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(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.
First of all, under 35 U.S.C. 112(d) (and MPEP 2111.03), a dependent claim must incorporate by reference all the limitations of the claim to which it refers, and it must specify a further limitation. Because Claim 1 explicitly excludes the capability, Claims 4 and 5 cannot legally comprise that same capability while depending on Claim 1. By attempting to include what the parent claim excluded, Claims 4 and 5 are broadening or contradicting the parent claim rather than further limiting it.
Secondly, because a dependent claim is construed to include all the limitations of its parent, reading Claim 4 requires reading Claim 1 and Claim 4 together. This results in a logical impossibility. The capability excludes X (from Claim 1) AND the capability comprises X (from Claim 4). This direct contradiction renders the scope of Claims 4 and 5 completely unclear and making them indefinite under 35 U.S.C. 112(b).
Claims 4, 5, 14, and 15 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.
A dependent claim must incorporate by reference all the limitations of the claim to which it refers. Independent Claims 1, 9, and 19-22 explicitly recite that the inter-frequency simultaneous transmission capability excludes the capability of sending and sending/receiving service data. However, dependent Claims 4, 5, 14, and 15 recite that the capability comprises these exact features. A dependent claim cannot omit, contradict, or broaden a limitation of its parent 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.
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 4, 5, 14, and 15 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.
Because a dependent claim incorporates all limitations of its parent claim, reading Claims 4 and 5 in conjunction with Claim 1 (and Claims 14 and 15 in conjunction with Claim 9) results in a logical contradiction. The claims simultaneously require the inter-frequency simultaneous transmission capability to both exclude and comprise the exact same capabilities. This contradiction renders the scope of the claims impossible to determine.
Claims 1, 9, and 19-22 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.
The claims contain an internal contradiction. Specifically, Claims 1, 9, and 19-22 define the ‘inter-frequency simultaneous transmission capability’ as being configured for indicating the capability of the user equipment to ‘transmit service data … simultaneously.’ However, the claim subsequently recites that this same capability "excludes" the capability of sending and sending/receiving simultaneously. It is unclear how a capability defined as the ability to transmit simultaneously can explicitly exclude the ability to transmit simultaneously. The claim is therefore internally inconsistent and its scope cannot be ascertained.
Dependent claims 2-3 and 7-8 depend on Independent Claim 1, and dependent claims 10-13 depend on claim 9. These dependent claims therefore incorporate the indefinite “inter-frequency simultaneous transmission capability” limitation of their respective independent claims. Accordingly, claims 3-3, 7-8, and 10-13 are rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NHU PHAM whose telephone number is (703)756-4511. The examiner can normally be reached Monday - Friday: 7:30 am - 5 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, Jae Y. Lee can be reached at (571) 270-3936. 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.
/NHU PHAM/Examiner, Art Unit 2479 /JAE Y LEE/Supervisory Patent Examiner, Art Unit 2479
Prosecution Insights