Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9354 Filed 03/16/23 Page 1 of 38
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`Exhibit 3
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`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9355 Filed 03/16/23 Page 2 of 38
`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/246,677
`
`09/27/2011
`
`XiaodongLi
`
`61240-8002.US03
`
`1046
`
`04/19/2013
`7590
`25096
`PERKINS COIE LLP - SEA General
`PAIBNT-SEA
`P.O. BOX 1247
`SEATTLE, WA 98111-1247
`
`EXAMINER
`
`LEVITAN, DMITRY
`
`ART UNIT
`
`PAPER NUMBER
`
`2461
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/19/2013
`
`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):
`patentprocurement@perkinscoie.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9356 Filed 03/16/23 Page 3 of 38
`Application No.
`Applicant(s)
`13/246,677
`LI ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`Dmitry H. Levitan
`
`Art Unit
`2461
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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.
`If 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 3 February 2012.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)0 This action is FINAL.
`2b)~ This action is non-final.
`3)0 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)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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)~ Claim(s) 19-44 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 19-44 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* 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
`http:i/www.usoto.gov/patents/init events/pphiindex.isp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`1 O)~ The specification is objected to by the Examiner.
`11 )~ The drawing(s) filed on 03 February 2012 is/are: a)O accepted orb)~ 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)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)O All b)O Some* c)O None of the:
`Certified copies of the priority documents have been received.
`1.0
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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.
`Interim copies:
`a)O All b)O Some c)O None of the:
`
`Interim copies of the priority documents have been received.
`
`Attachment{s)
`1) ~ Notice of References Cited (PTO-892)
`
`2) ~ Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-13)
`
`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130412
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9357 Filed 03/16/23 Page 4 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 2
`
`Amendment, filed 2/03/12, has been entered. Claims 19-44 remain pending.
`
`Claim Rejections - 35 USC§ 112
`
`1.
`The following is a quotation of 35 U.S.C. l 12(a):
`(a) IN GENERAL-The specification shall contain a written description of the invention, and of
`the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), first paragraph:
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any
`person skilled in the art to which it pertains, or with which it is most nearly connected, to make
`and use the same and shall set forth the best mode contemplated by the inventor of carrying out
`his invention.
`
`1.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s) contains
`
`subject matter which was not described in the specification in such a way as to reasonably
`
`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the
`
`inventor(s), at the time the application was filed, had possession of the claimed invention.
`
`According to the page 24 of the Amendment, claims 19-44 are supported by "new added text
`
`paragraphs", which is identified as NEW MATTER.
`
`The original disclosure [0001] comprises text on RELATED APPLICATION, including
`
`PCT/US05/033518 without directly/explicitly incorporating the related Application.
`
`Applicant's statement on [0057], which is [0060] in the published version of the disclosure, does
`
`supersede rules for incorporation by reference, directly prohibiting incorporation by reference
`
`after the Application filing date. (See the attached corresponding MPEP portion).
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9358 Filed 03/16/23 Page 5 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 3
`
`IV. INCORPORATION BY REFERENCE
`
`A.n applicant may incorporate by rererence the prior application by including, in the
`continuation or divisional application-as-filed, an explicit statement that such specifically
`enumerated prior application or applications are "hereby inco11)orated by reterence.'' The
`statement must appear in the specification. See 37 CFR L57(b) and wfPEP § 608.0l(p).
`The inclusion of this .incorporation by reference statement ,.:-;rill pen.nit an applicant to amend
`the continuation or divisional application to :inch1de subject matter :fr01n the prior
`application(s), \Vithout the need for a petition provided the conti11uation or divisional
`application is entitled to a filing date notvvrthstanding the incorporation by rererence. For
`applications filed prior to Septernber 21, 2004, the incorporation by reference statement
`may appear in the transn1itta1 letter or in the specification. Note that for applicatious filed
`prior to September 21, 2004, if applicants used a fonner version of the transmittal letter
`fom1 prm~ded by the USPTO, the n1co1voration by reference statement could only be
`relied upon to add inadvertently omitted material to the continuation or divisional
`application.
`For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120 and
`37 CFR 1.78 for benefit of a p1ior-filed nonprovisional application or :international
`application designatn1g the U.S. that 1,vas present on the filing date of the continuation or
`divisional application is considered an -incorporation by reference ofthe prior-filed
`application as to inadvertently omitted material, subject to the conditions and
`requirements of37 CFR 1 S7(a). The purpose of37 CFR L57(a) is to provide a
`sale.guard for applicants vvhen all or a portion ofthe specification and/or drawing(s) is
`(are) i11adve1iently omitted from au application. For applications filed on or after
`September 21, 2004, applicants are encomaged to provide an explicit mcorporation by
`reference statement to the prior-filed application(s) for which benefit is claimed lmder 35
`U.S .C. 120 if applicants do not vvish the iinco11)oration by rererence to be limited to
`inadvertently omitted material pursuant to 3 7 CFR 1. 5 7 (a). See 3 7 CFR 1 . 5 7 (b) and
`R'1PEP § 608.01 (p) for discussion regarding explicit incorporation by retereuce.
`An incorporation by reference statement added after an application's filing date is not
`effective because no ne1,v ·matter can be added to an application after its filing date (see
`3 5 U.S .C. 132(a)). If an incorporation by reterence statement is included in an
`amendment to the specification to add a benefit claim lmder 3 5 U.S.C. 120 after the filing
`date of the application, the amendment 1,vould not be proper. \Vhen a benefit clain under
`3 5 U.S. C. 12 0 is submitted after the filing of ru1 application, the rererence to the prior
`application cannot include an incorporation by reterence statement of the prior
`application. See Dart Indus, v, Btumer, 636 F.2d 684, 207 USPQ 273 (C _A.D.C.
`1980).
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9359 Filed 03/16/23 Page 6 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 4
`
`:rvfore reference to another application,, patent, or publication is not an incorporation of
`anything therein into the application containing such reference for the purpose ofthe
`discfosurerequired by 35 U.S.C. 112, first paragraph.In rede Sever.sky, 474 F.2d
`671., 177 USPQ 144 (CCPA 1973). See 1vfPEP § 608.0l(p). As noted above"
`ho,vever, for applications filed on or after September 21, 2004,, 37 CFR l.57(a)
`provides that a claim for the benefit of a prior-filed application under 37 CFR 1. 78 is
`considered an i:nco11Joration by rererence as to inadvertently omitted mate1ial. See !vlPEP
`§201.17.
`
`2.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject
`
`matter which was not described in the specification in such a way as to enable one skilled in the
`
`art to which it pertains, or with which it is most nearly connected, to make and/or use the
`
`invention.
`
`The specification does not provide sufficient details to enable a skilled in the art to make and use
`
`the invention because it does not adequately describe the following:
`
`Regarding claims 19, 27, 35 and 40 how to perform autocorrelation of the probing
`
`sequence with a high peak-to-sidelobe ratio, wherein the probing sequence has low peak-to-
`
`average power ratio.
`
`The specification does not provide enough details about the structure and operation of the
`
`elements associated with the above identified claimed features to enable one skilled in the art to
`
`make and use the invention without undue experimentation.
`
`3.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9360 Filed 03/16/23 Page 7 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 5
`
`matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
`
`invention.
`
`Claims 19, 27, 35 and 40 limitations, directed to "a frequency band of the communication
`
`system" are unclear, as the claimed system comprises a plurality of base stations and mobile
`
`stations without identifying which connection bands between the base stations and between the
`
`mobile stations and a serving base station are considered a frequency band of the communication
`
`system.
`
`Claims 19, 27, 35 and 40 limitations, directed to "autocorrelation with a high peak-to-
`
`sidelobe ratio and has a low peak-to-average power ratio" are unclear, because the claims are
`
`incomplete, omitting elements of the claimed ratios
`
`Claims 19, 27, 35 and 40 limitations, directed to "base station when it needs an update of
`
`the channel characteristics" are unclear, because it is not understood when the base station needs
`
`updates and when it does not.
`
`Claims 20, 21, 28 and 29 recite the limitation "the transmission power" in lines 1. There
`
`is insufficient antecedent basis for this limitation in the claim.
`
`Claims 24 and 32 recite the limitation "the modulation or coding scheme of the first
`
`signal" in lines 1. There is insufficient antecedent basis for this limitation in the claim.
`
`Claims 25 and 33 recite the limitation "the pilot patterns" in lines 1. There is insufficient
`
`antecedent basis for this limitation in the claim.
`
`Claims 26 and 34 recite the limitation "the subchannel configuration in lines 1. There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9361 Filed 03/16/23 Page 8 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 6
`
`Claims 37 and 42 recite the limitation "the channel coefficients" in lines 1. There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`Other claims are rejected as the claims depending on the claims rejected above.
`
`Drawings and Specification
`
`The Drawings and the Specification are objected to, because the Amendment of 2/03/12
`
`introduced new matter into the Drawings and the Specification, as described above.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Dmitry H. Levitan whose telephone number is (571)272-3093.
`
`The examiner can normally be reached on 8:30 to 4:30.
`
`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 phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9362 Filed 03/16/23 Page 9 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 7
`
`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.
`
`Dmitry H Levitan
`Primary Examiner
`Art Unit 2461
`
`/Dmitry H Levitan/
`Primary Examiner, Art Unit 2461
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9363 Filed 03/16/23 Page 10 of 38
`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/246,677
`
`09/27/2011
`
`XiaodongLi
`
`061240-8002.US03
`
`1046
`
`10/31/2013
`7590
`25096
`PERKINS COIE LLP - SEA General
`PAIBNT-SEA
`P.O. BOX 1247
`SEATTLE, WA 98111-1247
`
`EXAMINER
`
`LEVITAN, DMITRY
`
`ART UNIT
`
`PAPER NUMBER
`
`2461
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/31/2013
`
`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):
`patentprocurement@perkinscoie.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9364 Filed 03/16/23 Page 11 of 38
`Application No.
`Applicant(s)
`13/246,677
`LI ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`Dmitry H. Levitan
`
`Art Unit
`2461
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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.
`If 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 10/21/13.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)~ This action is FINAL.
`2b)0 This action is non-final.
`3)0 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)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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)~ Claim(s) 19-44 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 19-44 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* 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
`http:i/www.usoto.gov/patents/init events/pphiindex.isp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`1 O)~ The specification is objected to by the Examiner.
`11 )~ The drawing(s) filed on 03/02/2012 is/are: a)O accepted orb)~ 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)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)O All b)O Some* c)O None of the:
`Certified copies of the priority documents have been received.
`1.0
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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) 0 Notice of References Cited (PTO-892)
`2) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-13)
`
`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20131028
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9365 Filed 03/16/23 Page 12 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 2
`
`1.
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`Amendment, filed 10/21/13, has been entered. Claims 19-44 remain pending.
`
`Claim Rejections - 35 USC§ 112
`
`1.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s) contains
`
`subject matter which was not described in the specification in such a way as to reasonably
`
`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the
`
`inventor(s), at the time the application was filed, had possession of the claimed invention.
`
`According to the page 24 of the Amendment, claims 19-44 are supported by "new added text
`
`paragraphs", which is identified as NEW MATTER.
`
`The original disclosure [0001] comprises text on RELATED APPLICATION, including
`
`PCT/US05/033518 without directly/explicitly incorporating the related Application.
`
`Applicant's statement on [0057], which is [0060] in the published version of the disclosure, does
`
`supersede rules for incorporation by reference, directly prohibiting incorporation by reference
`
`after the Application filing date. (See the attached corresponding MPEP portion).
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9366 Filed 03/16/23 Page 13 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 3
`
`IV. INCORPORATION BY REFERENCE
`
`A.n applicant may incorporate by rererence the prior application by including, in the
`continuation or divisional application-as-filed, an explicit statement that such specifically
`enumerated prior application or applications are "hereby inco11)orated by reterence.'' The
`statement must appear in the specification. See 37 CFR L57(b) and wfPEP § 608.0l(p).
`The inclusion of this .incorporation by reference statement ,.:-;rill pen.nit an applicant to amend
`the continuation or divisional application to :inch1de subject matter :fr01n the prior
`application(s), \Vithout the need for a petition provided the conti11uation or divisional
`application is entitled to a filing date notvvrthstanding the incorporation by rererence. For
`applications filed prior to Septernber 21, 2004, the incorporation by reference statement
`may appear in the transn1itta1 letter or in the specification. Note that for applicatious filed
`prior to September 21, 2004, if applicants used a fonner version of the transmittal letter
`fom1 prm~ded by the USPTO, the n1co1voration by reference statement could only be
`relied upon to add inadvertently omitted material to the continuation or divisional
`application.
`For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120 and
`37 CFR 1.78 for benefit of a p1ior-filed nonprovisional application or :international
`application designatn1g the U.S. that 1,vas present on the filing date of the continuation or
`divisional application is considered an -incorporation by reference ofthe prior-filed
`application as to inadvertently omitted material, subject to the conditions and
`requirements of37 CFR 1 S7(a). The purpose of37 CFR L57(a) is to provide a
`sale.guard for applicants vvhen all or a portion ofthe specification and/or drawing(s) is
`(are) i11adve1iently omitted from au application. For applications filed on or after
`September 21, 2004, applicants are encomaged to provide an explicit mcorporation by
`reference statement to the prior-filed application(s) for which benefit is claimed lmder 35
`U.S .C. 120 if applicants do not vvish the iinco11)oration by rererence to be limited to
`inadvertently omitted material pursuant to 3 7 CFR 1. 5 7 (a). See 3 7 CFR 1 . 5 7 (b) and
`R'1PEP § 608.01 (p) for discussion regarding explicit incorporation by retereuce.
`An incorporation by reference statement added after an application's filing date is not
`effective because no ne1,v ·matter can be added to an application after its filing date (see
`3 5 U.S .C. 132(a)). If an incorporation by reterence statement is included in an
`amendment to the specification to add a benefit claim lmder 3 5 U.S.C. 120 after the filing
`date of the application, the amendment 1,vould not be proper. \Vhen a benefit clain under
`3 5 U.S. C. 12 0 is submitted after the filing of ru1 application, the rererence to the prior
`application cannot include an incorporation by reterence statement of the prior
`application. See Dart Indus, v, Btumer, 636 F.2d 684, 207 USPQ 273 (C _A.D.C.
`1980).
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9367 Filed 03/16/23 Page 14 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 4
`
`:rvfore reference to another application,, patent, or publication is not an incorporation of
`anything therein into the application containing such reference for the purpose ofthe
`discfosurerequired by 35 U.S.C. 112, first paragraph.In rede Sever.sky, 474 F.2d
`671., 177 USPQ 144 (CCPA 1973). See 1vfPEP § 608.0l(p). As noted above"
`ho,vever, for applications filed on or after September 21, 2004,, 37 CFR l.57(a)
`provides that a claim for the benefit of a prior-filed application under 37 CFR 1. 78 is
`considered an i:nco11Joration by rererence as to inadvertently omitted mate1ial. See !vlPEP
`§201.17.
`
`2.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject
`
`matter which was not described in the specification in such a way as to enable one skilled in the
`
`art to which it pertains, or with which it is most nearly connected, to make and/or use the
`
`invention.
`
`The specification does not provide sufficient details to enable a skilled in the art to make and use
`
`the invention because it does not adequately describe the following:
`
`Regarding claims 19, 27, 35 and 40 how to perform autocorrelation of the probing
`
`sequence, wherein the probing sequence has low peak-to-average power ratio, and how to select
`
`a sequence for autocorrelation with "high" and "low" ratios.
`
`The specification does not provide enough details about the structure and operation of the
`
`elements associated with the above identified claimed features to enable one skilled in the art to
`
`make and use the invention without undue experimentation.
`
`3.
`
`Claims 19-44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9368 Filed 03/16/23 Page 15 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 5
`
`matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
`
`invention.
`
`Claims 19, 27, 35 and 40 limitations, directed to "autocorrelation with a high peak-to-
`
`sidelobe ratio and has a low peak-to-average power ratio" are unclear, because the claims are
`
`incomplete, omitting elements of the claimed ratios and criteria for ratios to be considered "high"
`
`and ratios considered "low".
`
`Other claims are rejected as the claims depending on the claims rejected above.
`
`Drawings and Specification
`
`The Drawings and the Specification are objected to, because the Amendment of 2/03/12
`
`introduced new matter into the Drawings and the Specification, as described above.
`
`2.
`
`Applicant's arguments filed 10/21/13 have been fully considered but they are not
`
`Response to Arguments
`
`persuasive.
`
`On pages 10-13 of the Response, Applicant argues that incorporation by reference of the
`
`unpublished PCT is proper.
`
`Examiner respectfully disagrees.
`
`The current application claims priority of 02/13/2004, which clearly contradicts incorporation of
`
`the PCT with a later priority date of O 1/27/2005.
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9369 Filed 03/16/23 Page 16 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 6
`
`As indicated on page 11, the referenced application/PCT was crafted after the filing date of the
`
`current application and therefore cannot be clearly identified.
`
`Therefore, Applicant's statement of "All of the above patents and applications and other
`
`references, including any that may be listed in accompanying filing papers, are incorporated
`
`herein by reference" on published paragraph [0060], cannot include applications/PCT which will
`
`be filed in future, on January 27 2005.
`
`It is not only the PCT number was missing on the priority date of the current Application
`
`(Provisional application 60/544,521, filed on Feb. 13, 2004), but the PCT application was not
`
`submitted to the PCT Receiving Office, as the PCT filing date is January 27, 2005.
`
`In addition, Applicant relies on the broadly-worded "catch-all" paragraph [0060] that
`
`attempts to incorporate limitless number of references, which lacks a clear statement of
`
`incorporation.
`
`On pages 13-15 of the Response, Applicant argues that claims 19, 27, 35 and 40 limitations,
`
`directed to "autocorrelation with a high peak-to-sidelobe ratio, wherein the probing sequence has
`
`low peak-to-average power ratio", are supported by cited portions [0070], [0091] and [0093] of
`
`the disclosure.
`
`Examiner respectfully disagrees.
`
`The cited portions of the disclosure do not provide any support to "low peak-to-average power
`
`ratio" of the claims.
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9370 Filed 03/16/23 Page 17 of 38
`
`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Page 7
`
`In addition, the disclosure also does not describe/support, which ratios are considered "high" and
`
`which are considered "low", as the portions mentioning the high and low ratios lack any criteria
`
`to separate ratios which are considered "high" from ratios, which are considered "low".
`
`Therefore, claims 19, 27, 35 and 40 are identified as failing enablement requirement and are
`
`rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph.
`
`On pages 15 and 16 of the Response, Applicant argues that amended claims 19, 27, 35 and 40
`
`are clear.
`
`Examiner respectfully disagrees.
`
`Claims 19, 27, 35 and 40 limitations, directed to "autocorrelation with a high peak-to-sidelobe
`
`ratio, wherein the probing sequence has low peak-to-average power ratio", are unclear, because
`
`the limitations do not indicate which peak-to-sidelobe ratios are considered "high" and which
`
`peak-to-average power ratios are considered "low", as the limitations lack any criteria for ratios
`
`companson.
`
`In addition, it unclear which elements are included and which are excluded in the claimed ratios,
`
`as the claims limitations do not indicated which signals are used to indicate peak values of the
`
`ratios, which signal sidelobe values are considered for the peak-to-sidelobe ratio and which
`
`signals are averaged for the peak-to-average ratio.
`
`

`

`Case 2:22-md-03034-TGB ECF No. 131-4, PageID.9371 Filed 03/16/23 Page 18 of 38
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`Application/Control Number: 13/246,677
`Art Unit: 2461
`
`Pag