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
`
`15/551,248
`
`08/15/2017
`
`Osamu KATO
`
`731156.639USPC
`
`6735
`
`Seed IP Law Group LLP/Panason1e
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`GUADALUPE CRUZ” AIXA AMYR
`
`ART UNIT
`
`2466
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/04/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/551 ,248
`Examiner
`Aixa A Guadalupe-Cruz
`
`Applicant(s)
`KATO, Osamu
`Art Unit
`2466
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 7/16/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—18 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on See Continuation Sheet is/are: a). accepted or b)l:j objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)D Some**
`
`c)D None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`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-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190924
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 15/551 ,248
`
`Continuation of Application Papers 11): 8/15/2017
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been Withdrawn pursuant to
`
`37 CFR 1.114. Applicant's submission filed on 7/ 16/2019 has been entered.
`
`3.
`
`Claims 1—18 are pending.
`
`Response to Arguments
`
`4.
`
`5.
`
`Applicant’s amendments and remarks filed 7/16/2019 have been fully considered.
`
`It is noted that Applicant points to paragraphs 0156, 0157, 0159, 0160, and 0171 for
`
`support of the amendments. However, it is noted that the specification as filed has only 141
`
`paragraphs, and the published application, although it contains 0173 paragraphs, the paragraphs
`
`of the numbers listed do not appear to provide any support for the amendments.
`
`6.
`
`It is also respectfully submitted that Applicant’s remarks are not fully responsive.
`
`Applicant does not provide any explanation as to how exactly the claims as amended are
`
`distinguished from the prior art. Namely, how does Kim fail to teach every limitation as
`
`amended.
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 3
`
`7.
`
`With regards to the amendments, for example, claims 1 and 5, have been amended to
`
`recite “operable in a heterogeneous network including a first radio communication system of a
`
`first communication operator including a plurality of first radio base stations, and a second radio
`
`communication system of a second communication operator including a plurality of second radio
`
`base stations, wherein a frequency band for use in communication of user data is at least partially
`
`shared by the first communication operator and the second communication operator different
`
`from the communication operator, and the radio communication terminal subscribes to the first
`
`communication operator but not to the second communication operator” in the preamble of the
`
`claims. This recitation has not been given patentable weight because the recitation occurs in the
`
`preamble. A preamble is generally not accorded any patentable weight where it merely recites
`
`the purpose of a process or the intended use of a structure, and where the body of the claim does
`
`not depend on the preamble for completeness but, instead, the process steps or structural
`
`limitations are able to standalone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and
`
`Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In general, this recitation
`
`is believed to merely describe known operations of a heterogeneous network. For example, in the
`
`known definition of a heterogeneous network, it is a network connecting computers and other
`
`devices with different operating systems and/or protocols. In the Kim reference, it is described a
`
`terminal and method of operating a terminal in a heterogeneous network, wherein there is a first
`
`operator and a second operator, as seen from master base station, micro base stations, and
`
`remote/MTC stations (see figs. 1, 5; paragraphs 0054—0055). Thus, this is believed to be met by
`
`the prior art.
`
`8.
`
`Claims 1 and 5 have also been amended to recite the limitation “in response to
`
`communication history of the radio communication terminal corresponding to the acquired
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 4
`
`location information with one of the first radio base stations satisfying a defined condition,
`
`determines said first radio base station as a connection base station, without taking into account
`
`communication history of the second radio base stations of the second communication operator”.
`
`This added limitation is believed to be met by the prior art. Namely, in Kim a cell is selected for
`
`serving the terminal when the cell meets a condition. For example, a cell stay time (or a time
`
`spent by the terminal on a determined cell) may be considered “a defined condition”, and this
`
`condition determines that the terminal will be serviced by either a macro cell or a micro cell.
`
`This is regardless of the information with regards to other stations. Thus, the limitation is
`
`believed to be met.
`
`Claim Rejections - 35 US C § 102
`
`9.
`
`In the event the determination of the status of the application as subject to AIA 35 USC.
`
`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`10.
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 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 ,
`
`(a)(l) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
`
`ll.
`
`Claim(s) l—lS is/are rejected under 35 USC. 102(a)(l) as being anticipated by Kim (US
`
`Patent Application Publication 2013/0229931).
`
`Regarding claims 1 and 5 Kim discloses a radio communication terminal
`
`operable in a heterogeneous network including a first radio communication system of a
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 5
`
`first communication operator including a plurality of first radio base stations, and a
`
`second radio communication system of a second communication operator including a
`
`plurality of second radio base stations, wherein a frequency band for use in
`
`communication of user data is at least partially shared by the first communication
`
`operator and the second communication operator different from the communication
`
`operator, and the radio communication terminal subscribes to the first communication
`
`operator but not to the second communication operator (figs. 1, 5, 9; paragraphs 0054-
`
`0055), and a method, comprising:
`
`a processor (fig. 9), which in operation,
`
`acquires location information of the radio communication terminal
`
`(paragraphs 0266-0267; wherein the terminal reports mobility history
`
`information to a base station),
`
`in response to communication history of the radio communication terminal
`
`corresponding to the acquired location information with one of the first radio base
`
`stations satisfying a defined condition, determines said first radio base station as a
`
`connection base station, Without taking into account communication history of the
`
`second radio base stations of the second communication operator (paragraphs
`
`0275-0276for example; wherein under a defined condition (cell stay time,
`
`handover related parameters, and so on), a first base station serves the terminal
`
`(either a macro station or a micro station), and this is performedfor the values
`
`related to the corresponding cell in this case the macro cell serving the terminal),
`
`and
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 6
`
`in response to the communication history of the radio communication
`
`terminal corresponding to the acquired location information with one of the first
`
`radio base stations not satisfying the defined condition, performs a cell search for
`
`another one of the first radio base stations to serve as the connection base station
`
`near a location corresponding to the acquired location information of the radio
`
`communication terminal (paragraphs 02 77; wherein when the conditions vary
`
`(i.e. do not satisfy a condition) the terminal is served by a micro cell); and
`
`an antenna (fig. 9) which, in operation, communicates user data between the radio
`
`communication terminal and the connection base station (paragraphs 02 75 -02 77;
`
`wherein the terminal and base station exchange information).
`
`Regarding claims 2 and 16 Kim discloses the radio communication terminal of
`
`claim 1 and the method of claim 5, wherein the processor selects one of the first radio
`
`base stations as the connection base station based on communication histories
`
`respectively of the plurality of first radio base stations (paragraphs 0267-02 74; table I;
`
`wherein the selected micro station is among those listed as camped by the terminal in the
`
`mobility history information provided by the terminal; the determined condition
`
`determines ifa macro cell will serve the terminal or a micro cell will serve the terminal).
`
`Regarding claims 3 and 17 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, wherein the communication history includes one or more
`
`selected from a group consisting of: an amount of data communicated between the radio
`
`communication terminal corresponding to the acquired location information and the
`
`connection base station, an amount of time spent for communication between the radio
`
`communication terminal corresponding to the acquired location information and the
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 7
`
`connection base station, and a number of times communication is performed between the
`
`radio communication terminal corresponding to the acquired location information and the
`
`connection base station (note that the claim language only requires one of the options for
`
`the limitation to be met) (table I; wherein the history information comprises information
`
`on time camped at the cell and number of times communication is performed with a
`
`station; the determined condition determines if a macro cell will serve the terminal or a
`
`micro cell will serve the terminal).
`
`Regarding claims 4 and 18 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, further comprising: a memory including the
`
`communication history of the radio communication terminal at a plurality of locations
`
`(see table I); and updating the communication history in the memory based on the user
`
`data communicated between the radio communication terminal and the connection base
`
`station (paragraph 027]; wherein the terminal updates the info and it is saved in the base
`
`station).
`
`Regarding claims 6 and 11 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, wherein the processor, in response to the communication
`
`history of the radio communication terminal corresponding to the acquired location
`
`information with one of the first radio base stations satisfying the defined condition, does
`
`not perform the cell search for another one of the first radio base stations (paragraphs
`
`0275-0276; wherein under certain conditions, the base station serves the terminal, either
`
`a macro cell or a micro cell, but the determined condition determines if a macro cell will
`
`serve the terminal or a micro cell will serve the terminal).
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 8
`
`Regarding claims 7 and 12 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, wherein the processor, in response to the communication
`
`history indicating a number of times communication is performed between the radio
`
`communication terminal corresponding to the acquired location information and one of
`
`the first radio base stations being less than a defined number, performs the cell search for
`
`another one of the first radio base stations (paragraphs 02 74-02 77; wherein when the
`
`number of handovers is greater than a value (thus, communicating less with the base
`
`station), the terminal is sent to a micro station; the determined condition determines if a
`
`macro cell will serve the terminal or a micro cell will serve the terminal).
`
`Regarding claims 8 and 13 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, wherein the processor, in response to the communication
`
`history indicating an amount of data communicated between the radio communication
`
`terminal corresponding to the acquired location information and one of the first radio
`
`base stations being less than a defined amount, performs the cell search for another one of
`
`the first radio base stations (paragraphs 02 74-02 77; wherein when valid time of mobility
`
`is less than a number, the terminal is served by a micro station; the determined condition
`
`determines ifa macro cell will serve the terminal or a micro cell will serve the terminal).
`
`Regarding claims 9 and 14 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, wherein the processor, in response to the communication
`
`history indicating an amount of time spent for communication between the radio
`
`communication terminal corresponding to the acquired location information and one of
`
`the first radio base stations being less than a defined amount, performs the cell search for
`
`another one of the first radio base stations (paragraphs 02 74-02 77; wherein when the
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 9
`
`stay time at the cell is short, the terminal is served by the micro station; the determined
`
`condition determines ifa macro cell will serve the terminal or a micro cell will serve the
`
`terminal).
`
`Regarding claims 10 and 15 Kim discloses the radio communication terminal of
`
`claim 1 and method of claim 5, further comprising: a memory storing a database
`
`including the communication history (table I), wherein the processor, in operation,
`
`updates the database based on the user data communicated between the radio
`
`communication terminal and the connection base station (paragraph 02 7]; wherein the
`
`terminal updates the info and it is saved in the base station).
`
`Conclusion
`
`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Aixa A Guadalupe—Cruz whose telephone number is (571)270—
`
`7523. The examiner can normally be reached on Monday — Thursday 7AM — 5:30PM.
`
`Examiner interviews are available via telephone, in—person, and video conferencing using
`
`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Faruk Hamza can be reached on 571—272—7969. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571—273—8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`

`

`Application/Control Number: 15/551,248
`Art Unit: 2466
`
`Page 10
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/Aixa Guadalupe—Cruz/
`Examiner
`
`Art Unit 2466
`
`/FARUK HAMZA/
`
`Supervisory Patent Examiner, Art Unit 2466
`
`