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
`
`15/232,409
`
`08/09/2016
`
`Akihiko NISHIO
`
`733456.548C1
`
`7693
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
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`LI'NING
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`PAPER NUMBER
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`ART UNIT
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`2415
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/15/2019
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`ELECTRONIC
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`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
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`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
`
`Application No.
`15/232,409
`Examiner
`NING Ll
`
`Applicant(s)
`NISHIO et al.
`Art Unit
`2415
`
`AIA 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
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`1). Responsive to communication(s) filed on 1/15/2019.
`[: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*
`5)
`Claim(s)
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`1,4—9,12—17 and 20—27 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) 1,4—9,12—17 and 20—27 is/are rejected.
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`[:1 Claim(s)
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`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 aflowabte. 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.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 8/9/2016 is/are: a). accepted or b)D objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)D Some”
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`C)D 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 20190208
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
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`Page 2
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`DETAILED ACTION
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`This Office Action is in response to claims filed on 1/15/2019.
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`Claims 2-3, 10-11 and 18-19 have been cancelled, claims 25-27 have been added.
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 1/ 15/2019 has been entered.
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`Terminal Disclaimer
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`The terminal disclaimer for patent number 9,451,589 has been filed and approved.
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Claim Rejections - 35 US C § 103
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`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(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.
`
`

`

`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`Page 3
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under pre—
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`AIA 35 U.S.C. 103(a) 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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`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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`Claims 1: 4'5: 7'9: 12-13: 15-17: 20-21 and 23-27 are rejected under pre—AIA 35 U.S.C.
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`1031a] as being unpatentable over Marinier et al. [US 2013/0003788 A1]; in view of Fong et al.
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`[WO 2011/041754 A1]; and in further view of Fong2 et al. [US 2013/0039203 A1].
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`Regarding claims 1, 9 and 17; Marinier discloses receiving, by Radio Resource Control
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`(RRC) signaling (the transmission points (or corresponding reference signals such as CSl—RS)
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`that are part of each subset is transmitted to a UE via RRC signaling; see paragraphs [0058],
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`[0066], [0075], [0299]), a Channel State Information Reference Signal (CSI-RS) candidate list,
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`wherein the CSI—RS candidate list indicates CSI-RS configuration information (the WTRU may
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`be configured with a list of transmission points, CSl—RS or TP—RS to measure; the configuration
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`may include at least one subset of CSl—RS configuration which correspond to a list of CSI—RS;
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`see paragraphs [0298], [0311], [0317], [0323]), determines CSI-RS resource information of a
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`measurement target based on the CSI—RS candidate list, and measures a reception based on the
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`determined CSI—RS resource information (a WTRU may estimate a received signal strength
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`Page 4
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`(RSRP) and/or quality (RSRQ) and/or path loss of a subset of transmission points of a certain
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`cell based on measuring the CSI—RS reference signal(s) for a subset of transmission points; the
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`configuration may include at least one subset of CSl—RS configuration, which may correspond to
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`a list of CSl—RS that related to the serving cell; see paragraphs [0294]—[0298]).
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`Marinier discloses a WTRU reports RSRP or RSRQ values to the eNB (see paragraph
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`[0297]).
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`Marinier does not explicitly disclose a WRTU a reporting condition reports the
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`measurement when the measurement is greater than a pre—configured threshold.
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`Fong discloses receiving a reporting condition (to trigger measurement reporting from a
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`UE, the eNB may configure one or more measurement identities for a UE; each measurement
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`identity is associated with a reporting configuration such as RSRP/RSRQ threshold; see
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`paragraph [0087]), reporting a result of the reception power measurement when the result of the
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`reception power measurement is greater than a threshold included in the reporting condition (a
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`UE can include a cell in the measurement report if the received (measured) signal strength (e. g.
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`RSRP, RSRQ) is higher than a threshold configured by the eNB; see paragraphs [0125]—[0126]).
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to combine the teachings of Marinier and Fong to report the reception power
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`measurement in order to avoid triggering excessive measurement reports and signaling overhead
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`(see paragraph [0051] of Fong).
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`Marinier discloses a WTRU estimates RSRP or RSRQ values based on measuring the
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`CSl—RS reference signal(s); and the CSl—RS configuration may corresponding to a list of CSl—RS
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`that related to the serving cell (see paragraphs [0294]—[0298]).
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`Page 5
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`Fong2 discloses wherein the CSI-RS candidate list, received by the RRC signaling, is
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`included in a measurement object for measurement using cell specific reference signals (CRSs)
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`that are pre-defined (for legacy Rel—8 UEs, some of the available CRS RE resources can be used
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`for CSl—RS transmission; the list of strongest interfering neighboring cells of a cell can be
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`constructed based upon UEs measurement reports such as RSRP/RSRQ; see paragraphs[0085]—
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`[0086] and [0099]—[0104]).
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to combine the teachings of Marinier, Fong and Fong2 to include CSl—RS in a
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`measurement object for measurement using CRS in order to reuse available REs in previous LTE
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`release (pre—defined) (see paragraph [0101]).
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`Specifically for claim 1; Marinier discloses a receiver (transceiver; see Fig. 1B),
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`circuitry, which is coupled to the receiver (processor; see Fig. 1B) and a transmitter, which is
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`coupled to the circuitry (transceiver; see Fig. 1B).
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`Regarding claims 4, 12 and 20; Marinier discloses measures a reception quality based
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`on the determined CSI—RS resource information (a WTRU may estimate a received signal
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`strength (RSRP) and/or quality (RSRQ) and/or path loss of a subset of transmission points of a
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`certain cell based on measuring the CSl—RS reference signal(s) for a subset of transmission
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`points; see paragraphs [0294]—[0298]); and the transmitter reports the measured reception
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`quality (the WTRU may report RSRP or RSRP values of some or each transmission point of a
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`same and/or different cell(s); see paragraph [0297]).
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`Page 6
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`Regarding claims 5, 13 and 21; Marinier discloses wherein the CSI—RS candidate list
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`indicates CSI—RS configuration information of one or more transmission points selected from a
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`plurality of transmission points in a macro cell (the WTRU may be configured to measure the
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`CSI—RS transmitted from the macro eNB and the CSI—RS transmitted from at least one of the
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`remote radio heads; see paragraph [0337]).
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`Regarding claims 7, 15 and 23; Marinier discloses wherein the reception power is a
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`reference signal reception power (RSRP) (the WTRU may report RSRP or RSRQ values of some
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`or each transmission point of a same and/or different ce11(s); see paragraph [0297]).
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`Regarding claims 8, 16 and 24; Marinier discloses wherein the transmitter, in operation,
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`transmits channel state information (CSI) (the WTRU may also report CSI; see paragraph
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`[0079]).
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`Regarding claims 25-27; Marinier discloses a WTRU estimates RSRP or RSRQ values
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`based on measuring the CSI—RS reference signal(s); and the CSI—RS configuration may
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`corresponding to a list of CSI—RS that related to the serving cell (see paragraphs [0294]—[0298]).
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`Fong2 discloses wherein the CRSs are pre- defined in at least one of3GPP Release 8 (for
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`legacy Rel—8 UEs, some of the available CRS RE resources can be used for CSI—RS
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`transmission; see paragraph [0101]), Release 9, and Release 10 standards (no patentable weight
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`is given to other elements due to the claim language at least one of).
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to combine the teachings of Marinier, Fong and Fong2 to include CSI—RS in a
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`Page 7
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`measurement object for measurement using CRS in order to reuse available REs in previous LTE
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`release (see paragraph [0101]).
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`Claims 6, 14 and 22 are rejected under p_re—AIA 35 U.S.C. 1031a) as being unp_atentable
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`over Marinier' in view of Fon ' in view of Fon 2' and in further view of Ki'un Kim et al. WO
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`2011/115421 )2 hereinafter Kim.
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`Regarding claims 6, 14 and 22; Marinier discloses one or more of CSI—RS candidates in
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`the CSI-RS candidate list (the configuration may include at least one subset of CSI—RS
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`configuration, which may correspond to a list of CSI—RS; see paragraph [0298]).
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`Kim further discloses the CSI-RS configuration information includes at least one of a
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`time resource position and a frequency resource position in a subframe (resourceConfig) of one
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`or more CSI—RS candidates (the CSI—RS configuration may specify the time—frequency positions
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`of CSI—RS REs in the downlink subframe; see lines 11—36 of page 36 and Fig. 8).
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to combine the teachings of Marinier, Fong, Fong2 and Kim to specify time—frequency
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`positions in a subframe in a CSI—RS configuration in order to efficiently and accurately measure
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`and report CSI using CSI—RS configuration (see lines 15 —22 of page 6).
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`Response to Arguments
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`Applicant’s arguments with respect to claim 1 have been considered but are moot in view
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`of a new reference Fong2 et al. (US 2013/0039203 A1) being used in the current rejection.
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
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`Page 8
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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 NING LI whose telephone number is (571)270—0624. The
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`examiner can normally be reached on Monday, Tuesday, Thursday 8:30am — 5:00pm.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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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, Jeffrey Rutkowski can be reached on (571) 270—1215. 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
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`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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`
`/N.L/
`
`Examiner, Art Unit 2415
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`

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`Application/Control Number: 15/232,409
`Art Unit: 2415
`
`/JEFFREY M RUTKOWSKI/
`
`Supervisory Patent Examiner, Art Unit 2415
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`Page 9
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