Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 1 of 9 PageID #: 1998
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`Exhibit “R”
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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 2 of 9 PageID #: 1999
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`U NITED STATES P ATENT AND TRADEMARK O FFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States t•ateot and Trademark Office
`Address: COMMISSIONF.R FOR PATENTS
`P.O. Sox 1450
`Alexandria. Virginia 22313· 1450
`www.usplo.gov
`
`APPLICATION NO.
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`FlUNG DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`13/164,266
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`06120/2011
`
`Chwili WU
`
`089229.00377
`
`1517
`
`05/2312014
`
`7590
`32294
`Squire Sanders (US) LLP
`8000 TOWERS CRESCENT DRIVE
`14TH FLOOR
`VIENNA, VA 22182-6212
`
`EXAMINER
`
`ABELSON, RONALD B
`
`ART UNIT
`
`PAPER NUMBER
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`2476
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`05/23/2014
`
`ELECrRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time peliod 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):
`JPGENERAL TYC @SQUTRESANDERS.COM
`SONIA. wtiTTNEY @SQUIRESANDERS.COM
`
`PTOL-90A (Rev. 04/07)
`
`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 3 of 9 PageID #: 2000
`Ap plication No.
`Applicant(s)
`13/164,266
`WU ET AL.
`
`Office Action Summary
`
`A lA {First Inventor to File)
`Status
`No
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`RONALD B. ABELSON
`
`Art Unit
`2476
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;2. MONTHS FROM T HE MAILING DAT E OF
`THIS COMMUNICATION.
`• Extensions of time may be available under th e 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 O ffice later than three months a fter 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:8J Responsive to communication(s) filed on 4123114. 9129111. 6/20/ 11.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b} was/were filed on __ .
`2a)0 This action is FINAL.
`2b)I:8J 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)1:8l Claim(s) 1-24 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)1:8l Claim(s) 1.2.4-6.8 -10.12.13.17.18.21.22 and 24 is/are rejected .
`8)0 Claim(s) 3.7.11.14-16.19 and 23 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 Prosec ution Hig hway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http :/1\AN.rw.usoto.aovtpatents/init events/pph/index.jsp or send an inquiry to PPHfeedbackG.'iluspto.oov.
`
`Application Papers
`1 0)0 The specification is objected to by the Examiner.
`11 )1:8l The drawing(s) filed on 8130111 and 6/20!11 is/are: a) !81 accepted or b)O 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.
`
`Attac hment(s)
`
`1) t8J Notice of References Cited (PT0-892)
`
`2) 1:8J 1nformation Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 4123114. 9129111.
`U.S. Patent and Trademark Off1ce
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) 0 Interview Summary (PT0 -413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`Part of Paper No./Mail Date 20140417
`
`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 4 of 9 PageID #: 2001
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`Application/Control Number : 13/164 , 266
`Art Unit : 2476
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`Page 2
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`1.
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`The present app lication is being examined under the pre-AIA
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`first to invent provisions .
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`Claim Rejections - 35 USC § 102
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`2 .
`
`The following is a quotation of the appropriate paragraphs
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`of pre-AI A 35 U. S . C . 1 02 t h at form the basis for the rejections
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`under this section made in this Office action :
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`A person shall be e ntitled to a patent unless -
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`(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 paten t or (2) a patent
`granted on an application for patent by another filed in the United
`States before the i n ven tion by the applicant for patent , except that
`an international application filed under the treaty defined in
`section 351{a) shall have t h e effects f o r purposes of this s ubsection
`of a n 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 l a nguage.
`
`3 .
`
`Claims 1 , 9 , and 17 are rejected under pre - AIA 35 U. S . C .
`
`102(e) as being anticipated by Zhang US 20110243016 .
`
`Regarding claims 1 , 9 , 17 , Zhang teaches configuring a user
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`equipment to send a power headroom report control element in
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`uplink , wh erein the power headroom report control element
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`includes a bitmap indicating which power headroom reports are
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`being reported ;
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`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 5 of 9 PageID #: 2002
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`Application/Control Number : 13/164 , 266
`Art Unit : 2476
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`Page 3
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`receiving the power headroom report control element from
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`the user equipment ; and
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`processing the received power headroom report control
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`element based on the configuration of the user equipment ([0111 ,
`
`0162 , 0215]) . For support , see 61/282 , 813 pg . 8 for example .
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`(a) the invention was known or used by others in this country, or
`patented or described in a printed publication in this or a foreign
`country, before the invention thereof by the applicant for a patent.
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`4 .
`
`Claims 1 , 2 , 4 , 9 , 10 , 12 , 17 , 18 , and 20 are rejected
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`under pre - AIA 35 U. S . C . 102a as being anticipated by POTEVIO :
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`" Remaining Issues on PHR for CA" .
`
`Regarding claims 1 , 9 , 17 , Potevio teaches configuring a
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`user equipment to send a power headroom report control element
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`in uplink , wherein the power headroom report control element
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`includes a bitmap indicating which power headroom reports are
`
`being reported ;
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`receiving the power headroom report control element from
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`the user equipment; and
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`processing the received power headroom report control
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`element based on the configuration of the user equipment (see
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`section PHR transmission : especially last paragraph page 1 and
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`fig . 1) .
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`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 6 of 9 PageID #: 2003
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`Application/Control Number : 13/164 , 266
`Art Unit : 2476
`
`Page 4
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`Regarding claims 2 , 4 , 10 , 12 , 18 , and 20 (see section PHR
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`transmission : especially last paragraph page 1 and fig . 1) .
`
`Claim Rejections - 35 USC § 103
`
`5 .
`
`The following is a quotation of pre - AIA 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.
`
`6 .
`
`Claims 5 , 6 , 8 , 13 , 21 , 22 , and 24 are rejected under pre -
`
`AIA 35 U.S . C . 103(a ) as being unpatentable over Kim US
`
`20110092217 in view of Potevio .
`
`Regarding claims 5 , 13 , 21 , Kim teaches preparing a power
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`headroom report control element , based on a trigger configured
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`by a base station , wherein the trigger determines when a power
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`headroom report control element is to be sent in uplink
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`([0063]) .
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`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 7 of 9 PageID #: 2004
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`Application/Control Number : 13/164 , 266
`Art Unit : 2476
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`Page 5
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`Kim is silent on wherein preparing the control element
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`includes incorporating a bitmap indicating which power headroom
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`reports are being reported; and
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`sending the prepared power headroom report control element
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`to the base station .
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`Potevio teaches wherein preparing the control element
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`includes incorporating a bitmap indicating which power headroom
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`reports are being reported; and
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`sending the prepared power headroom report control element
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`to the base station (see section PHR transmission : especially
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`last paragraph page 1 and fig . 1) .
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`Therefore it would have been obvious to one of ordinary
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`skill in the art , to modify the system of Kim wherein preparing
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`the control element includes incorporating a bitmap indicating
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`which power headroom reports are being reported; and sending the
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`prepared power headroom report control element to the base
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`station , as shown by Potevio . This modification would benefit
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`the system by providing a proven , reliable method for the base
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`station to obtain the power headroom report.
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`Regarding claims 6 , 8 , 22 , 24 ,
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`(Potevio see section PHR
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`transmission : especially last paragraph page 1 and fig . 1) .
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`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 8 of 9 PageID #: 2005
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`Application/Control Number : 13/164 , 266
`Art Unit : 2476
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`Page 6
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`Allowable Subject Matter
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`7.
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`Claims 3 , 7 , 11 , 14-16 , 19 and 23 objected to as being
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`dependent upon a rejected base claim, but would be allowable if
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`rewritten in independent form including all of the limitations
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`of the base claim and any intervening claims .
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier
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`communications from the examiner should be directed to RONALD B .
`
`ABELSON whose telephone number is (571)272 - 3165 . The examiner
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`can normally be reached on M- F .
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`If attempts to reach the examiner by telephone are
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`unsuccessful, the examiner ' s supervisor, Ayaz Sheikh can be
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`reached on (571) 272-3795. The fax phone number for the
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`organization where this application or proceeding is assigned is
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`571 - 273 - 8300 .
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`

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`Case 6:14-cv-00982-KNM Document 160-9 Filed 11/18/15 Page 9 of 9 PageID #: 2006
`
`Application/Control Number : 13/164 , 266
`Art Unit : 2476
`
`Page 7
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`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 .
`
`RONALD B ABELSON
`Primary Examiner
`Art Unit 2476
`
`***
`
`/RONALD B ABELSON/
`Primary Examiner , Art Unit 2476
`
`