`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
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`13/234,904
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`09/16/2011
`
`Timothy J. Speight
`
`9147—99569—US
`
`2684
`
`02/13/2012
`7590
`22242
`FITCH EVEN TABIN & FLANNERY
`120 SOUTH LASALLE STREET
`SUITE 1600
`CHICAGO, IL 60603-3406
`
`EXAMINER
`
`SHEDRICK, CHARLES TERRELL
`
`ART UNIT
`
`2617
`
`MAIL DATE
`
`02/13/2012
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`ERICSSON EXHIBIT 1003
`
`
`
`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`
` 13/234,904 SPEIGHT, TIMOTHY J.
`Examiner
`Art Unit
`CHARLES SHEDRICK
`2617
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 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 CFR1. 136(a).
`In no event however may a reply be timely filed
`after SIX () 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)|:I Responsive to communication(s) filed on
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`
`
`.
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`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
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`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZ CIaim(s)1is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)|:| CIaim(s) _ is/are allowed.
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`7)|Xl Claim(s) 1is/are rejected.
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`8)|:| CIaim(s) _ is/are objected to.
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`9)|:I CIaim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`
`11)IZI The drawing(s) filed on 17Januarz 2012 is/are: a)EI 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).
`
`12)|:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
`
`13)|X| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)|Z AII
`
`b)|:l Some * c)I:I None of:
`
`1.IXI Certified copies of the priority documents have been received.
`
`2.|:l Certified copies of the priority documents have been received in Application No. _
`
`3.I:I 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) IZI Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date _.
`U.S. Patent and Trademark Office
`
`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I Notice 0f Informal Patent Application
`6)I:I Other:—
`
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20120209
`
`
`
`Application/Control Number: 13/234,904
`
`Page 2
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`Art Unit: 2617
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`DETAILED ACTION
`
`Double Patenting
`
`A rejection based on double patenting of the "same invention" type finds its
`1.
`support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers
`any new and useful process may obtain a patent therefor ..." (Emphasis added). Thus,
`the term "same invention," in this context, means an invention drawn to identical subject
`matter. See Miller v. Eagle Mfg. C0., 151 US. 186 (1894); In re Ockert, 245 F.2d 467,
`114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`1970).
`
`A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by
`canceling or amending the conflicting claims so they are no longer coextensive in scope.
`
`The filing of a terminal disclaimer cannot overcome a double patenting rejection based
`upon 35 U.S.C. 101.
`
`2.
`
`Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of
`
`claim 1 of prior US. Patent No. 8,031,654. This is a double patenting rejection.
`
`Claim Rejections - 35 USC § 103
`
`1.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`2.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`
`:PWNE
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`
`
`Application/Control Number: 13/234,904
`
`Page 3
`
`Art Unit: 2617
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`3.
`
`Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kakani US
`
`Patent Pub. No.:2005/0054347 A1 in view of Speight et al. WO 2005/002148 A1
`
`Consider Claim 1, Kakani teaches an apparatus for use in allocating resource in a
`
`wireless communication system employing transfer communication protocol (TCP) based
`
`data transfer between a network and a wireless subscriber communication unit (e.g., see
`
`at least figure 1, based on a TCP application as noted in at least paragraph 0015),
`
`the apparatus comprising: a scheduler located in the network(i.e., to schedule radio
`
`resources as noted in at least paragraph 0020), wherein the scheduler handles a TCP
`
`data segment for downlink (DL) transmission(i.e., the scheduler of network in figure 1
`
`as noted in at least figure 1 downlink transmission further described in at least
`
`paragraph 0024); a transmitter arranged to transmit the TCP data segment to the user
`
`equipment (e.g., message transmission described in at least paragraph 0024);wherein
`
`the message indicates an allocation of DL resources plus sufficient uplink resources to
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`transfer a stand—alone acknowledgement ACK data segment (e.g., allocation noted in at
`
`least paragraphs 0033, 0040 and 0049).
`
`However, Kakani does not specifically teach buffering the TCP data segment for
`
`downlink transmission.
`
`In analogous art, Speight teaches buffering the TCP data segment for downlink
`
`transmission(e.g., note that assuming the highest rate services are provided in the
`
`downlink, this means that larger buffering is likely to be required in the network
`
`node, i.e., the RNC - in the case of 3GPPP systems page 2 lines 24-27).
`
`Therefore, it would have been obvious to a person of ordinary skill in the art at
`
`the time the invention was made to modify Kakani for the purpose since buffering is
`
`
`
`Application/Control Number: 13/234,904
`
`Page 4
`
`Art Unit: 2617
`
`needed to achieve the highest download rate in the network of achieving a high download
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`rate as taught by Speight.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHARLES SHEDRICK whose telephone number is
`
`(571)272—8621. The examiner can normally be reached on Monday thru Friday 8:00AM—
`
`4:30PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Lester Kincaid can be reached on (571)—272—7922. 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.
`
`/Charles Shedrick/
`
`Primary Examiner, Art Unit 2617
`
`
`
`Application/Control Number: 13/234,904
`
`Page 5
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`Art Unit: 2617
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`
`
`Notice of References Cited Examiner
`
`Application/Control No.
`
`13/234304
`
`CHARLES SHEDRICK
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`SPEIGHT, TIMOTHY J.
`Art Unit
`
`2617
`
`Page 1 OH
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`*
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`Document Number
`Country Code-Number-Kind Code
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`Date
`MM_YYYY
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`Name
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`ClaSSIflcaTIOH
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`US-2005/O138243
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`06-2005
`
`Tierney et al.
`
`710/052
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`
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`*
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`Document Number
`Date
`.
`.
`.
`Country Code-Number-Kind Code
`MM-YYYY
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`Classification
`--—_———
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`FOREIGN PATENT DOCUMENTS
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`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
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`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
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`US. Patent and Trademark Office
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`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
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`Part of Paper No. 20120209
`
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`Application Number 13234904
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`Filing Date 2011-09-16
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`INFORMATION DISCLOSURE
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`STATEMENT BY APPLICANT
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`( Not for submission under 37 CFR 1.99)
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`First Named Inventor Speight, Timothy J.
`
`Art Unit | 2617
`Examiner Name
`Not Yet Assigned
`I 9147-99569-US
`
` Attorney Docket Number
`GoldenBridgeTechInc. W02005002148 -'2005-01-06
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` Dated Jul. 21, 2008.
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`W02004034656 -'2004-04-22
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`IPWirelessInc.
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`T5
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`No
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`.
`.
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`publisher, city and/or country where published.
`
`"3rd Generation Partnership Project; Technical Specification Group Radio Access Network; UTRAN Overall
`Description (Release 7)," (Mar. 2007). 3GPP:VaIbonne, France, TS 25.401 v7.3.0:1—49.
`
`
`I:I
`
`1
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`"3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; General Packet
`Radio Service (GPRS); ServiceDescription; Stage 2 (Release 7)," (Mar. 2007). 3GPP:VaIbonne, France, TS 23.060
`v7.4.0:1-216.
`
`
`|:|
`
`2
`
`"Transmission Control Protocol, Darpa Internet Program, Protocol Specification," (Sep. 1981). Information Sciences
`Institute, University of Southern California, RF0793, located at &|t;http://www.faqs.org/ftp/rfc/pdf/rf0793txt.pdf> (85
`pages).
`
`
`|:|
`
`3
`
`Braden, R. ed. (Oct. 1989). "Requirements for Internet Hosts--Communication Layers," RFC1122, located at &It;http:ll
`www.ietf.org/rfclrfc1122.txt> (116 pages).
`
`
`I:I
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`4
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`5
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`British Search Report Under Section 17 from British Patent Application No. GB0616241.6 Dated Nov. 20, 2006.
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`|:|
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`6
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`7
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`Holma, H. et al. eds. (2001). WCDMA for UMTS: Radio Access for Third Generation Mobile Communications. John
`Wiley & Sons Ltd.: West Sussex, England, 10 pages (Table of Contents).
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`International Search Report and Written Opinion of the International Searching Authority from PCT/l82007/002226
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`Filing Date
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`Speight, Timothy J.
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`Art U .
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`I 2617
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`Proceedings of the IEEE 83(10):1374—1396.
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`I 9147-99569-US
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`Mouly, M. et al. (1992). The GSM System for Mobile Communications. Telecom Publishing: Olympia, Washington, 8
`pages (Table of Contents).
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`Zhang, H. (Oct. 1995). "Service Disciplines for Guaranteed Performance Service in Packet-Switching Networks,"
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`INFORMATION DISCLOSURE
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`A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or
`his/her designee, during an inspection of records conducted by GSA as part of that agency's responsibility to
`recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and
`2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make
`determinations about individuals.
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`A record from this system of records may be disclosed, as a routine use, to the public after either publication of
`the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record
`may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in
`an application which became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspections or an issued patent.
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`A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.
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`EFS Web 2.1.17
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