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 Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive. Regarding the prior art, the applicant argues:
Therefore, Watanabe discloses performing a carrier sense process to determine whether a carrier of IEEE 802.1 lb is present or not in a band of a communication channel n (n=channel number) of Bluetooth, and increasing/decreasing the channel number n (n = n+l or n = n-i) for sequentially scanning all of the 79 BT channels. In other words, Watanabe does not teach or suggest that the carrier sense process only scans a subset of all 79 BT channels, where the subset of all 79 BT channels consists of pre-defined scanning channels that are prioritized within a Wi-Fi band according to a Wi-Fi specification. In view of this, the applicant asserts that the claim limitation "performing a BT channel scan upon a plurality of channels in a frequency band to generate a scan result, wherein the frequency band is higher than a 2.4GHz band, and the plurality of channels comprise Wi-Fi preferred scanning channels (PSCs) only" is not taught or suggested by Watanabe. (emphasis added)
Since Watanabe fails to remedy the deficiency of Aldana, the applicant asserts that the combined teaching of Aldana and Watanabe fails to render the method in claim 1 obvious. Withdrawal of the rejections and reconsideration of the patentability of claim 1 is respectfully requested.
This argument is not persuasive. The applicant used the term “Wi-Fi preferred scanning channels” in paragraph 21 but did not define it and the applicant did not disclose that the invention only scans these undefined preferred scanning channels. Paragraph 21 does not provide any meaningful description of scanning and therefore Watanabe reads on the breadth of what is disclosed regarding a channel scan. Further, the applicant’s amended language is rejected based on 35 USC section 112(a) for not being supported by the original disclosure.
The applicant’s arguments regarding the 101 rejection are not persuasive because paragraph 42 of Aldena mentions narrow bands can include the stated range of frequencies but this is not a recitation of Bluetooth. The applicant is mischaracterizing the disclosure of paragraph 42 of Aldena. The applicant’s reference to the Bluetooth Technology Website is not compelling because it merely states that a “specification development project is underway to define the operation of Bluetooth LE in additional unlicensed mid-band spectrum, including both the 5 and 6 Ghz frequency bands”. A development project that is underway at the time of URL access on 12/8/2025 is not evidence of technology that defined the state of the art when the applicant’s invention was filed.
The applicant’s argument regarding the lack of written description of circuitry for carrying out the invention is not persuasive. The applicant is citing case law regarding whether the term circuit evokes 35 USC section 112(f) but the Examiner is not invoking this. The Examiner is simply pointing out that the applicant has not disclosed any specialty hardware or circuits for implementing the claimed invention.
Regarding the second written description issue presented in the last office action, the applicant has not provided any evidence for their statement that a skilled in artisan can readily know how to set the BT hopping configuration based on the BT scan result after reading the description of the applicant’s disclosure. The applicant does not provide any technical description of the BT scan result or the techniques used to implement the BT hopping configuration.
Regarding the 112d rejections of claims 9 and 20, the applicant does not define “a channel of the frequency band that is used by the non-BT system” so stating that such a non-defined concept is not included in a BT hopping configuration does not limit the scope of the BT hopping configuration. As to the rejection of claim 20, the limitations of claim 20 do not limit the control circuit or any “arrangement” of the control circuit in any manner.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 4, 7-12, 15, and 18-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description Issue #1
Claim 12 is directed towards a Bluetooth communication device comprising a control circuit and a wireless communication circuit. The applicant fails to provide any description of either circuit. Paragraph 16 states that the invention can be implemented in a software-based manner or a hardware-based manner. The applicant however has not disclosed any specially designed circuits “arranged” to carry out the invention. Paragraph 16 states that “the present invention has not limitations on the implementation of the control circuit 102”. The applicant is claiming the functions that their claimed circuits are to perform but does not provide any description of how the circuits operate or are “arranged” to perform the claimed functions. Such description clearly does not meet the requirements of written description provided in section 2161.01(I) of the MPEP.
Written Description Issue #2
Claims 1 and 12 feature the following limitation:
setting the BT frequency hopping configuration in the frequency band according to at least the scan result.
The applicant did not disclose how to actually set BT hopping configuration in a frequency band according to a scan result. Paragraph 21 provides literal support for this limitation but there is no description of how the applicant’s invention actually sets the BT frequency hopping based on the scan result. As explained in sections 2163.03(V) and 2161.01(I) of the MPEP, an original claim may be rejected for lacking written description support when the applicant claims a performing a function, in this case setting a BT hopping configuration according to a scan result, but does not disclose how the function is actually performed.
Written Description Issue #3
The applicant amended claim 1 as follows:
performing a BT channel scan upon a plurality of channels in a frequency band to generate a scan result, wherein the frequency band is higher than a 2.4GHz band, and the plurality of channels comprise Wi-Fi preferred scanning channels (PSCs) only;
The applicant amended claim 12 as follows:
wherein the control circuit is further arranged to instruct the wireless communication circuit to perform a BT channel scan upon a plurality of channels in the frequency band to generate a scan result, where the plurality of channels comprise Wi-Fi preferred scanning channels (PSCs) only: and the BT frequency hopping configuration in the frequency band is set by the control circuit according to at least the scan result.
The following is the only reference to “Wi-Fi preferred scanning channels (PSCs)”:
[0021]In a fourth case of setting the BT frequency hopping configuration FH_HB in the high band according to an embodiment of the present invention, the control circuit 102 is further arranged to instruct the wireless communication circuit 104 to perform a BT channel scan upon a plurality of channels in the high band (e.g., 5GHz band and/or 6GHz band) to generate a scan result, where the plurality of channels include Wi-Fi preferred scanning channels (PSCs), and the BT frequency hopping configuration FH_HB is set by the control circuit 102 according to at least the scan result. For example, the non-BT system 110 is a Wi-Fi system, and the BT channel scan may only scan Wi-Fi PSCs that are 20MHz channels with indexes 5, 21, 37, 53, 69, and 85 in UNII-5 shown in FIG. 2.
The original disclosure did not state that the invention performs a BT channel scan upon Wi-Fi preferred scanning channels only, as covered by the first limitation of claim 1 and the “wherein” clause of claim 12. Paragraph 21 only states that the scan includes Wi-Fi preferred scanning channels but does not disclose omitting other channels in the manner covered by the 11/24/2025 amendment.
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 1-22 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “Bluetooth” in claims 1-22 is used by the claim to mean “a type of communication that can operate in the 2.4Ghz band and in 5 and 6 Ghz bands,” while the accepted meaning is “a communication protocol for short range communications that operates the just the 2.4Ghz band.” The term is indefinite because the specification does not clearly redefine the term.
Claims 4 and 15 recite the limitations "a same frequency hopping sequence specified in a BT frequency hopping configuration". There is insufficient antecedent basis for this limitation in the claim. The applicant does not reference a same frequency hopping sequence in claims 1 or 12. The Examiner cannot discern how claims 4 and 15 are supposed to modify the actions carried out in claims 1 and 12.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9, 10, 20, and 21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 and 10, specify where the method is used but they do not actually limit the scope of the process claimed in claim 1. Claims 20 and 21 state the device is part of a larger system but they do not modify the scope of the device which is the subject of claim 12. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-22 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The applicant claims a Bluetooth frequency hopping configuration that is higher than a 2.4Ghz band and performing a Bluetooth communication operation that is compliant with the frequency hopping configuration in the frequency band that is higher than the 2.4Ghz band. This is impossible because Bluetooth only operates in the 2.4Ghz band. Any communication that operates in a higher band will not be Bluetooth communication, as the term was known at the time of the invention. Therefore, the Bluetooth communication covered by the final limitation in claims 1 and 12 is impossible because such communication at a higher band than 2.4Ghz is not Bluetooth communication. The impossibility of the applicant’s invention renders it inoperative.
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.
Claim(s) 1, 4, 7-12, 15, and 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2022/0247451 by Aldana et al. in further view of U.S. Patent Application Publication Number 2002/0080855 by Watanabe et al.
As to claim 1, Aldana teaches a Bluetooth (BT) communication method comprising: setting a BT frequency hopping configuration in a frequency band that is higher than a 2.4GHz band (paragraphs 49, 62-65, and 68); and performing a BT communication operation that is compliant with the BT frequency hopping configuration in the frequency band (paragraph 66); however Aldana does not explicitly teach performing a scan and then setting the frequency hopping configuration based on the scan result.
Watanabe teaches performing a BT channel scan upon a plurality of channels in the frequency band to generate a scan result, wherein the plurality of channels comprise Wi-Fi preferred scanning channels (PSCs) (paragraph 30); wherein setting the BT frequency hopping configuration in the frequency band comprises: setting the BT frequency hopping configuration in the frequency band according to at least the scan result (Figure 11).
It would have been obvious to one of ordinary skill in the Bluetooth communication art at the time of the applicant’s filing to combine the teachings of Aldana regarding managing frequency hopping with the teachings of Watanabe regarding basing frequency hopping configuration off of a scan because doing so will avoid any interferences.
As to claim 12 it is rejected for the same reasoning as claim 1.
As to claims 4 and 15, see Figure 11 of Watanabe.
As to claims 7, 8, 18, and 19, see paragraph 55 of Aldana.
As to claims 9 and 20, see paragraphs 40-44 of Aldana.
As to claims 10 and 21, see paragraph 22 of Aldana.
As to claims 11 and 22, see paragraph 68 of Aldana.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454