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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5-22-26 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application, PCT/JP2021/008570 filed 3-4-21, under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8-30-23 & 2-3-25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 1-7-26. These drawings are acceptable.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is direct to an apparatus which is a physical hardware {e.g. claim 1 recites “a terminal comprising a processor”, claim 3 recites “a base station comprising a processor”, claim 4 recites “a radio communication system comprising a terminal comprising a first processor and a base station comprising a second processor, wherein the first processor and the second processor”, and claim 5 recites “using a processor of a terminal or a processor of a base station”}. However, the body of the claim(s) 1-5 only recite(s) a step of “apply a target subcarrier spacing lower than a specified subcarrier spacing, in a target frequency band that includes at least a portion of a specified frequency range in which the specified subcarrier spacing is defined as a minimum subcarrier spacing or a frequency band lower than the specified frequency range, wherein a frequency use efficiency of the target subcarrier spacing is higher than the frequency use efficiency of the specified subcarrier spacing”, which are defined as the programs of software {Patent Application Publication of this instant application, US 2024/0146593 A1: Fig.9 & ¶0109 wherein “Furthermore, the above-mentioned gNB 100 and UE 200 (the device) may function as a computer for processing the radio communication method of the present disclosure. FIG. 9 shows an example of the hardware configuration of the device. As shown in FIG. 9, the device may be configured as a computer device including a processor 1001, a memory 1002, a storage 1003, a communication device 1004, an input device 1005, an output device 1006, a bus 1007, etc.”}. In other words, claims 1-6 recites a network element (e.g. terminal or base station) comprising only a processor is insufficient to perform the claimed applying method without a memory storing “programs (program code), software modules, etc., that are capable of executing (by the processor, emphasis added) a method (the claimed applying method, which is software/programs codes, emphasis added)”.
-Claims 2 & 6 are rejected in virtue of its dependency on to the independent claim 1.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The Claims 1-5 do not fall within at least one of the four categories of patent eligible subject matter because claim 5 is directed a method, i.e., “a process is a series of acts or steps”{Minton v. Natl. Ass’n. of Securities Dealers, 336 F.3d 1373, 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed.Cir. 2003), see also MPEP 2601.I-II.A-B & B(1)(a)}; and claims 1-4 are directed to a network element (e.g. terminal or base station), i.e., “a machine is a concrete thing, consisting of parts or certain devices and combination of devices”{Burr v. Duryee, 68 U.S. (1 Wall) 531, 570, 17 L. Ed. 659 (1863), see also MPEP 2106}.
-The claims 1-5 recite “a processor” being insufficient structure to be organized and correlated in such a manner as to present a complete operative device without any relative parts [See MPEP 2106]
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 1-6 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without “a memory, coupled to the processor, storing executable instructions (e.g. the method of “apply a target subcarrier spacing lower than a specified subcarrier spacing, in a target frequency band that includes at least a portion of a specified frequency range in which the specified subcarrier spacing is defined as a minimum subcarrier spacing or a frequency band lower than the specified frequency range, wherein a frequency use efficiency of the target subcarrier spacing is higher than the frequency use efficiency of the specified subcarrier spacing”{claim 5} or performed by the terminal and base station {claim 4}, when executed by the processor to perform the claimed operations”{Patent Application Publication of this instant application, US 2024/0146593 A1: Figs.4-5 & ¶0107 wherein “The block diagram (FIGS. 4 and 5) used for the description of the above embodiment shows a block of functional units. Those functional blocks (structural components) can be realized by a desired combination of at least one of hardware and software.” And Fig.9 & ¶0109 wherein “Furthermore, the above-mentioned gNB 100 and UE 200 (the device) may function as a computer for processing the radio communication method of the present disclosure. FIG. 9 shows an example of the hardware configuration of the device. As shown in FIG. 9, the device may be configured as a computer device including a processor 1001 and a memory 1002, a storage 1003, a communication device 1004, an input device 1005, an output device 1006, a bus 1007, etc.” }, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
In this case, claims 1-2 & 6 are directed to a terminal comprising a processor to perform apply step without a combination of elements {specification: UE 200-Fig.9 comprises a processor 1001 and a memory 1002, a storage 1003, a communication device 1004, an input device 1005, an output device 1006}. Likewise, claims 3 is directed to a base station comprising a processor to perform an apply step without a combination of elements {specification: gNB 100-Fig.9 comprises a processor 1001 and a memory 1002, a storage 1003, a communication device 1004, an input device 1005, an output device 100}; and, claim 4 recites “a radio communication system comprising a terminal comprising a first processor and a base station comprising a second processor, wherein the first processor and the second processor” to perform an apply step; and claim 5 recites “using a processor of a terminal or a processor of a base station” to perform an apply step. Therefore, the terminal and the base station in claims 1-4 require these essential elements, e.g. a memory, coupled to the processors, storing executable instructions, when executed by the processor in order to perform the claimed apply operations. Likewise, the applying method (e.g. executable instructions) in claim 5 requires a memory, coupled to the first processor and the second processor, storing executable instructions, when executed by the first processor and the second processor, in order to perform the claimed operations {U.S. Patent Application Publication of this instant application, US 2024/0146593: ¶0112-¶0121}.
-Claims 2 & 6 are rejected in virtue of its dependency on to the independent claim 1.
Terminal Disclaimer
The terminal disclaimer filed on 1-7-26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Application 18/280,131 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 5-22-26 have been fully considered but they are not persuasive.
A/. With respect to previous Obviousness Double Patenting rejection in the Non-Final Rejection.
-In reply, the applicant had filed a Terminal Disclaimer for U.S. Patent Application 18/280,131 in 1-7-26. Therefore, the previous Obviousness Double Patenting rejection in the Non-Final Rejection is hereby withdrawn.
B/. With respect to 101 rejections to claims 1-5, the applicant replied that claims 1-5 are not an abstract idea.
-In reply, the applicant is directed to 101 rejections for rejecting claims 1-5 as being a single means wherein a terminal or a base station, each comprises only a single means (e.g. a processor) to perform an apply step. In other words, claims 1-5 were not rejected as being an abstract idea. Therefore, 101 rejections stand.
-Also, claims 1-6 are rejected for recited a network element (e.g. terminal or base station) comprising only a processor is insufficient to perform the claimed applying method without a memory storing “programs (program code), software modules, etc., that are capable of executing (by the processor, emphasis added) a method (the claimed applying step, which is software/programs codes, emphasis added)”.
C/. With respect to 112a rejection for missing essential limitations, the applicant argued that claims 1-6 recited “a first processor and a second processor” as hardware structures configured to perform the apply operation.
-In reply, the applicant is directed to {Patent Application Publication of this instant application, US 2024/0146593 A1: Fig.9 & ¶0109 wherein “Furthermore, the above-mentioned gNB 100 and UE 200 (the device) may function as a computer for processing the radio communication method of the present disclosure. FIG. 9 shows an example of the hardware configuration of the device. As shown in FIG. 9, the device may be configured as a computer device including a processor 1001 and a memory 1002, a storage 1003, a communication device 1004, an input device 1005, an output device 1006, a bus 1007, etc.”}. This implies that applicant is claiming software, per se, lacking the hardware necessary to realize any of the underlying functionality. In other words, claims 1-6 recited a network element (e.g. terminal or base station) comprising only a processor is insufficient to perform the claimed applying method without a memory storing “programs (program code), software modules, etc., that are capable of executing (by the processor, emphasis added) a method (the claimed applying step, which is software/programs codes, emphasis added)”. Therefore, the claims invention directed to non-statutory subject matter as computer programs, per se, i.e. the descriptions or expressions of the programs, are not physical “things.” Therefore, the claims invention is direct to both statutory such as apparatus and software “process” as stated in the specification. Therefore, 112a rejections to claims 1-6 stand.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONGCHAU BA NGUYEN whose telephone number is (571) 272-3148. The examiner can normally be reached Monday-Thursday 7:30 AM -5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RICKY NGO can be reached at 571-272-3139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from 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.
/PHUONGCHAU BA NGUYEN/ Primary Examiner, Art Unit 2464
Prosecution Insights