UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/467,827
`
`03/23/2017
`
`TETSUYA YAMAMOTO
`
`731456.430C1
`
`2872
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`LINDENBAUM' ALAN LOUIS
`
`ART UNIT
`
`2466
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`01/24/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/467,827
`Examiner
`ALAN L LINDEN BAUM
`
`Applicant(s)
`YAMAMOTO et al.
`Art Unit
`AIA Status
`2466
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 10 December 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`12—29 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 12—29 is/are rejected.
`
`[:1 Claim(s)
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`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)I:J Some”
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190113
`
`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 2
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`DETAILED ACTION
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`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.
`
`3.
`
`Claims 12-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph,
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`as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`4.
`
`Claims 12 and 21 recite ”receiving a DCI
`
`and generating a DMRS for a PUSCH using a
`
`III
`combination of a cyclic shift and an orthogonal sequence based on the DC ; but claims 12 and 21 also
`
`recite ”the combination used for generating the DMRS is fixed and not dynamically changed by the DCI.”
`
`These two limitations conflict with each other. ”Receiving a DCI and generating a DMRS for a PUSCH
`
`using a combination of a cyclic shift and an orthogonal sequence based on the DCI” is interpreted as
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`dynamically changing, by the DCI, the combination used for generating the DMRS. Even though the
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`claim has been amended to recite an second conditional option where the DMRS is not fixed, the clause
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`reciting that the DMRS is generated using the DCI still conflicts with the first conditional option where
`
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`the DM RS [meaning the same DM RS that was recited to be generated earlier in the claim] is fixed.
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`Accordingly, the claims are indefinite.
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`5.
`
`For the purposes of Examiner, the limitation ”not dynamically changed by the DC
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`III
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`is interpreted
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`to mean that the combination remains unchanged/fixed for a limited duration.
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`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 3
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`6.
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`Dependent claims 13-20 and 22-29 are rejected because they depend from claims 12 and 21.
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`7.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`Claim Rejections - 35 USC § 102
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`8.
`
`Claims 12-14, 17-23 and 26-29 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
`
`Pajukoski et al. (US 2014/0254536).
`
`9.
`
`Regarding claim 12, Pajukoski discloses a communication device (Pajukoski, paragraph [0003],
`
`lines 1-3, MTC communication) comprising:
`
`10.
`
`a receiver, which, in operation, receives downlink control information (DCI) transmitted from a
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`base station (Pajukoski, Fig. 1, eNodeB communicates with UE; paragraph [0046], lines 1-5, uplink
`
`resources signaled to a user device by RRC signaling or broadcasting);
`
`11.
`
`circuitry (Pajukoski, paragraph [0080], circuits), which, in operation that generates a
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`demodulation reference signal (DMRS) for a physical uplink shared channel (PUSCH) (Pajukoski,
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`paragraph [0039], lines 1-3, DMRS for PUSCH; paragraph [0047], allocation may comprise DMRS SCI field
`
`indicating a spreading code and a cyclic shift orthogonal cover code used for generating a DMRS; user
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`device may transmit on the PUSCH) using a combination of a cyclic shift and an orthogonal sequence
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`(Pajukoski, paragraph [0047], lines 1-12, DMRS Cyclic Shift Indicator (CSI), indicating a spreading code
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`and a cyclic shift orthogonal cover code (DM RS OCC); paragraph [0048], code division multiplexing)
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`based on the DCI (Pajukoski, paragraph [0046], lines 1-5, uplink resources signaled to a user device by
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`RRC signaling or broadcasting); and
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`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 4
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`12.
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`a transmitter, which, in operation, transmits, to the base station, the PUSCH and the generated
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`DMRS (Pajukoski, paragraph [0039], lines 1-3 DMRS for PUSCH transmitted in the uplink; paragraph
`
`[0047]),
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`13.
`
`wherein when the communication device is configured in a coverage enhancement mode
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`(Pajukoski, paragraph [0034], lines 1-5, MTC coverage enhancement), in which the PUSCH is allowed to
`
`be transmitted with repetitions spanning a plurality of subframes (Pajukoski, paragraph [0037], lines 1-9,
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`subframe bundling, where a single transmission block repeated over 4 consecutive sub-frames), the
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`combination used for generating the DMRS is fixed and not dynamically changed by the DCI (Pajukoski,;
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`paragraph [0046]-[0047], dynamic DM RS resource allocation based on DCI may or may not occur; the
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`Examiner defines the claimed ”coverage enhancement mode” to mean a mode where the DMRS is not
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`changed when DCI is received), and
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`14.
`
`when the communication device is not configured in the coverage enhancement mode, the
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`combination used for generating the DMRS is dynamically changed by the DCI (Pajukoski, paragraph
`
`[0046], lines 1-5, uplink resources signaled to a user device by RRC signaling or broadcasting; paragraph
`
`[0047], lines 1-12, DM RS Cyclic Shift Indicator (CSI), indicating a spreading code and a cyclic shift
`
`orthogonal cover code (DM RS OCC); the Examiner defines the claimed ”coverage enhancement mode”
`
`to mean a mode where the DMRS is not changed when DCI is received).
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`15.
`
`Regarding claim 13, Pajukoski discloses the communication device according to claim 12,
`
`wherein when the communication device is configured in the coverage enhancement mode (Pajukoski,
`
`paragraph [0034], lines 1-5, MTC coverage enhancement), the combination used for generating the
`
`DMRS is fixed by the DCI (Pajukoski, ; paragraph [0046], lines 1-5, uplink resources signaled to a user
`
`device by RRC signaling or broadcasting; paragraph [0047], lines 1-12, DMRS Cyclic Shift Indicator (CSI),
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`indicating a cyclic shift orthogonal cover code (DM RS OCC); after being notified to the user device,
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`information about cyclic shift and OCC for DM RS is used by the user device without being changed).
`
`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 5
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`16.
`
`Regarding claim 14, Pajukoski discloses the communication device according to claim 12,
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`wherein when the communication device is configured in the coverage enhancement mode (Pajukoski,
`
`paragraph [0034], lines 1-5, MTC coverage enhancement), the combination used for generating the
`
`DMRS is determined in advance between the communication device and the base station (Pajukoski, ;
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`paragraph [0046], lines 1-5, uplink resources signaled to a user device by RRC signaling or broadcasting;
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`paragraph [0047], lines 1-12, DM RS Cyclic Shift Indicator (CSI), indicating a cyclic shift orthogonal cover
`
`code (DM RS OCC); information about cyclic shift and OCC for DM RS is notified to the user device in
`
`advance of being used by the user device).
`
`17.
`
`Regarding claim 17, Pajukoski discloses the communication device according to claim 12,
`
`wherein when the communication device is configured in the coverage enhancement mode (Pajukoski,
`
`paragraph [0034], lines 1-5, MTC coverage enhancement), said circuitry, in operation, multiplies the
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`PUSCH transmitted with repetitions spanning the plurality of subframes by one code sequence out of a
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`plurality of code sequences (Pajukoski, paragraph [0047], lines 1-12, DMRS Cyclic Shift Indicator (CSI),
`
`indicating a cyclic shift orthogonal cover code (DM RS OCC); paragraph [0061], spreading extended over
`
`multiple subframes by applying a cover code between repeated subframes).
`
`18.
`
`Regarding claim 18, Pajukoski discloses the communication device according to claim 17,
`
`wherein said one code sequence is determined using a field for indicating the combination used for the
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`DMRS in the DCI (Pajukoski, paragraph [0053], lines 1-18, DM RS CSI field).
`
`19.
`
`Regarding claim 19, Pajukoski discloses the communication device according to claim 18,
`
`wherein the plurality of code sequences are respectively associated with a plurality of values (Pajukoski,
`
`paragraph [0053], lines 1-18, CDM-based MTC format derived from MCS field value).
`
`20.
`
`Regarding claim 20, Pajukoski discloses the communication device according to claim 19,
`
`wherein the plurality of values indicated by bits constituting the field are respectively associated with a
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`plurality of combinations of the code sequences, cyclic shifts, and orthogonal sequences (Pajukoski,
`
`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 6
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`paragraph [0053], lines 1-18, CDM-based MTC format derived from MCS field value; paragraph [0054],
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`field value indicated by bits).
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`21.
`
`Claims 21-23 and 26-29 are rejected under substantially the same rationale as claims 12-14 and
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`17-20.
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`Claim Rejections - 35 USC § 103
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`22.
`
`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:
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`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, ifthe 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.
`
`23.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`24.
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`Claims 15, 16, 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Pajukoski in view of Takeda et al. (US 2015/0036651).
`
`25.
`
`Regarding claim 15, Pajukoski discloses the communication device according to claim 12,
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`wherein when the communication device is configured in the coverage enhancement mode (Pajukoski,
`
`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 7
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`paragraph [0034], lines 1-5, MTC coverage enhancement), said transmitter, in operation, transmits the
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`PUSCH and the DM RS (Pajukoski, paragraph [0039], lines 1-3, DMRS for PUSCH).
`
`26.
`
`Takeda discloses that MTC communication occurs in a narrow band (Takeda, paragraph [0028],
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`MTC communication in narrow band).
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`It would have been obvious to a person of ordinary skill in the
`
`art, at the time of the invention, to use a narrow band for the MTC communication in the invention of
`
`Pajukoski. The motivation to combine the references would have been to use known methods for
`
`performing MTC communication.
`
`27.
`
`Regarding claim 16, Pajukoski discloses the communication device according to claim 12,
`
`wherein said transmitter, in operation, transmits the PUSCH and the DMRS (Pajukoski, paragraph [0039],
`
`lines 1-3, DM RS for PUSCH)
`
`28.
`
`Takeda discloses using a frequency hopping in a narrow band (Takeda, paragraph [0028], MTC
`
`communication in narrow band; paragraph [0039], hopping resources allocation).
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`It would have been
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`obvious to a person of ordinary skill in the art, at the time of the invention, to use a narrow band and
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`frequency hopping for the MTC communication in the invention of Pajukoski. The motivation to
`
`combine the references would have been to use known methods for performing MTC communication.
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`29.
`
`Claims 24 and 25 are rejected under substantially the same rationale as claims 15 and 16.
`
`30.
`
`Applicant's arguments filed December 10, 2018 have been fully considered but they are not
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`Response to Arguments
`
`persuasive.
`
`31.
`
`Applicant asserts that the claims are not indefinite because the DMRS being fixed in one instant
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`[period of time] does not preclude the DMRS being dynamically changing in another instant [period of
`
`time]. However, the claims do not clearly delineate that the second clause [reciting that the DMRS is
`
`generated using the DCI] is conditional and does not apply to the period of time in which the device is in
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`

`

`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 8
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`coverage enhancement mode. Rather, the clause regarding the DM RS being fixed in the coverage
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`enhancement mode recites ”the DMRS” and ”the DCI,” meaning that the same DCI is both used [in the
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`second clause] and not used. This language is contradictory.
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`In order to overcome this rejection, the
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`claim should clearly delineate that the device is initially not in a coverage enhancement mode, when the
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`DMRS is generated in the second clause, and then switched to a coverage enhancement mode for a
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`subsequent time period.
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`32.
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`Applicant further asserts that the claims are patentable because Pajukoski does not disclose that
`
`the determination of whether or not to dynamically change the DMRS when DCI is received is linked to a
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`determination of whether the device is in coverage enhancement mode. However, the Examiner
`
`defines the claimed ”coverage enhancement mode” to mean a mode where the DMRS is not changed
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`when DCI is received. Further, the claims do not clearly recite such a link. Rather, the claims require
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`that there is an instance where a DM RS is fixed that occurs when the device is in a coverage
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`enhancement mode, and there is another instance where a DMRS is dynamically changed that occurs
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`when the device is not in a coverage enhancement mode.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to ALAN LOUIS LINDENBAUM whose telephone number is (571)270-3858. The
`
`examiner can normally be reached on Monday through Friday 9:00 AM to 5:00 PM EST.
`
`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.
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`

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`Application/Control Number: 15/467,827
`Art Unit: 2466
`
`Page 9
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Faruk Hamza can be reached on (571) 272-7969. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see http://pair-
`
`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
`
`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
`
`CANADA) or 571-272-1000.
`
`/A. L./
`Examiner, Art Unit 2466
`
`/FARUK HAMZA/
`
`Supervisory Patent Examiner, Art Unit 2466
`
`