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 ZIGBEE, Z-WAVE, LORAWAN, BLUETOOTH, which are trade names 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
In the context of patent claims, "at least one of A and B" generally means "at least one of A and at least one of B," requiring the presence of at least one of each element, not just one or the other. Ex parte Jung, 2016-008290 PTAB Mar. 22, 2017, and SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).
During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. See MPEP § 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification—the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. When the specification sets a clear path to the claim language, the scope of the claims is more easily determined, and the public notice function of the claims is best served. During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitation that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“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).
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).
It has been held that to be entitled to weight in method claims, the recited structure limitations, including data structures, therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use or not the use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961).
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 31-34 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 memory (#4412) as stated by the specification, 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 itself as claimed, must be programmed to do the functions by something and according to specification that is the memory. The processor may also cause the network node.
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 4, 6, 19, 31-34 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.
Claim 4 is confusing since there is no mention of a first and first cell. Are there only a single location and a single cell or there must be two locations and cells?
In claim 6, “the second cell” lacks antecedent basis.
In claims 31, the term “steps” invokes a method. A patent claim that claims both an "apparatus" and a "method" is essentially describing a device or system along with the specific steps or process used to operate it, effectively covering both the physical structure of the invention and the functional steps involved in using it. This is done by including separate claims, one defining the apparatus components and another outlining the method steps for utilizing those components. A patent claim that claims both an apparatus and the method of using that apparatus is considered a "mixed apparatus and method claim," as seen as indefinite, meaning it's unclear exactly what is being claimed and could lead to legal issues regarding infringement. The courts have held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas, Jan. 29, 2019). A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011); IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
In claims 31, “the steps” lack antecedent basis.
Claim Rejections - 35 USC § 103
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 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 should not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application is currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 14, 17, 20, 31, 32, 34, 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over "3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; Study on architecture enhancements for vehicle-mounted relays; (Release 18)", 3GPP STANDARD; TECHNICAL REPORT; 3GPP TR 23.700-05, 3RD GENERATION PARTNERSHIP PROJECT (3GPP), in view of CN 114586425.
Regarding claims 1 and 14, 3GPP discloses a method performed by an Integrated Access and Backhaul (IAB) donor or Integrated Access and Backhaul Mobile Termination (IAB-MT) for reporting User Location Information (ULIJ) of user equipments (UEs} connected to an IAB Mobile Termination (IAB-MT) that is connected to the IAB donor (¶4.1). The method comprising determining the location of the IAB-MT and reporting an indication of ULI of the one or more UEs, connected to the IAB-MT, to a first network node (¶5.6). 3GPP does not explicitly disclose the ULI comprises the location of the IAB-MT. CN 114586425 teaches the use of User Location Information comprises location of the MT for the purpose of an integrated access backhaul (IAB) node having an unknown location may use a mobile termination (MT) function transmit or receive a reference signal to or from a plurality of base stations in one or more location sessions to locate the IAB node, note Abstract and Contents of Invention. Hence, it 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 to incorporate the use of User Location Information comprises location of the MT for the purpose of an integrated access backhaul (IAB) node having an unknown location may use a mobile termination (MT) function transmit or receive a reference signal to or from a plurality of base stations in one or more location sessions to locate the IAB node, as taught by CN 114586425 in the method of 3GPP in order the location server may further receive a mobility indication for the IAB node, for example, by information the IAB node about the movement during the location, the indication may be used for the location of the UE.
Claims 2, 17, 32, note paragraphs 7, 8, and 10 above, since this claim states no further function or steps that affect the method and hence, it is not a patentable limitation. Also note 3GPP (¶5.6) and CN 114586425 (Contents of Invention).
Regarding claim 20, note paragraphs 7, 8, and 10 above, since this claim states no further function or steps that affect the method and hence, it is not a patentable limitation. This claim is just claiming information.
Regarding claim 31, this claim is the inherent apparatus version of the method claim since the claim stating the same functions and hence, is rejected for the same reason as stated above. Also, CN 114586425 shows in figure 17 and states, “In some embodiments, the IAB node 1700 may include at least one processor 1730 (also referred to as controller) and memory 1740 to manage communication with other nodes (e.g., sending and receiving messages), generating a communication signal (including generating a communication frame with adjustable resource amount, a signal and/or message, the resource is allocated for position-related information, such as PRS sending and auxiliary data sending), and providing other related functionality, comprising a function for implementing various processes and methods described herein. One or more processors 1730 and memory 1740 may coupling to the bus 1706. One or more processors 1730 and other components of the IAB node 1700 may be similarly coupling with the bus 1706, separate buses, or may be directly connected together or used in the foregoing combination coupling memory 1740 may contain executable code or software instructions, the executable code or software instructions when executed by one or more processors 1730 to cause the one or more processors 1730 as programmed to perform the disclosed program and technology (e.g., process stream 1200. 1300 and 1350).” Since the network node is electrical it must inherently have a power supply circuitry.
Regarding claim 34, note Specific Implementation Examples in CN 114586425, which states, “A base station type for a wireless communication system (e.g., a 5 GNR network) using a next-generation node base station (called gNB) base station is an integrated access backhaul (IAB) node using a wireless backhaul connection to another base station (gNB) (i.e., referred to as IAB donor), The other base station (gNB) has a wired connection to the core network. In high frequency deployment (e.g., millimeter wave (mmWave) frequency), a plurality of deployment of the IAB node may help to compensate for the high frequency spectrum caused by the server path and penetration loss, and reduces the configuration to the dense base station deployed wired (e.g., based on optical fiber) backhaul difficulty. In addition, some IAB nodes may be mobile, for example, located on a vehicle such as a taxi or a train.” And “Each IAB node 520 includes an MT 522 and a DU 524. The IAB node 520 does not directly interface with the CN 502, but is the interface with the IAB donor 510, the parent IAB node 520, the child IAB node 520, or the UE 530. The MT in function IAB node 520 is similar to the MT component found in the UE. the MT 522 in the IAB node terminates the single DU 512 in the IAB donor 510 or the radio interface layer of the backhaul Uu interface (e.g., wireless backhaul link) of the single DU 524 of the parent IAB node 520, for example, The sub-IAB node 520-1 and the parent IAB node 520-2 interface are shown. DU 524 terminates the radio interface layer (e.g., radio access link) of UE 530, or the radio interface layer of MT 522 of sub-IAB node 520 (e.g., a wireless backhaul link), for example, As shown by the parent IAB node 520-2 and the sub IAB node 520-1 interface.”
Regarding 35, the Next Generation Application Protocol (NGAP) is a control plane signaling protocol defined by 3GPP for the interface between the 5G Core Network (5GC) and the Next Generation Radio Access Network (NG-RAN), specifically the gNB (Next Generation NodeB) is well known and not invented by Applicants. Hence, it 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 to incorporate the use of reporting is “done” via Next Generation Application Protocol (NGAP)
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).
Claim(s) 3-8, 16, 18, 19, 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over “3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; Study on architecture enhancements for vehicle-mounted relays; (Release 18)”, 3GPP STANDARD; TECHNICAL REPORT; 3GPP TR 23.700-05, 3RD GENERATION PARTNERSHIP PROJECT (3GPP), in view of CN 114586425 as applied to claim 1 above, and further in view of United States Patent Application Publication 2022/0330196 (Liu, et al).
Claims 3, 4, 18, 19, 33, 3GPP in view of CN 114586425 discloses all subject matter, note the above paragraph, except for determining the location of the IAB-MT comprises determining a first location of a first cell serving the IAB-MT and determining a second location of a second cell serving the one or more Ues. Liu, et al teaches the use for determining the location of the IAB-MT comprises determining a first location of a first cell serving the IAB-MT and determining a second location of a second cell serving the one or more UEs for the purpose of eliminate a massive random access load on a radio access network and a massive signaling load on the core network, note Abstract, ¶60-61, 66, 212, etc. Hence, it 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 to incorporate the use of determining the location of the IAB-MT comprises determining a first location of a first cell serving the IAB-MT and determining a second location of a second cell serving the one or more UEs for the purpose of eliminate a massive random access load on a radio access network and a massive signaling load on the core network, as taught by Liu, et al in the method of 3GPP in view of CN 114586425 in order to track the location information of the terminal device.
Regarding claim 5, note paragraphs 7, 8, and 10 above, since this claim states no further function or steps that affect the method and hence, it is not a patentable limitation. This claim is just claiming information.
Regarding claim 6, note ¶66, 67, 118, etc. in Liu, et al and “The term “cell” refers to a logic communication entity for communicating with the base station 105 (e.g., by carrier), and can be used for distinguishing the identifiers (e.g., physical cell identifier (PCID) of the adjacent cell through the same or different carrier operation, The virtual cell identifier (VCID) is associated with a virtual cell identifier (VCID). In some examples, the carrier can support a plurality of cells and can be different types of protocol type (e.g., machine type communication (MTC), narrow-band internet of things (NB-IoT) can be different types of devices can be different types of access authority. The enhanced type Mobile Broadband (eMBB) or other protocol type) is configured to configure different cells. In some examples, the term “cell” may refer to a portion of a geographic coverage area 110 (e.g., a sector) that a logical entity operates on it” in CN 114586425.
Regarding claims 7 and 8, note ¶59, 62, 67, etc., in Liu, et al.
Regarding claim 16, note figure 3, ¶66-67, 96-96, 118, etc. in Liu, et al.
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
Claim 26 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not disclose for make obvious the claimed the reporting is done via on at least Next Generation Application Protocol (NGAP), a Next Generation (NG), Uu interface, an Xn Application Protocol (XnAP) procedure, via an Operations and Management (OAM), over an F1 connection which means that the reporting is done always over all these connections at the same time and not one or single over at a time. In combination with Integrated Access and Backhaul Mobile Termination (IAB-MT) for reporting User Location Information (ULIJ) of user equipments (UEs} connected to an IAB Mobile Termination (IAB-MT) that is connected to the IAB donor (¶4.1). The method comprising determining the location of the IAB-MT and reporting an indication of ULI of the one or more UEs, connected to the IAB-MT, to a first network node.
Information Disclosure Statement
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.
Conclusion
If applicants wish to request 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
Prosecution Insights