DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed February 2nd, 2026, have been fully considered and are persuasive in part.
Claims are pending in this application and have been considered below.
112 Rejections:
The Applicant’s arguments are persuasive in part. The 112(a) rejection regarding the specification’s lack of disclosure is withdrawn. The specification adequately teaches how to construct the constellation. However, new rejections under 112(a) and (b) are raised. The claims merely recite 16 physical positions but fail to explicitly define the bit-to-symbol mappings (i.e. how the 10-bit cell words are assigned to the real and imaginary coordinates.) Without claiming the specific Gray mapping rule, the claims are indefinite and broader than the enabling disclosure.
103 Rejection:
Applicant’s arguments are not persuasive. Since the claims currently omit the specific bit-to-symbol mapping, the broadly cover a geometric arrangement of points. The functional performance and error-free decoding thresholds argued by the Applicant rely entirely on the specific unclaimed mapping logic. The prior art sufficiently teaches modifying the physical spacing of constellation points, without the mapping limitations, the claims do not distinguish over the prior art.
Examiner’s Note:
To overcome the 112(a), 112(b), and 103 rejections, Applicant must amend the independent claims to incorporate the specific bit-to-symbol mapping rules from the specification. Specifically, the claims should recite the structural relationship that dictates how the 10 bits or the cell word are assigned to the real and imaginary coordinates (e.g., alternating bits mapped to the respective axes in accordance with the disclosed logic).
Therefore, the argued limitations were written broad such that they read upon the cited references or are shown explicitly by the references. As a result, the claims stand as follows.
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.
Claims 2-18 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.
The claims as currently written cover any and all possible mapping permutations of a 10-bit cell word to the claimed 1024 physical constellation points. However, the specification only enables a specific, optimized bit-to-symbol mapping (as detailed in the specification’s tables, e.g., Tables 7 and 8) which is required to achieve the functional performance of the Non-Uniform Constellation (NUC). Because the point spacing of the NUC depends on the combination of physical point spacing and the specific Gray code mapping, covering all possible unclaimed and unoptimized mappings results in a claim scope that exceeds the enabling disclosure. Undue experimentation would be required for a person of ordinary skill in the art to determine which of the millions of broadly claimed, unmapped permutations would actually be operative.
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 2-18 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. The claims fail to define the specific mapping relationship between the 10-bit cell words and the 1024 physical constellation points. How the two five-bit labels are assigned to the 32 amplitude levels of the real and imaginary components is undefined. Without reciting the bit-to-symbol mapping, the relationship between the data and the physical signal is left open to any possible permutation, rendering the metes and bound of the claims unclear and undefined.
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.
Claim 2-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4, 6-10, and 13-20 of U.S. Patent No. US 10,033,567. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims cover a coding and modulation apparatus using NUC vectors, mapping cell words to non-uniform constellations, decoding, and labeling into cell words.
Claim 2-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 and 6-12 of U.S. Patent No. 10,659,275. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are nearly identical with claims reciting modulation with predetermined NUC vectors selected by SNR and M.
Claim 2-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 and 10-16 of U.S. Patent No. 11,522,746. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are nearly identical subject matter including predetermined NUC vectors and dependent claims reciting Gray coding, error correction, and SNR-based constellation selection.
Claim 2-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 7-11, and 13-18 of U.S. Patent No. 11,824,703. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent’s claims are broader but still recite predetermined NUCs, constellation point vectors, and dependent claims paralleling FEC/Gray/SNR limitations.
Claim 2-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6, 8-14, and 16-20 of U.S. Patent No. 11,968,072. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same subject matter with constellation vectors and symmetry across I/Q axes and dependents covering the same FEC/Gray/SNR scope.
Claims 2-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 12-19 of copending Application No. 18/623658 (US 20240250860 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because they essentially repeat the claims structure including and apparatus, method, and non-transitory medium.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stott (US 2015/0049844 A1 – hereinafter “Stott”) in view of Zhou et al. (EP 2,134,052 A1 – hereinafter “Zhou”).
Claims 2 and 10.
Stott discloses a reception apparatus (Abstract: “receiver”), comprising:
receive circuitry configured to receive a signal modulated with a Quadrature Amplitude Modulation (QAM) having a non-uniform constellation (NUC) (¶117: 1024 non-uniform QAM (NUQAM)); and circuitry configured to:
determine constellation points of the NUC corresponding to the received signal (¶66: “The demodulation converts the signal back from QPSK, 16-QAM, or 64-QAM to a simple data stream”; Fig. 15: optimized per-SNR constellation positions.);
determine cell words corresponding to the determined constellation points (¶76: “DVB-T and DVB-T2 uses Gray coded bit mapping to represent every symbol in the constellation.”; ¶133: 1024-QAM Gray mapping (10 coded bits/symbol)); and
decode the determined cell words into output data (p. 29, claim 34: “A receiver for receiving a non-uniform QAM signal of the type having a QAM scheme with words of n coded bits mapped to each constellation point … a de-mapper unit arranged to receive one or more carriers and to decode these to words of n coded bits from each constellation point”), wherein the NUC is a two-dimensional 1024 QAM constellation having 1024 constellation points defined by (In 1024-QAM, there are
32 amplitude levels per axis. These can be represented as ±16 amplitude values.), the positions being (0.1275, 0.1276, 0.1294, 0.1295, 0.3424, 0.3431, 0.3675, 0.3666, 0.6097, 0.6072, 0.7113, 0.7196, 0.9418, 1.0048, 1.2286, 1.5031), (Stott value 0.980548 @ SNR 15 dB (p. 14, Table 1), maps to claimed values: 0.0354, 0.0773 (x2), 0.0921 , 0.1275, 0.1276, 0.1294, 0.1295, 0.1602, 0.1614 (x2), 0.2185, 0.2910, 0.3085, 0.3086, 0.3424, 0.3431, 0.3530, 0.3666, 0.3675, 0.4159, 0.4163 , 0.4947, 0.5763, 0.5810, 0.5872, 0.6097, 0.6072, 0.6531 , 0.7113, 0.7196, 0.7213 , 0.7417, 0.7604, 0.8324) or (0.0773, 0.0773, 0.1614, 0.1614, 0.3086, 0.3085, 0.4159, 0.4163, 0.5810, 0.5872, 0.7213, 0.7604, 0.9212, 1.0349, 1.2281, 1.4800), or (0.0354, 0.0921, 0.1602, 0.2185, 0.2910, 0.3530, 0.4264, 0.4947, 0.5763, 0.6531, 0.7417, 0.8324, 0.9386, 1.0529, 1.1917, 1.3675), (Stott values 1.0011 @ SNR 15.5 dB (p. 14, Table 1), maps to claimed values: 0.9418, 0.9212, 0.9386, 1.0048)
(Stott value 1.03346 @ SNR 16.5 dB, maps to claimed values: 1.0349, 1.0529)
(Stott value 1.21872 @ SNR 18 dB, maps to claimed values: 1.1917, 1.2281 , 1.2286)
(Stott value 1.38671 @ SNR 18.5 dB maps to claimed value: 1.3675)
(Stott value 1.39016 @ SNR 18.5 dB maps to claimed values: 1.4800, 1.5031)
wherein;
the 16 power normalized positions and their corresponding negative versions define 32 amplitude levels of a Pulse Amplitude Modulation (PAM) scheme (¶161: “one constellation axis (i.e. one-half the size of the PAM constellation, or one-half of the square root of the number of points in the ConQAM constellation in all)”; ¶¶ 86, 90; Zhao ¶¶4, 21),
each of the 1024 constellation points having a real and an imaginary component, each of the real and imaginary components having one of the 32 amplitude levels of the PAM scheme (In 1024-QAM, there are 32 amplitude levels per axis. These can be represented as ±16 amplitude values.), and
for each constellation point the cell word is formed from two bit labels each representing five bits, each bit of which is interleaved to form a 10-bit cell word (The bit-to-symbol mapping in 1024-QAM necessarily involves 10 bits, organized as two 5-bit labels (one for I, one for Q), with bits interleaved as is standard practice. ¶133: 1024-QAM Gray mapping (10 coded bits/symbol)).
Stott discloses all of the subject matter as described above except for specifically teaching “16 power normalized positions.” However, Zhou in the same field of endeavor teaches 16 power normalized positions (Fig. 3, TABLE ONE, contains 16 entries; ¶31: “It should be noted that Table One in effect contains 32 entries, via the use of the "±" sign. As known in the art, a normalized symbol constellation just means the average energy of each symbol is 1.”).
It would also have been obvious to a person of ordinary skill in the art to incorporate Zhou's teaching of normalizing constellation point amplitudes into the non-uniform 1024-QAM constellation disclosed by Stott. Stott teaches varying constellation point positions across SNR values (Fig. 15), but does not expressly disclose normalization of those positions to a standard reference power. A Person having Ordinary Skill In The Art (POSITA) would recognize that without normalization, comparisons of constellation shaping across SNRs and systems are unreliable. Zhou explicitly discloses normalizing amplitude values so that constellation points are expressed relative to an average or reference power level, ensuring consistent performance analysis. This normalization predictably improves the comparability of shaping gain and BER
results, providing a stable basis for optimization. As in Titanium Metals, adopting a known
technique that predictably improves consistency is considered obvious, and as in In re Peterson,
adjusting ranges to a normalized reference falls within routine practice. Thus, a POSITA would have been motivated to adopt Zhou's normalization in combination with Stott's SNR-dependent QAM positions to achieve predictable improvements in performance evaluation, including accurate shaping gain and BER optimization across different systems and SNR conditions.
It would also have been obvious to a POSITA at the time of filling to modify the disclosed parameter values (e.g., 0.98) to alternative values such as 0.0354, because the particular constellation positions in a QAM system are result-effective variables. The Federal Circuit and CCPA have consistently held that once a parameter is recognized as affecting performance, adjusting it through routine experimentation to achieve workable or optimum results does not constitute invention. See In re Aller, 220 F.2d 454 (CCP A 1955) ("discovering the optimum value of a result-effective variable is ordinarily within the skill of the art"), and In re Boesch, 617 F.2d 272 (CCPA 1980). Furthermore, where claimed numerical values overlap, are close to, or abut known ranges, a prima facie case of obviousness is established. In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). In Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985), the court held that even a single numerical value is not patentable if it falls within, or is so close to, a known range that a skilled artisan would have expected similar properties.
Here, the modification from 0.98 to 0.0354 represents the routine optimization of a known result-effective variable. A POSITA would have reasonably expected that varying constellation amplitude positions yields predictable improvements in performance, such as improved bit error rate (BER) or shaping gain, because the relationship between amplitude values, signal-to-noise ratio (SNR), and system performance was well understood in the art. As emphasized in MPEP § 2144.05(II), when the prior art teaches that performance is sensitive to a parameter, "discovering an optimum value through routine experimentation is within the skill of the art."
Claims 3 and 11.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein the circuitry is configured to decode the cell words into output data using forward error correction decoding (Stott p. 29, claim 34: “a forward error corrector (FEC)”).
Claims 4 and 12.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein each of the in-phase and quadrature-phase components is associated with one of 32 bit labels corresponding to alternating bits of the cell words (Stott p. 4 Table 1: 10 bits - 5 bits per axis - 32 levels per I/Q dimension; ¶76:Gray mapping supports bit labeling across I/Q axes.).
Claims 5 and 13.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein cell words corresponding to neighboring constellation points differ by one bit (Stott ¶133: Gray mapping in QAM means that neighboring constellation points (i.e. points closest in Euclidean distance, sharing a decision boundary) differ by only one bit in their assigned bit labels).
Claims 6 and 14.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein the signal is received terrestrially (Stott ¶9: “digital terrestrial television”)over a fading channel (Stott ¶117: NUQAM designed for variable/fading SNR channels).
Claims 7 and 15.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein a signal-to-noise ratio for error free decoding is 15, 19, or 27 dB (Stott p. 14, TABLE 1: “SNR, dB”).
Claims 8 and 16.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein the NUC is selected based on a signal-to-noise ratio for error free decoding and a code rate (Stott p. 14, TABLE 1: “SNR, dB”).
Claims 9 and 17.
The combination of Stott and Zhou discloses the apparatus of claim 2, wherein the apparatus is a digital television reception device (Stott ¶76: “DVB-T and DVB-T2:).
Claim 18.
The combination of Stott and Zhou discloses a non-transitory computer readable medium including computer program instructions which, when executed by a computer, causes the computer to perform the method of claim 10 (Zhou Fig. 1: 140, 145).
Conclusion
THIS ACTION IS MADE FINAL. 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 Ross Varndell whose telephone number is (571)270-1922. The examiner can normally be reached M-F, 9-5 EST.
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/Ross Varndell/Primary Examiner, Art Unit 2674