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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10, and 20) in the reply filed on 6/5/26 is acknowledged. The traversal is on the ground(s) the requirement does not adequately establish that the identified inventions are related as a process and an apparatus for its practice, and search burden has not been adequately established. (Response at 6).
According to Applicant:
“[t]he requirement characterizes Group I as "a user equipment apparatus," but claims 1-10 are directed to methods performed by a UE and only claim 20 is directed to a UE apparatus. Further, the Office Action relies on MPEP § 806.05(e) for a process/apparatus restriction but claims 11-19 are directed to a method performed by a RAN node, not to a process practiced by the UE apparatus of claim 20. The requirement therefore does not adequately establish that the identified inventions are related as a process and an apparatus for its practice.”
“[t]he claims are directed to different aspects of a common data-collection framework with RAN awareness, including data collection configuration, UE collection of Al-ML model-related data, and delivery
of the collected data through the RAN node to a UE server. The same or substantially overlapping search would reasonably cover both the UE-side and RAN-node-side claim sets”
(Response at 6-7) The requirement for restriction dated 4/6/26, inadvertently use the wrong form paragraph to show distinction between invention of claims 1-10 and invention of claims 11-19.
Inventions of claims 1-10 and invention of claims 11-19 are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct from each other if they are shown to be separately usable. In the instant case, invention of claims 11-19 has separate utility because the method for a radio access network node can be used in a system comprising receiving, by the RAN node, a trigger event indicating a data collection request for a user equipment to collect artificial intelligence-machine learning model related data. The invention of claims 1-10 has separate utility because the method for a user equipment can be used in a system comprising performing data collection to collect AI-ML model related data based on the data collection configuration. See MPEP § 806.05(d).
The distinction between invention of claim 20 and invention of claims 11-19 are related as process and apparatus for its practice as stated in the Restriction Requirement mailed 4/6/26. The invention of claim 20 and the invention of claims 11-19 are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus as claimed in claim 20 can be used to practice another and materially different process such as a process that does not comprises: receiving, by the RAN node, a trigger event indicating a data collection request for a user equipment (UE) to collect artificial intelligence - machine learning (AI-ML) model related data; sending data collection configuration to the UE, wherein the data collection configuration configures AI-ML model related parameters for the UE.
Restriction for examination purposes as indicated is proper because all the inventions listed in this
action are independent or distinct for the reasons given above and there would be a serious search and/or
examination burden if restriction were not required because one or more of the following reasons apply:
As stated in the Restriction Requirement mailed 4/6/26, the search required for invention of claims 1-10 and 20 is not required for invention of claims 11-19, restriction for examination purposes as indicated is proper. The search for the invention of claims 1-10 and 20 would require different field of search (e.g., employing different search queries such as collecting AI-ML model data based on received
configuration by the user equipment), while the search for the invention of claims 11-19 would not.
It is noted that for compact prosecution, since the requirement is still deemed proper, instead of remailing another Restriction Requirement, an Non-Final Office action with the examination of the elected invention of claims 1-10 and 20 has been presented below. Thus, the requirement is therefore made FINAL.
Claims 1-10 and 20 have been examined and claims 11-19 have been withdrawn from consideration.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: a configuration module that receives data collection configuration…; a collection module that performs data collection…; a delivery module that performs data delivery…in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
"Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is "anticipated" by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim) 4. This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting." (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to
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Instant application
1.A method for a user equipment (UE) connected with a radio access network (RAN) node in a wireless network, comprising:
receiving, by the UE, data collection configuration from the RAN node, wherein the data collection configuration configures artificial intelligence - machine learning (AI-ML) model related parameters for the UE;
performing data collection to collect AI-ML model related data based on the data collection configuration; and
performing data delivery for the collected AI-ML model related data through the RAN node destined to a UE server.
20. A user equipment (UE), comprising:
a transceiver that transmits and receives radio frequency (RF) signal in a wireless network;
a configuration module that receives data collection configuration from a radio access network (RAN) node, wherein the data collection configuration configures artificial intelligence - machine learning (AI-ML) model related parameters for the UE;
a collection module that performs data collection to collect AI-ML model related data based on the data collection configuration; and
a delivery module that performs data delivery for the collected AI-ML model related data through the RAN node destined to a UE server.
Application 18/793,803
1.A method for a user equipment (UE) using artificial intelligence – machine learning (AI-ML) model in a wireless network comprising:
receiving, by the UE, a data collection request initiated by a UE server, wherein the UE is connected with a radio access network (RAN) node of the wireless network;
obtaining data collection configuration from the RAN node, wherein the data collection configuration configures AI-ML model related parameters for the UE;
performing data collection to collect AI-ML model related data based on the data collection configuration; and
delivering the collected AI-ML model related data destined to the UE server through a delivery tunnel.
20. A user equipment (UE), comprising:
a transceiver that transmits and receives radio frequency (RF) signal in a wireless network;
a detection module that receives a data collection request initiated by a UE server, wherein the UE is connected with a radio access network (RAN) node of the wireless network;
a configuration module that obtains data collection configuration from the RAN node, wherein the data collection configuration configures AI-ML model related parameters for the UE;
a collection module that performs data collection to collect AI-ML model related data based on the data collection configuration; and
a delivery module that delivers the collected AI-ML model related data destined to the UE server through a delivery tunnel.
Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Application 18/793,803 in view of Saltsidis et al, WO 2024/028041. Claim 1 of U.S. Application 18/793,803 does not claim through the RAN node. Saltsidis teaches performing data delivery for the collected AI-ML model related data through the RAN node destined to a UE server (page 3, lines 29-31; page 11, lines 19-20; page 11, lines 44-47, e.g., sending the measurement through the RAN to a server/TCE). Except for the identified elements above, claim 1 of U.S. Application 18/793,803 contains every elements of claim 1 in the instant application and thus anticipate the claim 1 of the instant application. Claim of the instant application therefore are not patently distinct from the earlier claim and as such are unpatentable over provisional obvious-type double patenting.
Claim 20 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 20 of U.S. Application 18/793,803 in view of Saltsidis et al, WO 2024/028041. Claim 20 of U.S. Application 18/793,803 does not claim through the RAN node. Saltsidis teaches a delivery module that performs data delivery for the collected AI-ML model related data through the RAN node destined to a UE server (page 3, lines 29-31; page 11, lines 19-20; page 11, lines 44-47, e.g., sending the measurement through the RAN to a server/TCE). Except for the identified elements above, claim 20 of U.S. Application 18/793,803 contains every elements of claim 20 in the instant application and thus anticipate the claim 20 of the instant application. Claim of the instant application therefore are not patently distinct from the earlier claim and as such are unpatentable over provisional obvious-type double patenting.
Objection
Claim 4 is objected to because of the following typographical error: Line 3, “a data collection request” should be “the data collection request”.
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.
Claim 4 is 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.
Claim language in the following claims is not clearly understood:
As per claim 4, line 3, it is unclear which entity is sending a data collection request to RAN node (i.e., the UE as in the method of claim 1 (which claim 4 is dependent) or the UE server or the core network entity as in claim 4, lines 1-2)
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 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.
Claim 1-10 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Saltsidis et al, WO 2024/028041 (hereinafter Saltsidis).
As per claim 1, Saltsidis teaches the invention as claimed for a method for a user equipment (UE) connected with a radio access network (RAN) node in a wireless network (figs. 2 and 4), comprising:
receiving, by the UE, data collection configuration from the RAN node, wherein the data collection configuration configures artificial intelligence - machine learning (AI-ML) model related parameters for the UE (page 2, line 35-page 3, line 5; page 8, lines 14-15; page 10, line 38-page 11, line 12, e.g., receiving, by UE, request to perform data measurement for AI/ML model from RAN, wherein the request includes data measurement configuration for the UE);
performing data collection to collect AI-ML model related data based on the data collection configuration (page 2, line 35-page 3, line 5; page 2, line 24-page 3, line 5; page 8, lines 39-40; page 11 lines 19-20, e.g., perform measurement to collect data for AI/ML model); and
performing data delivery for the collected AI-ML model related data through the RAN node destined to a UE server (page 3, lines 29-31; page 11, lines 19-20; page 11, lines 44-47, e.g., sending the measurement through the RAN to a server/TCE).
As per claim 2, Saltsidis teaches the invention as claimed in claim 1 above. Saltsidis further teach comprising: receiving a data collection request from the RAN node, a core network entity of the wireless network or the UE server (page 2, lines 37-38; page 3, lines 26-28).
As per claim 3, Saltsidis teaches the invention as claimed in claim 2 above. Saltsidis further teach wherein the data collection configuration is received from the RAN node together with a data collection request (page 2, line 41-page 3, line 5; page 10, line 4-28).
As per claim 4, Saltsidis teaches the invention as claimed in claim 2 above. Saltsidis further teach wherein the data collection request is received from the UE server or the core network entity, and the method further comprising: sending a data collection request to the RAN node (page 2, lines 35-42; page 10, lines 4-28).
As per claim 5, Saltsidis teaches the invention as claimed in claim 1 above. Saltsidis further teach wherein the data delivery is performed using a measurement report procedure (page 2, lines 42-44; page 11, lines 19-20).
As per claim 6, Saltsidis teaches the invention as claimed in claim 1 above. Saltsidis further teach wherein the data delivery is performed with a new control plane tunnel or with a new application layer tunnel (page 11, lines 19-20).
As per claim 7, Saltsidis teaches the invention as claimed in claim 6 above. Saltsidis further teach wherein the new control plane tunnel between the UE and the RAN node is a layer-1(L1 ) uplink control information (UCI), a L2 MAC control element (CE), a radio resource control (RRC) message, or a new radio bearer for Al (page 11, lines 19-20).
As per claim 8, Saltsidis teaches the invention as claimed in claim 1 above. Saltsidis further teach comprising: receiving assistance information for the Al-ML model (page 2, lines 38-39; col. 3, lines 29-35).
As per claim 9, Saltsidis teaches the invention as claimed in claim 8 above. Saltsidis further teach wherein the assistance information includes one or more elements comprising: use case for the Al-ML model related data, functionality of the Al-ML model related data, scenario information, location information, and RAN configuration information for the Al-ML model related data (page 2, lines 38-39; col. 3, lines 29-35).
As per claim 10, Saltsidis teaches the invention as claimed in claim 8 above. Saltsidis further teach wherein the assistance information is received from the RAN node or a core network entity of the wireless network (page 3, lines 29-44).
As per claim 20, Saltsidis teaches the invention as claimed for a user equipment (UE), comprising:
a transceiver that transmits and receives radio frequency (RF) signal in a wireless network (page 29, lines 3-8; fig. 14);
a configuration module that receives data collection configuration from a radio access network (RAN) node, wherein the data collection configuration configures artificial intelligence - machine learning (AI-ML) model related parameters for the UE (page 2, line 35-page 3, line 5; page 8, lines 14-15; page 10, line 38-page 11, line 12, e.g., receiving, by UE, request to perform data measurement for AI/ML model from RAN, wherein the request includes data measurement configuration for the UE);
a collection module that performs data collection to collect AI-ML model related data based on the data collection configuration (page 2, line 35-page 3, line 5; page 2, line 24-page 3, line 5; page 8, lines 39-40; page 11 lines 19-20, e.g., perform measurement to collect data for AI/ML model); and
a delivery module that performs data delivery for the collected AI-ML model related data through the RAN node destined to a UE server (page 3, lines 29-31; page 11, lines 19-20; page 11, lines 44-47, e.g., sending the measurement through the RAN to a server/TCE).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should
be directed to Philip Lee whose telephone number is (571)272-3967. The examiner can normally be
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Glenton Burgess can be reached on 571-272-3949. The fax phone number for the organization where this
application or proceeding is assigned is 571-273-8300.
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/PHILIP C LEE/Primary Examiner, Art Unit 2454
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