CTNF 18/839,476 CTNF 80192 Notice of Pre-AIA or AIA Status The preliminary amendment filed 8/19/2024 has been entered. Claims 21–36 are pending and examined herein. 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. The Examiner recommends filing a written authorization for Internet communication in response to the present action. Doing so permits the USPTO to communicate with Applicant using Internet email to schedule interviews or discuss other aspects of the application. Without a written authorization in place, the USPTO cannot respond to Internet correspondence received from Applicant. The preferred method of providing authorization is by filing form PTO/SB/439, available at: https://www.uspto.gov/PatentForms. See MPEP § 502.03 for other methods of providing written authorization. In the interest of expedited prosecution, the Examiner recommends scheduling an interview prior to filing a response to the present Office action. The Examiner feels that an interview would help foster a mutual understanding of the respective positions of Applicant and the Examiner, and assist in the identification of allowable subject matter and/or issues for appeal. If Applicant agrees that an interview would be beneficial, please contact the Examiner to arrange one. Specification 07-28 AIA The amendment filed 8/19/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the statement “both of which are hereby incorporated by reference in their entirety.” The present application is a U.S. National Stage Filing under 35 U.S.C. 371 of International Patent Application No. PCT/SE2023/050154, which was filed on 2/21/2023. The subject matter of U.S. Provisional Patent Application No. 63/312,305 was not incorporated into the international application at filing, and incorporating it at national stage entry improperly incorporates new matter. Additionally, it is not necessary or appropriate to incorporate the international application by reference upon entry into the national stage because the international application and the national stage application are the same application . Applicant is required to cancel the new matter in the reply to this Office Action. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 29–36 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 are directed to software per se . Claims 29 and 31–33 are directed to a “network node comprising processing circuitry configured to cause the network node” to perform various actions. The specification of the present application that the “processing circuitry” of the network node may comprise a “combination of hardware, software and/or encoded logic” (¶130–131), but does not require hardware or any hardware elements to be part of the combination. Therefore, the broadest reasonable interpretation of claims 29 and 31–33 includes at least some wholly software embodiments, which are non-statutory. See MPEP 2106.03, subsection I. Claims 30 and 34–36 are directed to a “user equipment (UE) comprising processing circuitry configured to cause the user equipment” to perform various actions. The specification of the present application that the “processing circuitry” of the user equipment node may be implemented as “one or more stored computer programs” (¶113–114), without requiring any hardware elements to be part of the user equipment. Therefore, the broadest reasonable interpretation of claims 30 and 34–36 includes at least some wholly software embodiments, which are non-statutory. See MPEP 2106.03, subsection I. 07-30-03-h AIA Claim Interpretation The Examiner notes that independent claim 21 contains two limitations including “if” qualifiers, such that those limitations need not be shown in the prior art to anticipate the claim unless the if statement is satisfied in the same reference. In claim 21, neither of the “wherein the special subframe configuration” limitations would be required in the event of an indicated modulation order higher than 16-QAM. For example, 32-QAM was a known modulation technique before the effective filing date of the claimed invention. See e.g., Horn et al. (US 2021/0392021)(¶101). In the interest of expedited prosecution, these limitations have been examined as though they are required elements, but the Examiner recommends amending the claims to positively require the indication of the modulation to explicitly contain a data indicating whether the modulation is 16-QAM or a lower modulation order. Additionally, the claims should address what occurs if the indicated modulation is neither 16-QAM or a lower modulation order, such as would be the case with an indication of 32-QAM. Independent claims 25, 29, and 30 contain similar limitations and the same claim interpretation concerns apply. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 21–36 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al. (US 2020/0187173) in view of Sengupta et al. (US 2021/0258201) . With regard to claim 21, Ye discloses a method by a network node, the method comprising: indicating, to a user equipment (UE), a configuration to be used for a narrowband physical downlink shared channel (NPDSCH) in a downlink pilot time slot (DwPTS) in a special subframe with a special subframe configuration in time division duplex (TDD) narrowband internet of things (NB-IoT) (UE receives SIB1-NB indicating the subframe configuration, including a special subframe, for TDD operation; SIB1-NB may be transmitted during DwPTS)(¶75; ¶186–189), wherein the network node configures the UE with the special subframe configuration (UE is configured using the special subframe configuration to permit decoding of the NPDSCH)(¶187–188), wherein the special subframe configuration is selected from among special subframe configurations 1, 2, 3, 4, 6, 7 and 8 [in a first instance] (subframe configuration may be {1-4, 6-9} or {1-4, 6-8})(¶187), wherein the special subframe configuration is selected from among special subframe configurations 1, 2, 3, 4, 6, 7, 8 and 9 [in a second instance](subframe configuration may be {1-4, 6-9} or {1-4, 6-8})(¶187), wherein the NPDSCH is without repetitions (number of repetitions may be limited to one)(¶189). Ye fails to specifically disclose that the indicated configuration includes a modulation or that the special subframe configuration is selected depending upon if the indicated modulation is 16-QAM or a lower modulation order. Sengupta discloses a similar system for wireless communication (Abstract). Sengupta teaches a network node selecting a modulation to be used for a NPDSCH and providing a UE with an indication of the modulation to be used based upon, for example, the repetition number or channel condition (¶46). Sengupta teaches the base station selecting between 16-QAM and a lower modulation order (QPSK) and configuring the UE accordingly (¶47–48). This would have been an advantageous addition to the system disclosed by Ye since it would have allowed different modulations to be selected based on current channel conditions and configuration of the UE accordingly. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select between 16-QAM modulation and lower order modulation, such as QPSK, indicate to a UE the modulation to be used for a NPDSCH, and configure the UE accordingly to use an appropriate special subframe configuration. With regard to claim 21, Ye further discloses that the NPDSCH is with normal cyclic prefix (¶129). With regard to claim 22, Ye and Sengupta collectively disclose transmitting the NPDSCH in accordance with the indicated modulation (UE may receive the NPDSCH with the selected modulation)( Sengupta; ¶46) and the selected special subframe configuration (NPDSCH may be configured using the selected special subframe configuration)(¶187). With regard to claim 23, Ye and Sengupta collectively disclose that special subframe configuration 9 is not used for NPDSCH in DwPTS in a special subframe in TDD NB-IoT (special subframe configuration may be {1-4, 6-8})(Ye; ¶187) with 16-QAM (selected modulation can be 16-QAM)(Sengupta; ¶46). One of ordinary skill in the art, when considering the combined teachings of Ye and Sengupta, would have understood that the special subframe configuration of {1-4, 6-8} taught by Ye could have been selected 16-QAM modulation was used, and that doing so would have been a predictable variation of selecting the other disclosed configuration of {1-4, 6-9}. Claims 24–36 are rejected under the same rationale as claims 20–23, since they recite substantially identical subject matter. Any differences between the claims do not result in patentably distinct claims and all of the limitations are explicitly or inherently taught by the above cited art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON N STRANGE whose telephone number is (571)272-3959. The examiner can normally be reached M-F 9:00-5:00. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Sked can be reached at 571-272-7627. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AARON N STRANGE/Primary Examiner, Art Unit 6221 Application/Control Number: 18/839,476 Page 2 Art Unit: 6221 Application/Control Number: 18/839,476 Page 3 Art Unit: 6221 Application/Control Number: 18/839,476 Page 4 Art Unit: 6221 Application/Control Number: 18/839,476 Page 5 Art Unit: 6221
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