Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 1 of 15 PageID #: 2007
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`Exhibit “S”
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`

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`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 2 of 15 PageID #: 2008
`
`PATENT
`Attorney Docket No. 194.0033-00000
`Customer No. 22882
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`)
`In re Application of:
`)
`Ct1unli \Nu et al.
`)
`Serial No.: 13/164,266
`)
`Fiied: June 20 , 2011
`)
`For: CARRIER AGGREGATION
`VVITH POWER HEADROOM REPORT )
`
`Confirmation No.: 1517
`
`Group Art Unit 2476
`Examiner: Ronald B. Abelson
`
`Mail Stop AMENDMENT
`Commissioner for Patents
`P .O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`AMENDMENT
`
`In reply to the Office Action dated May 23, 2014 ("Office Action"), please amend
`
`the application as foliows:
`
`Amendments to the Claims are reflected in the listing of claims, which begins on
`
`page 2 of this paper.
`
`Remarks begin on page 9 of this paper.
`
`Amendment
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 3 of 15 PageID #: 2009
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`Amendments to the Claims:
`
`Ti1is listing of claims will replace all prior versions, and listings, of claims in the
`
`application:
`
`Listing of Claims:
`
`1.
`
`(currently amended) A method, comprising:
`
`configuring a user equipment to send a power headroom report control
`
`element in an uplink, wAefe.if.t..tt1e power headroom report control element
`
`includes a bitmap indicating which power headroom reports are being reported;
`
`receiving the power headroom report control element from the user
`
`equipment; arid
`
`processing the received power headroom report control element based on
`
`the con-figuration of the user equipment,;_ and
`
`processing the received power headroom report control element by
`
`.Qrocessing the bitmap to include bits for Qower headroom reports for a pluralit:t
`
`of secondary cells.
`
`2.
`
`(currently amended) The method of claim 1, further comprising processing the
`
`receivee power heaSf€om report eentf€1 element, wherein the bitmap is in one
`
`of: a MAC subi1eader andor--.fn. a payload.
`
`3.
`
`{currently amended) The method of claim 1, fwiher comprising processing the
`
`wherein tile power headroom report control element includes at least one~
`
`of: a type 1 power headroom report for a primary serving ceil SF-and a type 2
`
`power headroom report ·for the primary serving cell.
`
`4.
`
`{currently amended) The method of claim:+~. wherein the type 1 power
`
`headroom report is comguted as P cmax~c minus Qhysical uplink shared
`
`channel {PUSCH) power. and the type 2 power headroom report is computed as
`
`P cmax.c m inus physicalupiink control channel (PUCCH) power minus PUSCH
`powerfut:.tl::ler ooFApr:isiA§ p~=GBessiA§ tt:le r:eooivee peweF ~eadroor:r:~ r:8}1eft GeAtro!
`
`-2-
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`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 4 of 15 PageID #: 2010
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`eleFRent, wt:lereiA tt:le bitmap oomprises bits fer pewer headroom reports fer a
`
`plurality o:f seceRdaty cells.
`(currently amended) A method, comprising:
`
`5.
`
`preparing a povver headroom report control element, based on a trigger
`configured by a base station, ~the trigger deterrniAes determining when a
`
`the power headroom report control element is to be sent in an uplink, wl::iereiR
`
`the preparing of the power headroom report control element includes
`
`incorporating a bitmap indicating which power headroom reports are being
`
`reported, the preparing of the power headroom report control element further
`
`inciudes greQarin,g the bitmap to include bits for power headroom reports for a
`
`pluralitv of secondary cells; and
`
`sending the prepared power headroom report control element to the base
`
`station .
`
`6.
`
`(currently amended) The method of claim 5, wherein the preparing of the power
`
`headroom report control element comprises includes preparing the bitmap in one
`
`of: a MAC subheader andef'...fr.t a payload .
`
`7.
`
`(currently amended) The method of claim 5, wherein tRe preparing the power
`
`beadroom ceport control element inc!udescemprises preparing the bitmap ~o
`
`inciude at least one bit-fer--of: a type 1 power headroom report for a primary
`
`serving cell Sf-and a type 2 power headroom report for the primary serving ceil.
`
`8 .
`
`(currently amended) The method of claim [)z, wherein the type 1 power
`
`headroom report is computed as P crnax,c minus physical uplink shared
`
`channel (PUSCH) power, and the type 2 power headroom report is computed as
`
`P cmax,c rn inus phvsical uplink control channel fPUCCH} power minus PUSCH
`
`powerwheiein the preparin§ the control elemen: cemprises preparing the bitFRap
`
`to iAciude bits for po~ .. -.~er headroem re~ofts fof a ~h::1rality of secoAdaFy cells.
`
`9.
`
`(currently amended) A non-transitory computer readable medium encoded with a
`
`computer program that, when executed in hardware, causes the hardware to
`
`perform a process, the process comprising :
`
`-3-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 5 of 15 PageID #: 2011
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`providin§ configuring a user equipment to send a power headroom report
`
`control element in an uplink, 'Nherein the power headroom report control element
`
`includes a bitmap indicating which power headroom reports are being reported ;
`
`receiving the power headroom report control element from the user
`
`equipment; aP.G
`
`processing the received power headroom repori control element based on
`
`the configuration of the user equipment: and
`
`processing the received power headroorn report control element by
`
`orocessing the bitmap to include bits for power headroom reports for a plurality
`
`of secondwy cells.
`(currently amended) The non-transitory computer readable medium of claim 9,
`
`·10.
`
`'Nherein the process includes processing the received power headroom report
`
`ooru~l-e~wherein the power headroom report control element includes
`
`the bitmap in one of: a MAC subheader andef-i.R a payload.
`
`11.
`
`(currently amended) The non-transitory computer readable medium of claim 9,
`
`~-the-pr~G&~ .
`
`' ~~-t
`
`control element, wherein the bitmap comprises wherein the power headroom
`report control element includes at !east one bit for of_;_ a type 1 power headroom
`report for a primary serving cell er--and a type 2 power t1eadroom report for the
`
`·12.
`
`primary serving cell.
`(currently amended) The non-transitory computer readable medium of claim 911.
`wherein the type 1 power headroom report is computed as P cmax,c minus
`
`Qhysical uplink shared channel (PUSCH) power, and the type 2 power headroom
`
`report is comQuted as P cmax,c rninus Qhysical uplink control channel (PUCCH}
`
`power minus PUSCH power .. 'l.'herein the process inci!:Jdes processir19 th-e
`
`receivee power headf€am re~ert centf€1 element, vJherein the bitmap comprises
`
`bits--fo-r--pew-er---t:'ieadreom--r-epe-r-ts--fo-r--a--plur-a-l-ity--ef--seGondary-€ell-s .
`
`13.
`
`{currently amended) A non-transitory computer readable medium encoded with a
`
`computer program that, when executed in hardware, causes the hardware to
`
`-4-
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`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 6 of 15 PageID #: 2012
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`perform a process, the process comprising:
`
`preparing a power headroom report control element, based on a trigger
`
`configured by a base station, w-1--:terein--ttle trigger deter-mine-s--determining wt1en
`
`thea power headroom report control element is to be sent in an uplink, vJherein
`
`the preparing of the power headroom report control element includes
`
`incorporating a bitmap indicating which power headroom reporis are being
`
`reported, the preparing of the power headroom report control element further
`
`includes preparing the bitmap to include bits ·for power headroom reports ·for a
`
`oluraiity of secondary cells; and
`
`sending the prepared power headroom report control element to the base
`
`station.
`
`14.
`
`(currently amended) The non-transitory cornputer readable medium of clairn 13,
`
`wherein u·1e preparing of the power headroom report control element ~~
`
`includes preparing the bitmap in one of: a MAC subheader andeHH- a payload.
`
`15.
`
`(currently amended) The non-transitory computer readable medium of claim 13,
`
`wherein ~~H'~the power headroom report control elernent inc!udes-Ga-A
`
`inei!:!Ele preparing the bitmap to include at least one b!t fer of: a type 1 power
`
`headroom report for a primary serving cell GF-~nd a type 2 power headroom
`
`report for the primary serving cell.
`
`16.
`
`(currently amended) The non-transitory computer readable medium of claim
`
`~15, wherein the type ·1 power headroom report is comouted as P cmaxfc
`
`minus ohysical uplink shared ct1annel (PUSCH) power, and tt1e type 2 power
`headroom report is computed as P cmax,c minus physical uplink control channel
`
`(PUCCH}.oower minus PUSCH gowe~H-lJ1e-~4~4*emeH-t
`
`ean include preparing the bitmap to inci~:Jee bits fer po·v~~ter heaereom reports for a
`
`~}!ur:aiity of seooReary cells.
`
`17.
`
`(currently amended) An apparatus, comprising:
`
`at least one processor; and
`
`at least one memory including computer program code, wf+ef.e.ifi-.the at
`
`-5-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 7 of 15 PageID #: 2013
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`least one memory and the computer program code fife-being configured to, w itll
`
`the at least one processor, cause the apparatus at least to~
`
`configure a user equipment to send a power headroom report
`
`control element in an uplink, wherein the power headroom report control
`
`element iAc!t:ldes including a bitmap iAdicatiA§ that indicates ~;vhich power
`
`headroom reports are being reported,;
`
`receive the power headroom report control element from the user
`
`equipment.;:;-f.ffifi
`
`processing the received process the power headroom report
`
`control element based on the configuration of the user equipment~ and
`
`process the power headroom repori control element by processing
`
`the bitmap to include bits for power headroom reports for a plurality ot
`
`secondary ce!!s.
`
`18.
`
`(currently amended) The apparatus of claim 17, wherei-R tHe at l-east one
`
`memory and the computer program code are configured to, with the at least one
`
`f¥~~~1&-aWea
`
`~·
`
`headroom report control element, wherein the power headroom report control
`
`element includes the bitmap in one of: a MAC subheader and~ a payload.
`
`19.
`
`(currently amended) The apparatus of claim 17, wher-eiB·.th&·af..J-ea&t.·ene
`
`memory and the computer program code are configured to, with the at least one
`
`p:-ocesso:-, cau~~~s at lea-st to prBcess tf.le receWed f)OW~
`
`Readrooo:t report WRtre! e~erneRt, Wherei-R tHe Sitffi8f.:l 6001f.:lfiSeS Wherein the
`
`power headroom reQort control element includes at least one bit for of: a type 1
`
`power headroom report for a primary serving cell <*-and a type 2 power
`
`20.
`
`headroom report for the primary serving eel!.
`(currently amended) The apparatus of claim 471~ .. ~v.berei.oJ.b_e t~pe 1 Q.Q.WJ?l
`headroom report is computed as P cmax,c minus physical uplink shared
`
`channel (PUSCH) oower, and the type 2 oower headroom repori is computed as
`
`P cmax,c rninus phvsical uplink control channel (PUCCH} power minus PUSCH
`
`-6-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 8 of 15 PageID #: 2014
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`powerwher:ein the at least one memory and the computer: program code are
`
`eonfigured to, 'Nith the at !east oRe processor, cause the apparatus at !east to
`
`preGess--the--rece+ved-po-wer--t-=teadroom--repor-t-GoP.tro~--ef.emeAt-;--wh.erein--the
`
`bitmap comprises bits tor pov~er headroom reports for a plurality of secondary
`
`ool+s.
`
`21.
`
`(currently amended) An apparatus, comprising:
`
`at least one processor; and
`
`alleast one memory including computer program code, wftefe.i&trle at
`
`!east one memory and the computer program code aFe-being configured to, with
`
`the at !east one processor, cause the apparatus at least to~
`
`prepare a power headroom report control element, based on a
`
`trigger configured by a base station, wherein the trigger determines when
`
`thea power r1eadroom report control element is to be sent in an uplink;
`
`wA€rein f?F~ariA§ preparation of the power r1eadroom report control
`
`element includes incorporating a bitmap indicating which power headroom
`
`reports are being reported, the Qre.Qaration of the power headroom report
`
`control element further includes preparing the bitmap to include bits for
`
`power headroom reports for a Plwa!ity of second~§_and
`
`send the pr-epared--power headroom report control element to the
`
`base station_
`(currently amended) The apparatus of claim 21, wherein the at !east one
`
`22.
`
`memory and the computer program code are conf igured to, with the at least one
`
`processor, cause the apparatus at least to prepare the power headroom report
`
`controi element by preparing the bitrnap in one of: a MAC subheader andGF-.fft a
`
`payload.
`
`2:3.
`
`(currently amended) The apparatus of claim 2·1, wherein the at !east one
`
`memory and the computer program code are configured to, witt1 the at least one
`
`processor, cause the apparatus at least to prepare the power headroom report
`
`controi element by f)t.epaFiR§ the eitrna!') te iRGiud.eincluding at least one ~~f:
`
`-7-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 9 of 15 PageID #: 2015
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`a type 1 power headroom report for a primary serving cell eF-and a type 2 power
`
`headroom report for the primary serving cell.
`
`24.
`
`(currently amended) The apparatus of claim ·2·123, wherein the type 1 power
`
`headroom report is computed as P cmax,c minus physical uplink shared
`
`channel (PUSCH) power. and the type 2 power headroom report is computed as
`
`P cmax.c minus physical uoiink control channel (PUCCH) power minus PUSCH
`
`powerwherein the at least one mernory and the computer program code are
`
`GeA~if€4-t{:);-wAA-the-a.t-~~-oo~sess~~ttts-~
`
`prepare the control elemef1t by preparing the bitmap to iRolude bits for po~.<er
`
`t4eaElroom reports fer a plurality of seeondafY ee!!s.
`
`-8-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 10 of 15 PageID #: 2016
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`REMARKS
`
`Applicant amended claims 1-24 (including independent claims 1, 5, 9, 13, 17,
`
`and 21) to further define Applicant's claimed invention.
`
`I. Rejections under 35 U.S.C. §§ 102 and 103.
`A. Case law regarding obviousness under 35 U.S.C. §§ 102 and 103.
`(1) Anticipation under 35 U.S .C. § 102
`According to MPEP § 706.02 Part V, "for anticipation under 35 U.S.C. 102, the
`
`[prior art] reference must teach every aspect of the claimed invention either explicitly or
`
`impliedly."
`
`(2) Obviousness under 35 U.S.C. § 103
`The framework governing obviousness under 35 U.S.C . § 103(a), as set forth in
`
`Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. ·1, ·148 U.S.P.Q. 459
`
`(1966), has recently been reaffirmed in KSR International Co. v. Teleflex Inc. et al.
`
`(See KSR v. Teleflex, ·127 S.Ct. 1727 (200'1).) Under Graham v. John Deere, a
`
`combination of references that does not teach or suggest each and every element of
`
`the claimed invention supports a finding of non-obviousness. Furtllermore,
`
`according to the Federal Circuit, "a searching comparison of the claimed invention -
`
`including all its limitations- with the teachings of the prior art" is required of the
`
`Examinen .. vhen determining whether a claim is obvious. (In re Ochiai, 71 i=.3d 1565,
`
`1572 (Fed. Cir. 1995) (emphasis added).) As such, "obviousness requires a suggestion
`
`of all limitations in a claim." (CFMT, Inc. v. YieldUP lnt'!. Corp., 349 F.3d 1333, 1342
`
`(Fed. Cir. 2003) (citing In re Rovka, 490 F.2d 981 , 985 (C.C.P.A. 1974)).) Accordingly,
`
`a combination of references that does not result in each and every limitation of the
`
`claimed invention can be determinative of a finding of non-obviousness and can defeat
`a rejection under 35 U.S.C. § 103(a).
`
`-9-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 11 of 15 PageID #: 2017
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`B. Reiection of independent claims 1, 9, and 17 under 35 U.S.C. § 102(e}
`
`based on Zhang.
`
`In tt1e Office Action, the Examiner (at page 2, line 18 to page 3, line 5) rejected
`independent clairns 1, 9, and 17 under 35 U.S.C. § 102(e) as being unpatentable over
`
`U.S. Patent Publication No. 2011/0243016 to Zhang et a!. ("Zhang").
`
`("1) Rejection of independent claim 1.
`
`Independent claim 1 has been amended to incorporate at !east the subject
`
`matter of dependent claim 4 and allowable dependent claim 16, and recites "processing
`
`the received power headroom report control element by processing the bitmap to
`
`include bits for power headroom reports for a plurality of secondary cells." Zhang does
`
`not disclose the above-quoted recitation of amended independent claim 1. Therefore,
`
`Applicant respecttuliy submits that amended independent claim 1 is patentable over the
`rejection under 35 U.S.C. § 102(e) based on Zhang .
`
`(2) Rejection of independent claim 9.
`
`Independent claim 9 has been amended to incorporate at !east the subject
`
`rnatter of dependent claim 12 and allowable dependent claim 16, and recites
`
`"processing the received povver headroom report control element by processing the
`
`bitmap to include bits for power headroom reports for a plurality of secondary cells."
`
`Zhang does not disclose the above-quoted recitation of amended independent claim 9.
`
`Therefore, Applicant respecttuliy submits that amended independent claim 9 is
`patentable over the rejection under 35 U.S.C. § 1 02(e) based on Zhang.
`
`(3) Rejection of independent claim 17.
`
`Independent claim 17 has been amended to incorporate at !east the subject
`
`matter of allowable dependent claim 16 and dependent claim 20, and recites "process
`
`the power headroom report control element by processing the bitmap to include bits for
`
`power headroom reports for a plurality of secondary cells." Zhang does not disclose the
`
`above-quoted recitation of amended independent claim 17. Ti1erefore, Applicant
`
`respectfully submits that amended independent claim 17 is patentable over the
`rejection under 35 U.S.C. § 102(e) based on Zhang .
`
`-10-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 12 of 15 PageID #: 2018
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`C. Reiection of claims 1. 2. 4, 9, 10, 12, 17, 18, and 20 (including
`
`independent claims 1, 9, and 17) under 35 U.S.C. § 102{a} based on
`
`Potevio.
`
`The Examiner (at page 3, line 9 to page 4, line 2 of the Office Action) rejected
`
`claims 1, 2, 4, 9, 10, 12, 17, 18, and 20 (including independent claims 1, 9, and 17)
`under 35 U.S.C. § 102(a) as being unpatentable over "Remaining Issues on PHR for
`CA" by Potevio ("Potevio").
`
`(1) Rejection of independent claim 1.
`
`Independent claim 1 has been amended to incorporate at least the subject
`
`matter of dependent claim 4 and allowable dependent claim 16, and recites "processing
`
`the received power headroom report control element by processing the bitmap to
`
`include bits for power headroorn reports for a plurality of secondary cells." Potevio does
`
`not disclose the above-quoted recitation of amended independent clairn 1. Therefore,
`
`Applicant respectfuliy submits that amended independent claim i is patentable over the
`rejection under 35 U.S.C. § 102(a) based on Potevio.
`(2) Rejection of independent claim 9.
`Independent claim 9 has been amended to incorporate at least the subject
`
`matter of dependent claim 12 and allowable dependent claim 16, and recites
`
`"processing the received power headroom report control element by processing the
`
`bitmap to include bits for power headroom reports for a plurality of secondary cells."
`
`Potevio does not disclose the above-quoted recitation of amended independent claim 9.
`
`Therefore, Applicant respectfuliy submits that amended independent claim 9 is
`patentable over the rejection under 35 U.S.C. § 102(a) based on Potevio.
`(3) Rejection of independent claim 17.
`
`Independent claim 17 has been amended to incorporate at !east the subject
`
`matter of allowable dependent claim 16 and dependent claim 20, and recites "process
`
`the power headroom report control element by processing the bitmap to include bits for
`
`power headroom reports ·for a plurality of secondary cel!s." Potevio does not disclose
`
`the above-quoted recitation of amended independent claim 17. Therefore, Applicant
`
`-11-
`
`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 13 of 15 PageID #: 2019
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`respectfuliy submits that amended independent claim 17 is patentable over the
`
`rejection under 35 U.S.C. § 102(a) based on Potevio.
`
`(4) Rejection of dependent claims 2, 4, 10, 12, 18, and 20.
`
`Given that amended independent claims 1, 9, and 17 are patentable over the
`Examiner's rejections under 35 U.S.C. § 102(a) based on Potevio, Applicant
`
`respectfully submits that dependent claims 2, 4, 10, 12, 18, and 20, dependent from
`
`amended independent claims 1, 9, or 1'7, or claims dependent therefrom, are
`
`patentable at least due to their dependency from an allowable independent claim.
`
`D. Rejection of claims 5. 6, 8, 13, 21, 22, and 24 (including independent
`
`claims 5. 13, and 21} under 35 U.S.C. § 103(a) based on Kim in view of
`
`Potevio.
`
`ln the Office Action, the Examiner (at page 4, line 15 to page 5, line 21 of the
`
`Office Action} rejected claims 5, 6, 8, 13, 21, 22, and 24 (including independent claims
`
`5, 13, and 21) under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent
`
`Publication No. 2011/0092217 to Kim et al. ("Kim"} in view of Potevio.
`( 1) Rejection of independent claim 5.
`Independent claim 5 has been amended to incorporate at least the subject
`
`matter of dependent claim 8 and allowable dependent claim 16, and recites "the
`
`preparing of the power headroom report control element further includes preparing the
`
`bitmap to include bits for power headroorn reports for a plurality of secondary cells."
`
`The combination of Kim and Potevio does not disclose the above-quoted recitation of
`
`amended independent claim 5. Therefore, Applicant respectfully submits that amended
`independent claim 5 is patentable over tt1e rejection under 35 U.S .C. § 103(a} based on
`
`Kim and Potevio.
`
`(2) Rejection of independent c!airn 13.
`
`Independent claim 13 t1as been amended to incorporate at !east the subject
`matter of allowable dependent claim 16 and recites "the preparing of the power
`headroorn report control elernent further includes preparing the bitmap to include bits
`
`for po·wer headroom reports for a plurality of secondary cells." The combination of Kim
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`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 14 of 15 PageID #: 2020
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`and Potevio does not disclose tile above-quoted recitation of amended independent
`
`c!aim 13. Therefore, Applicant respectfully submits that amended independent claim
`13 is patentable over the rejection under 35 U.S.C. § 103(a) based on ~<im and Potevio.
`(3) Rejection of independent claim 21.
`
`Independent claim 21 t1as been amended to incorporate at least the subject
`
`matter of allowable dependent claim 16 and dependent claim 24, and recites "the
`
`preparation of the power headroom report control element further includes preparing
`
`the bitmap lo include bits for power headroorn reports for a plurality of secondary cells."
`
`The combination of Kim and Potevio does not disclose the above-quoted recitation of
`
`amended independent claim 21. Therefore, Applicant respectfully submits that
`amended independent claim 21 is patentable over the rejection under 35 U.S.C. §
`1 03(a) based on Kim and Potevio.
`
`(4) Rejection of dependent claims 6, 8, 22, and 24.
`
`Given that amended independent claims 5 and 21 are patentable over the
`Examiner's rejections under 35 U.S.C. § 103(a) based on Kim and Potevio, Applicant
`respectful!y submits that amended dependent claims 6, 8, 22, and 24, dependent from
`amended independent claims 5 or 21 , or claims dependent therefrom, are patentable at
`
`least due to their dependency from an allowable independent claim.
`
`II. Conclusion.
`
`Applicant submits that amended independent claims 1, 5, 9, 13, 17, and 2·1 are
`
`patentable and tt1at amended dependent claims 2-4, 6-8, 10-12, 14-16, 18-20, and 22-
`
`24, dependent from amended independent c!aims 1, 5, 9, 13, ·17, or 21, or claims
`
`dependent therefrom, are patentable at least due to their dependency from an
`
`allowable independent claim.
`
`In view of the foregoing remarks, it is respectfully submitted that the claims, as
`
`amended, are patentable. Therefore, it is requested that the Examiner reconsider tt1e
`
`outstanding rejections in view of the preceding comments. Issuance of a timely Notice
`
`of Allowance of the claims is earnestly solicited.
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`

`

`Case 6:14-cv-00982-KNM Document 160-10 Filed 11/18/15 Page 15 of 15 PageID #: 2021
`
`Appiication No. 13i164,266
`Amendment dated July 15, 2014
`Reply to Office Action of May 23, 2014
`
`To the extent any extension of time under 37 C.F .R. § 1.136 is required to obtain
`
`entry of this rep!y, such extension is hereby respectfully requested. If there are any
`fees due under 37 C.F .R. §§ 1.16 or 1. ·17 which are not enclosed t1erewith, including
`any fees required for an extension of time under 37 C.F.R. § 1.136, please charge such
`
`fees to our Deposit Account No. 50-1068.
`
`Respectfully submitted,
`
`MARTIN & FERRARO, LLP
`
`By:
`
`/Alfred Y. Chu/
`Alfred Y. Chu
`Registration No. 62,317
`
`Date: July 15, 2014
`
`1557 Lake O'Pines Street, N E
`Hartville, Ohio 44632
`Telephone: (330) 877-0700
`Facsimile: (330) 87'7-2030
`
`-14-
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`