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
`
`16/224,492
`
`12/18/2018
`
`TAKAKO HORI
`
`731456.491C1
`
`2182
`
`S eed IP Law Group LLP/Panas on1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`HOLLAND' JENEE LAUREN
`
`ART UNIT
`
`2469
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2019
`
`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)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/224,492
`Examiner
`JEN EE HOLLAND
`
`Applicant(s)
`HORI et al.
`Art Unit
`2469
`
`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 12/18/2018.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(s) _ is/are allowed.
`
`Claim(s) 1,4—5 and 9—11 is/are rejected.
`
`Claim(s) 2—3 and 6—8 is/are objected to.
`
`) ) ) )
`
`)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, 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
`
`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 12/18/2018 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:
`
`a). All
`
`b)C] Some**
`
`c)[j None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2E] Certified copies of the priority documents have been received in Application No.
`
`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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 12/18/2018.
`U.S. Patent and Trademark Office
`
`3) E] 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 20191208
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`1.
`
`Claims 1-11 are pending.
`
`Claim Objections
`
`2.
`
`Claim 11 is objected to because of the following informalities: Claim 11 line 5
`
`recites “its” which should be replaced with the term being referred to. Appropriate
`
`correction is required.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 3
`
`3.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
`
`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
`
`a claim element (also commonly referred to as a claim limitation) is limited by the
`
`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the
`
`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`structural term having no specific structural meaning) for performing the claimed
`
`function;
`
`(B)
`
`the term “means” or “step” or the generic placeholder is modified by functional
`
`language, typically, but not always linked by the transition word “for” (e.g.,
`
`“means for”) or another linking word or phrase, such as “configured to” or “so
`
`that”; and
`
`(C)
`
`the term “means” or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means” (or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 4
`
`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
`
`acts to entirely perform the recited function.
`
`Absence of the word “means” (or “step”) in a claim creates a rebuttable
`
`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites function without reciting
`
`sufficient structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means” (or “step”) are
`
`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`except as otherwise indicated in an Office action. Conversely, claim limitations in this
`
`application that do not use the word “means” (or “step”) are not being interpreted under
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
`
`indicated in an Office action.
`
`This application includes one or more claim limitations that do not use the word
`
`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
`
`that is coupled with functional language without reciting sufficient structure to perform
`
`the recited function and the generic placeholder is not preceded by a structural modifier.
`
`Such claim limitation(s) is/are: “an acquirer that acquires... ” “a negotiator that
`
`negotiates... ” and “a compression mode determiner that determines....” in claim
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 5
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`1 and “a notifier that notifies... ”, “an application information acquirer that
`
`acquires... ” and “a compression mode determiner that determines....” in claim 9.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
`
`cover the corresponding structure described in the specification as performing the
`
`claimed function, and equivalents thereof.
`
`lf applicant does not intend to have this/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the
`
`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
`
`sufficient structure to perform the claimed function so as to avoid it/them being
`
`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 6
`
`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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`4.
`
`Claims 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Zhu, Us 2012/0307634 hereafter Zhu in view of Zhao at al, US 2011/0170410 hereafter
`
`Zhao.
`
`As for claim 1, Zhu discloses:
`
`A terminal (Zhu, Fig. 21, [01612-10163], The terminal device) comprising:
`
`an acquirer (Zhu, Fig. 21, 702, [01611-10163], The receiving module 7021 that
`
`acquires first application compatibility information indicating an application with which a
`
`base station located on a channel of communication with a communication partner
`
`terminal Zhu Fi
`
`. 1 “eNodeB” “UE2” 0063 The eNodeB located on the link/channel
`
`of communication with UE 22 is compatible (Zhu, Fig. 12, 301, (01011-101052,
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 7
`
`Acguires/receives congestion notification/RTP ,gacket indicating a congestion
`
`notification/agglication/ECT with which the eNodeB is comgatible/has cagabilityi;
`
`a negotiator (Zhu, Fig. 21 , 701, (01611-101631, The negotiating module 7012 that
`
`negotiates with the communication partner terminal about utilization of an application,
`
`included in applications with which the terminal is compatible, that matches the
`
`application indicated by the first application compatibility information (Zhu, Fig. 13,
`
`[00041, [01071, [01111, [01121, [01161, Negotiate with remote terminal (UE2i about
`
`adiusting/utilization of the congestion notification, that are suggorted/comgatible with
`
`UE 1, that match the congestion identifier indicated by the congestion notification/RTP
`
`,gacket from the eNodeBi; and
`
`a compression mode (Zhu, Fig. 21, 703, (01611-101631, The control module 7032
`
`determiner that determines a compression mode (Zhu, [00571, [01111,
`
`Adiusts/determines a codec/coding model.
`
`Zhu does not explicitly disclose determines a compression mode on the basis of
`
`a result of negotiations about the application.
`
`However, Zhao discloses determines a compression mode on the basis of a
`
`result of negotiations about the application (Zhao, FIG. 12A, [01221, Determine the
`
`codec rate on the basis of a result of negotiations of the ECNi.
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the teachings of Zhu with determines a
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 8
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`compression mode on the basis of a result of negotiations about the application as
`
`taught by Zhao to provide reduced congestion (Zhaoz [0007L [000812.
`
`As for claim 9, Zhu discloses:
`
`A base station (Zhuz Fig. 12. The “eNodeb” a processor and memory) comprising:
`
`a notifier that notifies a terminal of first application compatibility information
`
`indicating an application with which the base station is compatible (Zhuz Fig. 121 3011
`
`[01011-101051z [01111z Notifying a UE1 of congestion notification/RTP ,gacket indicating a
`
`congestion notification/agglication/ECT with which the eNodeB is comgatible/has
`
`cagabilityi;
`
`an application information acquirer that acquires information on an application
`
`about which the terminal has negotiated with its communication partner on the basis of
`
`the first application compatibility information (Zhuz [011121 [011421 Acguiring information
`
`on a media sending rate about which the UE1 has negotiated with the UE2 on the basis
`
`of the a congestion notification/agglication/ECTZ; and
`
`a compression mode determiner that determines a compression mode (Zhuz
`
`[0057L [01 1 7L Adiusts/determines a codec/coding model.
`
`Zhu does not explicitly disclose determines a compression mode on the basis of
`
`the information thus acquired on the application about which negotiations have been
`
`conducted.
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 9
`
`However, Zhao discloses determines a compression mode on the basis of the
`
`information thus acquired on the application about which negotiations have been
`
`conducted (Zhao, FIG. 12A, 101221, Determine the codec rate on the basis of the
`
`acguired ECN about which a result of negotiations have been conducted1.
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the teachings of Zhu with determines a
`
`compression mode on the basis of a result of negotiations about the application as
`
`taught by Zhao to provide reduced congestion (Zhao, 100071, 1000811.
`
`As for claim 10, Zhu discloses:
`
`A communication method comprising:
`
`acquiring first application compatibility information indicating an application with
`
`which a base station located on a channel of communication with a communication
`
`partner terminal Zhu Fi .1 “eNodeB” “UE2” 0063 The eNodeB located on the
`
`link/channel of communication with UE 21 is compatible (Zhu, Fig. 12, 301, 101011-
`
`101051, Acguires/receives congestion notification/Ft TP gacket indicating a congestion
`
`notification/agglication/ECT with which the eNodeB is comgatible/has cagability1;
`
`negotiating with the communication partner terminal about utilization of an
`
`application, included in applications with which the terminal is compatible, that matches
`
`the application indicated by the first application compatibility information 1Zhu, Fig. 13,
`
`100041, 101071, 101111, 101121, 101161, Negotiate with remote terminal 1UE21 about
`
`ad1usting/utilization of the congestion notification, that are suggorted/comgatible with
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 10
`
`UE1z that match the congestion identifier indicated by the congestion notification/RTP
`
`,gacket from the eNodeBi; and
`
`determining a compression mode (Zhuz [005711 [011111 Adiusts/determines a
`
`codec/coding modei.
`
`Zhu does not explicitly disclose determines a compression mode on the basis of
`
`a result of negotiations about the application.
`
`However, Zhao discloses determines a compression mode on the basis of a
`
`result of negotiations about the application (Zhaoz FIG. 12Az [0122iz Determine the
`
`codec rate on the basis of a result of negotiations of the EON).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the teachings of Zhu with determines a
`
`compression mode on the basis of a result of negotiations about the application as
`
`taught by Zhao to provide reduced congestion (Zhaoz [000711 [000812.
`
`As for claim 11, Zhu discloses:
`
`A communication method comprising:
`
`notifying a terminal of first application compatibility information indicating an
`
`application with which a base station is compatible (Zhuz Fig. 121 3011 [01011-101051z
`
`[0111iz Notifying a UE1 of congestion notification/RTP ,gacket indicating a congestion
`
`notification/agglication/ECT with which the eNodeB is comgatible/has cagabilityi;
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 11
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`acquiring information on an application about which the terminal has negotiated
`
`with its communication partner on the basis of the first application compatibility
`
`information (Zhuz [011111 [011411 Acguiring information on a media sending rate about
`
`which the UE 1 has negotiated with the UE2 on the basis of the a congestion
`
`notification/agglication/ECTl; and
`
`determining a compression mode (Zhuz [005711 [011111 Adiusts/determines a
`
`codec/coding model.
`
`Zhu does not explicitly disclose determining a compression mode on the basis of
`
`the information thus acquired on the application about which negotiations have been
`
`conducted.
`
`However, Zhao discloses determining a compression mode on the basis of the
`
`information thus acquired on the application about which negotiations have been
`
`conducted (Zhaoz FIG. 12Az [0122iz Determine the codec rate on the basis of the
`
`acguired ECN about which a result of negotiations have been conducted).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the teachings of Zhu with determines a
`
`compression mode on the basis of a result of negotiations about the application as
`
`taught by Zhao to provide reduced congestion (Zhaoz [000711 [000812.
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 12
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`5.
`
`Claims 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Zhu, Us 2012/0307634 in view of Zhao at al, US 2011/0170410 as applied to claim 1
`
`above, and further in view of Fukuzawa et al, US 2008/0153496 hereafter Fukuzawa.
`
`As for claim 4, the combination of Zhu and Zhao does not explicitly disclose:
`
`In a case where the terminal is handed over, determines stoppage or continuation of
`
`a currently utilized application on the basis of information on an application with which a
`
`handover destination base station is compatible.
`
`However, Fukuzawa discloses in a case where the terminal is handed over,
`
`determines stoppage or continuation of a currently utilized application on the basis of
`
`information on an application with which a handover destination base station is
`
`compatible (Fukuzawa, (00391-100401, [00511, in the case then terminal is handed over,
`
`determining stogging content distribution to a terminal on the basis of information on the
`
`destination base station is HSDPA being suggorted/comgatiblei.
`
`It would have been obvious to one of ordinary skill in the art before the effective filing
`
`date of the claimed invention to combine the combination of the teachings of Zhu and
`
`Zhao within a case where the terminal is handed over, determines stoppage or
`
`continuation of a currently utilized application on the basis of information on an
`
`application with which a handover destination base station is compatible at taught by
`
`Fukuzawa to improve the speed of communication.
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`As for claim 5, Fukuzawa discloses:
`
`Page 13
`
`In a case where, after the application has been stopped, the terminal is handed over to
`
`a base station that is compatible with the application, the controller resumes utilization
`
`of the application (Fukuzawa, (00391-100401, [00511, After the content distribution has
`
`been stopped, restarting the content distribuation to the terminal when communication
`
`with a base station that supports HSDPAZ.
`
`Allowable Subject Matter
`
`6.
`
`Claims 2, 3 and 6-8 are objected to as being dependent upon a rejected base
`
`claim, but would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and any intervening claims.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JENEE HOLLAND whose telephone number is
`
`(571)270-7196. The examiner can normally be reached on 8:30 AM - 5:00 PM.
`
`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.
`
`

`

`Application/Control Number: 16/224,492
`Art Unit: 2469
`
`Page 14
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, IAN MOORE can be reached on (571)272-3085. 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 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.
`
`JENEE HOLLAND
`
`Examiner
`
`Art Unit 2469
`
`/JENEE HOLLAND/
`
`Primary Examiner, Art Unit 2469
`
`