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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: DEVICE FOR ENTERING INACTIVE CONNECTED STATE
The disclosure is objected to because of the following informalities: at page 5, “3GPPP” should be “3GPP” instead.
Appropriate correction is required.
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.
None of the instant claims invoke U.S.C. 112(f).
Double Patenting
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 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,069,660 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is genus to the species claim 1 of U.S. Patent No. 12,069,660 B2. Simple substitution of one known element for another to obtain predictable results is obvious to a person of ordinary skill in the art. The table below illustrates a side-by-side comparison of the claims of the instant application and U.S. Patent No. 12,069,660 B2, with differences underlined.
Instant application U.S. Patent No. 12,069,660 B2
1. A communications device for transmitting data to or receiving data from a wireless communications network, the communications device comprising a transmitter configured to transmit signals to one or more infrastructure equipment of the wireless communications network via a wireless access interface, a receiver configured to receive signals from one or more of the infrastructure equipment of the wireless communications network via the wireless access interface, the one or more infrastructure equipment forming, with the wireless access interface, a radio access network for transmitting data to and receiving the data from the communications device, and a controller configured with the receiver to receive, from a first of the one or more infrastructure equipment, a radio network identifier allocated for identifying the communications device when allocating communications resources of the wireless access interface for transmitting data to or receiving data from the infrastructure equipment, and to control the transmitter and the receiver to enter an inactive connected state in which the receiver monitors signals representing downlink data transmitted from the first infrastructure equipment, the signals including the radio network identifier allocated by the first infrastructure equipment and to monitor signals transmitted from one or more other infrastructure equipment for determining whether the communications device should select a second of the one or more infrastructure equipment for receiving downlink data from the second of the one or more infrastructure equipment.
1. A communications device for transmitting data to or receiving data from a wireless communications network, the communications device comprising: a transmitter configured to transmit signals to one or more infrastructure equipment of the wireless communications network via a wireless access interface; a receiver configured to receive signals from one or more of the infrastructure equipment of the wireless communications network via the wireless access interface, the one or more infrastructure equipment forming, with the wireless access interface, a radio access network for transmitting data to and receiving the data from the communications device; and a controller configured with the transmitter and the receiver to receive, from a first of the one or more infrastructure equipment, a radio network identifier allocated for identifying the communications device when allocating communications resources of the wireless access interface for transmitting data to or receiving data from the infrastructure equipment, and control the transmitter and the receiver to enter an inactive connected state in which the receiver monitors signals representing downlink data transmitted from the first infrastructure equipment, the signals including the radio network identifier allocated by the first infrastructure equipment and to monitor signals transmitted from one or more other infrastructure equipment for determining whether the communications device should select a second of the one or more infrastructure equipment for receiving downlink data from the second of the one or more infrastructure equipment, in response to the communications device leaving a radio coverage area for transmitting signals to and receiving signals from the infrastructure equipment, receive downlink data from the one or more other infrastructure equipment, wherein the communications device has left the radio coverage area when the infrastructure equipment has transmitted control signals a predetermined number of times without receiving a response from the communications device.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2013/144613 A1 to RAYAVARAPU.
As to claim 1, RAYAVARAPU discloses a communications device for transmitting data to or receiving data from a wireless communications network (fig. 1, UE communicating with E-UTRAN), the communications device comprising a transmitter configured to transmit signals to one or more infrastructure equipment of the wireless communications network via a wireless access interface (page 23, communication subsystem (i.e. transmitter) takes the form of radio transceiver devices (i.e. wireless access interface); page 24, receives messages from and sends messages to wireless network 206 which may be RAN 102; fig. 1, RAN made up of eNBs (i.e. each being infrastructure equipment)), a receiver configured to receive signals from one or more of the infrastructure equipment of the wireless communications network via the wireless access interface, the one or more infrastructure equipment forming, with the wireless access interface, a radio access network for transmitting data to and receiving the data from the communications device (page 23, communication subsystem (i.e. receiver) takes the form of radio transceiver devices (i.e. wireless access interface); page 24, receives messages from and sends messages to wireless network 206 which may be RAN 102; fig. 1, RAN made up of eNBs (i.e. infrastructure equipment)), and a controller configured with the receiver to receive (page 24, communication subsystem 204 may enable the processor 202 (i.e. controller) to communicate with…networks), from a first of the one or more infrastructure equipment (page 24, receives messages from and sends messages to wireless network 206 which may include the RAN 102; fig. 1, i.e. one of the eNBs), a radio network identifier allocated for identifying the communications device when allocating communications resources of the wireless access interface for transmitting data to or receiving data from the infrastructure equipment (page 53 lines 10 to 35, page 54 lines 1-4, S-TMSI transmitted to UE, which identifies the UE, and is used for paging the UE when the eNB has DL data to send to the UE; paging initiates the UE to resume its suspended RRC Connection by sending an RRC re-activation request and upon reactivation, then UE receives data (i.e. messaging, activation are allocating communications resources)), and to control the transmitter and the receiver to enter an inactive connected state in which the receiver monitors signals representing downlink data transmitted from the first infrastructure equipment (page 38, lines 13-16, figure 17, step (1); page 53, lines 10 to 35, UE monitoring during the suspended RRC connection for paging/DL data notification from eNB), the signals including the radio network identifier allocated by the first infrastructure equipment (page 53 lines 10 to 35, page 54 lines 1-4, S-TMSI transmitted to UE, which identifies the UE, and is used for paging the UE when the eNB has DL data to send to the UE) and to monitor signals transmitted from one or more other infrastructure equipment for determining whether the communications device should select a second of the one or more infrastructure equipment for receiving downlink data from the second of the one or more infrastructure equipment (page 84 lines 6 to 22, page 85, lines 20 to page 86 line 27, fig. 28, UE receives RRC Connection Reestablishment and RRC Connection reconfiguration messages from New eNB, i.e. monitor signals, then sends an RRC reconfiguration complete message, i.e. determining, to New eNB, UE proceeds with any user plane data transfer as usual (fig. 1, i.e. receiving DL data from eNB)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR J GHOWRWAL whose telephone number is (571)270-5691. The examiner can normally be reached M-F 9:00am-6:00pm.
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/OMAR J GHOWRWAL/Primary Examiner, Art Unit 2463
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