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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 in parent application 16/838500.
Response to Amendment
Applicant’s preliminary amendment, filed 3 June 2026, has been entered and carefully considered.
Claims 1, 4, 6 and 9-15 are amended.
Claims 1-15 are currently pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 April 2025, 6 May 2025, 4 August 2025, 22 September 2025, 3 June 2026 and 31 August 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable respectively over claims 1-3, 7, 8, 11-13, 17, 18, 21-23, 27 and 28 of U.S. Patent No. 12489504. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent anticipate the claims of the instant application as follows:
Claim of instant application
Claim of U.S. Patent No. 12489504
1
1
2
2
3
3
4
7
5
8 (inclusive of transmitting step in parent claim 7)
6
11
7
12
8
13
9
17
10
18 (inclusive of transmitting step in parent claim 17)
11
21
12
22
13
23
14
27
15
28 (inclusive of transmitting step in parent claim 27)
Claims 1-4, 6-9 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3, 7, 11, 12, 13, 17, 21 and 22 of U.S. Patent No. 11909484. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent anticipate the claims of the instant application as follows:
Claim of instant application
Claim of U.S. Patent No. 11909484
1
1
2
2
3
3
4
7
6
11
7
12
8
13
9
17
11
11 (via the memory comprised with the first device) or 21
12
12 (inclusive of the features of parent Claim 11)
13
13 (inclusive of the features of parent Claim 11)
14
22
Claims 5, 10 and 15 rejected on the ground of nonstatutory double patenting as being unpatentable respectively over claims 7, 17 and 22 of U.S. Patent No. 11909484 in view of Chung et al (United States Pre-Grant Publication 20220123805), hereinafter Chung. Claims 7, 17 and 22 of U.S. Patent No. 11909484 respectively disclose the features of Claims 4, 9 and 14, as described above. However, the aforementioned claims do not disclose the features of Claims 5, 10 and 15. In an analogous art, Chung discloses this. Specifically, Chung discloses downlink control information including at least one of an indication for the number of non-zero coefficients of a matrix of linear combination coefficients or a setting/mode for quantization (paragraph 0378). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the aforementioned claims respectively with Chung. One would have been motivated to do so in order to reduce overhead traffic in a wireless communication system (refer to paragraphs 0004-0005 of Chung).
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 1-15 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.
Regarding independent claims 1, 4, 6, 9, 11 and 14, the claim language recites “a matrix having 2L x M complex-valued linear combination coefficients arrangeable in 2L spatial components and M frequency components.” The claim language further recites “a strongest coefficient indicator with log22L bits”. However, the claim language does not clearly indicate what the variable “L” represents. Although the multiplied value of “L” is associated with the spatial components and bits, the value of “L” (or what the variable represents) is not claimed. Further, claim language “the index” and “the spatial component” lack antecedent basis.
Therefore, the claims are found to be indefinite. Claims 2, 3, 5, 7, 8, 10, 12, 13 and 15 are rejected by virtue of dependence on the independent claims listed above.
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.
Claim 4, 5, 9 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding Claim 4, the claim recites “determining state information of the channel based on the uplink control information” where the “uplink control information” comprising the following limitations:
“…indicative of a matrix having 2L x M complex- valued linear combination coefficients arrangeable in 2L spatial components and M frequency components for quantizing a channel between a terminal device and a network device, wherein
the matrix has KNZ non-zero linear combination coefficients,
the uplink control information comprises a bitmap indicating locations of non- zero linear combination coefficients in a shifted matrix,
the frequency components of the matrix are shifted circularly in the shifted matrix,
a strongest coefficient of the matrix is located in a frequency component with a predetermined index,
the uplink control information further comprises a strongest coefficient indicator with log22L bits indicating the index of the spatial component associated with the strongest coefficient of the matrix,
the uplink control information further comprises values of non-zero linear combination coefficients of the shifted matrix, and
the non-zero linear combination coefficients exclude the strongest coefficient.”
The limitations shown above (the “uplink control information” and “determining state information” step), as drafted, are a process that, under its broadest reasonable interpretation, covers mathematical relationships, which falls under the Mathematical Concepts grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
In particular, the claim recites “receiving” the “uplink control information” described above. However, this receiving step is recited at a high level of generality (i.e., as a general means of receiving uplink control information for use in the determining step) and amounts to mere data gathering, which is a form of insignificant extra-solution activity. While the claim also recites “for quantizing a channel between a terminal device and a network device,” this phrase is interpreted as an intended use of the “uplink control information” and is not accorded patentable weight. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of the receiving amounts to no more than adding insignificant extra-solution activity to the judicial exception. Insignificant extra-solution activity does not result in the claim amounting to significantly more than the abstract idea, and thereby cannot provide an inventive concept. Claim 4 is not patent eligible.
Regarding Claim 5, the limitation “wherein the matrix is determinable based at least upon the downlink control information and a resource indication associated with the spatial components and the frequency components” further limits the “uplink control information” found to be an abstract idea in the independent claims above, and is therefore part of the recited abstract idea. The additional limitations in the claim (“providing downlink control information”) amount to insignificant extra-solution activity that neither integrates the abstract idea into a practical application nor amounts to significantly more than the abstract idea. Therefore, Claim 5 is not patent eligible. The Office does note that Claims 10 and 15 indicate that the downlink control information is provided to the network device and do integrate the abstract idea into a practical application. However, Claim 5 does not recite this limitation.
Claim 9 recites the same abstract idea as Claim 4, with the additional elements of “A network device comprising: at least one processor; and at least one memory storing instructions thereon that, when executed by the at least one processor, cause the network device to perform…”. However, these additional elements are also recited at a high level of generality, and merely automates the receiving step. Therefore, these limitations also do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Additionally, these limitations amount to mere instructions to apply an exception using a generic computer component and do not result in the claim amounting to significantly more than the abstract idea, and thereby cannot provide an inventive concept. Claim 9 is not patent eligible.
Claim 14 recites the same abstract idea as Claim 4, with the additional elements of “A non-transitory computer readable medium comprising program instructions for causing a network device to perform…”. However, these additional elements are also recited at a high level of generality, and merely automates the receiving step. Therefore, these limitations also do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Additionally, these limitations amount to mere instructions to apply an exception using a generic computer component and do not result in the claim amounting to significantly more than the abstract idea, and thereby cannot provide an inventive concept. Claim 14 is not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Gao et al (United States Pre-Grant Publication 20220149908) discloses a terminal reporting PMI to a network device using a CSI report (paragraph 0227).
Hao et al (United States Pre-Grant Publication 20220109480) discloses a UE reporting a location of non-zero linear combination coefficients via a bitmap (paragraphs 0046 and 0089).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW W. CHRISS whose telephone number is (571)272-1774. The examiner can normally be reached Monday-Friday, 8am-4pm ET.
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, Kevin Bates can be reached at (571) 272-3980. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW W CHRISS/Primary Examiner, Art Unit 2472
Prosecution Insights