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
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`15/818,574
`
`11/20/2017
`
`HIROSHI TAKAHASHI
`
`731456.459
`
`1022
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
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`SCHEIBEL' ROBERT C
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`ART UNIT
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`2467
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/18/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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
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`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`15/818,574
`Examiner
`Robert C Scheibel
`
`Applicant(s)
`TAKAHASHI et al.
`Art Unit
`AIA (FITF) Status
`2467
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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).
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`Status
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`1). Responsive to communication(s) filed on 07 May 2019.
`[: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.
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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)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowable. 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
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`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.
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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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`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
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190610
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 2
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`DETAILED ACTION
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`0 Examiner acknowledges receipt of Applicant’s Amendment filed 5/7/2019.
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`0 Claims 1—5 are currently amended.
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`0 New claim 6 has been added.
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`0 Claims 1—6 are currently pending.
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`Notice ofPre-AIA 0r AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Examiner ’ Note
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`Examiner recommends the following to move prosecution forward in this application. As
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`noted below, the prior art rejections for all claims besides claim 4 are withdrawn herein.
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`However, the amended claims are rejected under 35 U.S.C. 101 and 35 U.S.C. 112.
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`Regarding independent claim 1, Examiner recommends adding the subject matter of
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`claim 6 in addition to a limitation indicating how the claimed “number” is transmitted from the
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`base station to the wireless terminal and indicating how the number is used by the wireless
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`terminal when transmitting the training packets. Independent claims 2 and 5 should be similarly
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`amended. Independent claim 4 should be amended to add the allowable subject matter from
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`claim 1 (the determining function and the associated transmission of the determined number to
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`the base station) as well as the above amendments to claim 1.
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`Examiner welcomes an interview to clarify any of these issues prior to filing a response
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`to this Office Action.
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 3
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`Response to Arguments
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`Examiner has fully considered Applicant’s arguments, see page 6, filed 5/7/2019, with
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`respect to the objection to the title and they are persuasive. Examiner has withdrawn the
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`objection to the title.
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`Examiner has fully considered Applicant’s arguments, see page 6, filed 5/7/2019, with
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`respect to the objections to claims 2 and 3 and they are persuasive. Examiner has withdrawn the
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`objections to claims 2 and 3.
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`Examiner has fully considered Applicant’s arguments, see pages 7—10, filed 5/7/2019,
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`with respect to the rejection of claims 1, 5, and 6 under 35 U.S.C. 103 and they are persuasive.
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`Examiner has withdrawn the rejection of claims 1, 5, and 6 under 35 U.S.C. 103.
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`Examiner has fully considered Applicant’s arguments, see pages 10—12, filed 5/7/2019,
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`with respect to the rejection of claim 4 under 35 U.S.C. 103 and they are persuasive. Examiner
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`has withdrawn the rejection of claim 4 under 35 U.S.C. 103. However, a new ground of
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`rejection in view of U.S. Patent Application Publication 2017/0111806 to Roh et al has been
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`introduced below.
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`Claim Rejections - 35 US C § 112
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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:
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 4
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`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.
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`Claims 4and 6 are refected under 35 US. C. 112(b) or 35 U.S.C. 112 (gre-AIA)z second
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`ara ra h as bein inde nite or ailin to articularl
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`oint out and distinctl claim the
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`sabfect matter which the inventor or a foint inventorz or for Qre-AIA the aQQlicant regards as the
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`invention.
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`Claim 4 states “a receiving circuit—that which, in operation, receives a Qluralifv of
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`training Qackets with an omnidirectional beam Qattern transmitted from a wireless terminal that
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`is not connected” (emphasis added). Claim 4 further states “after receiving a first training
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`Qacket of the plurality of training packets by using the omnidirectional beam Qattern, the
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`receiving circuit switches a beam Qattern to a directional beam Qattern to receive the training
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`Qackets following the first training Qacket” (emphasis added). Thus the claim indicates that a
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`lurali
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`o trainin
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`ackets are received with an omnidirectional beam pattern Ml that only the
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`first training Qacket (of the plurality of training packets) is received with an omnidirectional
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`beam pattern. Only one of these can be true and thus the claim is indefinite.
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`Regarding claim 6, the wireless terminal transmits “the plurality of training packets”.
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`Further, the number training packets to be transmitted by the wireless terminal was determined in
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`claim 1 by the “base—station control device”. However, claim 6 does not indicate how the
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`wireless terminal obtains the number of packets to be transmitted. In the specification, this is
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`implemented in step S 15 of Figure 10A, for example. This step should be added to the claims to
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`clarify how the wireless terminal determines this number prior to transmitting the training
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`packets.
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 5
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`Claim Rejections - 35 US C § 101
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`35 USC. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
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`Claims 1-3, and 5 are rejected under 35 USC. 101 because the claimed invention is
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`directed to an abstract idea without significantly more. The claims recite the abstract idea of
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`determining a number, which is a mental process. Specifically, claim 5 is directed towards a
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`control method for “determining a number of training packets” based on “comparing. .
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`. a number
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`M. .
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`. and a number S...” and can clearly be performed in the mind. This judicial exception is not
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`integrated into a practical application because the claim comprises the abstract idea (the
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`determining step) and insignificant extra—solution activity (the issuing step). The issuing step
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`merely transmits the determined number to a second apparatus, but does not meaningfully utilize
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`the determined number. Claim 1 is directed to an apparatus comprising two circuits for
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`implementing similar functional steps to those described above regarding the method of claim 5.
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`The claims do not include additional elements that are sufficient to amount to significantly more
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`than the judicial exception because the claims include only the abstract idea and insignificant
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`extra— solution activity.
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`Claim 2 is similar to claim 1, but adds additional detail to the way the number is
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`determined. Specifically, claim 2 provides detail regarding how the “comparing” limitation is
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`implemented. However, this does not integrate the abstract idea into a practical application.
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`Further, claim 2 has the same notification issuing circuit as an additional limitation to the
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`abstract idea (determining). As noted in the analysis above, this insignificant extra—solution
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 6
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`activity does not modify the claim to be significantly more than the abstract idea. Claim 2 is thus
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`similarly rejected under 35 U.S.C. 101.
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`Claim 3 depends from claim 2 and provides a further limitation on the implementation of
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`the determining function. Claim 3 is thus similarly rejected under 35 U.S.C. 101.
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`Claim Rejections - 35 US C § 103
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`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, 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.
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`Claim 4 is rejected under 35 US. C. 103 as being unQatentable over US. Patent
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`Application Publication 2017/0033854 t0 Y00 et al in view of US. Patent Application
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`Publication 20] 7/0111806 to Rob et al.
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`Regarding claim 4, Yoo discloses a base-station apparatus, comprising:
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 7
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`a receiving circuit (Receiver modem 825 and RF unit 820, Fig. 8 and 10, para. 0091 and
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`0095) which, in operation, receives a plurality of training packets transmitted from a wireless
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`terminal that is not connected (The beam tracking target BS 416 (base—station apparatus) may
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`estimate the best BS reception beam and the best MS transmission beam using the beam training
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`signal (training packet) received from MS 400 (para. 0075). Determining the best transmission
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`beam using the beam training signal shows that there are a plurality of training beams
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`transmitted from wireless terminal MS 400. MS 400 is not connected to BS 416, which has been
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`identified as a possible handover target (see para. 0077)); and
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`a reception-quality determining circuit (Beam measurement (BM) slot receiver 1010,
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`Fig. 10, para. 0095) that determines reception qualities of the received training packets (Target
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`BS 416 estimates its best reception beams and the best MS transmission beams using the beam
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`training signals received from the MS 400 (para. 0075 and 0077)),
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`the reception-quality determining circuit (Beam measurement (BM) slot receiver 1010,
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`Fig. 10, para. 0095 ) determines reception qualities of the training packets received using the
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`directional beam pattern (As discussed above, target BS 416 estimates its best reception beams
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`and the best MS transmission beams using the beam training signals received from the MS 400
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`(para. 0075 and 77). As seen in Fig. 4g—i, the beam training signals are received using directional
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`beam patterns).
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`Yoo does not explicitly disclose the limitations that the receiving circuit receives the
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`plurality of training packets with an omnidirectional beam pattern or the limitation that after
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`receiving a first training packet of the plurality of training packets by using an
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`omnidirectional beam pattern, the receiving circuit switches a beam pattern to a directional
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`beam pattern to receive the training packets following the first training packet (Yoo discloses,
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 8
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`the receiving circuit and receiving a plurality of beam training signals but does not disclose if an
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`omnidirectional beam pattern is used).
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`However, Roh discloses a system that improves beamforming performance by reducing
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`the overhead required via a scheme such as that illustrated in Figure 3. Roh discloses using an
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`omnidirectional beacon followed by directional beacons/training packets to identify the best
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`beams between two devices. For example, in paragraph 0091, Roh discloses that the receiver
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`(STA) receives a beacon signal omni—directionally and then receives a sequence of training
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`packets using each of a plurality of (directional) beam patterns. The beacon provides
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`information regarding the timing of the directional training packets (such as the interval duration,
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`etc. — see Figure 5), and as such, is also reasonably interpreted as a training packet.
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`It would have been obvious to one of ordinary skill in the art, before the effective filing
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`date of the claimed invention, to modify the training packet procedure of Yoo to include an
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`omni—directional beacon, followed by the directional training packets as taught in Figure 3 of
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`Roh. The rationale for doing so would have been to reduce the overhead associated with
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`beamforming as disclosed throughout Roh (see paragraphs 0075—0077 and 0085, for example).
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`0 U.S. Patent Application Publication 2017/0317727 to Wang et al discloses a method of
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`multi—user multiple—input multiple—output (MU—MIMO) operation and user selection.
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`0 U.S. Patent Application Publication 2017/0111099 Jo et al discloses a method of multiple
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`beamforming training.
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`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
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`Page 9
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`0 US. Patent Application Publication 2019/0174328 to Park et al discloses a signal
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`transmission/reception method in a wireless LAN system.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Robert C Scheibel whose telephone number is (571)272—3169.
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`The examiner can normally be reached on Monday—Friday 8:00 AM — 5:00 PM.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Hassan A Phillips can be reached on 571—272—3940. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`
`Robert C. Scheibel
`
`Primary Examiner
`Art Unit 2467
`
`

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`Application/Control Number: 15/818,574
`Art Unit: 2467
`
`/ROW (2 W/
`
`Primary Examiner, Art Unit 2467
`June 12, 2019
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`Page 10
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