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
`
`15/788,722
`
`10/19/2017
`
`TAKAKO HORI
`
`731456.450C1
`
`7123
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`LEE” ANDREW CHUNG CHEUNG
`
`ART UNIT
`
`2411
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/12/2019
`
`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
`
`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/788,722
`Examiner
`ANDREWC LEE
`
`Applicant(s)
`HORI et al.
`Art Unit
`2411
`
`AIA (FITF) Status
`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 10/19/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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)
`
`1—12 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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
`
`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:
`
`a). All
`
`b)I:l Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190707
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 2
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`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 NA.
`
`1.
`
`This Office Action in response to the Application no.15788722, filed 10/19/2017
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`is entered; wherein no.15788722 is a continuation of PCT/JP2016/001495, filed
`
`03/16/2016 claims foreign priority to 2015-102810, filed 05/20/2015.
`
`2.
`
`Claims 1 — 12 are hence entered for examination.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 10/19/2017 was filed,
`
`and the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly,
`
`the information disclosure statement is being considered by the examiner.
`
`Specification
`
`4.
`
`The lengthy specification has not been checked to the extent necessary to
`
`determine the presence of all possible minor errors. Applicant’s cooperation is
`
`requested in correcting any errors of which applicant may become aware in the
`
`specification.
`
`Claim Rejections - 35 USC § 1 12
`
`5.
`
`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.
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 3
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`6.
`
`Claims 4, 6, 7 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 pre-AlA the
`
`applicant regards as the invention.
`
`Regarding Claims 4, 6, 7, the claim subject matter “it’
`
`in “it is determined” is
`
`ambiguous and is indefinite. A person of ordinary skill in the art does not know and is
`
`not clear which/what entity in the system/node/terminal that applicants is referring to —
`
`to have determination made. Clarification and appropriate correction are required.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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:
`
`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, if the 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.
`
`8.
`
`Claims 1 — 12 are rejected under 35 U.S.C. 103 as being unpatentable over Rao
`
`(US 20100172332 A1) in view of Hurtta et al. (US 7688745 B1).
`
`Regarding Claim 1, Rao discloses as communication node that determines a
`
`codec and a codec mode to be used by two terminals that perform communication in a
`
`first network, when one of the two terminals performs handover to a second network
`
`that is different from the first network (“controlling speech vocoder rates”, Abstract,
`
`“CS voice in UMTS”, “VolP in LTE”, ARM codec, eNode-B, Fig. 1, paras. [0004] —
`
`[0006]), the communication node comprising: Rao discloses implicitly a determiner that
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 4
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`sets common part for a codec and a codec mode to be used by the two terminals, the
`
`common part being common among information indicating codecs and codec modes
`
`used for communication in the first network, information indicating codecs and codec
`
`modes supported by the one terminal, and information indicating codecs and codec
`
`modes supported by the second network ( “,....the eNode-B decides if it is
`
`appropriate to modify the AMR codec mode being used for voice traffic delivered
`
`to a particular UE in the downlink,..”, Fig. 5, paras. [0025] — [0027]); and Rao further
`
`discloses a generator that generates signaling for requesting the two terminals to
`
`perform changing to the set codec and codec mode to be used by the two terminals
`
`(“,..To control a change of the AMR codec rate in the uplink direction, the eNode-
`
`B sends an RRC message to the UE requesting that the UE change the AMR
`
`codec that the UE is using,...”, Fig. 5, Fig. 6, paras. [0027] — [0032]).
`
`Rao does not disclose explicitly a determiner that sets common part for a codec
`
`and a codec mode to be used by the two terminals, the common part being common
`
`among information indicating codecs and codec modes used for communication in the
`
`first network, information indicating codecs and codec modes supported by the one
`
`terminal, and information indicating codecs and codec modes supported by the second
`
`network.
`
`Hurtta et al. in the same or in the similar field of endeavor teach a determiner that
`
`sets common part for a codec and a codec mode to be used by the two terminals, the
`
`common part being common among information indicating codecs and codec modes
`
`used for communication in the first network, information indicating codecs and codec
`
`modes supported by the one terminal, and information indicating codecs and codec
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 5
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`modes supported by the second network (“,...performs a mode selection procedure
`
`for selecting the same mode for bidirectional communication between the
`
`network elements. The modes preferably are different codec types, channel-
`
`coding schemes,...”, Abstract, “,...After having received both the messages, the
`
`control means knows both codec sets supported by the call originating
`
`equipment as well as by the call terminating equipment,....”, Fig. 1, Fig. 2, Fig. 3,
`
`Fig. 4, Col. 5, lines 46 — 67, Col. 6, lines 1 — 51). At time the invention was made it
`
`would have been obvious to a person of ordinary skill in the art to modify the teachings
`
`of Rao to include the features of a determiner that sets common part for a codec and a
`
`codec mode to be used by the two terminals, the common part being common among
`
`information indicating codecs and codec modes used for communication in the first
`
`network, information indicating codecs and codec modes supported by the one terminal,
`
`and information indicating codecs and codec modes supported by the second network
`
`as taught by Hurtta et aI. One of ordinary skill in the art would be motivated to do so for
`
`providing a communication system for performing a mode selection by selecting or
`
`negotiating the mode to be used, a method to be performed in such a communication
`
`system, and to a network element capable of mode selection (as suggested by Hurtta
`
`et al., see Col. 1, lines 8 — 2).
`
`Regarding Claim 2, the combined system of Rao and Hurtta et aI. discloses
`
`wherein, when the common part does not exist, the codec used for the communication
`
`in the first network has a compatible mode with another codec, and the codecs
`
`supported by the one terminal and the codecs supported by the second network include
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 6
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`the other codec, the determiner sets the other codec or the compatible mode with the
`
`other codec for the codec and codec mode to be used by the two terminals (Hurtta et al.
`
`: “,...When the user equipment 3 should not support the selected codec indicated
`
`in the Invite message received from CSCF 2, it preferably sends a message to
`
`CSCF 2 informing the latter on lack of support of the selected codec. Thereupon,
`
`the CSCF 2 repeats the codec selection procedure 4 but now selects another
`
`codec different from the first selected codec,...”, Col. 7, lines 25 — 58).
`
`Regarding Claim 3, the combined system of Rao and Hurtta et al. discloses
`
`wherein, when a policy of a service operator exists, the determiner sets the codec and
`
`codec mode to be used by the two terminals, in accordance with the policy, and when
`
`the policy does not exist, the determiner sets the common part for the codec and codec
`
`mode to be used by the two terminals ( Hurtta et al
`
`: “,... The selection procedure
`
`performed in the control means such as CSCF may be based for example on the
`
`operator preferences. As an example, when the operator prefers to use AMR, the
`
`selection procedure selects AMR from a set including FR, HR and AM R,...”, Col.
`
`5, lines 11 — 37).
`
`Regarding Claim 4, Rao discloses a terminal that is included in two terminals
`
`that perform communication in a first network and that performs handover to a network
`
`different from the first network (“controlling speech vocoder rates”, Abstract, “CS
`
`voice in UMTS”, “VolP in LTE”, ARM codec, UE, Fig. 1, paras. [0004] — [0006]), the
`
`terminal comprising: a connection-target detector that detects a connection-target
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 7
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`network owing to the handover (“,...the AMR vocoder typically contains both the
`
`encoder and decoder functions,..”, Fig. 3, Fig. 4, paras. [0023] — [0024]); a codec
`
`detector that detects a codec used in the connection-target network (“AMR speech
`
`encoder”, Fig. 2, paras. [0021] — [0022]); Rao discloses implicitly a determiner that
`
`determines whether or not an encoding system for a codec to be used by the two
`
`terminals needs to be limited, based on the detected connection-target network and the
`
`detected codec ( “,....the eNode-B decides if it is appropriate to modify the AMR
`
`codec mode being used for voice traffic delivered to a particular UE in the
`
`downlink,..”, Fig. 5, paras. [0025] — [0027]); and Rao discloses further a command
`
`transmitter that transmits, to an encoder, an internal command for limiting the encoding
`
`system, when it is determined that the encoding system needs to be limited (“,..To
`
`control a change of the AMR codec rate in the uplink direction, the eNode-B
`
`sends an RRC message to the UE requesting that the UE change the AMR codec
`
`that the UE is using,...”, Fig. 5, Fig. 6, paras. [0027] — [0032]).
`
`Rao does not disclose explicitly a determiner that determines whether or not an
`
`encoding system for a codec to be used by the two terminals needs to be limited, based
`
`on the detected connection-target network and the detected codec.
`
`Hurtta et al. in the same or in the similar field of endeavor teach a determiner that
`
`determines whether or not an encoding system for a codec to be used by the two
`
`terminals needs to be limited, based on the detected connection-target network and the
`
`detected codec (“,...performs a mode selection procedure for selecting the same
`
`mode for bidirectional communication between the network elements. The modes
`
`preferably are different codec types, channel-coding schemes,...”, Abstract,
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 8
`
`“,...After having received both the messages, the control means knows both
`
`codec sets supported by the call originating equipment as well as by the call
`
`terminating equipment,....”, Fig. 1, Fig. 2, Fig. 3, Fig. 4, Col. 5, lines 46 — 67, Col.
`
`6, lines 1 — 51). At time the invention was made it would have been obvious to a person
`
`of ordinary skill in the art to modify the teachings of Rao to include the features of a
`
`determiner that determines whether or not an encoding system for a codec to be used
`
`by the two terminals needs to be limited, based on the detected connection-target
`
`network and the detected codec as taught by Hurtta et al. One of ordinary skill in the art
`
`would be motivated to do so for providing a communication system for performing a
`
`mode selection by selecting or negotiating the mode to be used, a method to be
`
`performed in such a communication system, and to a network element capable of mode
`
`selection (as suggested by Hurtta et al., see Col. 1, lines 8 — 2).
`
`Regarding Claim 5, the combined system of Rao and Hurtta et al. discloses,
`
`wherein the first network is a packet exchange network, and the connection-target
`
`network is a circuit switching network, and when the detected codec is a codec utilizing
`
`an encoding system that is not robust against bit errors, the determiner determines that
`
`the encoding system needs to be limited (Hurtta et al. : “,...When the user equipment
`
`3 should not support the selected codec indicated in the Invite message received
`
`from CSCF 2, it preferably sends a message to CSCF 2 informing the latter on
`
`lack of support of the selected codec. Thereupon, the CSCF 2 repeats the codec
`
`selection procedure 4 but now selects another codec different from the first
`
`selected codec,...”, Col. 7, lines 25 — 58,
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 9
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`Regarding Claim 6, the combined system of Rao and Hurtta et al. discloses, the
`
`terminal further comprising: a generator that generates, when it is determined that the
`
`encoding system needs to be limited, signaling for reporting, to a communication
`
`partner terminal, that handover to the connection-target network has been performed or
`
`that the encoding system needs to be limited; and a transmitter that transmits the
`
`signaling to the communication partner terminal (Rao : “,...the eNode-B decides if it
`
`is appropriate to modify the AMR codec mode being used for voice traffic
`
`delivered to a particular UE in the downlink,...”, Fig. 5, paras. [0025[ - [0028];
`
`“,...the eNode-B may also control the AMR codec mode used in the uplink, by
`
`modifying the CMR field of the VolP packets being sent in the downlink to that
`
`UE,...”, Fig. 6, paras. [0029] — [0032]).
`
`Regarding Claim 7, the combined system of Rao and Hurtta et al. discloses,
`
`wherein, when it is determined that the encoding system needs to be limited, a
`
`communication node that exists on a data path of the two terminals generates signaling
`
`for reporting that handover to the connection-target network has been performed or that
`
`the encoding system needs to be limited and transmits the generated signaling to the
`
`communication partner terminal of the terminal (Rao : “,...the eNode-B decides if it
`
`is appropriate to modify the AMR codec mode being used for voice traffic
`
`delivered to a particular UE in the downlink,...”, Fig. 5, paras. [0025[ - [0028];
`
`“,...the eNode-B may also control the AMR codec mode used in the uplink, by
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 10
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`modifying the CMR field of the VoIP packets being sent in the downlink to that
`
`UE,...”, Fig. 6, paras. [0029] — [0032]).
`
`Regarding Claim 8, the combined system of Rao and Hurtta et al. discloses,
`
`wherein upon receiving the signaling, the communication partner terminal transmits an
`
`internal command for limiting the encoding system to an encoder in the communication
`
`partner terminal (Rao : “,...the eNode-B decides if it is appropriate to modify the
`
`AMR codec mode being used for voice traffic delivered to a particular UE in the
`
`downlink,...”, Fig. 5, paras. [0025[ - [0028]; “,...the eNode-B may also control the
`
`AMR codec mode used in the uplink, by modifying the CMR field of the VolP
`
`packets being sent in the downlink to that UE,...”, Fig. 6, paras. [0029] — [0032]).
`
`Regarding Claim 9, the combined system of Rao and Hurtta et al. discloses,
`
`wherein the signaling is included in a real-time transport protocol (RTP) payload header
`
`( Rao : RTP, Fig. 2. Paras. [0021] — [0022]).
`
`Regarding Claim 10, the combined system of Rao and Hurtta et al. discloses,
`
`wherein the signaling is included in a real-time transport protocol control protocol
`
`(RTCP) ( Rao : PDCP layer, RTP/UDO/IP, Fig. 2. Paras. [0021] — [0022]).
`
`Regarding Claim 11, Rao discloses a communication control method that
`
`determines a codec and a codec mode to be used by two terminals that perform
`
`communication in a first network, when one of the two terminals performs handover to a
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 11
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`second network that is different from the first network (“method”, “controlling speech
`
`vocoder rates”, Abstract, “CS voice in UMTS”, “VolP in LTE”, ARM codec, UE,
`
`Fig. 1, paras. [0004] — [0006]), the communication control method comprising:
`
`setting common part for a codec and a codec mode to be used by the two
`
`terminals, the common part being common among information indicating codecs and
`
`codec modes used for communication in the first network, information indicating codecs
`
`and codec modes supported by the one terminal, and information indicating codecs and
`
`codec modes supported by the second network; and generating signaling for requesting
`
`the two terminals to perform changing to the set codec and codec mode to be used by
`
`the two terminals.
`
`The claim subject matters in main body of the Claim 11 are the same and/or
`
`are similar to the limitations as disclosed in Claim 1, same rationale addressed in
`
`Claim 1 for rejection adapts for the rejection of Claim 11.
`
`Regarding Claim 12, Rao. Disclose a communication control method for a
`
`terminal that is included in two terminals that perform communication in a first network
`
`and that performs handover to a network different from the first network (“method”,
`
`“controlling speech vocoder rates”, Abstract, “CS voice in UMTS”, “VolP in
`
`LTE”, ARM codec, UE, Fig. 1, paras. [0004] — [0006]), the communication control
`
`method comprising:
`
`detecting a connection-target network owing to the handover; detecting a codec
`
`used in the connection-target network; determining whether or not an encoding system
`
`for a codec to be used by the two terminals needs to be limited, based on the detected
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 12
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`connection-target network and the detected codec; and transmitting, to an encoder, an
`
`internal command for limiting the encoding system, when it is determined that the
`
`encoding system needs to be limited.
`
`The claim subject matters in main body of the Claim 12 are the same and/or
`
`are similar to the limitations as disclosed in Claim 4, same rationale addressed in
`
`Claim 1 for rejection adapts for the rejection of Claim 12.
`
`Conclusion
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANDREW CHUNG CHEUNG LEE whose telephone
`
`number is (571)272-3131. The examiner can normally be reached on 8:30am--6:00pm.
`
`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, ANDREW LAI can be reached on 571-272-9741. 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
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`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 13
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`
`/ANDREW C LEE/
`
`/ANDREW LAl/
`
`<4Q19::07_07_19>
`
`Examiner, Art Unit 2411
`
`Supervisory Patent Examiner, Art Unit 2411
`
`