8,331,406, which was a continuation of PCT/KR2008/004093 filed July 11, 2008.
This instant application is also a continuation of U.S. application No. 16/813,737, now RE49,665, which was a continuation of U.S. 15/461,510, now RE47,910.
The Examiner acknowledges the Applicant’s foreign priority claims.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which the ‘911 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Reissue Applications
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: The reissue declaration is a copy of the reissue declaration filed in the parent application U.S. Patent App. 16/813,737 thus does not identify an error being corrected by the continuation reissue application. A new declaration is required a statement explaining compliance with 37 CFR 1.175(f)(2) is appropriate. See MPEP 1414(II)(D)(1).
Claims 41-43 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
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 41 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 43 of U.S. Patent No. RE47,910. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in claims 41 and 42 of the instant application are recited in claims 1 and 43, respectively of RE47,910, thus claims 41 and 42 are anticipated by claims 1 and 43 of RE47,910.
Claims 41-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 41, 55, and 62 of U.S. Patent No. RE49,665. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in claims 41-43 of the instant application are recited in claims 41, 55 and 62, respectively of RE49,665, thus claims 41-43 are anticipated by claims 41, 55, and 62 of RE49,665.
Recapture
Claims 41-43 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1414.02 sets forth a 3 step test for recapture. The Examiner finds that reissue claims 41-43 are broader than claims 42, 56, and 63 in (USRE) which matured from US Patent Application No. 16/813,737 which is the parent application to the instant application, in that the reissue claims do recite receiving a second primary and secondary synchronization signal; the all of the synchronization signal are received in a frame; and the composition of the second secondary synchronization signal. (See step 1 of the 3 step analysis). The Examiner finds these limitations were added to the claims in the parent application to overcome prior art rejections and to gain allowance of the claims. (See Amendment/Remarks filed 4/17/23). (See step 2). The limitations have been entirely omitted from the claims thus recapture is appropriate. (See step 3).
Drinkware Analysis
Claim 11 of Dabak along with the support in the relied on provisional is provided below. The provisional application is also cited in the body of the prior art rejections below.
11. A method of operating a transmitter, comprising:
providing a primary synchronization signal and a secondary synchronization signal having first and second segments (See section 4 on page 10);
providing a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal (See section 4 on page 10); and
transmitting the primary synchronization signal and the scrambled secondary synchronization signal (See section 2 on page 2).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 41-43 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Dabak et al. (U.S. Pub. No. 2009/0310782, see also provisional app no. 60/945,241 filed June 20, 2007) in view of Luo (U.S. Pub. No. 2008/0291892).
Referring to claim 41, Dabak teaches a communication method, comprising:
receiving a first primary synchronization signal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.” See also Section 1. Background, first paragraph of the ‘241 provisional);
receiving a first secondary synchronization siqnal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.”);
the first secondary synchronization signal comprises a first sequence and a second sequence (see ¶ 22, “a secondary synchronization signal having first and second segments” see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd full paragraph, “each of the 2 SSC segments”), the first sequence comprises a third sequence scrambled with a first scrambling sequence, and the second sequence comprises a fourth sequence scrambled with a second scrambling sequence (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph),
the first scrambling sequence is determined based on the second identity, and the second scrambling sequence is determined based on the first identity (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph).
Dabak teaches searching for a cell using the downlink synchronization process (see ¶ 6) and also discusses cell IDs and cell ID groups (see ¶ 26, see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 4th full paragraph), however Dabak does not appear to clearly disclose determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity, the secondary synchronization signal is based on the first identity the primary synchronization signal is based on the second identity.
Luo teaches, in an analogous system, determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity (see figure 3 and ¶¶ 31 and 41), the secondary synchronization signal is based on the first identity (see figure 3 SSC value determines the cell ID group), the primary synchronization signal is based on the second identity (see figure 3, note the PSC value corresponds to the ID within the cell ID group).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to modify the teachings of Dabak with the above teachings of Luo. One of ordinary skill would have been motivated make such modification in order to allow the receiver to improve cell detection performance by arranging the PSC and SSC sequences in groups as suggested by Luo (see ¶ 8).
Referring to claim 42, Dabak teaches a terminal (see UE 110 in figure 1), comprising:
a circuitry which is configured to (see UE 110 in figure 1 and ¶¶ 23, 24):
cause the terminal to receive a first primary synchronization signal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.” See also Section 1. Background, first paragraph of the ‘241 provisional);
cause the terminal to receive a first secondary synchronization signal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.” See also Section 1. Background, first paragraph of the ‘241 provisional);
the first secondary synchronization signal comprises a first sequence and a second sequence (see ¶ 22, “a secondary synchronization signal having first and second segments” see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd full paragraph, “each of the 2 SSC segments”), the first sequence comprises a third sequence scrambled with a first scrambling sequence, and the second sequence comprises a fourth sequence scrambled with a second scrambling sequence (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph),
wherein the first scrambling sequence is determined based on the second identity, and the second scrambling sequence is determined based on the first identity (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph).
Dabak teaches searching for a cell using the downlink synchronization process (see ¶ 6) and also discusses cell IDs and cell ID groups (see ¶ 26, see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 4th full paragraph), however Dabak does not appear to clearly disclose determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity, the secondary synchronization signal is based on the first identity the primary synchronization signal is based on the second identity.
Luo teaches, in an analogous system, determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity (see figure 3 and ¶¶ 31 and 41), the secondary synchronization signal is based on the first identity (see figure 3 SSC value determines the cell ID group), the primary synchronization signal is based on the second identity (see figure 3, note the PSC value corresponds to the ID within the cell ID group).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to modify the teachings of Dabak with the above teachings of Luo. One of ordinary skill would have been motivated make such modification in order to allow the receiver to improve cell detection performance as suggested by Luo (see ¶ 8).
Referring to claim 43, Dabak teaches a communication device for a terminal (see UE 110 in figure 1 and ¶ 6), the communication device comprising:
a circuitry which is configured to (see UE 110 in figure 1 and ¶¶ 23, 24):
cause the terminal to receive a primary synchronization signal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.” See also Section 1. Background, first paragraph of the ‘241 provisional);
cause the terminal to receive a secondary synchronization signal (see ¶ 8, “…the receiver includes a receive unit configured to receive a primary synchronization signal and a scrambled secondary synchronization signal having even and odd segments.” See also Section 1. Background, first paragraph of the ‘241 provisional);
the secondary synchronization signal comprises a first sequence and a second sequence (see ¶ 22, “a secondary synchronization signal having first and second segments” see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd full paragraph, “each of the 2 SSC segments”), the first sequence comprises a third sequence scrambled with a first scrambling sequence, and the second sequence comprises a fourth sequence scrambled with a second scrambling sequence (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph), wherein the first scrambling sequence is determined based on the primary synchronization signal, and the second scrambling sequence is determined based on the first sequence (see ¶ 22, “a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal. In one embodiment, the secondary scrambling unit 107 is further configured to provide an additional scrambling of one of the first and second segments, wherein a second scrambling agent is derived from the remaining segment of a secondary synchronization sequence of the secondary synchronization signal.” See also the ‘241 provisional, section 4. “S-SCH Scrambling”, 2nd and 4th full paragraph).
Dabak teaches searching for a cell using the downlink synchronization process (see ¶ 6) and also discusses cell IDs and cell ID groups (see ¶ 26, see also the ‘241 provisional, section 4. “S-SCH Scrambling”, 4th full paragraph), however Dabak does not appear to clearly disclose determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity, the secondary synchronization signal is based on the first identity the primary synchronization signal is based on the second identity.
Luo teaches, in an analogous system, determining a cell identifier based on the first primary synchronization signal and the first secondary synchronization signal, the cell identifier is determined a based on the first identity and the second identity (see figure 3 and ¶¶ 31 and 41), the secondary synchronization signal is based on the first identity (see figure 3 SSC value determines the cell ID group), the primary synchronization signal is based on the second identity (see figure 3, note the PSC value corresponds to the ID within the cell ID group).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to modify the teachings of Dabak with the above teachings of Luo. One of ordinary skill would have been motivated make such modification in order to allow the receiver to improve cell detection performance as suggested by Luo (see ¶ 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERON J SORRELL whose telephone number is (571)272-4160. The examiner can normally be reached M-F 9AM-6PM EST.
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Signed:
/ERON J SORRELL/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992