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 03/06/2026 have been fully considered but they are not persuasive.
The applicant traverses the §102 rejection of claim 1. See Remarks at 14. The applicant submits that Kim does not anticipate claim 1 because the reference discloses “communicating an SDT with a second base station and transmitting a report of the communications to a third base station,” while the claim requires that an “uplink data message” and a “report” are sent to the same base station. Id. This is not persuasive.
Kim describes that a report is generated based on uplink messages with a second base station. Kim ¶459. Kim further discloses “transmitting the message [containing the SDT report] via the third cell may comprise transmitting the message via the third cell of a third base station to a second base station.” Id. ¶468 (emphasis added). Kim also describes “transmitting the report … to the second base station via a third base station.” Id. Abstract. The POSITA would understand Kim to describe that the report, which relates to communications with the second base station, is transmitted to the same second base station via a third base station. While Kim’s UE does not transmit the report directly to the second base station, this is not a requirement of claim 1. Therefore it is maintained that Kim anticipates claim 1.
Claims 19 and 28 were rejected under §103 based on a combination of Kim and Kim ‘575. The applicant traverses this rejection, stating that Kim ‘575 does not relate to “small data transmission.” Remarks at 15-16. This argument is not convincing. The claims were rejected based on a combination of Kim and Kim ‘575. Kim, as described in the rejection of claim 1, from which claim 19 depends, describes delivering reporting information for small data transmissions. Kim does not disclose that the UE communicates to the base station its capability to generate SON or MDT reporting information for these small data transmission. But Kim ‘575 describes a UE communicating its capability to generate MDT reporting information. Therefore, when modifying Kim (which reports information for small data transmissions), the POSITA would have found it obvious to communicate the UE’s capability to report MDT information relating to Kim’s small data transmissions.
“One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.” MPEP 2145 IV. Instead, the “test for obviousness is what the combined teachings of the references would have suggested” to the POSITA. Id. It is respectfully maintained that Kim and Kim ‘575, taken together, suggest the invention that is recited in claims 19 and 28.
The previous action inadvertently stated that Kim ‘575 taught a capability message that relates to SDTs. See NFOA at 14. However, the grounds of rejection were clear, as it was evident from the full rejection of claim 19 (incorporating the rejection of claim 1) that Kim relates to SDTs. The inadvertent statement from the rejection of claim 19 is removed in this Office action. This does not amount to a new grounds of rejection, as it does not change the “basic thrust of the rejection” nor rely on “new facts or rationales not previously raised.” MPEP 1207.03 III. The “facts” that are relied upon below (namely, that Kim’s reports relate to SDTs) have not been changed, nor has the rationale to modify Kim with Kim ‘575. Relying on fewer teachings in Kim ‘575 is analogous to situations that have been determined to not amount to new grounds of rejection. See MPEP 1207.03(a)(II). Therefore this Office action is properly made final because the applicant had a fair opportunity to respond to what the POSITA would understand was clearly proposed in the previous rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-18, 20-26, and 29-30 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim, US 20240032134. Support for the passages in Kim that are relied upon below can be found in provisional application 63/168,783, filed 03/31/2021.
Claim 1: Kim discloses a user equipment (UE) for wireless communication, comprising at least one memory and at least one processor coupled to the at least one memory, wherein the at least one processor is configured to (The UE in Kim is a computing device, known to have these elements. See e.g. Fig. 1B and ¶¶ 45 and 212.):
transmit, in accordance with a communications procedure, an uplink data message to a base station while the UE is in an inactive mode with respect to communications with the base station (As SDT uplink message is sent from the UE to a base station while the UE is in an inactive mode. ¶¶459-463 and Fig. 30);
generate a report that includes one or more parameters pertaining to uplink data message transmission to the base station, wherein the one or more parameters included in the report are based at least in part on the communications procedure associated with the uplink data message and on whether transmission of the uplink data message to the base station was successful; and transmit the report to the base station (A report is generated relating to the transmission of the uplink message and based on the particular communication procedure (such as RA or CG). This report includes parameters that pertain to the first uplink data message, and are based on the communications procedure and the success or failure of the transmission. ¶¶ 464-468. The report is sent to the base station, as shown in Fig. 30.).
Claim 2: Kim discloses: wherein to transmit the report, the at least one processor is configured to: transmit the report to the base station for enhancement of subsequent uplink data message transmissions from the UE, improvement of random access procedures and resources used for subsequent uplink data message transmissions from the UE, or both (The BRI of this claim language only requires that the report is transmitted “for enhancement of subsequent uplink data message transmission from the UE.” This claim language describes operations at the base station, not the UE; it shows how the base station uses the report from the UE “for enhancement” or “improvement” of subsequent transmission from the UE. See e.g. the publication of this application, US20240276275, at ¶105. Therefore this claim language does not limit the structure of the apparatus, the UE, to which claim 2 is drawn, and as such is not given patentable weight. See MPEP 2111.04 I. Even if given patentable weight, this feature is taught by Kim. See Fig. 28-30 and their description, and ¶372.).
Claim 3: Kim discloses that to transmit the uplink data message the at least one processor is configured to: receive, from the base station, a configured grant indicating one or more physical uplink shared channel resources; and transmit the uplink data message to the base station on the one or more physical uplink shared channel resources in accordance with the configured grant, wherein the communications procedure is the configured grant (The chosen uplink resource for initial SDT based on CG is a PUSCH. Fig. 30; ¶¶ 400 and 464-468.).
Claim 4: Kim discloses that to transmit the uplink data message the at least one processor is configured to: transmit the uplink data message to the base station on a random access channel in accordance with a random access procedure, wherein the communications procedure is the random access procedure (¶463.).
Claim 6: Kim discloses to generate the report the at least one processor is configured to: generate a random access report based at least in part on successful transmission of the uplink data message on the random access channel, wherein the one or more parameters included in the random access report comprise a set of random access parameters used for transmission of the uplink data message, a set of channel measurements pertaining to the communications procedure, an indication of a random access message used for transmission of the uplink data message, an indication of a random access purpose associated with the uplink data message, or a combination thereof (¶¶464-467.).
Claim 7: Kim discloses that to generate the random access report the at least one processor is configured to: generate the random access report based at least in part on successful transmission of the uplink data message on the random access channel, wherein the one or more parameters included in the random access report comprise data arrival information related to the uplink data message, radio bearer information associated with the uplink data message, , or a combination thereof (¶464).
Claim 8: Kim discloses that to generate the random access report the at least one processor is configured to: log the one or more parameters of the random access report until a connection release message or a connection resume message is received from the base station (¶¶462, 468-469).
Claim 9: Kim discloses that to generate the report the at least one processor is configured to: generate a logged minimization of drive test report or a small data transmission report based at least in part on successful transmission of the uplink data message on the random access channel (A small data transmission (SDT) report is generated based on the successful uplink RA transmission. ¶¶466-468.).
Claim 10: Kim discloses that the at least one processor is configured to: determine that transmission of the uplink data message on the random access channel was unsuccessful based at least in part on a failure of the random access procedure, expiration of a timer related to a failure status of the uplink data message, detection of an integrity check failure at the UE, or a combination thereof (¶¶465-467).
Claim 11: Kim discloses that to generate the report the at least one processor is configured to: generate a connection establishment failure report (¶448), a logged minimization of drive test report, or a small data transmission report based at least in part on failure of the transmission of the uplink data message on the random access channel (¶¶465-467).
Claim 12: Kim that to generate the report the at least one processor is configured to: generate a connection establishment failure report based at least in part on determining that the transmission of the uplink data message on the random access channel was unsuccessful, wherein the connection establishment failure report comprises a set of random access parameters used for transmission of the uplink data message, a set of channel measurements related to transmission of the uplink data message, data volume information pertaining to the UE, payload information associated with the uplink data message, data arrival information related to transmission of the uplink data message, or a combination thereof (¶¶ 448 and 465-466).
Claim 13: Kim discloses that to generate the report the at least one processor is configured to: generate a small data transmission report based at least in part on the communications procedure being a configured grant or on the communications procedure being a successful random access procedure, wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, radio bearer information associated with the uplink data message, configured grant resource release information associated with the communications procedure, or a combination thereof (¶464-467).
Claim 14: Kim discloses that to generate the report the at least one processor is configured to: determine that a timer related to a failure status of the uplink data message has not expired; and generate a small data transmission report based at least in part on determining that the timer has not expired (¶¶ 466-469), wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, a set of channel measurements associated with transmission of the uplink data message, retransmission information associated with the uplink data message, radio bearer information related to the uplink data message, timing information associated with transmission of the uplink data message, or a combination thereof (¶¶ 464-466).
Claim 15: Kim discloses to generate the report the at least one processor is configured to: determine that a timer related to a failure status of the uplink data message has expired (¶466); and generate a small data transmission report based at least in part on determining that the timer has expired, wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, a set of channel measurements associated with transmission of the uplink data message, configured grant resource release information associated with the communications procedure, cell reselection information related to the communications procedure, or a combination thereof (¶¶464-466).
Claim 16: Kim discloses that to transmit the uplink data message the at least one processor is configured to: transmit a small data transmission message as the uplink data message while the UE is in the inactive mode based at least in part on the uplink data message having a payload size that is below a preconfigured threshold (¶¶322-323 and Fig. 19 – SDT by definition includes messages with payload size below a defined threshold. The UE remains in the inactive state during this procedure. See also ¶468, which describes a SDT condition being that the message have a size that is below a threshold.).
Claim 17: Kim discloses that to generate the report the at least one processor is configured to: generate the report based at least in part on transmitting the uplink data message in an unlicensed radio frequency spectrum band (RA communications is performed in the unlicensed spectrum. ¶189.), wherein the one or more parameters of the report comprise bandwidth part information related to transmission of the uplink data message, listen before talk failure information associated with transmission of the uplink data message, a failure status of the uplink data message, or a combination thereof (¶¶ 408 and 464-466.).
Claim 18: Kim discloses that to transmit the report the at least one processor is configured to: transmit the report to the base station while the UE is in a connected mode or an inactive mode with respect to communications with the base station (Fig. 30 and its description – the report is transmitted in the inactive mode).
Claim 20: Kim discloses that the at least one processor is configured to: transmit, to the base station and based at least in part on generating the report, an indication that the report is available for transmission (The first message that is sent to the base station is an indication that the report is available. Responsive to this first message, the base station requests the report. See Fig. 30 and ¶¶458-461.).
Claim 21: Kim discloses that the at least one processor is configured to: receive, from the base station and in response to the indication, a request for the UE to transmit the report, wherein transmitting the report is based at least in part on receiving the request (Fig. 30 and ¶458).
Claim 22: Kim discloses that the at least one processor is configured to: transmit the uplink data message, the report, an indication that the report is available for transmission, or a combination thereof via one or more signaling radio bearers or dedicated radio bearers (SDT transmission, and the procedure depicted in Fig. 30, occur on the claimed radio bearers. ¶350).
Claims 23, 29, and 30: see rejection of claim 1.
Claims 24-26: see rejection of claims 2-4, respectively.
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 5 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Xing, US 20230156821 (with support in PCT/CN2021/101331).
Claims 5 and 27: Kim fails to disclose to transmit the uplink data message on the random access channel the at least one processor is configured to: transmit the uplink data message via the random access channel based at least in part on a prior attempt to transmit the uplink data message to the base station in accordance with a configured grant being unsuccessful.
However, Xing discloses transmit a message via a random access channel based at least in part on a prior attempt to transmit the message to a base station in accordance with a configured grant being unsuccessful (¶129).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Kim with these teachings in Xing, the rationale being to enable the most suitable uplink path to be located.
Claims 19 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kim, WO 2020050575 (“Kim ‘575”).
Claims 19 and 28: Kim fails to disclose that the at least one processor is configured to: transmit, to the base station, a capability message indicating a capability of the UE to generate self-organizing network or minimization of drive test reporting information for small data transmissions; and receive, from the base station and based at least in part on the capability message, control signaling that indicates a set of self-organizing network or minimization of drive test reporting criteria, wherein generating the report is based at least in part on the set of self-organizing network or minimization of drive test reporting criteria.
However, Kim ‘575 discloses a UE that is programmed to transmit, to the base station, a capability message indicating a capability of the UE to generate self-organizing network or minimization of drive test reporting information; and receive, from the base station and based at least in part on the capability message, control signaling that indicates a set of self-organizing network or minimization of drive test reporting criteria, wherein generating the report is based at least in part on the set of self-organizing network or minimization of drive test reporting criteria (Abstract and ¶¶7-8).
It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify Kim with teachings in Kim ‘575, the rationale being to ensure proper reporting from the UE and in the format most useful to the base station.
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 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