UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`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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`16/038,960
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`07/18/2018
`
`Masayuki Hoshino
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`731456.407C2
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`9225
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`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
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`NOORISTANY' SULAIMAN
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`ART UNIT
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`2415
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/26/2019
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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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`017/09 A0170” Summary
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`Application No.
`16/038,960
`Examiner
`SULAIMAN NOORISTANY
`
`Applicant(s)
`Hoshino et al.
`Art Unit
`2415
`
`AIA (FITF) Status
`Yes
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`- 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 3 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
`C] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)Cj This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] 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 Expade 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)
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`15—34 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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`
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`E] Claim(s)s_is/are allowed.
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`Claim(ss) 1_5—34 is/are rejected.
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`E] Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`E] Claim(s
`* 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
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`http://www.jjgptggQV/patentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`is/are: a)D accepted or b)lj objected to by the Examiner.
`11):] The drawing(s) filed on
`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).
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`Priority under 35 U.S.C. § 119
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`12)D 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)l:] All
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`b)C] Some**
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`c)l:] None of the:
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`11:] 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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`3C] 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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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 10/8/19, 7/18/18, 10/23/19_
`U.S. Patent and Trademark Office
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`3) E] 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 20191121
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 2
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`Notice of Pre-AIA or 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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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate
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`where the claims at issue are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e. g., In re Berg,
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`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
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`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
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`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
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`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
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`ground provided the reference application or patent either is shown to be commonly owned with
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`this application, or claims an invention made as a result of activities undertaken within the scope
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`of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.32103).
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 3
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`The USPTO internet Web site contains terminal disclaimer forms which may be used.
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`Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what
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`form should be used. A web—based eTerminal Disclaimer may be filled out completely online
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`using web—screens. An eTerminal Disclaimer that meets all requirements is auto—processed and
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`approved immediately upon submission. For more information about eTerminal Disclaimers,
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`refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD—info—I.j sp.
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`Claims 15-34 are provisionally rejected on the ground of nonstatutory double patenting
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`as being unpatentable over claims 1-14 of Co—Pending Application No. 15158647. Although the
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`claims at issue are identical, they are not patentably distinct from each other because they are
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`same variants of each other.
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`Claim Rejections - 35 US C § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are 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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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 4
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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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`Claim 15-18, 21-28, 31-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Lia0 US 20150092582 in View of Nagata US 20160285569
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`15. A communication apparatus comprising:
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`a receiver, which, in operation, receives first reference signals in a part of resources for
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`second reference signals, the first reference signals being transmitted from one or more cells for
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`cell detection (Liao: fig. 3A, fig. 17 [0078]), and
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`a transmitter, which, in operation, transmits a measurement report indicating a
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`measurement result of reception quality measured using the received first reference signals
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`(Liao: fig. 3A, fig. 17 [0078]),
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`wherein the part of resources for second reference signals are non—transmission resources
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`for the second reference signals (Liao: fig. 3A, fig. 17 [0044]).
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`However, Liao merely discloses the term ”transmits a measurement report”
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`Nagata further teachers wherein transmits a measurement report (fig. 14, unit 203 [0102-
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`106]) in order to make the measurement section measures received quality by using the reference
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`signals transmitted from the radio base station ([0105]).
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`Thus, it would have been obvious to one ordinary skill in the art before the effective
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`filing claim invention to include the above recited limitation into Liao’s in order to make the
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 5
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`measurement section measures received quality by using the reference signals transmitted from
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`the radio base station ([0105]), as taught by the Nagata.
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`16. The communication apparatus according to Claim 15 , wherein the receiver further receives
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`control information indicating the non—transmission resources on which the second reference
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`signals are not transmitted by another communication apparatus (Liao: [0044], Nagata: [0105]).
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`17. The communication apparatus according to Claim 16, wherein the control information
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`indicates the non—transmission resources of a plurality of resources in a time domain and in a
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`frequency domain (Liao: [0044], Nagata: [0105]).
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`18. The communication apparatus according to Claim 16, wherein the control information
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`indicates the non—transmission resources in a subframe (Liao: [0044], Nagata: [0105]).
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`21. The communication apparatus according to Claim 15, wherein the first reference signals are
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`discovery signals (Liao: fig. 3).
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`22. The communication apparatus according to Claim 15 , wherein the second reference signals
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`are Channel State Information Reference Signals (CSI—RS) (Liao: fig. 3).
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`23. The communication apparatus according to Claim 15 , wherein the second reference signals
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`are reference signals for measuring a position of the communication apparatus (Liao: fig. 3).
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 6
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`24. The communication apparatus according to Claim 15, wherein the second reference signals
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`are primary synchronization signals or secondary synchronization signals (Liao: [0037]).
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`Claim 19-20, 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao US
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`20150092582 in View of Nagata US 20160285569 further in View of MatsumotoUS
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`20110032888
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`19. The communication apparatus according to Claim 15, wherein the first reference signals are
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`transmitted over an entire system band (Liao: [0037]).
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`Matsumoto further teaches wherein the first reference signals are transmitted over an
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`entire system band (Matsumoto: fig. 1—2) in order to reduce the deterioration of the accuracy of
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`CQI estimation due to bands in which SRSs are not transmitted while preventing interference
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`between SRSs and PUCCHs in cases where the PUCCH transmission bandwidth varies in
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`narrowband SRS transmission ([0015])
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`Thus, it would have been obvious to one ordinary skill in the art before the effective
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`filing claim invention to include the above recited limitation into Liao’s in order to reduce the
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`deterioration of the accuracy of CQI estimation due to bands in which SRSs are not transmitted
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`while preventing interference between SRSs and PUCCHs in cases where the PUCCH
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`transmission bandwidth varies in narrowband SRS transmission ([0015]), as taught by the
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`Matsumoto.
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 7
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`20. The communication apparatus according to Claim 15, wherein the first reference signals are
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`transmitted over a bandwidth which is narrower than an entire system band (Matsumoto: fig. 1-
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`2).
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`Regarding Claims 25 —34, the independent claim and each dependent claim are related to the
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`same limitation set for hereinabove in claims 15—24, where the difference used is a “method” and
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`the wordings of the claims were interchanged within the claim itself or some of the claims were
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`presented as a combination of two or more previously presented limitations. This change does
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`not affect the limitation of the above treated claims. Adding these phrases to the claims and
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`interchanging the wording did not introduce new limitations to these claims. Therefore these
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`claims were rejected for similar reasons as stated above.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Sulaiman Nooristany whose telephone number is 571—270—
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`1929. The examiner can normally be reached on Monday thru Friday: 8:30am to 5:00pm (EST).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff
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`Rutkowski can be reached on 571—270—1215. The fax phone number for the organization where
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`this application or proceeding is assigned is 571—273—8300. Information regarding the status of an
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`application may be obtained from the Patent Application Information Retrieval (PAIR)
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`system. Status information for published applications may be obtained from either Private PAIR
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`or Public PAIR. Status information for unpublished applications is available through Private
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`PAIR only. Should you have questions on access to the Private PAIR system, contact the
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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 8
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`Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would like assistance from
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`a USPTO Customer Service Representative or access to the automated information system, call
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`800-786-9199 (IN USA OR CANADA) or 571—272—1000.
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`ISULAIMAN NOORISTANY/
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`Primary Examiner, Art Unit 2415
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`