`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Ofl'ice
`Addiess: COMMISSIONER FOR PATENTS
`P.O. Box [450
`Achandria. Virginia 22313-[450
`www.115plo.gov
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`121581584
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`10119;“2009
`
`Dong Youn SEO
`
`0465—2354PUSI
`
`2887
`
`33”
`”9°
`““0“
`W
`BIRCHSTEWARTKOLASCHmm —
`PO BOX 747
`JAIN. RAJ K
`FALLS CHURCH, VA 22040-0747
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`PAPER NUMBER
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`ART UNIT
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`24??
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`NOTIFICATION DATE
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`DELIVERY MODE
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`1111042010
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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):
`maih‘oom @bskb.c0m
`
`”mm (Rev‘ 04,07)
`
`Ex. 1009 - TCT Mobile (US) Inc.
`Ex. 1009 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 1 of 5
`Page 1 of 5
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`

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`
`
`Application No.
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`Applicantls)
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`
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` 12681584 SEO ET AL.
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`
`
`
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`
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`Office Action Summary
`
`Examiner
`
`RAJ K. JAIN
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`Art Unit
`
`2472
`
`-- The MAlLI‘NG DATE 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.
`Fxtensions oftime may ')e available under the provision5 of 3? CFR 1.13fi[a).
`III no event however may a re)Iy be timely filed
`after SIX {6] IIONI HS 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] MONT HS trom the mailing date 01 this communication.
`—
`— Failure to reply within the set or extended period for reply will. by statute, cause the application to become ARANDONFD [35 USC. § 133).
`Any reply received by the Office later than three months after the mailing; (.‘ate oftliis communicatien, even iftimely filed, may reduce any
`earned patent term adjustment. See 3! Lil-R ‘I.I’04[b).
`
`Status
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`HIE Responsive to communication(s) filed on 21 May 2010.
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`2a)l:l This action is FINAL.
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`2mg This action is non—final.
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`3)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 Ex parte Quayle, 1935 CD. 11,453 OG. 213.
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`Disposition of Claims
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`(HIE Claim(s) M isfare pending in the application.
`
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`4a) Of the above claim(s)
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`isiare withdrawn from consideration.
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`5 El Claim 5)
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`islare allowed.
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`6_—74 isfare rejected.
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`isfare objected to.
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`are subject to restriction andior election requirement.
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`Application Papers
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`9)I:l The specification is objected to by the Examiner.
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`1mg] The drawing(s) filed on 08 January 2070 istare: mg accepted or b)l:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawingfs) be held in abeyance. See 37 CFR1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawingfs) is objected to. See 37 CFR 1.121(d).
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`1t)l:l 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
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`13% Acknowledgment is made of a claim for foreign priority under 35 USC. § 119(a)—(d) or (f).
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`mg All
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`b)I:l Some * c)l:| None of:
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`LIZ Certified copies of the priority documents have been received.
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`2.I:l Certified copies of the priority documents have been received in Application No.
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`
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`3.l:l Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachmentls)
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`
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`4) El Interview Summary (PTO—413)
`1) El Notice of References Cited [PTO—892)
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`Paper NOISII'MEII Date.
`2) El Notice of Draitsperson's Patent Drawing Review (PTO—948)
`3], g Information Disclosure Statementts) (PTOI'SBI‘OS)
`5) El Notice of Informal Patent Application
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`6) El Other.
`.
`Paper Notsji'Mail Date
`.
`Ex. 1009 - TCT Mobile (US) Inc.
`EX 1—009—-TCT Mobile WSI—n
`Part of Paer Not at
`ate 200101026
`Office Action Summary
`TCT Mobile (US) Inc V Sisvel SPA IISJR2021-0067 8
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`Page 2 of 5
`Page 2 of 5
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`[1.5. Fate": a"c |'ace11a'k(3t"ce
`PTOL—326 (Rev. 08—06)
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`

`

`ApplicationfControl Number: 12,681,584
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`Page 2
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`Art Unit: 2472
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`DETAILED ACTION
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`Claims 14 is objected to under 37 CFR1.75 as being a substantial duplicate of
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`claim 13. When two claims in an application are duplicates or else are so close in
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`content that they both cover the same thing, despite a slight difference in wording, it is
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`proper after allowing one claim to object to the other as being a substantial duplicate of
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`the allowed claim. See MPEP § 706.03(k).
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`Examiner recommends deletion of one of the claims.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351(a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
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`Claims 6-14 are rejected under 35 USC. 102(e) as being clearly anticipated by
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`Zhang et al (US 200910257408).
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`Regarding claim(s) 6, 12—14, Zhang discloses a method for deactivating semi—
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`persistent scheduling (SP8) in a wireless mobile communication system (abstract; Figs.
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`4 & 6; para 29), the method comprising:
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`receiving, by a user equipment (UE) (Fig. 4, ref. 110), a downlink control channel
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`(para 31, a PDCCH is used as the control channel); and
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`deactivating, by the UE, the SPS when a binary field indicating resource
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`allocation information contained in the downlink control channel is entirely filled with 1
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`wherein the deactivation of the SPS includes release of a downlink assignment or an
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`uplink grant (Figs. 6, paras 33—35 and 43, binary field with ‘1’ deactivates the SPS, while
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`for example purposes para 33 shows all ‘O's however one skilled in the art will
`
`Ex. 1009 - TCT Mobile (US) Inc.
`EX. 1009 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-0067 8
`Page 3 of 5
`Page 3 of 5
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`ApplicationiControi Number: 12,681,584
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`Page 3
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`Art Unit: 2472
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`appreciate that replace ‘0' with ‘1’ is simple algorithm change providing the same
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`functionality).
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`Regarding claim(s) 7, Zhang discloses wherein the downlink control channel is a
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`physical downlink control channel (PDCCH) (paras 9, 33—35).
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`Regarding claim(s) 8, Zhang discloses, wherein a downlink control information
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`(DCI) format of the downlink control channel is a 'format 0' or a 'format iA' (para 35).
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`Regarding claim(s) 9, Zhang discloses, wherein the wireless mobile
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`communication system uses a scheduling based on a compact scheme, and the binary
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`field is composed of a field indicating a resource indication value (RIV) (paras 33, 43 &
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`74).
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`Regarding claim(s) 10, Zhang discloses, wherein the wireless mobile
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`communication system uses a scheduling based on a compact scheme, and the binary
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`field is composed of a field indicating a resource indication value (RIV) and a field
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`indicating 'Gap' information used for distributed allocation of resources (paras 33, 43 &
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`74).
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`Regarding claim(s) ii, Zhang discloses, wherein the wireless mobile
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`communication system uses a scheduling based on a compact scheme, and the binary
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`field is composed of a field indicating a resource indication value (RN) and a field
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`indicating hopping information (para 66).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to RAJ K. JAIN whose telephone number is (571)272-
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`3145. The examiner can normally be reached on M-TH.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, William Trost can be reached on 571-272-7872. The fax phone number for
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`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
`
`PatentApplication Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Ex. 1009 - TCT Mobile (US) Inc.
`EX. 1009 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-0067 8
`Page 4 of 5
`Page 4 of 5
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`ApplicationIControl Number: 12,681,584
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`Page 4
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`Art Unit: 2472
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http:Hpair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866—217—9197 (toll—free).
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`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800—786—91 99 (IN USA OR CANADA) or 571—272—1000.
`
`/Raj K. Jain/
`
`Primary Examiner, Art Unit 2472
`
`Ex. 1009 - TCT Mobile (US) Inc.
`EX. 1009 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-0067 8
`Page 5 of 5
`Page 5 of 5
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