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
In light of the changes made to the specification, the objection pertaining to a non-descriptive title is withdrawn.
In light of the changes made to claim 1, the remarks pertaining to the invocation of 35 U.S.C. 112(f) are withdrawn.
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that Hayashi in view of Shime fail to teach or disclose “wherein the parameter includes a bandwidth of a component carrier, a number of component carriers, and a subcarrier spacing, in each band supported by the second base station,” particularly in that Shimen generally teaches a cell/component carrier that uses a predetermined frequency bandwidth, however this bandwidth information is not included as a specific parameter, nor is it provided “for each band supported by the second base station”.
Applicant additionally argues that the combination of Hayashi and Shime would still fail to render the claim obvious because a person of ordinary skill in the art would have had no motivation to supply the missing elements without the benefit of applicant’s own disclosure as a guide.
However, reading the claims in the broadest reasonable sense, the examiner respectfully disagrees. As described in ¶0043 of Shime, each cell [band] uses a predetermined frequency bandwidth, wherein it is possible to predefine the maximum value, minimum value, and settable value for the predetermined frequency bandwidth --- these are indeed values used as parameters, merely because the word “parameter” is not cited within the paragraph does not mean that they are not some sort of parameter, as would be understood by one of ordinary skill in the art. Of note is that this is in regards to dual connectivity and is therefore considering a second base station. Additionally, although not used in the rejection, Shime additionally teaches the use of other parameters cited in the claim ---- along with the term “parameter” used in the cited paragraph --- as seen in ¶0058-0060 wherein the number of component carriers [subcarriers/resource blocks] are taught, which would of course be dependent upon the predetermined frequency band and is explicitly taught as a parameter, as well as the subcarrier spacing [which may be interpreted as either subcarrier interval and/or as seen in ¶0060 and 0082]. Therefore, Shime indeed teaches at least the use of all three parameters – bandwidth of a component carrier, number of component carriers, and subcarrier spacing, although only one is required for the claim language.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both Hayashi and Shime correspond to technology regarding Dual Connectivity, with Shime providing additional parameters which may be used for said technology, which naturally provides motivation for customization of the technology in general.
Therefore the rejection of claim(s) 1 is/are maintained. Regarding arguments pertaining to claim(s) 4, for reasons similar to those discussed above for claim 1, the examiner respectfully disagrees. Therefore the rejection of claim(s) 4 is/are maintained. Regarding claim(s) 3 the claim(s) is/are dependent upon claim(s) 1 and are still rejected under the same basis as claim(s) 1 and the arguments presented above.
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, 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (“Hayashi”) (U.S. PG Publication No. 2019/0090126) in view of Shimezawa et al. (“Shime”) (U.S. PG Publication No. 2020/0221522).
In regards to claim 1, Hayashi teaches a terminal comprising:
a reception unit configured to receive an inquiry related to terminal capability (See ¶0011 and 0201-0208 with regards to a terminal receiving a message of terminal capability enquiry, and responding with the capability of the terminal) including bands and a parameter from a first base station (See ¶0208, 0354-0355 and 0423-0425 wherein a band may be referred to as a band, frequency, carrier frequency, operating band, cell, serving cell or the like as described by Hayashi, this is taken in view of ¶0101, 0170, 0429 with regards to parameters, also see at least ¶0309-0312 and 0349 wherein various other information may be taught as “parameters”), the bands being supported by a second base station that performs communication together with the first base station according to DC (Dual Connectivity) (See ¶0089-0090, 0092-0102 with regards to primary and secondary cells [managed by base station apparatuses] using Dual Connectivity, also see ¶0082-0083 and 0085 for context on Primary cell and Secondary cell), and
the parameter being supported by the second base station in the bands (See at least 0429-0431 and 0496 wherein various parameters may be associated between devices [base stations and terminal] for transmission and reception of information, of note is that a serving cell includes both of the base stations in communication within a cell network);
a control unit configured to determine the terminal capability corresponding to the band and the parameter (See for example ¶0201-0208, 0346-0349 and 0429); and
a transmission unit configured to transmit a report related to the determined terminal capability to the first base station (See at least ¶0011, 0201-0208, 0346-0349 and 0429).
Hayashi, however, fails to teach wherein the parameter includes at least one of a bandwidth of a component carrier, a number of component carriers, and a subcarrier spacing, in each band supported by the second base station.
In a similar endeavor Shime teaches wherein the parameter includes at least one of a bandwidth of a component carrier, a number of component carriers, and a subcarrier spacing, in each band supported by the second base station (See Abstract in view of ¶0043-0047 and FIG. 5-7; also see ¶0149-0155).
It would have been obvious to a person of ordinary skill in the art, and before the effective filing date of the claimed invention, to incorporate the teaching of Shime into Hayashi because it allows for predetermined frequency bandwidth for use by each of the cells when using either carrier aggregation or dual connectivity, thus allowing for more specificity of information between devices within a system/cell.
In regards to claim 3, Hayashi teaches the terminal as claimed in claim 2, wherein the reception unit and the transmission unit perform communication with the first base station and the second base station according to the DC that is started based on the report of the terminal capability (See ¶0011, 0201-0208, 0346-0349 and 0429 in view of 0082-0083, 0085, 0089-0090 and 0092-0102).
In regards to claim 4, the claim is rejected under the same basis as claim 1 by Hayashi in view of Shime.
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 EDEMIO NAVAS JR whose telephone number is (571)270-1067. The examiner can normally be reached M-F, ~ 9 AM -6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached at 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EDEMIO NAVAS JR
Primary Examiner
Art Unit 2483
/EDEMIO NAVAS JR/Primary Examiner, Art Unit 2483
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