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 June 09, 2026 have been fully considered but they are not persuasive.
RE claim 1, Applicants argue that “Applicant respectfully submits that Kim does not anticipate claim 1 because Kim expressly identifies the claimed features as problems to be solved rather than as teachings of the prior art. Specifically, Kim discloses that in a conditional handover, "the source gNB is not capable of expecting a target gNB to which the UE will perform a handover, the source gNB starts late data forwarding to the target gNB, and also the source gNB may not recognize a time at which the UE releases a connection to the source gNB." Kim further explains that "the source gNB may start late a procedure of transferring uplink or downlink data to the target gNB together with a transmission/reception status or a SN status of the uplink or downlink data, resulting in a transmission delay." These passages demonstrate that Kim recognizes the conditional handover procedure as having inherent deficiencies that Kim seeks to address through various proposed embodiments.”
Examiner respectfully disagrees. This passage does not occur in the cited paragraphs 163-164. Instead, this phrasing is found in paragraphs 57, 181 and 202. Applicants seem to be using this to effectively argue it “teaches away”. This is not the case and furthermore, this is not a valid argument for anticipation. See MPEP 2131.05 “A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis.”
In the even this is not the intended argument, those passages merely point to issues recognized by Kim and solvable by either the embodiment cited, or others in the prior art disclosure by Kim. Given Applicants have given no further, detailed argument that shows Examiner erred in mapping Kim’s disclosure to the claimed invention, or other issues that would persuade Examiner to reconsider and withdraw Kim, Examiner maintains this rejection at this time.
RE claims 4, 8 and 9, Applicants argue “Kim's conditional handover procedure in Figure 1G does not disclose starting data transfer to the target gNBs upon acceptance of the handover request.”.
Examiner respectfully disagrees. Applicants argue for Figure 1G when 1F and paragraph 157 were also cited for this feature. In that portion of the disclosure, data forwarding to the Target gNB occurs after the Target gNB sends a handover request ack. Figure 1G is then presented as another, but related embodiment that introduces the conditional handover for two candidates target gNBs. Both respond with the Handover request ACK. Paragraph 157 then further discloses “Paragraph 157 further discloses “The source gNB 1f-02 may transfer a sequence number (SN) status about a transmission/reception status of uplink or downlink data to the target gNB 1f-03, and when there is downlink data, the source gNB 1f-02 may transfer the downlink data to the target gNB 1f-03, in operations 1f-30 and 1f-35. The UE 1f-01 may attempt a random access to a target cell indicated from the source gNB 1f-02, in operation 1f-40. The random access may be aimed to notify the target cell that the UE 1f-01 moves through a handover, while synchronizing an uplink.”. As such, Examiner maintains that data is forwarded to a target gNB once a target gNB has accepted the handover request.
RE claim 5, Applicants argue “The Examiner has cited Step 3 of NPL's Section 10.5.1 and interpreted the statement that "the source SN stops providing user data to the UE" to mean that "downlink data to a UE is ceased and forwarded to the target SN, however until handover is complete the source SN is still synchronized to the UE for uplink communications from the UE." Applicant respectfully submits that this interpretation is not supported by NPL. NPL states that "Reception of the SgNB Release Request message triggers the source SN to stop providing user data to the UE and, if applicable, to start data forwarding." This passage indicates that the source SN stops providing data to the UE and starts data forwarding to the target SN, but does not disclose that the source SN continues transmission and reception of data with the communication terminal as required by claim 5.”
Examiner respectfully disagrees. On page 45 into page 46, are the listed steps that correlate to Figure 10.5.1-1. Step 9 states that data forwarding from the source SN “may be initiated as early as the source SN receives the SgNB Release Request message from the MN.” That message is sent in step 3a, well before the UE synchronizes at step 7. This is interpreted to mean that the UE remains synchronized to the S-SN and thereby receives data from the S-SN while data is being forwarded in advance of the reelection to the target SN by the UE, initiated by the MN.
RE claim 6, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). NPL as cited already covers the scenario of reelection of a secondary base station via a request from a master base station as set forth in the prior action. The teachings of Kim would have suggested to one of ordinary skill in the art a manner in which multiple candidates may be determined and be prepared for connection to the terminal. Application of this teaching, rather than bodily combination of both systems would further predictably yield the same system as NPL, with the added step of having more than one candidate secondary cell for reselection in order to provide the UE with a better chance of a successful handover.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 and 8-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kim et al. (US 2020/0351725, Kim hereafter, cited on the IDS filed March 22/2024).
RE claim 1, Kim discloses a communication system comprising: a plurality of base stations (Figure 1G, Source gNB, Target gNB 1 and Target gNB 2), wherein in a case where it is necessary to cause a communication terminal to perform handover to another base station, a first base station that is a base station to which the communication terminal is being connected among the plurality of base stations makes a handover configuration request to one or more second base stations that are base stations to be candidates for a handover destination among the plurality of base stations while maintaining connection to the communication terminal (Paragraphs 163-164 and Figure 1G discloses a method of performing a conditional handover of a UE from a source gNB to one of a plurality of candidate target gNBs. The source gNB sends and handover request to each candidate target when a measurement report indicates a need for handover), and, after acceptance of the handover configuration request by the second base stations (Figure 1G and paragraph 164: “When the plurality of target gNBs 1g-03 and 1g-04 accept the handover request, the plurality of target gNBs 1g-03 and 1g-04 may transmit HO request Ack messages to the source gNB 1g-02, in operation 1g-15.”), the first base station gives an instruction for handover to the communication terminal being connected (Figure 1G and paragraph 164: “When the source gNB 1g-02 receives the HO request Ack messages, the source gNB 1g-02 may transmit a HO command message to the UE 1g-01, in operation 1g-20. The source gNB 1g-02 may transfer the HO command message to the UE 1g-01 by using an RRC Connection Reconfiguration message, in operation 1g-20.”)
RE claim 2, Kim discloses the system the communication system according to claim 1 as set forth above. Note that Kim further discloses wherein the first base station makes the handover configuration request to all of the second base stations (Paragraphs 163-164 and Figure 1G discloses a method of performing a conditional handover of a UE from a source gNB to one of a plurality of candidate target gNBs. The source gNB sends and handover request to each candidate target when a measurement report indicates a need for handover).
RE claim 3, Kim discloses the system the communication system according to claim 1 as set forth above. Note that Kim further discloses wherein the first base station makes the handover configuration request to any one of the second base stations (Paragraphs 163-164 and Figure 1G discloses a method of performing a conditional handover of a UE from a source gNB to one of a plurality of candidate target gNBs. The source gNB sends and handover request to each candidate target when a measurement report indicates a need for handover. Note that Figure 1F further discloses non-conditional handover with a candidate target gNB using the same handover request and handover request ack exchange to start the handover process.).
RE claims 4, 8 and 9, Kim discloses the system the communication system according to claims 1, 2 and 3 as set forth above. Note that Kim further discloses wherein in a case where the handover configuration request is accepted by the second base stations (Figure 1G and paragraph 164: “When the source gNB 1g-02 receives the HO request Ack messages, the source gNB 1g-02 may transmit a HO command message to the UE 1g-01, in operation 1g-20. The source gNB 1g-02 may transfer the HO command message to the UE 1g-01 by using an RRC Connection Reconfiguration message, in operation 1g-20.”), the first base station starts transfer of downlink data to the second base stations that have accepted the handover configuration request (Paragraph 170 discloses: “To correct paths of bearers set to the source gNB 1g-02, the target gNB 1g-03 may request route correction, and notify the source gNB 1g-02 of discarding UE context of the UE 1g-01. Accordingly, the UE 1g-01 may attempt to receive data with respect to the target gNB 1g-03 from when the RAR window starts, and after the RAR message is received, the UE 1g-01 may transmit the RRCConnectionReconfigurationComplete message to the target gNB 1g-03 and start data transmission/reception to/from the target gNB 1g-30.” Figure 1F further discloses an embodiment whereby the source gNB performs data forwarding to the selected target gNB the UE is to handover to after the Target gNB has acknowledged the handover request. Paragraph 157 further discloses “The source gNB 1f-02 may transfer a sequence number (SN) status about a transmission/reception status of uplink or downlink data to the target gNB 1f-03, and when there is downlink data, the source gNB 1f-02 may transfer the downlink data to the target gNB 1f-03, in operations 1f-30 and 1f-35. The UE 1f-01 may attempt a random access to a target cell indicated from the source gNB 1f-02, in operation 1f-40. The random access may be aimed to notify the target cell that the UE 1f-01 moves through a handover, while synchronizing an uplink.”)
Claims 5 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Non-Patent Literature (3GPP TS 37.340, V16.4.0 (2020-12), “3rd Generation Partnership Project; Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA) and NR; Multi-connectivity; Stage 2 (Release 16)”, 3GPP upload and public availability date: 2021-01-06. NPL hereafter).
RE claim 5, NPL discloses a communication system comprising: a master base station (“MN”) that is a base station that operates as a master node of dual connectivity (“EN-DC”) in which a communication terminal (“UE”) simultaneously connects to two base stations; and a secondary base station (“SN”) that is a base station that operates as a secondary node of the dual connectivity (Section 10.5.1 and Fig. 10.5.1-1, “Secondary Node Change (MN/SN initiated)”), wherein in a case where a communication terminal being connected to the master base station changes a secondary base station as a connection destination from a first secondary base station to a second secondary base station, the master base station makes a request to the second secondary base station for connection to the communication terminal (Steps 1 and 2 on page 45, “The MN initiates the SN change by requesting the target SN to allocate resources for the UE by means of the SgNB Addition procedure. The MN may include measurement results related to the target SN. If forwarding is needed, the target SN provides forwarding addresses to the MN. The target SN includes the indication of the full or delta RRC configuration.”), and, after acceptance of the request for connection to the communication terminal by the second secondary base station (Steps 1 and 2, SgNB Addition Acknowledge), the master base station transmits, to the first secondary base station, a request for switching a connection destination of the communication terminal (Step 3, “If the allocation of target SN resources was successful, the MN initiates the release of the source SN resources including a Cause indicating SCG mobility.”, and “If data forwarding is needed the MN provides data forwarding addresses to the source SN. If direct data forwarding is used for SN terminated bearers, the MN provides data forwarding addresses as received from the target SN to source SN. Reception of the SgNB Release Request message triggers the source SN to stop providing user data to the UE and, if applicable, to start data forwarding.), and when receiving the request for switching a connection destination of the communication terminal from the master base station, the first secondary base station starts transfer to the second secondary base station of downlink data directed to the communication terminal, while continuing transmission and reception of data with the communication terminal (Step 3: “If data forwarding is needed the MN provides data forwarding addresses to the source SN. If direct data forwarding is used for SN terminated bearers, the MN provides data forwarding addresses as received from the target SN to source SN. Reception of the SgNB Release Request message triggers the source SN to stop providing user data to the UE and, if applicable, to start data forwarding.” That the source SN stops providing data to the UE, Examiner interprets this to mean downlink data to a UE is ceased and forwarded to the target SN, however until handover is complete the source SN is still synchronized to the UE for uplink communications from the UE.).
RE claim 7, Kim discloses a communication system comprising: a master base station (“MN”) that is a base station that operates as a master node of dual connectivity (“EN-DC”) in which a communication terminal simultaneously connects to two base stations; and a secondary base station (“SN”) that is a base station that operates as a secondary node of the dual connectivity, wherein a first master base station that is the master base station to which the communication terminal is being connected makes a request to a second master base station that is a master base station that operates as a master node as a handover destination of the communication terminal for a configuration of handover with change of a secondary node of the communication terminal in a case where there is a need for handover with change of a secondary node that is a process of changing a master node and a secondary node as connection destinations of the communication terminal being connected to the first master base station (Section 10.7.1 and Figure 10.7.1-1 discloses Inter-MN handover with/without MN initiated SN change. Step 1, handover request from a Source MN to a Target MN),the second master base station makes a request to a switching destination secondary base station that is a secondary base station that operates as a secondary node as a new connection destination of the communication terminal for connection to the communication terminal (Step 2, “If the target MN decides to change the SN, the target MN sends the SgNB Addition Request to the target SN including the UE context in the source SN that was established by the source MN”), and when the request for connection to the communication terminal is accepted by the switching destination secondary base station, the second master base station notifies the first master base station of acceptance of handover with change of a secondary node of the communication terminal (Step 3; target SN sends a SgNB Addition Request ACK, then at step 4 the target MN responds to the source MN with a Handover Request Acknowledge), when handover with change of a secondary node of the communication terminal is accepted by the second master base station, the first master base station gives an instruction for handover with change of a secondary node to the communication terminal (Step 6: “The source MN triggers the UE to apply the new configuration”), and transmits a request for switching a connection destination of the communication terminal to a switching source secondary base station that is a secondary base station to which the communication terminal is being connected (Steps 5a and 7-9: The source MN sends SN Release Request to the (source) SN including a Cause indicating MCG mobility. The (source) SN acknowledges the release request. The source MN indicates to the (source) SN that the UE context in SN is kept, if it receives the indication from the target MN. If the indication as the UE context kept in SN is included, the SN keeps the UE context.”, “The UE synchronizes to the target MN and replies with RRCConnectionReconfigurationComplete message.”, and “If configured with bearers requiring SCG radio resources, the UE synchronizes to the (target) SN.”), and when receiving the request for switching a connection destination of the communication terminal from the first master base station, the switching source secondary base station starts transfer to the switching destination secondary base station of downlink data directed to the communication terminal, while continuing transmission and reception of data with the communication terminal (Step 13: “. If applicable, data forwarding takes place from the source side. If the SN is kept, data forwarding may be omitted for SN-terminated bearers kept in the SN.”)
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over NPL in view of Kim.
RE claim 6, NPL discloses a communication system comprising: a master base station (“MN”) that is a base station that operates as a master node of dual connectivity (“EN-DC”) in which a communication terminal simultaneously connects to two base stations (“MN” and “SN”); and a secondary base station (“SN”) that is a base station that operates as a secondary node of the dual connectivity, wherein in a case where a communication terminal being connected to the master base station changes a secondary base station as a connection destination from a first secondary base station to a second secondary base station (Section 10.7.1 and Figure 10.7.1-1 discloses Inter-MN handover with/without MN initiated SN change. Step 1, handover request from a Source MN to a Target MN), the master base station makes a request to a secondary base station to be a candidate for the second secondary base station for connection to the communication terminal (Steps 1 and 2 on page 45, “The MN initiates the SN change by requesting the target SN to allocate resources for the UE by means of the SgNB Addition procedure. The MN may include measurement results related to the target SN. If forwarding is needed, the target SN provides forwarding addresses to the MN. The target SN includes the indication of the full or delta RRC configuration.”), and, after acceptance of the request for connection to the communication terminal by secondary base station as a candidate for the second secondary base station (Steps 1 and 2, SgNB Addition Acknowledge), the master base station transmits, to the first secondary base station, a request for switching a connection destination of the communication terminal (Step 3, “If the allocation of target SN resources was successful, the MN initiates the release of the source SN resources including a Cause indicating SCG mobility.”, and “If data forwarding is needed the MN provides data forwarding addresses to the source SN. If direct data forwarding is used for SN terminated bearers, the MN provides data forwarding addresses as received from the target SN to source SN. Reception of the SgNB Release Request message triggers the source SN to stop providing user data to the UE and, if applicable, to start data forwarding.), and when receiving the request for switching a connection destination of the communication terminal from the master base station, the first secondary base station starts transfer to the candidate for the second secondary base station of downlink data directed to the communication terminal, while continuing transmission and reception of data with the communication terminal (Step 3: “If data forwarding is needed the MN provides data forwarding addresses to the source SN. If direct data forwarding is used for SN terminated bearers, the MN provides data forwarding addresses as received from the target SN to source SN. Reception of the SgNB Release Request message triggers the source SN to stop providing user data to the UE and, if applicable, to start data forwarding.” That the source SN stops providing data to the UE, Examiner interprets this to mean downlink data to a UE is ceased and forwarded to the target SN, however until handover is complete the source SN is still synchronized to the UE for uplink communications from the UE.).
NPL does not explicitly disclose that the master base station makes a request to a plurality of secondary base stations to be candidates for the second secondary base station for connection to the communication terminal.
However, Kim teaches that the master base station makes a request to a plurality of secondary base stations to be candidates for the second secondary base station for connection to the communication terminal (Paragraphs 163-164 and Figure 1G teaches a method of performing a conditional handover of a UE from a source gNB to one of a plurality of candidate target gNBs. The source gNB sends and handover request to each candidate target when a measurement report indicates a need for handover. Figure 1G and paragraph 164 further teaches: “When the plurality of target gNBs 1g-03 and 1g-04 accept the handover request, the plurality of target gNBs 1g-03 and 1g-04 may transmit HO request Ack messages to the source gNB 1g-02, in operation 1g-15.”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of NPL with the teachings of Kim in order to direct UEs to the most optimal target gNBs during handover and provide stability in the handover process.
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 James P Duffy whose telephone number is (571)270-7516. The examiner can normally be reached Tuesday-Friday, 9am-6pm EST.
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/James P Duffy/ Primary Examiner, Art Unit 2461
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