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 .
Reissue Applications
This applications seeks to reissue US Patent No. 11,477,712 (“the ‘712 patent”). In a preliminary amendment, claims 1, 3, 8-11, 15, and 18 have been amended. Claims 1-20 are pending. This is a broadening reissue application.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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 Patent No. 11,477,712 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.
Objection, 37 CFR 1.173(b) – Amendment to the Specification
This application is objected to for failing to meet the requirements of 37 CFR 1.173(b)(1), which requires that “[t]he precise point in the specification where any added or rewritten paragraph is located must be identified.” The applicant has amended [0001] of the specification, which appears to refer to the specification that was filed in application 17/054,921. However, amendments to the specification in reissue applications must show the “to the copy of the printed patent.” MPEP 1411. The applicant is required to submit a supplemental paper showing the precise point in the specification of the ‘712 patent that is amended.
Objection, 37 CFR 1.173(c) – Explanation of Support for Amendments
This application is objected to for failing to meet the requirements of 37 CFR 1.173(c). In describing support for the amendments made to the claims, the applicant only states that no new matter is added. This is not sufficient to comply with 37 CFR 1.173(c), which requires “an explanation of the support in the disclosure of the patent for the changes made to the claims.” MPEP 1453 II states: “each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions).”
The applicant is required to submit a supplemental paper describing where support in the specification can be found for each change to the claims.
Objection, 37 CFR 1.175 – Defective Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The declaration states that “[t]he patentee has discovered an error in the text of issued claim 1.” This error statement is insufficient. The “oath/declaration must specifically identify an error” in the claims, and the error “must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP 1414 II.
In addition, this is a broadening reissue application. When a reissue application seeks to enlarge the scope of a patent claim, “the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” Id. The declaration does not describe that this is a broadening reissue application, nor does it identify a claim that the application seeks to broaden.
The applicant is required to submit a supplemental declaration conforming to the requirements of 37 CFR 1.175.
Claim Rejection, 35 USC § 251 – Defective Declaration
Claims 1-20 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 are set forth in the discussion above in this Office action.
Claim Rejection, 35 USC § 251 – Recapture
Claims 1-20 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.
The recapture analysis involves a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
MPEP 1412.02 II.
Step 1: Numerous changes to the claims enlarge the scope of the claims relative to the patent. These broadening amendments include:
Claim 1 no longer requires “sending, by the IAB node base station, a measurement report message to the Source Central Unit.” Claim 9 has been amended to remove similar language.
Claims 1 and 9 have also been amended to no longer require that receiving the first interface message by the Distributed Unit is “responsive to the measurement report message.” Claim 9 no longer requires this message to be received “over the first F1 interface.”
Claims 1 and 9 have been amended to recite “application layer configuration data,” which is broader than the previously recited “F1 application protocol (F1AP) configuration data.”
Claims 15 and 18 have been amended to now require generating and sending “result information” rather than a “report message.” Result information requires something different than the report message that was recited in the patent claims, thus this amendment enlarges the scope of these claims.
Because the claims have been broadened, analysis proceeds to step 2.
Step 2: The above-described broadening relates to subject matter that was surrendered during prosecution of US Application 17/054,921 (“the ‘921 application”), from which the ‘712 patent issued. In the May 12, 2022 applicant response in the ‘921 application, each of the above limitations in claims 1, 9, 15, and 18 were “presented, argued, or stated to make the claims patentable” over prior art that was relied upon in the February 16, 2022 non-final Office action.
The applicant in the ‘921 application argued that the prior art failed to teach “sending, by the IAB node base station, a measurement report message to the Source Central Unit.” See 05/12/2022 Remarks, 18-19. Based on this argument, this limitation in claims 1 and 9 was surrendered. See MPEP 1412.02(II)(B)(1). The remaining limitations that are described in Step 1 above were added to the claims in direct reply to the rejections of the preceding Office action, as shown by the nature of the amendments as well as the applicant’s remarks filed therewith. As such, these limitations were also surrendered. See id.
Having found that omitted limitations relate to surrendered subject matter, analysis proceeds to step 3.
Step 3: the claims have not been materially narrowed relative to the omitted subject matter, as the surrendered limitations have been omitted entirely. MPEP 1412.02(II)(C).
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.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujishiro, US 20210058985, in view of Huang, US 20210127319. The portions of these two documents that are relied upon in the rejections below find support in their respective foreign priority applications.
Claim 1: Fujishiro discloses a method for maintaining communication interfaces, comprising:
connecting, by an integrated access and backhaul (IAB) node base station, with a Source Central Unit of a source donor base station through a first F1 interface (IAB node 300-1 connects with a source donor base station. ¶¶ 64 and 71-72. This connection is through a first F1 interface. ¶¶ 44 and 59. Connection is to the CU of the donor base station. ¶44.);
receiving, by a Distributed Unit (see ¶44) of the IAB node base station, a first interface message from the Source Central Unit over the first F1 interface (¶44), the first interface message notifying the Distributed Unit of a handover decision based on measurement result information (The IAB node 300-1 delivers a measurement report to gNB 200-1. ¶95. Based on this, the CU of gNB 200-1 transmits an interface message notifying the IAB node’s DU of a handover decision. ¶101.);
creating, by the Distributed Unit, connectivity towards a Target Central Unit of a target donor base station responsive to receiving the configuration information (Handover to gNB 200-2 is accomplished. ¶102. This is accomplished by creating connectivity to the CU of the destination donor base station. ¶¶ 44 and 99-102.);
setting up, by the Distributed Unit, a second F1 interface via a wireless backhaul link with the Target Central Unit (Communications over the backhaul are wireless. ¶¶34 and 37. Using this backhaul, the DU sets up a second F1 interface with the CU of the target node. ¶¶ 44 and 99-102.);
exchanging, by the Distributed Unit, application layer configuration data with the Target Central Unit through the wireless backhaul link (The DU exchanges application layer configuration data with the CU of the target donor node over the (wireless) backhaul. ¶¶ 102 and 112); and
releasing, by the Distributed Unit, the first F1 interface with the Source Central Unit (This is implicit in the handover procedure in ¶102.).
Fujishiro fails to disclose receiving, by the Distributed Unit, configuration information for a Transport Network Layer; creating Transport Network Layer connectivity toward the CU of the target donor base station; setting up the second F1 interface utilizing the Transport Network Layer connectivity.
However, Huang discloses receiving, by a Distributed Unit, configuration information for a Transport Network Layer; creating Transport Network Layer connectivity toward a CU of a target donor base station; setting up a F1 interface utilizing the Transport Network Layer connectivity (A DU receives address (configuration) information for a TNL connection toward a target CU, and an F1 interface is established using this TNL. See ¶¶ 145-147 and 193-194.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Fujishiro with the teachings in Huang, the rationale being to improve relay forwarding when the network transition in Fujishiro occurs. See e.g. Huang ¶¶ 5 and 33.uaHuangH
Claim 9: Fujishiro-Huang discloses a base station device comprising:
a Distributed Unit connected to a Source Central Unit of a source base station, the Distributed Unit engaged with the Source Central Unit through a first F1 interface (The DU of an IAB node is connected to a source CU through an F1 interface. Fujishiro ¶¶ 44 and 59.);
the Distributed Unit configured to:
receive, a first interface message from the Source Central Unit, the first interface message notifying the Distributed Unit of a handover decision based on measurement result information (The IAB node 300-1 delivers a measurement report to gNB 200-1. Fujishiro ¶95. Based on this, the CU of gNB 200-1 transmits an interface message notifying the IAB node’s DU of a handover decision. Fujishiro ¶101.);
receive configuration information for a Transport Network Layer (A DU receives address (configuration) information for a TNL connection toward a target CU, and an F1 interface is established using this TNL. See Huang ¶¶ 145-147 and 193-194.);
create Transport Network Layer (Huang ¶¶ 145-147 and 193-194) connectivity toward a Target Central Unit of a target base station responsive to receiving the configuration information (Handover to gNB 200-2 is accomplished. Fujishiro ¶102. This is accomplished by creating connectivity to the CU of the destination donor base station. Fujishiro ¶¶ 44 and 99-102.);
set up a second F1 interface via a wireless backhaul link with the Target Central Unit (Communications over the backhaul are wireless. Fujishiro ¶¶34 and 37. Using this backhaul, the DU sets up a second F1 interface with the CU of the target node. Fujishiro ¶¶ 44 and 99-102.) utilizing the Transport Network Layer connectivity (Huang ¶¶ 145-147 and 193-194);
exchange application layer configuration data with the Target Central Unit through the wireless backhaul link (The DU exchanges application layer configuration data with the CU of the target donor node over the (wireless) backhaul. Fujishiro ¶¶ 102 and 112); and
release the first F1 interface with the Source Central Unit (This is implicit in the handover procedure in Fujishiro ¶102.).
Claims 2-3, 7-8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fujishiro and Huang in view of Chen, WO 2013166640.
Claim 2: Fujishiro-Huang discloses that at least one User Equipment is connected to the IAB node base station (See Fujishiro Fig. 1).
Fujishiro-Huang fails to disclose directing, by the Distributed Unit, the connected User Equipment to handover to the target donor base station; confirming, by the Distributed Unit, handover of the connected User Equipment to the target donor base station; and requesting, by the Distributed Unit, release of User Equipment context stored at the Source Central Unit.
However, Chen discloses directing a User Equipment that is connected to a Relay Node to handover to a target donor base station; confirming handover of the connected User Equipment to the target donor base station (Upon relay node handover, the UE is instructed to handover to the target base station. 11:10-12:21; 13:19-13:6; and 22:5-23); and requesting release of User Equipment context stored at the Source base station (14:24-27 and 18:2-6).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Fujishiro-Huang with these teachings in Chen, the rationale being to ensure that the UE is able to communicate properly with the target base station upon handover. While Chen does not disclose that the steps are performed by the DU and Source CU, the POSITA, when making this modification, would have concluded that these elements in Fujishiro would have been the logical units to perform these steps. Therefore the combined teachings of Fujishiro, Huang, and Chen render obvious the invention that is recited in this claim.
Claim 3: Fujishiro-Huang-Chen discloses that directing connected User Equipment to handover to the target donor base station comprises: receiving, by the Distributed Unit, a Radio Resource Control (RRC) Handover Command message from the Source Central Unit or the Target Central Unit (Chen pg. 22. See also Fujishiro ¶44); and sending, by the Distributed Unit, the RRC Handover Command message to the connected User Equipment to direct the connected User Equipment to perform a handover procedure and handover to the Target Central Unit (Chen pg. 22 and Fujishiro ¶44).
Claim 7: Fujishiro-Huang-Chen discloses:
receiving, by the Distributed Unit through the first F1 interface, the first interface message from the Source Central Unit, wherein the first interface message carries a User Equipment Context Modification Request message; responsive to receiving the User Equipment Context Modification Request message, performing, by the Distributed Unit, User Equipment context modification; and sending, by the Distributed Unit through the first F1 interface, a User Equipment Context Modification Response message to the Source Central Unit as a confirmation of the User Equipment context modification (Chen 3:12-27 (and further described in 20:15-22:23) – a context change request (i.e., a User Equipment Context Modification Request) is received at the DU (see Fujishiro ¶44). Responsive thereto, the UE context is changed and a context change response is delivered to the CU. These communications are over the F1 interface, as described in Fujishiro ¶44. ).
Claim 8: Fujishiro-Huang-Chen fails to disclose receiving, by the Distributed Unit, a Handover Command message from the Target Central Unit, the Handover Command message carried by a second interface message received over the second F1 interface from the Target Central Unit; and responsive to receiving the Handover Command message, performing one of: handover of connected User Equipment to the target donor base station; handover of User Equipment connected to a subtending node base station to the target donor base station; or handover of the IAB node base station to the target donor base station.
However, official notice is taken that a target node-initiated handover was well known in the art before the effective filing date of the claimed invention. Therefore it would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify Fujishiro-Huang-Chen to include this capability, the rationale being to provide more flexibility in the network. When making this modification, the POSITA would have found it obvious and logical to receive the handover command over Fujishiro’s F1 interface, and to handover of the IAB node base station to the target donor base station in response to this message, as this would have been the common-sense manner in which the benefit from this modification would be achieved.
Claims 10-11 see rejection of claims 2-3, respectively.
Claims 4-6 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fujishiro-Huang-Chen, in view of Huang, US 20120252355 (“Huang ‘355”).
Claim 4: Fujishiro-Huang-Chen fails to disclose that requesting release of User Equipment context stored at the Source Central Unit comprises: responsive to confirming handover of the connected User Equipment, generating, by the Distributed Unit, a User Equipment Context Release Request message requesting the release of User Equipment context stored at the Source Central Unit; and sending, by the Distributed Unit, the User Equipment Context Release Request message to the Source Central Unit through the first F1 interface.
However, Huang ‘355 discloses responsive to confirming handover of a connected User Equipment, generating, by a relay node, a User Equipment Context Release Request message requesting the release of User Equipment context stored at the source node; and sending, by the relay node, the User Equipment Context Release Request message to the Source node (¶¶ 100-103.).
would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Fujishiro-Huang-Chen with the teachings in Huang ‘355, the rationale being to ensure that proper handover of UE context is achieved, thereby conserving resources of the system. Chen does not disclose that the release request is sent through the first F1 interface. But the POSITA, when making this modification, would have found it obvious to use Fujishiro’s F1 interface to accomplish this. The POSITA would have concluded that this would have been the logical manner to achieve this modification.
Claim 5: Fushishiro-Huang-Chen-Huang ‘355 discloses that confirming handover of the connected User Equipment to the target donor base station comprises: receiving, by the Distributed Unit, a User Equipment RRC Reconfiguration Complete message from the connected User Equipment confirming handover to the Target Central Unit (see Huang ‘355 ¶112uaHuaasadfsx).
Claim 6: Fushishiro-Huang-Chen-Huang ‘355 discloses:
responsive to receiving the User Equipment RRC Reconfiguration Complete message from the connected User Equipment confirming handover to the Target Central Unit, generating, by the Distributed Unit, at least one Uplink RRC Transfer message to the Target Central Unit for finishing handover of the connected User Equipment; and sending, by the Distributed Unit through the second F1 interface, the at least one Uplink RRC Transfer message to the Target Central Unit, wherein the Uplink RRC Transfer message carries one or more User Equipment RRC Reconfiguration Complete messages received by the Distributed Unit from the connected User Equipment (Chen Fig. 10: the relay node (the DU in the combined system) generates and sends an uplink RRC “handover notify” to the target node (or target CU in the combination). The POSITA would understand this to at least suggest that the notification carries UE RRC Reconfiguration Complete, as described in Chen pg. 22.)
Claims 12-14 see rejection of claims 4-6, respectively.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fujishiro in view of Chen.
Claim 15: Fujishiro discloses a method for maintaining communication interfaces, comprising:
generating, by an integrated access and backhaul (IAB) node base station, measurement result information including one or more measured parameters related to the IAB node base station; sending, by the IAB node base station, the measurement result information to a source donor base station (The IAB node 300-1 delivers a measurement report to source donor base station 200-1. ¶95.);
receiving, by the IAB node base station, a Radio Resource Control Reconfiguration message from the source donor base station, the Radio Resource Control Reconfiguration message directing modification of a Radio Resource Control configuration of the IAB node base station (Based on the measurement report, the CU of gNB 200-1 transmits an interface message notifying the IAB node’s DU of a handover decision. ¶101. This message is an RRC Reconfiguration message. ¶85);
responsive to receiving the Radio Resource Control Reconfiguration message, the IAB node base station:
modifying the Radio Resource Control configuration of the IAB node base station to handover the IAB node base station to a target donor base station (¶¶ 85 and 101-102), and
releasing, by the IAB node base station, the connection with the source donor base station (implicit in ¶100-102); and
Fujishiro fails to disclose the RRC reconfiguration message including at least one user equipment Radio Resource Control Reconfiguration message for user equipment connected to the IAB node base station; and sending the user equipment Radio Resource Control Reconfiguration messages to the connected user equipment.
Chen discloses a relay node receiving an RRC reconfiguration message including at least one user equipment Radio Resource Control Reconfiguration message for user equipment connected to the node; and sending the user equipment Radio Resource Control Reconfiguration messages to the connected user equipment (Upon relay node handover, the UE is instructed to handover to the target base station. 11:10-12:21; 13:19-13:6; and 22:5-23).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Fujishiro-Huang with these teachings in Chen, the rationale being to ensure that the UE is able to communicate properly with the target donor base station upon handover.
Fujishiro-Chen fails to disclose sending, by the IAB node base station, a Radio Resource Control Reconfiguration Complete message to the target donor base station confirming handover of the IAB node base station. Official notice is taken that this was well known in the art before the effective filing date of the claimed invention. Therefore it would have been obvious to the POSITA to include this step in Fujishiro-Chen’s handover procedure, the rationale being to ensure that proper handover is achieved.
Claim 16: Fujishiro-Chen discloses sending, by the IAB node base station to the target donor base station, a user equipment Radio Resource Control Reconfiguration Complete message confirming handover of the connected user equipment (Chen Fig. 10: the source node (IAB node base station in Fujishiro-Chen) confirms release of UE context, and therefore confirms handover, to the target base station).
Claim 17: Fujishiro-Chen discloses sending, by the IAB node base station, the user equipment Radio Resource Control Reconfiguration Complete message to the target donor base station responsive to receiving Radio Resource Control Reconfiguration Complete messages from all user equipment connected to the IAB node base station (Chen Fig. 10: “Release the UE context in source donor eNB.” The POSITA would understand that the UE Context Release Complete message would not be sent until all connected UE had been handed over).
Claim 18: see rejection of claim 15. Fujishiro-Chen further discloses a base station device comprising: an integrated access and backhaul (IAB) node base station held by a source donor base station (Fujishiro Fig. 1 and Fig. 5), the IAB node base station connected to a plurality of user equipment (Fujishiro Fig. 1; Chen Fig. 2 and pg. 22); the base station device configured to perform the method of claim 15.
Claims 19-20: see rejection of claims 16-17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992