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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the steps of recording at least one first cell with a bandwidth greater than a predetermined value in the not-allowed cell list; recording at least one second cell on a specific frequency band in the not-allowed cell list; and recording at least one third cell that is non-RedCap capable in the not-allowed cell list according to system information block1 (SIB1) information; generating a not-allowed frequency list of NR SA frequencies; recording a frequency in the not-allowed frequency list when more than a predetermined number of fifth cells recorded in the not-allowed cell list are on the frequency; and avoiding performing the mobility decision on cells on the NR SA frequencies recorded in the not-allowed frequency list during the mobility procedure or the measurement reporting procedure; avoiding selecting the NR SA cells recorded in the not-allowed cell list as candidate cells during the mobility procedure, wherein the mobility procedure comprises one of the following: selection, reselection, re-direction and conditional handover (CHO); and avoiding including the NR SA cells recorded in the not-allowed cell list into a measurement report during the measurement reporting procedure; removing a fourth cell from the not-allowed cell list after a time interval or when the RedCap UE is located within a threshold distance away from a range of the fourth cell; generating an allowed cell list of NR SA cells; and performing the mobility decision on the NR SA cells recorded in the allowed cell list during the mobility procedure or the measurement reporting procedure; generating an allowed frequency list of NR SA frequencies; and performing the mobility decision on the NR SA cells recorded in the allowed frequency list during the mobility procedure or the measurement reporting procedure must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Interpretation
In the context of patent claims, " one of A and B" generally means "one of A and 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).
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).
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 4, 7, 9, 12-17, 19 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 claims 4 and 14 mention the fifth cell but fails to mention cells 1-4. Must there be 5 different and distinct cells or is it just another cell, which the claims don’t mention another cell so it’s still confusing called fifth? For examination purposes only the Examiner will take the fifth cell as just another cell. Also, the claim language “the mobility procedure or the measurement procedure” is ambiguous. It is unclear whether “the mobility procedure or the measurement procedure” since in the parent claims these limitations can be optional. 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 these 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 7 and 17 mention the fourth cell but fails to mention cells 1-3. Must there be 4 different and distinct cells or is it just another cell, which the claims don’t mention another cell so it’s still confusing called fourth? For examination purposes only the Examiner will take the fifth cell as just another cell. Also, the claim language “the measurement procedure” is ambiguous. It is unclear whether “the mobility procedure or the measurement procedure” since in the parent claims these limitations can be optional. 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 these 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.
Regarding claim 9 and 19 the claim language “the mobility procedure or the measurement procedure” is ambiguous. It is unclear whether “the mobility procedure or the measurement procedure” since in the parent claims these limitations can be optional. 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 these 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.
Regarding claims 12 and 13, the term “steps” invokes a method, hence 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 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).
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) 1, 9, 11, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2022/0070812 (Cheng).
Cheng discloses a method for improving service continuity, the method is implemented by a reduced capability (RedCap) user equipment (UE) (¶62), and comprises generating a not-allowed cell list of new radio (NR) standalone (SA) cells (figures 9, 11 #905, S1106, claim 1, ¶3, 4, 45, 40, 51, 61, 65 84) and avoiding performing a mobility decision on the NR SA cells recorded in the not-allowed cell list during a mobility procedure or a measurement reporting procedure (¶45, 50).
Regarding claims 9 and 19, this claim is optional, note paragraph 7 above. Also note figure 11, ¶45, 50, 51, 65.
Regarding claim 11, this claim is an inherent apparatus of the method claims above since this claim states the same functions and is rejected for the same reasons stated above. Also note figure 7, #701, 702, 703 which shows the transceiver and processor.
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 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 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 shall 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 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 called 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) 4, 10, 14, 20 as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over by United States Patent Application Publication 2022/0070812 (Cheng) in view of United States Patent Application Publication 2015/0087312 (Dahlen).
These claims are confusing and don’t make much sense. The Examiner will try to apply art to these very perplexing claims.
Cheng discloses all subject matter, note the above paragraphs, except for generating a not-allowed frequency list of NR SA frequencies and recording a frequency in the not-allowed frequency list when more than a predetermined number of cells recorded in the not-allowed cell list are on the frequency. Dahlen teaches the use of generating a not-allowed frequency list of NR SA frequencies and recording a frequency in the not-allowed frequency list when more than a predetermined number of cells recorded in the not-allowed cell list are on the frequency for the purpose of restricting frequency access in LTE systems, note Abstract, ¶15-19, 21-23. Hence, it 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 to incorporate the use of generating a not-allowed frequency list of NR SA frequencies and recording a frequency in the not-allowed frequency list when more than a predetermined number of cells recorded in the not-allowed cell list are on the frequency for the purpose of restricting frequency access in LTE systems, as taught by Dahlen, in the a method for improving service continuity, the method is implemented by a reduced capability (RedCap) user equipment (UE) in order to enable a base station to restrict frequency access for the UEs.
Avoiding performing the mobility decision on cells on the NR SA frequencies recorded in the not-allowed frequency list during the mobility procedure or the measurement reporting procedure is optional. Note paragraph 7 above.
Regarding claims 10 and 20, note Abstract, ¶21-26 in Dahlen.
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 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) 7 and 17, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over by United States Patent Application Publication 2022/0070812 (Cheng) in view of United States Patent Application Publication 2010/0234026 (Tenny, et al).
Cheng discloses all subject matter, note the above paragraphs and ¶26, 29, 31, 36, 60 and 122, except for mobility procedure comprises redirection. Tenny, et al teaches the use of a mobility procedure comprises redirection for the purpose of preferential search of additional radio resources when an initial redirection attempts to acquire a set of resources fail. Hence, it 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 to incorporate the use of a mobility procedure comprises redirection for the purpose of preferential search of additional radio resources when an initial redirection attempt to acquire a set of resources fails, as taught by Tenny, et al, in the a method for improving service continuity, the method is implemented by a reduced capability (RedCap) user equipment (UE) of Cheng in order to cause of the redirection and the preferential search is conducted in accordance with at least the cause of the redirection.
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) 8 and 18, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over by United States Patent Application Publication 2022/0070812 (Cheng) in view of United States Patent Application Publication 2019/0327702 (Wang).
Cheng discloses all subject matter, note the above paragraphs, except for removing a cell from the not-allowed cell list after a time interval. Wang teaches the use of for removing a cell from the not-allowed cell list after a time interval for the purpose of remove the cell identifier of the first cell from the registration forbidden cell list at the second time point. Hence, it 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 to incorporate the use of removing a cell from the not-allowed cell list after a time interval, as taught by Wang, in the a method for improving service continuity, the method is implemented by a reduced capability (RedCap) user equipment (UE) of Cheng in order to adding a cell identifier of the first cell to a registration forbidden cell list of the terminal device at the first time point and removing the cell identifier of the first cell from the registration forbidden cell list at the second time point.
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 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).
Claims 12, 13, 15, 16 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.
Claims 2, 3, 5, 6 are 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 or make obvious the claimed the not-allowed cell list of NR SA cells further comprises cell information of each cell recorded in the not-allowed cell list. The cell information comprises a frequency, a frequency band a physical cell identifier (PCI), a global cell identifier (ID), AND location information. In combination with a method for improving service continuity. The method is implemented by a reduced capability (RedCap) user equipment (UE) and comprises generating a not-allowed cell list of new radio (NR) standalone (SA) cells and avoiding performing a mobility decision on the NR SA cells recorded in the not-allowed cell list during a mobility procedure or a measurement reporting procedure.
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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