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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Applicant has submitted large amount of Information Disclosure Statements and/or huge amount of references and/or reference(s) which are very hefty. Where applicant points the Examiner to large reference or references without citing a specific portion or page, the Examiner will not pour over the documents to extract the relevant information, Ernst Haas Studio, Inc. v. palm Press, Inc. 164 F.3rd 110, 112 (2d Cir. 1999), Winer International Royalty Corp. v. Wang, 202 F3d 1340, 1351 (Fed. Cir. 2000). It is not true, if applicant presents an overload of irrelevant or non-probative references, somehow the irrelevancies will add up to relevant evidence, DeSilva v. DiLeonardi, 181 F.3d 865, 867. Information Disclosure Statements must make all relevant information accessible to the Examiner, rather ask him to play archaeologist with the references, Shiokawa v. Maienfisch, 56 USPQ2d 1406, 1413 and LeVeen v. Edwards 57 USPQ2d 1406, 1413. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). With this in mind, the Information Disclosure Statement has been considered.
Drawings
The drawings are objected to because figures 2 and 3 boxes need descriptive labels. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 term ZIGBEE, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term 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 “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).
A statement of intended use, as the name suggests, describes a manner in which a claimed invention may be used, but does not limit the claim and need not be practiced. If the applicant wishes to limit the claims to an intended use, the claims should positively recite those features and make clear that they are limiting. Claims that use this sort of language do not clearly indicate which meaning is intended. C.R. Bard, Inc. v. M3 Systems, Inc. 157 F.3d 1340, 1348-49 (Fed. Cir. 1998), Ex parte Kearney, 2012 Pat. App. LEXIS 2675 at 1 (BPAI 2012), Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
Claim Rejections - 35 USC § 112
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 34-52 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.
In the independent claims, the claim language “network slice or cell” is ambiguous. It is unclear whether receiving/transmitting data is from the network slice or the cell. 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 dependent 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.
In claims 35, 40, 44, the claim language “frequency or frequency priority” is ambiguous. It is unclear whether the network slice or cell, which already makes the claim convoluted, “uses” the frequency or frequency priority” is which one. 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).
In claim 44, the term “reselection” is confusing since no selection was ever mention, so how can one reselect something which was never selected in the first place?
In claim 44, again, recites the limitation "the obtained frequency or frequency priority". There is insufficient antecedent basis for this limitation in the claim.
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 34, 36, 39, 41, 42, 43, 47, 48 are rejected under 35 U.S.C. 101 because the claimed invention is directed to receiving or transmitting data without significantly more. The claim(s) recite(s) receiving or sending paging message, configuration, or data, which is nothing but data or information. This judicial exception is not integrated into a practical application because method or apparatus does nothing with the data or information, which is an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204. The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
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) 34-49, 51, 52, as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2021/0068073 (Sivavakeesar, et al).
The claims are very confusing and don’t make much sense. For compact persecution, the Examiner will try to apply the prior art to these perplexing claims.
Sivavakeesar, et al discloses 34. a method of paging of a user device (figures8, 9, ¶10), comprising receiving, by the user device, a paging message from a network node, the paging message comprising an index which indicates the paging message to correspond to a network slice or a cell (figure 7, #UE, gNB1, ¶11, 128, 129, 131, etc.) and receiving, by the user device, data from the network slice or the cell (¶110, 117, 118, 132, 151, etc., this step is optional, note paragraph 7 above).
Regarding claims 35, 40, obtaining, by the user device, a frequency or frequency priority based on the index, and performing, by the user device, re-selection to the network slice or the cell using the frequency or frequency priority, note #201, ¶54, 56, 59, 113, 248, etc.
Concerning claims 36, 41, 42, 43, 48, 49 receiving, by the user device, a configuration from the network node, the configuration comprising a mapping between a plurality of frequencies or frequency priorities and a plurality of indexes, note ¶63, 89, 119, 122-124, etc.
About claims 37, 45, 51, setting up, by the user device, a connection in the network slice or to the cell and/or sending, by the user device, a service request on the network slice or the cell, note figures 10, 11, ¶88, 98, 134, 141, 143, 144, 145, 150, etc.
Regarding claims 38, 46, 52 the user device is camping on a first cell of a network and the cell is a second cell of the network different to the first cell, note ¶91, 141, 143, 144, 146, 150, etc.
Claim 39 is the inherent apparatus version for the method claims since they are claiming the same functions and is rejected for the same reasons as stated above. Also, note figure 6 #processing circuit, UE, ¶94.
Claim 47, note the network device (figure 6, #scheduling device, eNB/gNB), comprising at least one processor (#processing circuitry and at least one memory including computer program code (¶94), wherein the computer program code causes the network device, when executed with the at least one processor, to: send a paging message to a user device, the paging message comprising an index which indicates the paging message to correspond to a network slice or a cell and send, to the user device, data from the network slice or the cell, (figure 7, #UE, gNB1, ¶11, 128, 129, 131, 10, 117, 118, 132, 151, etc., some steps are optional, note paragraph 7 above etc.)
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
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).
Claim 50 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
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.
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, 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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