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 lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms BLUETOOTH, ZIGBEE, WIMEDIA, which are trade names or a marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
Under the broadest reasonable interpretation standard, the conditional “if” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). “If” conditions are not limitations against which prior art must be found because the step or function only occurs “if” the answer is positive. A conditional limitation is a claim feature that depends on a certain condition being present. For example, when or if condition X is present, feature Y is implemented or has effect. Without condition X, feature Y may be dormant or have no effect. It was not necessary for the Examiner to show that both paths of a conditional limitation were anticipated or obvious over prior art. Ex Parte Schulhauser, Appeal No. 2013-007847 (PTAB April 28, 2016). Conditional limitations that are not recited as structure that is capable of or configured to perform the conditional function may render the conditional limitation as “optional” and not truly “conditional.” The M.P.E.P. provides, “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” See M.P.E.P § 2111.04; see also M.P.E.P §§ 2103(C) and 2173.05(h). Furthermore, all alternative conditional limitations in system claims that are not limited to a particular structure may also be given no patentable weight if every alternate limitation is interpreted as “optional.” See MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d at 1379. Under the broadest scenario, the steps or functions dependent on the “if” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
Claim Objections
Claims 1 and 15 are objected to because of the following informalities:
All abbreviations, symbols, acronyms, functional designations, sigla, letter combinations, code names, initialisms, nicknames, mnemonic devices, project names, alphabetical contractions and general slang must be positively defined and identified in the claims. What is MDT NPN?
Appropriate correction is required.
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 1-14 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without transceiver (#318) , which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). A processor, by definition and the specification, only processes data, the processor cannot receive or transmit any radio signal. Applicant can amend the claim to state that the processor causes the apparatus to transmit or receive, instead of claiming a transceiver.
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.
Claims 1-20 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.
The claim language “ at least one of a minimization of drive tests (MDT) standalone non-public network (SNPN) list, an MDT public land mobile network (PLMN) list, an SNPN target, a PLMN target, a trace reference, an area scope, a logging duration, or a trace collection entity identifier (ID)” and “at least one of the trace reference, a logging area, the MDT PLMN list, or an MDT NPN list” is ambiguous. It is unclear whether since the trace reference and the MDT PLMN may not exist. The use of “or” does not specify whether these alternatives are mutually exclusive or may coexist. As a result, a person of ordinary skill in the art would not be able to determine, with reasonable certainty, the scope of the claimed invention, as required by 35 U.S.C. § 112(b) and as interpreted by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This ambiguity is further reflected in the claims, which rely on the unclear antecedent basis, compounding the indefiniteness. Applicant is advised to amend the claims to clarify the relationship between the alternatives, specify whether both types of addresses can be present, and provide clear antecedent basis to resolve the ambiguity.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 15-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
WO 2012148203 discloses a terminal receives the logged measurement configuration, the terminal starts a validity timer. The validity timer refers to the lifetime of the logged measurement setup, which can be specified by information about the logging duration. The duration of the validity timer may indicate not only the valid lifetime of the logged measurement configuration but also the validity of the measurement results possessed by the terminal. The terminal performing the logged MDT based on the logged measurement configuration may vary depending on the location of the terminal. The UE performs logging only when it is camped on the RAT receiving the logged measurement configuration, and stops logging at another RAT. However, the UE may log cell information of another RAT in addition to the staying RAT.
United States Patent Application Publication 2013/0137460 shows an apparatus and a method are provided, in which a trace activation request including a trace session identification parameter is received, a position request for a mobile terminal is generated, and the position request is sent to the mobile terminal with the trace session identification parameter. An apparatus and a method are provided, in which position information data comprising a trace session identification parameter, the position information data including information about the position of a mobile terminal, and measurement data comprising the trace session identification parameter are received, and the position information data is correlated with the measurement data based on the trace session identification parameter. A trace session activation request for collecting mobile terminal based measurement data is generated, and the trace session activation request including a trace session identification parameter is sent to a positioning server.
United States Patent Application Publication 2016/0014630 teaches a virtual identity includes: any one of a newly added dedicated identifier (for example, the newly added dedicated identifier may be recorded as an MDT-pseudo-ID), a TMSI (temporary mobile station identifier), a GUTI (globally unique temporary identity), an evolved base station S1 interface application protocol identity (eNodeB S1-AP UE ID), a mobility management entity S1 interface application protocol identity (MME S 1-AP UE ID), a TRSR (trace recording session reference)+CGI (UE's serving cell, user serving cell identifier), and a C-RNTI (cell radio network temporary identity), or a combination thereof, and an identifier of a device (such as an identifier of a TCE device) configured to receive a sending result of the virtual identity may further be bound to the virtual identity, so that the virtual identity can only be sent to a device to which the virtual identity is bound, thereby improving security.
United States Patent Application Publication 2021/0409992 discloses for area-based MDT defined in the 3GPP specification, TS 32.422, the MDT configuration parameters are always generated by the Element Manager (EM) and sent to the RAN node to execute via a trace session activation request.
The prior art of record does not disclose or make obvious the claimed selecting, based on the trace session activation request, at least one user equipment (UE) for data collection based on an availability of an MDT SNPN list information element (IE) at the at least one UE and transmitting, to the at least one UE, a logged measurement configuration including a PLMN ID and the NID. In combination with and in a method of wireless communication at a base station, comprising receiving, from a network entity, a trace session activation request including a network identifier (NID), the trace session activation request corresponding to at least one of a minimization of drive tests (MDT) standalone non-public network (SNPN) list, an MDT public land mobile network (PLMN) list, an SNPN target, a PLMN target, a trace reference, an area scope, a logging duration, or a trace collection entity identifier (ID).
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645
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