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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Section 2163.03(V) of the MPEP states:
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) .
Section 2161.01(I) of the MPEP states:
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. For more information regarding the written description requirement, see MPEP § 2162- § 2163.07(b).
Written Description Issue #1
Claims 1, 9 and 17 feature the following limitation:
obtaining trend information of the primary channel based on the current channel quality information and at least one piece of historical channel quality information, wherein the trend information indicates a channel quality change trend, and the at least one piece of historical channel quality information is determined based on a channel parameter measured before the at least one first channel parameter;
Claims 3, 11, and 19 recite:
wherein the obtaining trend information of the primary channel based on the current channel quality information and at least one piece of historical channel quality information comprises: inputting the current channel quality information and the at least one piece of historical channel quality information into a neural network model, to obtain the trend information of the primary channel output by the neural network model, wherein the neural network model is obtained through training based on a plurality of pieces of channel quality information and corresponding trend information.
The applicant describes in paragraphs 85-91 the obtaining step. The only disclosed function for implementing the claimed obtaining step is by using a neural network model to obtain the trend information (see paragraph 89). Paragraph 90 provides examples of general types of neural network models that may be used to obtain the trend information but this is clearly not a description of a particular implementation of a neural network model algorithm that shows possession of the claimed invention. Paragraph 91 describes a time series of data that may be input into the model but this is not a description of the model itself.
The applicant is claiming a function of obtaining trend information. The only way the applicant has described doing this is by using a neural network model but the applicant has not actually provided any technical description of such a model. As explained in sections 2161.01(I) and 2163.03(V) of the MPEP, an original claim may lack written description support when the claim defines the invention in functional language specifying a desired result (in this case obtaining trend information) but the disclosure fails to sufficiently describe how the function I performed (no disclosure of any technology for implementing the neural network model). The applicant is relying on neural network model algorithm that is not disclosed for performing the claimed obtaining trend information step.
Claims 3, 11, and 19 specify that “the neural network model is obtained through training based on a plurality of pieces of channel quality information and corresponding trend information”. Paragraphs 15, 89, and 163 provide literal support for this limitation but no description of the “pieces of channel quality information” or how the have “corresponding” trend information. The applicant’s disclosure is actually paradoxical because the model which provides the “trend information” must be trained with “corresponding trend information” that cannot exist yet because the model has not been trained.
Written Description Issue #2
Claims 1, 9, and 17 feature the following limitation:
selectively switching a service channel based on the current channel quality information and the trend information, wherein a service channel is located on the primary channel.
The applicant provides literal support for the phrase “selectively switching a service channel” but does not disclose how such a selective switching function is performed. Paragraphs 30 and 105 provide literal support but no description of how the function is performed. Paragraphs 92-94 attempt to describe selectively switching. Paragraph 93 describes the advantages of selective switching but not how the result of selectively switching to achieve these advantages is performed. Paragraph 94 references switching to “at least one first candidate channel” but does not describe how this candidate channel is chosen selectively. Paragraph 94 states switching can be alternatively made to a target channel but does not describe how this target channel is chosen selectively. Paragraph 95 states that the target channel is one of the candidate channels which contradicts paragraph 94 which states that the candidate channel and target channel selections are alternatives. Paragraph 96 then describes channel scanning which occurs after the selective switching. The applicant has not disclosed how the claimed function of selectively switching is performed and is thus rejected based on the guidance in sections 2163.03(V) and 2161.01(I) of the MPEP.
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 2, 3, 6, 8, 10, , 11, 14, 16, 18, and 19 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.
Claims 2, 10, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: The applicant defines the “first condition”, alternatively, as when the trend information is either the “first trend information”, the “second trend information”, or the “third trend information”. The applicant does not define any step of defining “first”, “second”, or “third” trend information that can be compared to the “trend information” defined in the independent claims. The applicant makes a statement as to what the “first”, “second”, or “third” trend information “indicate” but this is not a definition the makes it clear what is compared as part of the claimed “first condition”.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “current moment” in claim 2, 10, and 18 is used by the claim to mean “a moment that has happened in the past,” while the accepted meaning is “the present moment.” The term is indefinite because the specification does not clearly redefine the term. There is nothing “current” about the applicant’s claimed “current moment” because the applicant is referring to it as something that has already happened by referring to a period “after the current moment”. The applicant has not defined any context of the “current” moment that defines what moment it actually covers.
Claims 4, 12, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the applicant does not define any step of obtaining “channel quality information of any of the at least one first candidate channel” or “channel quality information of any one of the at least one second candidate channel”. The independent claims define “determining current channel quality information of a primary channel” but there is not reference to any channel quality information for any candidate channels.
Claims 6, 7, 14, and 15 recite the limitation "the scanning result". There is insufficient antecedent basis for this limitation in the claim. Claims 2 and 10 establish a scanning result but claims 6, 8, 14, and 16 do not depend on claims 2 and 10.
Claims 6, 8, 14, and 16 recite the limitation "the target channel". There is insufficient antecedent basis for this limitation in the claim. Claims 2 and 10 establish a target channel but claims 6, 8, 14, and 16 do not depend on claims 2 and 10.
Claims 8 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: The applicant does not define any step of determining or defining a “at least one second channel parameter” which is essential for the condition claimed in claims 8 and 16 to be evaluated.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The applicant is claiming that the trend information is obtained using the neural network model but the neural network model is disclosed as being trained with “corresponding trend information” in paragraphs 15, 33, 89, and 163. There is no disclosure of where this “corresponding trend information” is obtained from so it can only be inferred, based on what is disclosed, that is to be obtained using the neural network model but the model is dependent upon the trend information. The applicant has disclosed that their model is paradoxical, in that it relies on a circular causality where the trend information is reliant on the model but the model is reliant on the trend information, and therefore it is impossible to begin what is disclosed.
Claims 9-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they cover software per se. In paragraph 42, the applicant defines the breadth of the claimed apparatus as covering software per se. Software per se does not fit into any of the statutory categories of invention.
Claim Rejections - 35 USC § 102
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(s) 1, 9, and 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Number 12,621,688 to Ryden et al.
As to claim 1, Ryden teaches a method for switching channels, comprising: measuring at least one first channel parameter of a primary channel (step 410 in Figure 4), and determining current channel quality information of the primary channel based on the at least one first channel parameter, wherein the current channel quality information indicates current communication quality (col. 8, lines 18-46, measurements can be considered based on thresholds, just as disclosed by the applicant); obtaining trend information of the primary channel based on the current channel quality information and at least one piece of historical channel quality information (step 420 in figure 4), wherein the trend information indicates a channel quality change trend, and the at least one piece of historical channel quality information is determined based on a channel parameter measured before the at least one first channel parameter (col. 8, lines 48-56, predictions, which are trend information, are determined based on data measured over different periods); and selectively switching a service channel based on the current channel quality information and the trend information (steps 440 and 450 in Figure 4), wherein a service channel is located on the primary channel (col. 9, lines 45-48, intra frequency handover).
Claims Not Rejected with Prior Art
Claims 2-8, 10-16, and 18-20 are not rejected with prior art. As indicated by the rejections based on 35 USC section 112(b) of claims 2, 4, 8, 10, 12, 16, 18, and 20, the scope of the claims is unclear to an extent that the Examiner could not find prior art that would read on these claims or show them to be obvious. Claims 2, 10, and 18 do not define the different trend levels or the period after the “current moment starts” that define the claimed first condition, used for comparison. Claims 4, 10, and 20 do not define what any of the candidate sets or channel quality information of the candidate sets has to do with the independent claims so it is not clear what the point of these limitations is with respect to the claimed subject matter of claims 4, 10, and 20. Claims 8 and 16 do not define the origin of the art least one second channel parameter or what the target channel has to do with the independent claims. The specification uses the same unclear language and therefore it cannot be discerned what concept the applicant is trying to claim in any of these claims. Claims 3, 5-7, 11, 13-15, and 29 depend on these unclear claims and are therefore unclear.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached at 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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/DOUGLAS B BLAIR/ Primary Examiner, Art Unit 2454
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