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
`
`16/038,960
`
`07/18/2018
`
`Masayuki Hoshino
`
`731456.407C2
`
`9225
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`NOORISTANY' SULAIMAN
`
`ART UNIT
`
`2415
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`02/ 1 3/2020
`
`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
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`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/038,960
`Examiner
`SULAIMAN NOORISTANY
`
`Applicant(s)
`Hoshino et al.
`Art Unit
`2415
`
`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 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).
`
`Status
`
`1). Responsive to communication(s) filed on 1/17/20.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`
`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.
`
`
`
`[:1 Claim(ss)
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`is/are allowed.
`
`8)
`Claim(s 1_5—34 Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
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`10)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] 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).
`
`Priority under 35 U.S.C. § 119
`
`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)I:l All
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`b)|:] Some**
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`c)l:i None of the:
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`1C] 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.
`
`3D 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) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200208
`
`

`

`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
`
`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
`
`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(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
`
`1.32103).
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`

`

`Application/Control Number: 16/038,960
`Art Unit: 2415
`
`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
`
`(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
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`assigned for second reference signals, the first reference signals being transmitted from one
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`or more cells for cell detection (Liao: fig. 3A, fig. 17 [0078]), the part of the resources assigned
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`to the second reference signals being determined based on a cell identification number of the one
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`or more cells (Liao: [0046-0047, 0053, 0074, 0077]); 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 assigned to the second reference signals are non—
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`transmission resources 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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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 5
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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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`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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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 6
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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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`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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`Response to Arguments
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`Applicant's arguments filed on 1/17/20 have been fully considered but they are not
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`persuasive.
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`Applicant Argument:
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`Liao—Nagata failed to disclose, receives first reference signals in a part of resources
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`assigned for second reference signals, the first reference signals being transmitted from one
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`or more cells for cell detection, the part of the resources assigned to the second reference signals
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`being determined based on a cell identification number of the one or more cells.
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
`
`Response to Arguments:
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`Page 8
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`With respect to the above argument, Examiner would like to draw attention to that it is
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`the claims that define the claimed invention, and it is claims, not specifications that are
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`anticipated or unpatentable. Constant v. Advanced Micro-Devices Inc., 7 USPQ2d 1064.
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`In addition, the Examiner would like to draw attention to ([0046—0047]) of Liao, for
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`example: FIG. 2B illustrates various detailed DRS design considerations. First, RE muting is
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`applied for enhanced cell detection and signal strength measurement, as depicted by box 210. To
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`improve the performance of cell detection and signal strength (e. g. RSRP) measurement for UEs,
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`REs that are potential locations for DRS transmission within a time slot and are not used for
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`actual DRS transmission in a cell can be partially or all muted in the cell to control the
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`interference level introduced to UEs served by other cells for DRS reception. The time slots for
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`DRS transmission can be one or multiple subframes in 3GPP LTE system. The RE muting
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`pattern can be configured to an UE for data reception by either higher—layer signaling from
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`an eNB or by a predefined rule. The predefined rule can be based on the physical cell
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`identification {PCI}. (PCI herein considered same as the Cell identification). In one
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`embodiment, RE muting patterns in different cells can be assigned through coordination so that
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`DRS in different cells suffer zero interference due to the orthogonally created by RE muting
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`patterns. If the RE muting pattern is configured to an UE by higher—layer signaling, the
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`coordination is done through inter—eNB communication for dynamic or semi—static adaptation. I_f
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`the RE muting pattern is configured to an UE based on PCI, the coordination is done through
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`PCI assignments. (herein it’s considered same as receives first reference signals in a part of
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`resources assigned for second reference signals, the first reference signals being transmitted
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`from one or more cells for cell detection, the part of the resources assigned to the second
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 9
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`reference signals being determined based on a cell identification number 0fthe one or more
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`cells).
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`Furthermore, the Examiner would like to draw attention to ([0053, 0074, and 0077]) of
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`Liao, for example: FIG. 3A illustrates a user equipment UE 301 performing synchronization, cell
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`detection, and measurement for small cells. UE 301 is located in a heterogeneous network with
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`macro base station MeNB 302 and a plurality small base station SeNB 311, SeNB 312, and
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`SeNB 313. In step 321, UE 301 performs network entry and establishes an RRC connection with
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`MeNB 302. In step 322, MeNB 302 allocates a set of resource elements (REs) for DRS
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`transmission for a plurality of small cells served by the SeNBs. For example, MeNB 302
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`determines DRS related parameters including DRS duration and DRS periodicity and assigns RE
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`muting patterns through coordinating among the small cells. In step 323, MeNB 302 transmits
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`DRC related configuration information to UE 301. MeNB 302 also communicates the
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`information to the SeNBs Via Xn Interface. In step 331 to step 333, the SeNBs transmits a set of
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`DRS to UE 301 according to the DRS parameters. In step 341, UE 301 performs synchronization
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`with one or more of the small cells by detecting the corresponding synchronization signals in the
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`received DRS. In step 342, UE 301 performs cell detection. Synchronization and cell detection
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`are usually performed jointly. For example, the small cells nearby are assumed to be
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`synchronized. UE 301 can first synchronize with the small cell with the strongest signal strength
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`by detecting PSS seguence. Seguence detection is performed by using SSS and seguence
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`detection results of PSS and SSS are combined to obtain Physical Cell ID gPCI}. Further
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`synchronization can be performed by using the detected SSS sequence. In addition, the UE can
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`perform fine synchronization using CRS and/or CSI—RS with its serVing cell. For example, if
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`different transmission points (TP) use different PCI, then CRS is sufficient. If multiple
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
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`Page 10
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`transmission points share the same PCI, CRS is insufficient and CSI—RS should be used for
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`synchronization additionally. In step 343, UE 301 performs small cell measurements based on
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`the corresponding reference signals in the received DRS. Because DRS comprises multiple
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`reference signals, it enables the UE to perform synchronization, cell detection, and
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`measurements during the same DRS cycle (herein it’s considered same as receives first
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`reference signals in a part of resources assigned for second reference signals, the first reference
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`signals being transmitted from one or more cells for cell detection, the part of the resources
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`assigned to the second reference signals being determined based on a cell identification number
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`ofthe one or more cells).
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`Thus, for the above reason, the prior art meet the claim limitation.
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`The examiner stresses that the claims are too broad and require detail or specialization of
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`the steps as recited in the claims. Alone and as claimed, the limitations are too open.
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`Examiner has cited particular portions of the references as applied to each claim limitation
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`for the convenience of the applicant. Although the specified citations are representative of the
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`teachings of the art and are applied to the specific limitations Within the individual claim, other
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`passages and figures may apply as well. It is respectfully requested from the applicant in
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`preparing responses, to fully consider the references in entirety as potentially teaching all or part
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`of the claimed invention, as well as the context of the passage as taught by the prior art or
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`disclosed by the Examiner.
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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
`
`Page ll
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`Regarding all other arguments presented by applicant, the arguments are substantially the
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`same as those which have already been addressed above and in the interest of brevity; the
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`Examiner directs the applicant to those responses above.
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`Remark:
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`In addition: an interview could expedite the prosecution.
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`Conclusion
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`Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
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`reminded of the extension of time policy as set forth in 37 CFR l.l36(a). A shortened statutory
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`period for reply to this final action is set to expire THREE MONTHS from the mailing date of
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`this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this
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`final action and the advisory action is not mailed until after the end of the THREE—MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the
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`advisory action is mailed, and any extension fee pursuant to 37 CFR l.l36(a) will be calculated
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`from the mailing date of the advisory action. In no event, however, will the statutory period for
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`reply expire later than SIX MONTHS from the date of this final action.
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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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`

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`Application/Control Number: 16/038,960
`Art Unit: 2415
`
`Page 12
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`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. Should you have questions on access to the Private PAIR system, contact the
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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/
`
`Primary Examiner, Art Unit 2415
`
`