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 .
Election/Restrictions
Applicant’s election without traverse of the invention comprising claims 11-21 and 27-45 in the reply filed on 8/21/2026 is acknowledged. The claims are directed towards the non-elected invention are canceled.
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.
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 11-21 and 27-45 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.
Claim 11 recites:
transmit, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration.
Claim 27 recites:
transmitting, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration.
Claim 37 recites:
transmit, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration.
Claim 45 recites:
means for transmitting, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration.
The applicant did not disclose that the group-based beam report is transmitted based at least in part on the beam group type indicated by the group-based beam report configuration. The applicant disclosed that the group-based beam report is created based at least in part on the beam group type indicated by the group-based beam report configuration but the format of the report has nothing to do with how it is disclosed as being transmitted.
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 11-21 and 27-45 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 11, 27, 37, and 45 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: in order the transmit a report, the UE would have to actually create the report. The report is dependent upon the received report configuration. The UE would have to collect data based on the received configuration and create a report with such data. The applicant does not claim these essential steps.
Claims 11-21 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 elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: claims 11-21 recite an apparatus comprising a processor and a memory. These are disclosed as a generic processor and memory that would be understood in the art. The claims do not cover the instructions which are necessary for the generic processor to be configured to carry out the invention.
Claim limitations “means for receiving” and “means for transmitting” in claim 45 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Paragraphs 63-64 recite elements included in the means but the applicant does not describe the structure of “communication manager 140” or how it is related to the other hardware elements disclosed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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)(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) 11-14, 27-39, 33, 37-40, and 45 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/203295 by Yao et al. (cited on IDS filed on 3/27/2026).
As to claim 11, Yao teaches a user equipment (UE) (UE 110) for wireless communication, comprising: a memory; and one or more processors, coupled to the memory, configured to: receive, from a network entity, a group-based beam report configuration that indicates a beam group type for a group-based beam report (ref. no. 315 in Figure 3, the TCI codepoint identifies combinations of beams and therefore indicates a “beam group type”, as described in Abstract); and transmit, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration (ref. no. 345 in Figure 3).
As to claim 12, see step 315.
As to claim 13, see steps 315 and 345.
AS to claim 14, see paragraph 36.
As to claims 27, 37, and 45, they are rejected for the same reasoning as claim 1.
As to claims 28 and 38, they are rejected for the same reasoning as claim 12.
As to claims 29 and 40, they are rejected for the same reasoning as claim 14.
As to claims 33 and 39, they are rejected for the same reasoning as claim 13.
Claim(s) 11-18, 27-33, and 37-45 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication Number 2021/0194658 by Venugopal et al.
As to claim 11, Venugopal teaches a user equipment (UE) (UE 504) for wireless communication, comprising: a memory; and one or more processors, coupled to the memory, configured to: receive, from a network entity, a group-based beam report configuration that indicates a beam group type for a group-based beam report (paragraphs 117-118, configuration 522 and indication 524 define group types/criteria for a report. In paragraph 181, 522 and 524 can be combined into 522); and transmit, to the network entity, the group-based beam report based at least in part on the beam group type indicated by the group-based beam report configuration (paragraphs 143 and 162-171, step 530).
As to claim 12, Venugopal teaches the beam group type indicates whether the group-based beam report is to indicate a beam group for which simultaneous transmission on multiple beams is supported for the UE (paragraph 130).
As to claim 13, Venugopal teaches the beam group type is one of a first beam group type associated with a beam group for simultaneous downlink reception, a second beam group type associated with a beam group for simultaneous uplink transmission, or a third beam group type associated with a beam group for simultaneous downlink reception and for simultaneous uplink transmission (paragraph 130).
As to claim 14, Venugopal teaches the group-based beam report indicates one or more beam groups satisfying the beam group type indicated by the group-based beam report configuration (paragraph 162-171).
As to claim 15, Venugopal teaches the group-based beam report configuration indicates a maximum rank per beam for a beam group to be indicated in the group- based beam report (paragraph 151).
As to claim 16, Venugopal teaches the group-based beam report indicates one or more beam groups satisfying the beam group type and the maximum rank per beam indicated by the group-based beam report configuration (paragraph 162-171).
As to claim 17, Venugopal teaches the group-based beam report configuration indicates a maximum total uplink rank for a beam group to be indicated in the group-based beam report (paragraphs 151-152).
As to claim 18, Venugopal teaches wherein the group-based beam report indicates one or more beam groups satisfying the beam group type and the maximum total uplink rank indicated by the group-based beam report configuration (paragraph 162-171).
As to claims 27-33, they are rejected for the same reasoning as claims 11-18.
As to claims 37-44, they are rejected for the same reasoning as claims 11-18.
As to claim 45, it is rejected for the same reasoning as claim 11.
Claim Rejections - 35 USC § 103
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.
Claim(s) 19-21 and 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2021/0194658 by Venugopal et al. in view of U.S. Patent Application Publication Number 2021/0152233 by Pan et al.
As to claim 19, Venugopal teaches the subject matter of claim 11; however Venugopal does not explicitly teach wherein the group-based beam report includes an indication of no beam group based at least in part on the beam group type indicated by the group- based beam report configuration.
Pan teaches beam reporting method wherein the group-based beam report includes an indication of no beam group based at least in part on the beam group type (paragraph 185, a beam group which is below the minimum can be indicated, which is an “indication” of no beam group meeting a minimum reportable value) indicated by the group- based beam report configuration (paragraph 198).
It would have been obvious to one of ordinary skill in the mobile device art at the time of the applicant’s filing to combine the teachings of Venugopal regarding reporting group beam information with the teaching of Pan regarding a non-reporting threshold because such a threshold will prevent unnecessary information about beam groups with low measurements from being included in the report.
As to claim 20, Pan teaches the indication of no beam group is an indication of a minimum reportable value in a metric field of the group-based beam report (paragraph 185).
As to claim 21, Pan teaches the indication of no beam group is an indication of a minimum reportable value in a reference signal received power (RSRP) field of the group-based beam report (paragraph 198).
As to claims 34-36, they are rejected for the same reasoning as claims 19-21.
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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