NON-FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 11,683,796
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 2
2. ADDITIONAL TERMS 3
3. REISSUE PROCEDURAL REMINDERS 4
4. OTHER PROCEEDINGS 5
5. STATUS OF CLAIMS 5
6. PRIORITY AND AIA STATUS 5
7. INFORMATION CONSIDERED 6
8. RECAPTURE OF CANCELED SUBJECT MATTER 6
8.1. Findings of Fact 7
8.2. Three Step Test For Recapture 10
8.2.1. Step 1 10
8.2.2. Step 2 13
8.2.3. Step 3 15
9. BROADEST REASONABLE INTERPRETATION (BRI) 16
10. CLAIM REJECTIONS – 35 USC § 251 (Improper Recapture) 17
11. CLAIM REJECTIONS – 35 USC § 102 19
12. CONCLUSION 21
ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 19/224,226 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 30 May 2025 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 11,683,796 (“Patent Under Reissue” or “'796 Patent”) titled “ASSIGNMENT OF COMMUNICATION RESOURCES IN AN UNLICENSED FREQUENCY BAND TO EQUIPMENT OPERATING IN A LICENSED FREQUENCY BAND.”
An application for the Patent Under Reissue was filed on 04 May 2022 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 17/736,385 (“Base Application” or “'385 Application”) and issued on 20 June 2023 with claims 1–8 (“Originally Patented Claims”).
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. 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 appli-cation.
These disclosure 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
OTHER PROCEEDINGS
Based upon the Examiner’s independent review of the Patent Under Reissue itself and its prosecution history, the Examiner cannot locate any concurrent proceedings before the Office, ongoing litigation, previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction regarding the Patent Under Reissue.
STATUS OF CLAIMS
Claims 9–13, as set forth in the preliminary amendment filed on the Actual Filing Date, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 9–13 are rejected under 35 USC § 251.
Claims 9–13 are rejected under 35 USC § 102.
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds that in the Instant Application there is a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e) to parent application no. 15/311,782 filed on 16 November 2016 (“Parent Application”), which is a national stage entry (or 371) application of PCT/US2015/032272 filed on 22 May 2015 (“International Application”), and to provisional application nos. 62/002,037 and 62/002,041 filed on 22 May 2014 (“Provisional Applications”). To the extent the disclosure of the Parent Application, the International Application, and the Provisional Applications support the Pending Claims under 35 USC § 112, the supported claims receive benefit of an effective date of 22 May 2014, which is the filing date of the Provisional Applications. Accordingly, the effective filing date of the Pending Claims appears to be, at best, 22 May 2014.
AIA Status. Because the Instant Application does not contain a claim having an effective date before March 16, 2013, the AIA provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC §§ 102 and 103 is incorrect, any correction of the statutory basis 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.
INFORMATION CONSIDERED
The information disclosure statement (“IDS”) filed on the Actual Filing Date is in compliance with the provisions of 37 CFR § 1.97 and § 1.98. Accordingly, the IDS has been considered by the Examiner as noted on the attached annotated document.
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or “of record” in the original prosecution of the Patent Under Reissue. Applicant is reminded that a listing of the information cited or “of record” in the original prosecution of the Patent Under Reissue has been considered in the Instant Application and need not be resubmitted.
RECAPTURE OF CANCELED SUBJECT MATTER
“A reissue will not be granted to ‘recapture’ claimed subject matter which was surrendered in an application to obtain the original patent.” MPEP § 1412.02.
Based on the following findings of fact and 3-step test set forth in MPEP § 1412.02 II., the Examiner concludes that the Examined Claims attempt to “recapture” claimed subject matter which was surrendered in the Original Application.
Findings of Fact
Below are pertinent Examiner Findings of Fact (“EFF”) in relation to the prosecution history of the Patent Under Reissue (including the Original Application):
EFF-1: Prior to allowance of the Parent Application, Applicant argued “As amended, claim 26 recites ‘in response to receiving the second information and before transmitting any signal in the unlicensed frequency band, executing the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use … the second monitoring performed without transmitting any signal in the unlicensed frequency band.’ As amended, therefore, claim 26 requires that no signal is transmitted before the second monitoring or during the second monitoring. Applicant respectfully submits that the combination of references does not teach or suggest at least this feature of claim 26. […]. Independent claims 28, 30, 32, 36 and 37 include limitations similar to those discussed above with reference to claim 26. Accordingly, claims 28, 30, 32, 36 and 37 are at least allowable because these limitations are not taught or suggested by the combination of references.” See IFW of the Parent Application, Remarks filed 08 November 2021 at pages 13–14 (emphasis in original).
EFF-2: Prior to allowance of the Parent Application, Applicant argued “As amended, claim 26 recites ‘in response to receiving the second information and before transmitting any signal in the unlicensed frequency band, executing the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use.’ Applicant respectfully submits that the combination of references does not teach or suggest at least this feature of claim 26. […]. Independent claims 28, 30, 32, 36 and 37 include limitations similar to those discussed above with reference to claim 26. Accordingly, claims 28, 30, 32, 36 and 37 are at least allowable because these limitations are not taught or suggested by the combination of references.” See IFW of the Parent Application, Remarks filed 26 July 2021 at pages 12–13.
EFF-3: Prior to allowance of the Parent Application, Applicant argued,
As amended, claim 26 recites:
“receiving, from the base station at the UE, first information designating a first monitoring mode as a designated monitoring mode of determining whether the UE transmits a first signal in the unlicensed frequency band;
in response to receiving the first information, executing the first monitoring mode to perform first monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use;
in response to determining from the first monitoring that the unlicensed frequency band is not is use, transmitting the first signal to the base station using the assigned resources of the unlicensed frequency band;
receiving, from the base station at the UE, second information designating a second monitoring mode as the designated monitoring mode of determining whether the UE transmits a second signal in the unlicensed frequency band;
in response to receiving the second information, executing the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use, the second monitoring of the unlicensed frequency band comprising reduced sensing of the unlicensed frequency band as compared to the first monitoring, the first monitoring and the second monitoring measuring the same characteristics of the unlicensed frequency band; and
in response to determining from the second monitoring that the unlicensed frequency band is not is use, transmitting the second signal to the base station using the assigned resources of the unlicensed frequency band.”
Therefore, claim 26 requires the UE to transmit a first signal to the base station in response to determining the unlicensed frequency band is not in use based on a first monitoring mode and transmit a second signal to the base station in response to determining the unlicensed frequency band is not in use based on a second monitoring mode where the second monitoring mode comprises reduced sensing of the unlicensed frequency band. Applicant respectfully submits that the combination of references does not teach or suggest at least these features of claim 26.
[…]
Accordingly, Gao does not teach or suggest “executing the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use” and “in response to determining from the second monitoring that the unlicensed frequency band is not is use, transmitting the second signal to the base station” as recited in claim 26.
[…]
Accordingly, Applicant respectfully submits that Gao does not teach or suggest “in response to receiving the second information, executing the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use” and “in response to determining from the second monitoring that the unlicensed frequency band is not in use, transmitting the second signal to the base station using the assigned resources of the unlicensed frequency band” as recited in claim 26.
Applicant respectfully submits that Gao does not teach or suggest “the first monitoring and the second monitoring measuring the same characteristics of the unlicensed frequency band”.
[…]
Independent claims 28, 30 and 32 include limitations similar to those discussed above with reference to claim 26. Accordingly, claims 28, 30, 32, 36 and 37 are at least allowable because these limitations are not taught or suggested by the combination of references.
See IFW of the Parent Application, Remarks filed 12 February 2021 at pages 11–13.
EFF-4: Prior to allowance of the Parent Application, Applicant argued “Therefore, claim 26 requires the UE to transmit a first signal to the base station in response to determining the unlicensed band is not in use based on a first monitoring mode and transmit a second signal to the base station in response to determining the unlicensed band is not in use based on a second monitoring mode where the second monitoring mode comprises reduced sensing of the unlicensed band. Applicant respectfully submits that the combination of references does not teach or suggest at least these features of claim 26. […]. Applicant respectfully submits that [Zou] does not teach or suggest the claim features which require 1) the first monitoring mode and the second monitoring mode to be executed based on the information received from the base station (not whether the channel is occupied). […]. Independent claims 28, 30 and 32 include limitations similar to those discussed above with reference to claim 26. Accordingly, claims 28, 30 and 32 are at least allowable because these limitations are not taught or suggested by the combination of references.” See IFW of the Parent Application, Remarks filed 05 November 2020 at pages 13–14.
Three Step Test For Recapture
A three-step process is used to apply the recapture rule:
(1) first, determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) second, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) third, 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.
See MPEP § 1412.02 II.
Step 1
Independent Claim 9
Independent claim 9 of the Instant Application, directed to a terminal apparatus, as filed in the preliminary amendment on the Actual Filing Date, is broader than independent claim 3 of the Originally Patented Claims.
Particularly, pending claim 9 includes at least the following Broadening Aspects (“BA”) of patent claim 3:
BA-1: removal of the limitation “receive, from a base station, first information designating a first monitoring mode as a designated monitoring mode of determining whether the UE transmits a first signal in an unlicensed frequency band”;
BA-2: removal of the limitation “in response to receipt of the first information, execute the first monitoring mode to perform first monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use”;
BA-3: removal of the limitation “in response to a determination from the first monitoring that the unlicensed frequency band is not in use, transmitting the first signal to the base station in the unlicensed frequency band”;
BA-4: removal of the limitation “receive, from the base station, second information designating a second monitoring mode as the designated monitoring mode of determining whether the UE transmits a second signal in the unlicensed frequency band”;
BA-5: removal of the limitation “in response to receipt of the second information and before transmission by the UE of any signal in the unlicensed frequency band, execute the second monitoring mode to perform second monitoring of the unlicensed frequency band to determine whether the unlicensed frequency band is in use”;
BA-6: removal of the limitation “the second monitoring performed without transmitting any signal in the unlicensed frequency band”;
BA-7: removal of the limitation “the second monitoring of the unlicensed frequency band comprising reduced sensing of the unlicensed frequency band as compared to the first monitoring”;
BA-8: removal of the limitation “the first monitoring and the second monitoring measuring the same characteristics of the unlicensed frequency band”; and
BA-9: removal of the limitation “in response to a determination from the second monitoring that the unlicensed frequency band is not in use, transmit the second signal to the base station in the unlicensed frequency band.”
Independent Claim 13
Independent claim 13 of the Instant Application, directed to a method, as filed in the preliminary amendment on the Actual Filing Date, is broader than independent claim 1 of the Originally Patented Claims. In particular, pending claim 13 includes broadenings aspects of patent claim 1 that are substantially similar to BA-1 through BA-9, as identified above with respect to pending claim 9.
Independent Claim 11
Independent claim 11 of the Instant Application, directed to a base station, as filed in the preliminary amendment on the Actual Filing Date, is broader than independent claim 5 of the Originally Patented Claims.
Particularly, pending claim 11 includes at least the following Broadening Aspects (“BA”) of patent claim 5:
BA-10: removal of the limitation “transmit, to a user equipment (UE), first information designating a first monitoring mode as a designated monitoring mode of determining whether the UE transmits a first signal in the unlicensed frequency band” (similar to limitation of BA-1);
BA-11: removal of the limitation “receive, from the UE, the first signal within the unlicensed frequency band, the first signal transmitted by the UE by at least executing the first monitoring mode before transmitting the first signal” (similar to limitations of BA-2/BA-3);
BA-12: removal of the limitation “transmit, to the UE, second information designating a second mode as the mode of determining whether the UE transmits a second signal in the unlicensed frequency band” (similar to the limitation of BA-4);
BA-13: removal of the limitation “receive, from the UE, the second signal within the unlicensed frequency band, the second signal transmitted by the UE by at least executing the second monitoring mode before transmitting the second signal” (similar to limitations of BA-5/BA-9);
BA-14: removal of the limitation “the first monitoring mode comprises the UE monitoring the unlicensed frequency band to check whether the unlicensed frequency band is in use” (similar to limitation of BA-2);
BA-15: removal of the limitation “the second monitoring mode comprises the UE monitoring of the unlicensed frequency band without transmitting any signal in the unlicensed band […] to check whether the unlicensed frequency band is in use” (similar to limitations of BA-5/BA-6);
BA-16: removal of the limitation “the second monitoring mode comprises the UE monitoring of the unlicensed frequency band […] with reduced sensing of the unlicensed frequency band as compared to the first monitoring” (similar to limitation of BA-7); and
BA-17: removal of the limitation “the first monitoring mode and the second monitoring mode comprising a measurement of the same characteristics of the unlicensed frequency band” (similar to limitation of BA-8).
Step 2
BA-1 through BA-9 relate to surrendered subject matter
In view of the above findings of fact, which is based on a review of the prosecution of the Original Application, the limitations corresponding to BA-1 through BA-9, as recited by patent claim 3 (and similarly by patent claim 1), is each a limitation “presented, argued, or stated to make the claims patentable over the art (in the original application) and ‘generates’ the surrender of claimed subject matter,” and therefore is, by definition, a Surrender Generating Limitation (“SGL”). See MPEP § 1412.02 I.
The above noted limitations of BA-1 through BA-9 will be referred to as SGL-1 through SGL-9, respectively.
Therefore, based on a review of the prosecution of the Original Application and the currently pending claims, the Examiner finds BA-1 through BA-9 is each a broadening aspect of reissue claim 9 (and similarly reissue claim 13) that does relate to subject matter previously surrendered during prosecution of the Original Application. See MPEP § 1412.02 II.B.1.
BA-10 through BA-17 relate to surrendered subject matter
In view of the above findings of fact, which is based on a review of the prosecution of the Original Application, the limitations corresponding to BA-10 through BA-17, as recited by patent claim 5, is each a limitation “presented, argued, or stated to make the claims patentable over the art (in the original application) and ‘generates’ the surrender of claimed subject matter,” and therefore is, by definition, a Surrender Generating Limitation (“SGL”). See MPEP § 1412.02 I.
The above noted limitations of BA-10 through BA-17 will be referred to as SGL-10 through SGL-17, respectively.
Therefore, based on a review of the prosecution of the Original Application and the currently pending claims, the Examiner finds BA-10 through BA-17 is each a broadening aspect of reissue claim 11 that does relate to subject matter previously surrendered during prosecution of the Original Application. See MPEP § 1412.02 II.B.1.
Step 3
For the reasons that follow, the Examiner concludes that pending claim 9 (and dependent claims thereof), pending claim 11 (and dependent claims thereof), pending claim 13 (and dependent claims thereof) are each not materially narrowed in other respects, and hence do not avoid the recapture rule. The following analysis will discuss each SGL, and whether each independent claim (and therefore dependents thereof) was materially narrowed in other respects.
Applicant is respectfully reminded, “The material narrowing must relate to what was amended or argued by applicant in the original application, to define the claim over the art.” MPEP § 1412.02 II.C.
SGL-1 through SGL-9 entirely removed (impermissible recapture)
As noted above, SGL-1 through SGL-9 refers to the limitations corresponding to BA-1 through BA-9, respectively.
The Examiner finds that each of SGL-1 through SGL-9 is entirely removed in pending claim 9 (and similarly pending claim 13).
The Examiner also finds that each of SGL-1 through SGL-9 is not replaced by a new SGL-related limitation.
Therefore, since each of SGL-1 through SGL-9 is entirely removed and has not been replaced with a new SGL-related limitation, the removal of each of SGL-1 through SGL-9 is impermissible recapture. See MPEP § 1412.02 II.C.
SGL-10 through SGL-17 entirely removed (impermissible recapture)
As noted above, SGL-10 through SGL-17 refers to the limitations corresponding to BA-10 through BA-17, respectively.
The Examiner finds that each of SGL-10 through SGL-17 is entirely removed in pending claim 11.
The Examiner also finds that each of SGL-10 through SGL-17 is not replaced by a new SGL-related limitation.
Therefore, since each of SGL-10 through SGL-17 is entirely removed and has not been replaced with a new SGL-related limitation, the removal of each of SGL-10 through SGL-17 is impermissible recapture. See MPEP § 1412.02 II.C.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
Independent claim 9 recites “circuitry configured to perform sensing prior to transmission to the base station apparatus, the sensing being for determining whether the unlicensed frequency band is in use […] the circuitry is configured to omit the sensing in response to receiving the omission instruction.” This limitation does not appear to require special programming, and therefore “circuitry” alone is structure capable of performing the claimed functions of “sensing prior to transmission to the base station apparatus, the sensing being for determining whether the unlicensed frequency band is in use” and “omit the sensing in response to receiving the omission instruction.”
Independent claim 11 recites “circuitry configured to allocate frequency division resource elements in the unlicensed frequency band, to the terminal apparatus.” This limitation does not appear to require special programming, and therefore “circuitry” alone is structure capable of performing the claimed function of “allocate frequency division resource elements in the unlicensed frequency band, to the terminal apparatus.”
CLAIM REJECTIONS – 35 USC § 251 (Improper Recapture)
The following is a quotation of the appropriate paragraphs of 35 USC § 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 9–13 are rejected under 35 USC § 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.
The nature of the improper recapture in claims 9–13 is set forth in the discussion above in this Office action.
CLAIM REJECTIONS – 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 USC § 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.
Claims 9–10 and 13 are rejected under 35 USC § 102(a)(1) as being anticipated by US 2017/0055263 A1 (“Tomeba”).
As per claim 9, Tomeba discloses [a] terminal apparatus (fig. 3, “TERMINAL APPARATUS”) comprising:
a transceiver configured to communicate with a base station apparatus in an unlicensed frequency band (fig. 3, 2032/2043); and
a circuitry configured to perform sensing prior to transmission to the base station apparatus, the sensing being for determining whether the unlicensed frequency band is in use ([0104] [0114]),
wherein the transceiver comprises:
a receiver configured to receive an omission instruction to instruct omission of the sensing, from the base station apparatus (fig. 3, 2043); and
a transmitter configured to perform the transmission using frequency division resource elements, in the unlicensed frequency band, allocated from the base station apparatus to the terminal apparatus (fig. 3, 2032; [0072] [0084]),
the circuitry is configured to omit the sensing in response to receiving the omission instruction ([0114]).
As per claim 10, Tomeba discloses [t]he terminal apparatus according to claim 9, wherein
the receiver is further configured to receive an execution instruction to instruct execution of the sensing, from the base station apparatus, and the circuitry is configured to perform the sensing prior to performing the transmission, in response to receiving the execution instruction (fig. 3).
Claims 11–12 are rejected under 35 USC § 102(a)(1) as being anticipated by WO 2012/037637 A1 (“Novak”).
As per claim 11, Novak discloses [a] base station apparatus (“eNB node 208”) comprising: a transceiver configured to, in an unlicensed frequency band, communicate with a terminal apparatus including a circuitry configured to perform sensing prior to transmitting to the base station apparatus, the sensing being for determining whether the unlicensed frequency band is in use; and a circuitry configured to allocate frequency division resource elements in the unlicensed frequency band, to the terminal apparatus, wherein the transceiver comprises: a transmitter configured to transmit an omission instruction to instruct omission of the sensing, to the terminal apparatus; and a receiver configured to receive the transmission, in which the sensing is omitted in response to the omission instruction, using the frequency division resource elements (P14:L12–P15:L24; P17:L9–25; P20:L23–P22:L3).
As per claim 12, Novak discloses [t]he base station apparatus according to claim 11, wherein the transmitter is further configured to transmit an execution instruction to instruct execution of the sensing, to the terminal apparatus, and the receiver is configured to receive the transmission, in which the sensing is performed in response to the execution instruction, using the frequency division resource elements (P14:L12–P15:L24; P17:L9–25; P20:L23–P22:L3).
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992