REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/412,117 (“‘117”) for U.S. Patent No. 10,187,837 (“the ‘837 Patent”).
Claims 1-20 are original. Claims 9 and 17-20 have been cancelled. Claims 2-3, 5-7, 10-11, and 13-15 have been amended. Claims 21-30 are new. Claims 1-8, 10-16, and 21-30 are currently pending.
Priority
The ‘117 application is a continuation reissue application of reissue application
17/154,128 (now RE49,808), which is a reissue of the ‘837 Patent.
Reason for Reissue
This is a broadening reissue based on the Declaration By The Assignee (“Reissue Dec”) filed January 12, 2024, which states,
“This is a broadening reissue based upon the error that the patentee claimed less than it had a right to claim in the patent. Applicant seeks to broaden Claims 1, 9, and 17 for at least the reasons described in attached Appendix A.”
Appendix A reads:
“Applicant seeks to broaden at least Claims 1, 9, and 17 at least in the following respect:
Claim 1 of the issued patent includes a step of generating further PDCP protocol data units, “the generating comprising using a different header compression state from that which was used for the missing PDCP service data units and ciphering specific to a connection with the target base station.” In the reissue application, Applicant seeks to broaden Claim 1 by removing from the independent claim the requirement that the generating comprises “using a different header compression state from that which was used for the missing PDCP service data units.” Applicant has added a new independent claim, Claim 21, which broadens Claim 1 in this aspect. Claim 21 recites “generating further PDCP protocol data units... , the generating comprising ciphering specific to a connection with the target base station.”
Claim 9 of the issued patent includes processing circuitry configured to generate further PDCP protocol data units, “wherein to generate the further PDCP protocol data units, the processing circuitry is configured to use a different header compression state from that which was used for the missing PDCP service data units and ciphering specific to a connection with the target base station.” In the reissue application, Applicant seeks to broaden Claim 9 by removing from the independent claim the requirement that to generate the further PDCP protocol data units, the processing circuitry is configured to “use a different header compression state from that which was used for the missing PDCP service data units.” Applicant has added a new independent claim, Claim 23, which broadens Claim 9 in this aspect. Claim 23 recites “to generate the further PDCP protocol data units, the processing circuitry is configured to cipher specific to a connection with the target base station.”
Claim 17 (which includes “using a different header compression state”) has been cancelled and replaced by a new independent claim, Claim 25 (which removes “using a different header compression state”).
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.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not 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 not 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 function without reciting sufficient structure, material or acts to entirely perform the recited function.
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 limitations use 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 limitations and their corresponding structure in the specification are:
Claims
Functional Phrase #
Generic Placeholder with Linking Phrase
Function
Corresponding Structure or Algorithm in the Specification of the ‘837 Patent
23
1
processing circuitry being configured to
receive signaling from the target base station that indicates successful receipt of Packet Data Convergence Protocol (PDCP) protocol data units or PDCP service data units
See at least 10:10-14
23
2
processing circuitry being configured to
responsive to the signaling, generate further PDCP protocol data units for
missing PDCP service data units from corresponding PDCP service data units buffered at the mobile station
See at least 5:10-33 and 49-63; 9:49-10:25; Figs. 1 and 3
23
3
processing circuitry is configured to
cipher specific to a connection with the target base station
See at least 6:42-47; 9:49-10:25; Figs. 1 and 3
11
4
processing circuitry is configured to
generate the further PDCP protocol data units further responsive to performing a handover from the source base station to the target base station
See at least 5:10-33 and 49-63; 9:49-10:25; Figs. 1 and 3
12
5
processing circuitry is configured to
perform the handover responsive to transmitting the missing PDCP service data units to the source base station via the wireless communication interface
See at least 5:10-33 and 49-63; 9:49-10:25; Figs. 1 and 3
24
6
processing circuitry is further configured to
use a different header compression state from that which was used for the missing PDCP service data units
See at least 9:54-62; 10:15-25; Figs. 1-3
25
7
processor configured to
transmit signaling from the target base station that indicates successful receipt of Packet Data Convergence Protocol (PDCP) protocol data units or PDCP service data units
See at least 10:10-14
25
8
processor configured to
receive further PDCP protocol data units generated for missing PDCP service data units from corresponding PDCP service units buffered at the mobile station responsive to the signaling, the further PDCP protocol data units regenerated from the missing PDCP service data units using ciphering specific to a connection with the target base station
See at least 5:10-33 and 49-63; 9:49-10:25; Figs. 1 and 3
28
9
processor is further configured to
transfer a PDCP service data unit to a core network
See at least 5:40-48
30
10
processor is further configured to
transmit a PDCP protocol data unit to a base station that transfers a corresponding PDCP service data unit to a core network
See at least 5:40-63
Table 1: Identification of § 112 ¶ (f) Claim Limitations
and Corresponding Structure
Because these claim limitations 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.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-8, 10-16, and 21-30 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8, 10-16, and 21-30 of prior U.S. Patent No. RE49808. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 2-8, 10-16, 21, 23, 25 and 27-30 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by U.S. Pat. No. 8,547,900 to Yi et al. (“Yi”).
As per claim 21, Yi discloses a method in a mobile station configured to support handover from a source base station to a target base station, the method comprising:
6:19-28, “S12: The PDCP layer stores the respective PDCP SDUs in a PDCP SDU buffer. This is for a source base station (i.e., source NodeB) to forward a PDCP SDU whose reception has been unconfirmed by a terminal (UE) to target base station by the source NodeB to the target NodeB during handover.”
Fig. 1 shows a network comprising a terminal (UE) and base stations (eNBs).
receiving signaling from the target base station that indicates successful receipt of Packet Data Convergence Protocol (PDCP) protocol data units or PDCP service data units;
6:23-28, “for the terminal to re-transmit a PDCP SDU whose reception has been un-confirmed (i.e., for example in case a source NodeB may be not confirmed for a target NodeB to successfully receive a PDCP SDU which has been transmitted from the source NodeB) by the source NodeB to the target NodeB during handover.”
6:30-31, “only the PDCP SDUs that have not been properly received by the receiving side according to a status report ”
responsive to the signaling, generating further PDCP protocol data units for missing PDCP service data units from corresponding PDCP service data units buffered at the mobile station, the generating comprising ciphering specific to a connection with the target base station; and
6:28-34, “When the PDCP SDUs are forwarded or re-transmitted during handover, only the PDCP SDUs that have not been properly received by the receiving side according to a status report of the RLC layer or the PDCP layer. This is called a selective forwarding/re-transmission. The step 12 is performed by the PDCP SDU buffer.”
6:43-46, “S14: The PDCP layer sequentially ciphers the header-compressed PDCP SDUs. In this case, the PDCP layer performs ciphering by using virtual PDCP SNs which were set when the PDCP SDUs were stored in the buffer.”
7:32-35, “Namely, the PDCP SNs are used for ciphering in the PDCP layer and eventually used for forwarding or re-transmitting only the PDCP data whose reception has not been confirmed by the receiving side.”
transmitting the further PDCP protocol data units to the target base station.
6:23-28, “for the terminal to re-transmit a PDCP SDU whose reception has been un-confirmed (i.e., for example in case a source NodeB may be not confirmed for a target NodeB to successfully receive a PDCP SDU which has been transmitted from the source NodeB) by the source NodeB to the target NodeB during handover.”
Claims 23 and 25 recite substantially similar subject matter to that of claim 21; therefore, claims 23 and 25 are rejected for the same reasons as claim 21.
As per claim 2, Yi discloses the method of claim 21, further comprising forgoing transmission of PDCP service data units that are indicated by the target base station as having been successfully received.
6:28-34, “When the PDCP SDUs are forwarded or re-transmitted during handover, only the PDCP SDUs that have not been properly received by the receiving side according to a status report of the RLC layer or the PDCP layer. This is called a selective forwarding/re-transmission. The step 12 is performed by the PDCP SDU buffer.”
As per claim 3, Yi discloses the method of claim 21, wherein generating the further PDCP protocol data units is further responsive to performing a handover from the source base station to the target base station.
6:28-34, “When the PDCP SDUs are forwarded or re-transmitted during handover, only the PDCP SDUs that have not been properly received by the receiving side according to a status report of the RLC layer or the PDCP layer. This is called a selective forwarding/re-transmission. The step 12 is performed by the PDCP SDU buffer.”
As per claim 4, Yi discloses the method of claim 3, wherein performing the handover is responsive to transmitting the missing PDCP service data units to the source base station.
6:28-34, “When the PDCP SDUs are forwarded or re-transmitted during handover, only the PDCP SDUs that have not been properly received by the receiving side according to a status report of the RLC layer or the PDCP layer. This is called a selective forwarding/re-transmission. The step 12 is performed by the PDCP SDU buffer.”
As per claim 5, Yi discloses the method of claim 21, wherein the signaling from the target base station comprises Automatic Repeat request.
2:36-39, “operating in the AM performs a retransmission function through an automatic repeat and request (ARQ) function for a reliable data transmission.”
As per claim 6, Yi discloses the method of claim 21, wherein the mobile station is comprised in a Long Term Evolution (LTE) communication network.
1:30-34, “FIG. 1 is a network structure of an LTE (Long Term Evolution) system, the related art mobile communication system. For the LTE system, which has evolved from the existing UMTS system, basic standardizations are ongoing in the 3GPP.”
As per claim 7, Yi discloses the method of claim 21, further comprising transmitting a PDCP protocol data unit to a base station that transfers a corresponding PDCP service data unit to a core network.
1:35-37, “An LTE network can be divided into an E-UTRAN (Evolved UMTS Terrestrial Radio Access Network) and a CN (Core Network).”
As per claim 8, Yi discloses the method of claim 7, wherein the PDCP protocol data unit is one of the PDCP protocol data units successfully received at the target base station or one of the further PDCP protocol data units.
6:28-34, “When the PDCP SDUs are forwarded or re-transmitted during handover, only the PDCP SDUs that have not been properly received by the receiving side according to a status report of the RLC layer or the PDCP layer. This is called a selective forwarding/re-transmission. The step 12 is performed by the PDCP SDU buffer.”
Claims 10-16 and 27-30 recite substantially similar subject matter to that of claims 2-8; therefore, claims 10-16 and 27-30 are rejected for the same reasons as claims 2-8.
Information Disclosure Statement
Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
“Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO /SB /08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above.”
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘837 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/B. James Peikari/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992