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 .
Claim Rejections - 35 USC § 112
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 1-20 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the occurrence of “triggering, by the terminal, the specific MAC CE” on line 14 is vague and indefinite because the preceding claim limitation discloses “trigger, by the terminal a specific Medium Access Control (MAC) Control Element (CE)” and “canceling, by the terminal, the specific MAC CE” in lines 6 and 13, respectively, where it is unclear if this second triggering of the specific MAC CE is a retriggering of the specific MAC CE or if it’s another specific MAC CE and if they are happening in a particular order. Similar problem exists for claim 20.
Claim 7 recites the limitation “the first MAC CE” at line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
4. 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.
5. Claim 2 is 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 2 is a dependent claim that must be “…directed to a combination including everything recited in the base claim and what is recited in the dependent claim.” But claim 2 recites that the second “triggering” step is not performed in the case that the second RRC does not comprise the channel group parameters. Thus, claim 2 appears to be drawn to a combination that removes a previous step recited in claim 1. Such a recitation does not complies with 35 U.S.C. 112(d) because claim 2 does not appear to be drawn to a combination including everything recited in the base claim 1. The U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of pre-AIA 35 U.S.C. 112, 4th paragraph, are related to matters of form, non-compliance with pre-AIA 35 U.S.C. 112, 4 th paragraph, renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, 4th paragraph). Therefore, if a dependent claim does not comply with the requirements of 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, the dependent claim should be rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as unpatentable rather than objecting to the claim.
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.
Allowable subject matter
6. Claims 2-19 are rejected based on its dependency, but would be allowable if claims 1 and 20 rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
7. Claim 7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
8. Claims 8-9, being rejected as they are dependent to claim 7, would be allowable if claim 7 rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Soenghun Kim (US 20240357694 A1); Jeonghwan (WO-2022019345 A1); Shrivastava (WO-2024167353-A1); Kung et al. (US 2022/0078670 A1) are cited, and considered pertinent to the instant specification.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUC C HO whose telephone number is (571)272-3147. The examiner can normally be reached on M-F 8am-4pm.
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, Gary Mui can be reached on 571-270-1420 (Gary.mui@uspto.gov). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUC C HO/Primary Examiner, Art Unit 2465
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