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 Amendment
Applicant’s amendment, filed 4 November 2025, has been entered and carefully considered.
Claims 1-7 are withdrawn from consideration.
Claim 9 is canceled.
Claims 8 and 10 are amended and currently pending.
The outstanding objection to Claim 8 is withdrawn in light of Applicant’s amendment to said claim.
Response to Arguments
Applicant’s arguments, filed 4 November 2025, with respect to the rejection of claims 8 and 10 under 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the newly presented rejection under 35 U.S.C. 103 herein.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claims 8 and 10 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.
Citations to Applicant’s specification herein are taken from the instant application’s pre-grant publication (US 2024/0179798)
Claims 8 and 10 recite (emphasis added by the Office) “an information element indicating whether multicast reception is to be prioritized over unicast reception even when the user equipment is participating in a multicast session.” The claims then subsequently recite language indicating both an action performed “when the user is not participating in the multicast session” and a separate action performed “when the user is participating in the multicast session.” However, as the first recitation indicates that the UE is participating in a unicast session, it is unclear how the UE is also “not participating in the multicast session.” Turning to Applicant’s specification, Figure 15 (as described in paragraphs 0143-0153), details a scenario where the UE is in an RRC connected state (paragraph 0143), participates in the multicast session (step s31 and paragraph 0144) and transmits an RRC message indicating priority information (step s34 and paragraph 0148). The UE is described as sending this RRC message “even when the UE is participating in a multicast session” (paragraph 0148). However, the disclosure lacks description of the UE both “participating” and “not participating” in a multicast session. As such, based on the claim language and the specification, one of ordinary skill in the art could not ascertain the metes and bounds of the claim language, as currently drafted, where the UE both participates and does not participate in the multicast session. Therefore, the claims are indefinite.
For search and prior art purposes, the claims will be examined as best understood by the Office.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shrivastava et al (United States Pre-Grant Publication 2022/0132468), hereinafter Shrivastava, in view of Cao et al (United States Pre-Grant Publication 2023/0199569), hereinafter Cao.
Regarding Claim 10, Shrivastava discloses a user equipment (Figure 9, UE 900) comprising:
a transmitter (Figure 9, transceiver 920) configured to transmit, when the user equipment performing MBS reception or being interested in the MBS reception in a radio resource control (RRC) connected state, an RRC message to a base station, wherein the RRC message comprises an information element indicating whether multicast reception is to be prioritized over unicast reception (Figure 3, operation 303 and paragraph 0085 – the UE sends an interest indication to the gNB that can indicate priority for MBS reception and a preference for MBS reception (i.e., over unicast reception));
transmitting, when the user equipment is not participating in the multicast session, the RRC message comprising the information element and a different information element indicating an MBS session where the user equipment is performing the MBS reception or is interested in the MBS reception (paragraph 0085 – the interest indication indicates the preference for MBS reception (i.e., the information element) and at least one MBS (i.e., MBS session) that the UE is interested to receive (i.e., the different information element)).
However, while Shrivastava discloses sending the interest indication when (i.e., “even when”) the user equipment is participating in a multicast session (refer to paragraph 0085, where the interest indication indicates at least one MBS that the UE is currently receiving), Shrivastava does not disclose transmitting the RRC message comprising the information element without comprising the different information element. In an analogous art, Cao discloses this. Specifically, Cao discloses sending an MBS indication information that the UE is interested in including a receiving mode, where the receiving mode can include multicast/broadcast reception (i.e., a preference for multicast over unicast) (refer to paragraph 0201). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Shrivastava and Cao in order to increase reliability of MBS packet reception and efficient switching between PTM and PTP modes of reception (refer to paragraph 0008 of Shrivastava).
Claim 8 is a method claim comprising the same steps performed by the UE of Claim 10. Therefore, Claim 8 is rejected for the same reasons as presented above for Claim 10.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kim discloses the UE transmitting MBS interest information to a gNB (Figure 1O and paragraph 0445).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW W. CHRISS whose telephone number is (571)272-1774. The examiner can normally be reached Monday-Friday, 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Bates can be reached at (571) 272-3980. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW W CHRISS/Primary Examiner, Art Unit 2472
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