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 .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 19-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 19, the phrase “computer-readable medium having contents” in the limitation “A non-transitory computer-readable medium having contents which cause processing circuitry to perform a method” is considered new subject matter, not properly described in the application as filed.
Regarding claim 20, the limitation “the contents comprise configuration settings” is considered new subject matter, not properly described in the application as filed.
4. 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.
5. Claims 19-20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “contents” in claim 19 is used by the claim to mean “something equivalent to software” while the accepted meaning is “computer program, computer instructions” The term is indefinite because the specification does not clearly redefine the term.
Regarding claim 20, “content” is generally not equivalent to a “configuration settings” when stored on a computer-readable medium to perform method steps. While both reside in memory, they serve fundamentally different functions in how a system executes instructions. In other words, the limitation “the contents comprise configuration settings” is vague and indefinite.
Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1, 4, 5, 7-10, 11 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 5-8, 9 and 9 respectively of U.S. Patent No. 12,150,111. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, see entire claim (see claim 1 of the Patent 12,150,111 at col. 23, lines 2-16).
Regarding claim 4, see entire claim (see claim 2 of the Patent 12,150,111 at col. 23, lines 17-22).
Regarding claim 5, see entire claim (see claim 3 of the Patent 12,150,111 at col. 23, lines 23-26).
Regarding claim 7, see entire claim (see claim 5 of the Patent 12,150,111 at col. 23, lines 31-35).
Regarding claim 8, see entire claim (see claim 6 of the Patent 12,150,111 at col. 24, lines 1-5).
Regarding claim 9, see entire claim (see claim 7 of the Patent 12,150,111 at col. 24, lines 6-17).
Regarding claim 10, see entire claim (see claim 8 of the Patent 12,150,111 at col. 24, lines 18-20).
Regarding claim 11, see entire claim (see claim 9 of the Patent 12,150,111 at col. 24, lines 21-34).
Regarding claim 19, see entire claim (see claim 9 of the Patent 12,150,111 at col. 24, lines 21-34).
For claim 1, the scope of the application claim and that of patented claim is slightly changed due to different terms used to describe functions of some elements. “An integrated circuit” is used in place of “A base station”, and “user fields, a number of the user fields” is used in place of “information indicating a number”.
For claims 4-5 and 7-19, these claims have the same limitations as those of the patented claims 2-3 and 5-8, respectively.
For claim 11, the scope of the application claim and that of patented claim is slightly changed due to different terms used to describe functions of some elements. “A process controlled by an integrated circuit” is used in place of “A transmission method”, and “user fields, a number of the user fields” is used in place of “information indicating a number”.
For claim 19, while claim 19 of the instant application recites “A non-transitory computer-readable medium having contents which cause processing circuitry to perform a method, the method comprising”, the patented claim 9 recites “A transmission method”. Further, the scope of the application claim and that of patented claim is slightly changed due to different terms used to describe functions of some elements. “A process controlled by an integrated circuit” is used in place of “A transmission method”, and “user fields, a number of the user fields” is used in place of “information indicating a number”.
It has been held that changing the language of the claim, thereby changing the scope of the claims slightly is an obvious expedient if the remaining elements perform the same function as before, therefore omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Allowable subject matter
6. Claims 2-3, and 12-18 are rejected based on their dependency, would be allowable if claims 1 and 11 rewritten or amended to overcome the non-statutory DP rejection(s), set forth in this Office action.
7. Claim 6 is rejected based on its dependency, would be allowable if claims 1, 11 and 5 rewritten or amended to overcome the non-statutory DP rejection(s), set forth in this Office action.
8. Claims 19-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and
under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and non-statutory DP rejection set forth in this Office action.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chen et al. (US 2016/0330058 A1): Li et al. (US 2016/0329999 A1); Bharadwaj et al. (US 2017/0048823 A1) are cited and considered pertinent to the instant specification.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUC C HO whose telephone number is (571)272-3147 (Duc.ho@uspto.gov). The examiner can normally be reached on M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Mui can be reached on 571-270-1420 (Gary.mui@uspto.gov). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUC C HO/Primary Examiner, Art Unit 2465
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