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
`
`15/807,202
`
`11/08/2017
`
`Seigo Nakao
`
`733456.410C6
`
`7284
`
`Seed IP Law Group LLP/Panason1e
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`CHOWDHURY' HARUN UR R
`
`ART UNIT
`
`2473
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/16/2019
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`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.
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`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)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/807,202
`Examiner
`HARUN U CHOWDHURY
`
`Applicant(s)
`Nakao et al.
`Art Unit
`2473
`
`AIA (FITF) Status
`No
`
`- 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 04/29/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] 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.
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`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.
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`Disposition of Claims*
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`5)
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`Claim(s) fl 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) _ is/are allowed.
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`Claim(s) 1—3,5—11 and 13—16 is/are rejected.
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`Claim(s) 4 and 12 is/are objected to.
`
`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp 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)C] accepted or b)Ej 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)C] 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)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`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)
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`2) D 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 20190710
`
`

`

`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Status of Claims
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`2.
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`3.
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`Claims 1-16 are pending wherein claims 1 and 9 are in independent form.
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`Rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph
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`are withdrawn.
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`4.
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`In view of the terminal disclaimer filed on 04/29/2019, double patenting rejections
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`are withdrawn.
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`Priority
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`5.
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`Acknowledgment is made of applicant's claim for foreign priority based on an
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`application filed in Japan (JP) on 10/01/2007. It is noted, however, that applicant
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`has not filed a certified copy of the 2007-257764 application as required by 37
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`CFR 1.55.
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`Terminal Disclaimer
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`6.
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`The terminal disclaimer filed on 04/29/2019 disclaiming the terminal portion of
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`any patent granted on this application which would extend beyond the expiration
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`date of US patent numbers 9479319, 9843407 has been reviewed and is
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`accepted. The terminal disclaimer has been recorded.
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`

`

`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 3
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`Response to Arguments
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`7.
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`Applicant's arguments regarding rejections under 35 U.S.C. 102(9) and 35
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`U.S.C. 103(a) have been fully considered but they are not persuasive. The
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`reasons set forth below.
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`8.
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`On page 3 of the remarks, applicant argues “Kim is based on a PCT application
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`filed on September 12, 2008 and thus postdates the earliest priority date of the
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`present application (October 1I 2007). Kim claims priority to US. Provisional
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`Application No. 60/972,255 (hereinafter “Provisional Application of Kim”) filed on
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`September 14, 2007. Applicant submits that Kim is prior art to the extent subject
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`matter is disclosed by the Provisional Application of Kim.”
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`In response, examiner respectfully disagrees because:
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`The foreign priority date (October 1, 2007) is not the effective filing date of the
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`application until a certified copy of the priority document and an English
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`translation of the priority document are received. Applicant did not submit the
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`certified copy of the priority document and English translation of the priority
`
`document. Therefore, the earliest filing date/effective filing date of the application
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`is September 30, 2008. The PCT filing date of the Kim reference is September
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`12, 2008 and therefore, Kim is a prior art with respect to the earliest filing date of
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`the application (September 30, 2008).
`
`Applicant requires to submit a certified copy of the foreign priority
`
`application along with an English translation of the foreign application to
`
`overcome this rejection. Applicant cannot rely upon the certified copy of the
`
`foreign priority application to overcome this rejection because a translation of
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`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
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`Page 4
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`said application has not been made of record in accordance with 37 CFR 1.55.
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`See MPEP §§ 215 and 216.
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`Therefore, in view of above reason, examiner maintains the rejection.
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`Claim Rejections - 35 USC § 102
`
`9.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
`
`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 —
`(e) the invention was described in (1) an application for patent, published under section
`122(b), by another filed in the United States before the invention by the applicant for patent or
`(2) a patent granted on an application for patent by another filed in the United States before
`the invention by the applicant for patent, except that an international application filed under
`the treaty defined in section 351 (a) shall have the effects for purposes of this subsection of an
`application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`10.
`
`Claims 1, 2, 7-10, 15, 16 are rejected under pre-AIA 35 U.S.C. 102(e) as being
`
`anticipated by Kim et al (US 20100142475 A1, hereinafter referred to as Kim).
`
`Re claim 1, Kim teaches a device (Base station) (Fig. 1-2, Par 0028-
`
`0034), comprising:
`
`(i) a transmitter (BS transmits data to UE and thus, it is evident that the BS has a
`
`transmitter to transmit data to the UE), which, in operation, transmits data to a
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`terminal (UE) (Fig. 1-2, Par 0028-0034); and
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`(ii) a receiver (BS receives ACK/NACK/CQI from UE and thus, it is evident that
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`the BS has a receiver to receive ACK/NACK/CQI from the UE), which, in
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`operation, receives, from the terminal, an acknowledgement/negative
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`acknowledgement (ACK/NACK) signal for the data (Fig. 1-2, Fig. 7, Fig. 9, Par
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`0028-0034, Par 0051 -0056, Par 0059-0062),
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`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
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`Page 5
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`(iii) the ACK/NACK signal (modulation symbol d(0)) being multiplied with a
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`sequence defined by a cyclic shift value (cyclically shifted sequence r(n,a))
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`having a cyclic shift index (cyclic shift index “a”), which is within a first subset
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`including N number of one or more cyclically continuous indexes (first eight CS
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`indices (1 to 8) are allocated for ACK/NACK as disclosed in table 7-8), the first
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`subset (first eight CS indices for ACK/NACK as disclosed in table 7-8) being
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`mutually exclusive with a second subset that includes one or more indexes used
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`for a channel quality indicator (CQI) signal (CS indices 10-12 for CQI as
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`disclosed in table 7, CS indices 10, 11 for CQI as disclosed in table 8) where the
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`first subset and the second subset are in a set of indexes (CS indices disclosed
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`in table 7-8), and N (CS indices for ACK/NACK) being applicable in two
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`consecutive slots (CS indices are applicable in two consecutive slots as
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`disclosed in Fig. 9) (Fig. 7-9, Fig. 11-14, Par 0051-0056, Par 0059-0062, Par
`
`0086, Par 0090, Par 0096-0102, Par 0115-0121).
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`Claim 9 recites a method performing the steps recited in claim 1 and
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`thereby, is rejected for the reasons discussed above with respect to claim 1.
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`Re claims 2, 10, Kim teaches that the receiver, in operation, receives the
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`multiplied ACK/NACK signal using a mixed RB as shown in Fig. 7) supporting a
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`mix of the multiplied ACK/NACK signal and the CQI signal that is transmitted
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`from another terminal (Fig. 7-9, Par 0051-0056, Par 0059-0062, Par 0084-0086,
`
`Par 0096-0108).
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`Re claims 7, 15, Kim teaches that the set of indexes consists of twelve
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`integers (Fig. 9, Par 0060-0062, Par 0096-0102).
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`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 6
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`Re claims 8, 16, Kim teaches that N is less than twelve (Fig. 9, Par 0060-
`
`0062, Par 0096-0102).
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`Claim Rejections - 35 USC § 103
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`11.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`12.
`
`Claims 3, 5, 6, 11, 13, 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Kim as applied to claim 1 above and further in view of Shen et al (US
`
`20080316957 A1 , hereinafter referred to as Shen).
`
`Re claims 3, 11, Kim teaches that N (CS indices for ACK/NACK) being
`
`applicable in two consecutive slots (CS indices are applicable in two consecutive
`
`slots as disclosed in Fig. 9) (Par 0059-0062).
`
`Kim does not explicitly disclose that the cyclic shift index is calculated
`
`based on a first value and a second value, the first value being calculated based
`
`on a symbol number and a cell identity, the second value being calculated based
`
`on a slot number and a resource index of a physical uplink control channel
`
`(PUCCH) allocated to the terminal, the second value being one of N number of
`
`one or more values.
`
`Shen teaches that the cyclic shift index is calculated based on a first value
`
`and a second value, the first value being calculated based on a symbol number
`
`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
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`Page 7
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`and a cell identity, the second value being calculated based on a slot number
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`and a resource index of a physical uplink control channel (PUCCH) allocated to
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`the terminal, the second value being one of N number of one or more values,
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`(Cyclic shift is selected for ACK/NACK based on cell identity, ACK/NACK
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`resource index, OFDM symbol number, slot number) (Fig. 6, Table 2-8, Par
`
`0023, Par 0031 -0033, Par 0046-0050, Par 0060-0065).
`
`It would have been obvious to one of ordinary skill in the art at the time of
`
`invention to modify Kim by including the feature that the cyclic shift index is
`
`calculated based on a first value and a second value, the first value being
`
`calculated based on a symbol number and a cell identity, the second value being
`
`calculated based on a slot number and a resource index of a physical uplink
`
`control channel (PUCCH) allocated to the terminal, the second value being one
`
`of N number of one or more values, as taught by Shen for the purpose of
`
`reducing signaling overhead in a wireless communication system, as taught by
`
`Shen (Par 0002, Par 0017).
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`Re claims 5, 13, Kim teaches that cyclic shift value between consecutive
`
`slots varies (CS value in the first slot is different than the CS value in the second
`
`slot, Fig. 9) (Par 0059-0062).
`
`Kim does not explicitly disclose a difference in the cyclic shift value
`
`between consecutive slots varies among resource indexes of a physical uplink
`
`control channel (PUCCH).
`
`Shen teaches that a difference in the cyclic shift value between
`
`consecutive slots varies among resource indexes of a physical uplink control
`
`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 8
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`channel (PUCCH) (CS selected based on the slot number and ACK/NACK
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`resource index) (Fig. 6, Table 2-8, Par 0023, Par 0031-0033, Par 0046-0050, Par
`
`0060-0065).
`
`It would have been obvious to one of ordinary skill in the art at the time of
`
`invention to modify Kim by including the feature that a difference in the cyclic
`
`shift value between consecutive slots varies among resource indexes of a
`
`physical uplink control channel (PUCCH), as taught by Shen for the purpose of
`
`reducing signaling overhead in a wireless communication system, as taught by
`
`Shen (Par 0002, Par 0017).
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`Re claims 6, 14, Kim teaches that the cyclic shift value is
`
`changed between symbols, wherein a difference in the cyclic shift value between
`
`the symbols is common in a cell (a base station), and the cyclic shift value is
`
`changed between consecutive slots (Fig. 9, Par 0051 -0057, Par 0059-0062, Par
`
`0090, Par 0096-0108, Par 0120-0121).
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`Kim does not explicitly disclose that a difference in the cyclic shift value
`
`between consecutive slots varies among resource indexes of a physical uplink
`
`control channel (PUCCH).
`
`Shen teaches that a difference in the cyclic shift value between
`
`consecutive slots varies among resource indexes of a physical uplink control
`
`channel (PUCCH) (CS selected based on the slot number and ACK/NACK
`
`resource index) (Fig. 6, Table 2-8, Par 0023, Par 0031-0033, Par 0046-0050, Par
`
`0060-0065).
`
`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 9
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`It would have been obvious to one of ordinary skill in the art at the time of
`
`invention to modify Kim by including the feature that a difference in the cyclic
`
`shift value between consecutive slots varies among resource indexes of a
`
`physical uplink control channel (PUCCH), as taught by Shen for the purpose of
`
`reducing signaling overhead in a wireless communication system, as taught by
`
`Shen (Par 0002, Par 0017).
`
`Allowable Subject Matter
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`Claims 4, 12 are objected to as being dependent upon a rejected base
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`claim, but would be allowable if rewritten in independent form including all of the
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`limitations of the base claim and any intervening claims.
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
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`time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire
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`THREE MONTHS from the mailing date of this action.
`
`In the event a first reply is
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`filed within TWO MONTHS of the mailing date of this final action and the advisory
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`action is not mailed until after the end of the THREE-MONTH shortened statutory
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`period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action.
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`In no event, however, will
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`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
`
`Page 10
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`the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from
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`the examiner should be directed to HARUN UR R CHOWDHURY whose
`
`telephone number is (571)270-3895. The examiner can normally be reached on
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`
`Examiner interviews are available via telephone, in-person, and video
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`
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`Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
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`examiner’s supervisor, Kwang B Yao can be reached on 5712723182. The fax
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`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
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`the Patent Application Information Retrieval (PAIR) system. Status information
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`PAIR. Status information for unpublished applications is available through
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`

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`Application/Control Number: 15/807,202
`Art Unit: 2473
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`Page 11
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`Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA) or 571-272—1000.
`
`/HARUN CHOWDHURY/
`
`Examiner, Art Unit 2473
`
`