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 Amendment
Applicant’s amendment filed on 03/04/2025 has been entered. Claims 1,4 and 9 have been amended. Claims 2,5 and 13 have been canceled in this amendment. New Claim 15 has been added in this amendment. Claims 1,3-4,6,9-12 and 14-15 are pending in this application, with claims 1,4 and 9-12 being independent.
Attorney Information Request
For efficient and faster prosecution of the current application, please provide direct phone number and email address of an attorney filing a response to this office action.
Response to Arguments
Applicant's arguments with respect to objections of the Abstract of the disclosure have been considered and are persuasive. Therefore, the objection is withdrawn.
1. Applicant's arguments filed on 06/24/2026 on pages 7-9
of applicant's remark regarding Independent Claims, the applicant argues that Wang does not disclose contention measurement gap and contention measurement gap configuration sent from the network.
Examiner respectfully disagrees with Applicant's
arguments for the following reasons: Wang discloses the concept of per Frequency measurement gap for assisting UE to measure a target cell during the configured gap. The UE capability information reported by the UE for per FR measurement to a MN is also sent to the SN while SN being added. The SN provides measurement gap for its own frequency. The purpose of measurement gap is to measure a target cell during cell addition. The US is notified by the network about measurement gap for each frequency using RRC configuration message (Wang Para[0040-46). In short, Wang discloses the claimed concept of knowing the UE capability to measure different RAT’s cell and the network providing appropriate configuration to the UE to achieve the measurements (Wang Para[0069-72]. The use of term “contention” is not clearly explained or claimed in the claimed invention. The applicant here also fails to provide specific information on the meaning of contention and how it plays a part in the claimed invention. “It is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). “The main purpose of the examination, to which every application is subjected, is to try to make sure that what each claim defines is patentable... . [T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles S. Rich, Extent of the Protection and Interpretation of Claims—American Perspectives, 21 Int’! Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Thus, the applicant here fails to patentably distinguish the contention measurement gap in the claimed invention. The applicant’s arguments have been fully considered but they are not persuasive.
The dependent claim 3 is rejected based upon same motivation and rationale used for claim 1.
The dependent claims 6 and 15 are rejected based upon same motivation and rationale used for claim 4.
The dependent claim 14 is rejected based upon same motivation and rationale used for claim 9.
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)(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 1,3-4,9-12 and 14-15 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Wang (US 2022/0046450 Al, hereinafter referred to as “Wang”).
Regarding Claims 1,4 and 9-12, Wang discloses a method for transmitting capability indication information, performed by a user equipment (Wang Fig.1 Para[0019] A terminal), comprising: transmitting/receiving the capability indication information (Wang Fig.2 Para[0040-42] The MN sends the UE capability information to the SN and the UE capability information is previously obtained by the MN) to/by a network device (Wang Fig.1 Para[0019] A network device (i.e. MN)), wherein the capability indication information is configured to indicate whether the user equipment supports a contention measurement gap for an inter-radio access technology (inter-RAT) measurement (Wang Fig.2 Para[0041-42,0069-72] The UE capability information is regarding whether the UE supports per FR (i.e. per RAT) gap. In case of dual connectivity in NR with inter-RAT measurement, see [0072]), receiving contention measurement gap configuration information from the network device, wherein the contention measurement gap configuration information is configured to perform the inter-RAT measurement (Wang Fig.2 Para[0044-46] A RRC configuration message for measurement gap configuration update per FR).
Specifically for claims 9 and 11, Wang discloses a user equipment that includes a processor (Wang Fig.6 A processor) and a memory (Wang Fig.6 A memory).
Specifically for claims 10 and 12, Wang discloses a network device that includes a processor (Wang Fig.6 A processor) and a memory (Wang Fig.6 A memory).
Regarding claims 3 and 14-15, Wang discloses the methods and the network device as explained above for Claim 1. Wang further discloses wherein the inter-RAT measurement comprises at least one of: an evolved UMTS terrestrial radio access network (E-UTRAN} measurement (Wang Fig.2 Para[0069-72] The E-UTRAN measurement in case of EN-DC), a UMTS terrestrial radio access network (UTRAN} measurement (Not given patentable weight due to non-selective option in the claim), or a global system for mobile communication (GSM} measurement (Not given patentable weight due to non-selective option in the claim).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of YAO et al. (US 2023/0141810 Al, hereinafter referred to as “Yao”).
Regarding claim 6, Wang discloses the methods and the network device as explained above for Claim 1. Wang does not explicitly disclose in response to receiving capability indication information configured to indicate the user equipment does not support the contention measurement gap for the inter-RAT measurement from the user equipment, not transmitting contention measurement gap configuration information to the user equipment, wherein the contention measurement gap configuration information is configured to perform the inter-RAT measurement.
However, Yao from the same field of invention discloses in response to receiving capability indication information configured to indicate the user equipment does not support the contention measurement gap for the inter-RAT measurement from the user equipment, not transmitting contention measurement gap configuration information to the user equipment, wherein the contention measurement gap configuration information is configured to perform the inter-RAT measurement (Yao Para[0003,0156] The LTE base station does not send gap configuration when the UE perform only inter-RAT measurements).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Wang to have the feature of “in response to receiving capability indication information configured to indicate the user equipment does not support the contention measurement gap for the inter-RAT measurement from the user equipment, not transmitting contention measurement gap configuration information to the user equipment, wherein the contention measurement gap configuration information is configured to perform the inter-RAT measurement” as taught by Yao. The motivation would have been to reduce performance loss of a UE (Yao Para[0006]).
Although specific columns, figures, reference numerals, lines of the reference(s), etc. have been referred to, Applicant should consider the entire applied prior art reference(s).
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 Sudesh M. Patidar whose telephone number is (571)272-2768. The examiner can normally be reached M-F:: 10AM-6:30PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Rutkowski can be reached at (571) 270-1215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sudesh M. Patidar/Primary Examiner, Art Unit 2415
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