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 .
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Reissue Applications
The instant application is a broadening continuation of Reissue Application No. 18/053,051 (hereinafter the ‘051 application), which is still pending. The ‘051 application was filed as a broadening reissue of U.S. Patent No. 11,470,533 to Mackenzie (hereinafter the ‘533 patent), granted on 11 October 2022, having claims 1-6. The ‘533 patent was filed as the national stage entry under 35 U.S.C. 371 of Application No. PCT/EP2019/050677, filed 11 January 2019, which claimed priority to European Patent Application No. EP18157844, filed 21 February 2018.
In a preliminary amendment claims 1-6 have been cancelled and claims 8-27 have been added. Claims 8-27 have been examined.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,470,533 (hereinafter the ‘533 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Consent of Assignee
The Consent of Assignee is objected to because the person who signed the Consent of Assignee establishing ownership interest is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP § 325.
Reissue Declaration
The reissue declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The declaration states that the error in the original patent is being corrected by an amendment to claim 1; however, this claim has been cancelled.
Specification
The disclosure is objected to because of the following informalities:
The paragraphs being added in view of the Certificate of Correction that was published by the Office on 5 November 2024 should be underlined in their entirety.
An amendment to the specification also needs to be submitted to reflect the changes in the Certificate of Correction that was published by the Office on 11 March 2025.
Appropriate correction is required.
Claim Objections
Claims 8-27 are objected to because of the following informalities: Since the original patent had claims numbered from 1-6, new claims in this application should be numbered beginning with claim 7.
Appropriate correction is required.
Claims 8-27 are also objected to under 35 C.F.R. 1.173(c) because no explanation has been given regarding support for the changes to the claims in the patent’s disclosure.
Claim Rejections - 35 USC § 251
Claims 8-27 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue declaration is set forth in the discussion above in this Office action.
Claims 8-27 are also rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
None of the claims of the instant application contain the limitations:
“setting, by the first base station, one or more of:
“a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
“a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data” at column 10, lines 24-38 of the ‘533 patent.
next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution;
The limitation “wherein the first base station is a mobile base station” was added in an Examiner’s Amendment in the Notice of Allowance mailed by the Office on 10 October 2024. Claims 8-21 no longer specify that any base station is mobile.
The limitation “setting, by the first base station, one or more of:
a modified time represented by a first information element, the modified time based on the relative speed of the UE with respect to the reference object such that the value for the modified time is different than the time the UE has been positioned within the coverage area of the first base station in the retrieved data, and
a modified size of a coverage area represented by a second information element, the modified size based on the relative speed of the UE with respect to the reference object such that the value for the modified size of the coverage area is different than the size of the coverage area of the first base station in the retrieved data” was added in an Examiner’s Amendment in the Notice of Allowance mailed by the Office on 10 October 2024. None of the claims now contain this limitation.
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
The claims are only narrowed in unrelated aspects. This is therefore an impermissible recapture.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“non-transitory computer-readable storage medium storing computer program comprising instructions which, when the computer program is executed by a computer, cause the computer to implement the method of claim 8.” in claim 13.
“processor configured to implement the steps of the method of claim 8.” in claim 14.
“non-transitory computer-readable storage medium storing computer program comprising instructions which, when the computer program is executed by a computer, cause the computer to implement the method of claim 15.” in claim 20.
“processor configured to implement the steps of the method of claim 15.” in claim 21.
“non-transitory computer-readable storage medium storing computer program comprising instructions which, when the computer program is executed by a computer, cause the computer to implement the method of claim 22.” in claim 26.
“processor configured to implement the steps of the method of claim 22.” in claim 27.
Each of these claims recites a generic placeholder (a computer or a processor) and a reference to a method that includes multiple functions (i.e. the methods of their respective base claims):
Claim 8 recites the functions “retrieving data…” in lines 5-7, “preparing one or more messages…” in lines 8-12, and “initiating a handover…” in lines 14-16.
Claim 15 recites the functions “determining…” in line 5, “preparing a message…” in lines 6-11, and “initiating a handover…” in lines 12-14.
Claim 22 recites the functions “determining…” in line 5, “retrieving data…” in lines 6-8, “preparing…” in lines 9-16, and “initiating…” in lines 17-19.
Although Applicant’s specification describes these functionalities being generally performed by the equipment (see column 3, lines 46-58) in Figure 7 and column 7, line 50 to column 9, line 44, no specific algorithm is given for any of these computer-implemented means-plus-function limitations. See MPEP 2181(II)(B). Each is these claims is therefore indefinite in scope, as stated below.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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.
Claims 9, 12-14, 20, 21, 26, and 27 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 9 recites the limitation "the mobility state" in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of the prior art search, it is being presumed that this should be “a mobility state.”
Claim 12 is dependent upon base claim 9 and incorporates all of its limitations, rendering the claim likewise indefinite.
Claim 14 recites the limitation "A first base station" in line 1. There is insufficient antecedent basis for this limitation in the claim because it is unclear if this is the same base station as the “first base station” in base claim 8. For purposes of the prior art search, it is being presumed that they are the same.
Claim 21 recites the limitation "A first base station" in line 1. There is insufficient antecedent basis for this limitation in the claim because it is unclear if this is the same base station as the “first base station” in base claim 15. For purposes of the prior art search, it is being presumed that they are the same.
Claim 27 recites the limitation "A mobile base station" in line 1. There is insufficient antecedent basis for this limitation in the claim because it is unclear if this is the same base station as the “mobile base station” in base claim 22. For purposes of the prior art search, it is being presumed that they are the same.
Claims 13, 14, 20, 21, 26, and 27 invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions for the reasons discussed above. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b).
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);
(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.
Allowable Subject Matter
Claims 8, 10, 11, 15-19, and 22-25 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 251, set forth in this Office action.
Claims 9, 12-14, 20, 21, 26, and 27 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 251, set forth in this Office action and to include 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:
No art was found that disclosed or rendered obvious a handover procedure in which a base station prepares and sends to the target base station “one or more messages further including a plurality of information elements representing the size of the donor base station's coverage area and the time the donor base station has acted as donor for the first base station.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HENEGHAN whose telephone number is (571)272-3834. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571)270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
Conferees:
/ANGELA M LIE/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992