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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/492,937
`
`09/10/2019
`
`TETSUYA YAMAMOTO
`
`731456.538USPC
`
`1046
`
`Seed IP Law Group LLP/Panasonic (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`CUNNINGHAM, KEVIN M
`
`ART UNIT
`
`2461
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/14/2021
`
`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):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-12 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible 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 PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin 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) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210909
`
`Application No.
`Applicant(s)
`16/492,937
`YAMAMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KEVIN M CUNNINGHAM
`2461
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 7/30/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 2
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`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The presentapplication, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 7-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph,
`
`as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
`
`inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as
`
`the invention.
`
`Regarding claim 7, the claim states: “being capable of performing” whichis unclear.
`
`It is not clear
`
`what being capable of performing refers to (who or what hasthis capability?). The limitation was written
`
`this way as an attempt to simultaneously claim alternative and mutually exclusive embodiments(first
`
`operation and second operation) in a method claim. For example, the claim could state performinga first
`
`or second operation instead of “being capable of performing’first operation and second operation.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousnessrejections
`
`setforth in this Office action:
`
`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.
`
`

`

`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 3
`
`Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al (US
`
`2018/0103428, hereinafter Jiang, claiming the priority date of provisional application 62/406,224), in view
`
`of Yi et al (US 2018/0035416, hereinafter Yi, claiming priority date of all provisional applications), in view
`
`of Ekpenyonget al (US 2013/0195048, hereinafter Ekpenyong) and in view of Papasakellariou (US
`
`2018/0310257, hereinafter Papasakellariou, claiming priority dates of provisional applications 62/488,291
`
`and 62/490,835).
`
`1. Regarding claim 1, Jiang discloses a terminal (UE, Fig. 1) provided with: circuitry (hardware
`
`including circuits, Para [0108]), which, in operation, in a case where a sum of a transmission power
`
`for a first signal and a transmission power for a second signal requiring lower latency and higher
`
`reliability than the first signal exceeds a maximum transmission power in an overlap interval in which
`
`a transmission of the first signal and a transmission of the second signal occur at the same time,
`
`carries out power scaling with quality of the second signal being prioritized over quality of thefirst
`
`signal, in at least the overlap interval (approach to support both eMBB and URLLLCtraffic, where
`
`an issue is that the UE is transmitting at maximum powerand has no additional power to
`
`transmit, Para [0085], power sharing between eMBB and URLLC, Para [0099], UE monitorsfor
`
`an indicator, in order to transmit both eMBB and URLLCdata, using the same time-frequency
`
`resources, at the desired powerlevels, Para [0100] and UE can reduce transmission powerfor
`
`eMBB and usedthe saved transmission powerfor the URLLC, Para [0100], where URLLC
`
`traffic has priority over eMBB traffic, Para [0082]); and a transmitter, which, in operation, transmits
`
`the first signal and the second signal obtained after the power scaling (UE transmits both eMBB
`
`and URLLCdata, where the eMBB datais transmitted with reduced transmission power, Para
`
`[0100]). Also see Para [0093, 0099, 0106] from provisional application 62/406,244:
`
`but does not disclose, in a case where a transmission interval of the first signal is longer than a
`
`transmission interval of the second signal, and a transmission start position of the first signal is
`
`included in the overlap interval. Yi discloses URLLC can use the sameor different numerology
`
`than the eMBB, Para [0066] and see Fig. 5 where the start of eMBB uplink is during the uplink
`
`sub-frame of URLLC, where the eMBB sub-frameis longer than URLLC sub-frame.
`
`It would
`
`

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`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 4
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`have been obvious to one of ordinary skill in the art before the effective filing date of the invention to
`
`utilize the techniques taught by Yi in order to efficiently operate NR system where different sub-bands
`
`are allocated to different user equipment;
`
`nor disclosesafirst operation carrying out power scaling of the first signal across the entire
`
`transmission interval of the first signal, wherein the entire transmission interval includes both the
`
`overlap interval during which the sum exceeds the maximum transmission power and a non-overlap
`
`interval during which the sum does not exceed the maximum transmission power. Ekpenyong
`
`discloses transmitting a first and second transmission during a sub-frame with transmission
`
`timing difference, scaling transmit powerfor one or both signals so the combined power does
`
`not exceed the maximum power, where a constant transmission power is assigned to all
`
`symbols in the first and second transmissionsprior to the start of the sub-frame, Para [0024].
`
`It would have been obvious to one of ordinary skill in the art before the effectivefiling date of the
`
`invention to utilize the techniques taught by Ekpenyong in order to support multiple timing advances
`
`and prioritize transmissions during simultaneous transmissions that exceed maximum transmission
`
`power;
`
`and does not disclose a second operation of selecting second signal resources intended to
`
`transmit the second signal across the entire transmission interval of the first signal and transmitting, in
`
`a second operation, both the first and second signal in each of the second signal resources.
`
`Papasakellariou discloses the SR can be higherreliability than the HARQ ACK, and the UE can
`
`multiplex the SR and HARQ ACK in the same PUCCH, Para [0264] and using the configured SR
`
`resourceto jointly transmit SR and HARQ-ACK,Para [0260]. Also see pages 20-22 of
`
`provisional application 62/490,835.
`
`It would have been obviousto one of ordinary skill in the art
`
`before the effectivefiling date of the invention to utilize the techniques taught by Papasakellariou in
`
`order to reduce overhead that comes with configuring multiple PUCCH resourcesfor respective
`
`transmissions.
`
`2. Regarding claims 2 and 8, Jiang discloses the terminal/method according to claim 1/7, wherein the
`
`circuitry, in operation, carries out the power scaling for the first signal and does not carry out the
`
`power scaling for the second signal in a case where the sum exceeds the maximum transmission
`
`

`

`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 5
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`power (URLLCdata haspriority over eMBB traffic, Para [0082] and transmitting eMBB traffic at
`
`reduced power, Para [0093)).
`
`3. Regarding claims 3 and 9, Jiang discloses the terminal/method according to claim 1/7, but not
`
`explicitly wherein the first signal and the second signal are respectively allocated to different
`
`frequency resources. Yi discloses the URLLC and eMBB may be multiplexed by FDM, Para
`
`[0066] or See Fig. 5, where eMBB and URLLCusedifferent frequencies (page 5 of provisional
`
`application 62/476,628).
`
`4. Regarding claims 4 and 10, Jiang discloses the terminal/method according to claim 1/7, wherein the
`
`power scaling ofthe first signal across the entire transmission intervalof the first signal prevents
`
`occurrence of a transient period in the transmission interval of the first signal (this is stating a result
`
`of the powerscaling: recognizing latent properties does not render an otherwise known
`
`invention as patentable).
`
`5. Regarding claims 5 and 11, Jiang discloses the terminal/method according to claim 1/7, but not
`
`wherein a start position of a transmission interval for the first signal is any timing in a transmission
`
`period for the second signal. Yi discloses URLLC can use the sameor different numerology than
`
`the eMBB, Para [0066] and see Fig. 5 where the start of eMBB uplink is during the uplink sub-
`
`frame of URLLC.
`
`6. Regarding claims 6 and 12, Jiang discloses the terminal/method according to claim 5/11, wherein
`
`the selection of second signal resources across the entire transmission interval of the first signal in
`
`the second operation prevents occurrenceof a transient period in the transmission interval (this is
`
`just stating the result or benefit of the previous disclosed selection limitation).
`
`7. Regarding claim 7, Jiang discloses a communication method including: in a case where a sum of a
`
`transmission power for a first signal and a transmission power for a second signal requiring lower
`
`latency and higher reliability than the first signal exceeds a maximum transmission power in an
`
`overlap interval in which a transmission ofthe first signal and a transmission of the second signal
`
`occur at the same time, carrying out power scaling with quality of the second signal being prioritized
`
`over quality of the first signal, in at least the overlap interval (approach to support both eMBB and
`
`URLLCtraffic, where an issue is that the UE is transmitting at maximum power and has no
`
`

`

`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 6
`
`additional powerto transmit, Para [0085], power sharing between eMBB and URLLC, Para
`
`[0099], UE monitors for an indicator, in order to transmit both eMBB and URLLCdata, using
`
`the same time-frequency resources,at the desired powerlevels, Para [0100] and UE can
`
`reduce transmission power for eMBB and used the saved transmission powerfor the URLLC,
`
`Para [0100], where URLLCtraffic has priority over eMBB traffic, Para [0082]); and transmitting
`
`the first signal and the second signal obtained after the power scaling (UE transmits both eMBB
`
`and URLLCdata, where the eMBB datais transmitted with reduced transmission power, Para
`
`[0100]). Also see Para [0093, 0099, 0106] from provisional application 62/406,244:
`
`but does not disclose, in a case where a transmission intervalof the first singal is longer than a
`
`transmission interval of the second signal, and a transmission start position of the first signal is
`
`included in the overlap interval. Yi discloses URLLC can use the sameor different numerology
`
`than the eMBB, Para [0066] and see Fig. 5 where the start of eMBB uplink is during the uplink
`
`sub-frame of URLLC, where the eMBB sub-frameis longer than URLLC sub-frame;
`
`nor discloses carrying out power scaling of the first signal across the entire transmission interval
`
`of the first signal, wherein the entire transmission interval includes both the overlap interval during
`
`which the sum exceeds the maximum transmission power and a non-overlap interval during which the
`
`sum does not exceed the maximum transmission power. Ekpenyong discloses transmitting a first
`
`and second transmission during a sub-frame with transmission timing difference, scaling
`
`transmit powerfor one or both signals so the combined power does not exceed the maximum
`
`power, where a constant transmission poweris assigned to all symbols in the first and
`
`second transmissionsprior to the start of the sub-frame, Para [0024];
`
`and does not disclose a second operation of selecting second signal resources intended to
`
`transmit the second signal across the entire transmission interval of the first signal and transmitting, in
`
`a second operation, both the first and second signal in each of the second signal resources.
`
`Papasakellariou discloses the SR can be higherreliability than the HARQ ACK, and the UE can
`
`multiplex the SR and HARQ ACK in the same PUCCH, Para [0264] and using the configured SR
`
`resourceto jointly transmit SR and HARQ-ACK,Para [0260]. Also see pages 20-22 of
`
`provisional application 62/490,835.
`
`

`

`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 7
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`Response to Arguments
`
`Applicant's argumentsfiled 7/30/2021 have been fully considered but they are not persuasive.
`
`The Applicant amendsthe limitations and argues the references do not disclose the amendedlimitations.
`
`The Applicant amendsthe limitation to include a second operation and Applicant argues the prior art does
`
`not discloses a terminal that is capable of performing first and second operation. The Applicant also has
`
`argumentagainst other cited reference from the advisory action.
`
`In response, arguments are mootin view of the new reference being used in the currentoffice
`
`action. Papasakellariou discloses multiplexing the HARQ ACK and SR and transmitting using a single
`
`PUCCH, Para [0264]. Further the method claim appears to be entirely conditional. For example, assume
`
`a method claim requires stepAif a first condition happens and step B if a second condition happens. If
`
`the claimed invention may be practiced withouteither the first or second condition happening, then
`
`neither step A or B is required by the broadest reasonable interpretation of the claim (MPEP 2111.04).
`
`The claim has limitations “in a case” where a sum of transmission... exceeds a maximum, instead of
`
`positively reciting the limitation for example, determining a sum of transmission power... exceeds a
`
`maximum.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to KEVIN CUNNINGHAM whosetelephone number is (571) 272-1765. The examiner can
`
`normally be reached Mondaythrough Thursday 7:30-18:00 (EST).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy
`
`Vu can be reached on (571) 272-3155. The fax 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
`
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`

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`Application/Control Number: 16/492,937
`Art Unit: 2461
`
`Page 8
`
`you have questions on accessto the Private PAIR system, contact the Electronic Business Center (EBC)
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`1000.
`
`/KEVIN M CUNNINGHAM/
`Primary Examiner, Art Unit 2461
`
`