Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This is a Final Action.
The current application filed 26 August 2021 is a reissue application of 15/663,729 (U.S. Patent No. 10,397,820 issued 27 August 2019, hereinafter “the ‘820 Patent”).
Claims 1-26 were initially pending in the application. Claims 1-5 and 16 were amended in a preliminary amendment filed on August 26, 2021. The most recent amendment filed May 5, 2025 is identical to the previously filed amendments.
The Patent Trial and Appeal Board (PTAB) issued a decision on October 22, 2024 summarized as follows:
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Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,397,820 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Specification
The amendment to the specification filed on May 5, 2025 is proper and has been entered.
Claim Interpretation
The reissue is based on amending the claims to change the language “measurement gap configuration” to “measurement configuration”. The specification discusses the newly claimed “measurement configuration” as follows:
In LTE, the measurement gaps are configured by the network to enable measurements on the other LTE frequencies and/or other RATs (e.g. UTRA, GSM, CDMA2000, etc). The gap configuration is signaled to the UE over RRC protocol as part of the measurement configuration. If the UE requires measurement gaps for OTDOA positioning measurements then it may send an indication to the network, e.g. eNodeB, upon which the network may configure the measurement gaps. Furthermore, the measurement gaps may need to be configured according to a certain rule, e.g. inter-frequency RSTD measurements for OTDOA require that the measurement gaps are configured according to the inter-frequency requirements in 3GPP 36.133, Section 8.1.2.6, release 9 version 9.4.0 (2010-06), e.g. gap pattern #0 shall be used when inter-frequency RSTD measurements are configured and there should not be measurement gaps overlapping with PRS occasions of cells in the serving frequency.
(column 6, lines 4-22 of ’820 Patent, emphasis added)
When multiple alternatives are possible for the information provided in the measurement gap indication/request 232, the radio network node 204 (responsible node 204) may take at least one of the following actions to decide the measurement gap configuration 234 (FIG. 5's steps 504 and 506): Sort out (e.g., exclude, do not configure) the options that cannot be verified (e.g. for frequencies outside a pre-determined set)(FIG. 6's step 602). Sort out (e.g., exclude, do not configure) the options that have not passed verification (FIG. 6's step 602). Use a pre-defined measurement gap configuration response to the received indicator/request 232 (FIG. 6's step 604): May be the same configuration for all UEs in the cell or for all UEs in the center part of the cell (e.g. UEs with TA or RSRP in a given range) or for a group of UEs that are expected to be in certain part of the cell (e.g. UEs reporting the same set of strongest neighbors). Configure measurement gaps for a pre-defined frequency, irrespective of the frequencies in the indicator/request 232 (FIG. 6's step 606). Decide the best optimized (or the closest to the optimal) measurement gap option according to e.g. methods for optimizing measurement gap configuration (FIG. 6's step 608). Some examples of a closest to the optimal measurement configuration are closest in time to the requested offset or closest to a given number of neighbor cells on the frequency, or closest to the largest overlap with the RS to be measured. Use the measurement gap option which implies the measurement gap configuration closest to the currently configured measurement gap configuration for the requesting UE 202 (see FIG. 6's step 610). Configure measurement gaps for the most suitable frequency (see FIG. 6's step 612), where the most suitable frequency may be: With the largest system or PRS bandwidth, With the shortest PRS periodicity, Lowest frequency when better hearability is needed, With the sufficiently many neighbor cells or sites (e.g. there are at least X cells or at least Y sites operating on this frequency) in an area, With better or continuous coverage, Where lower interference is expected.
(column 15, line 26-column 16, line 5 of ’820 Patent, emphasis added)
The error statement from the Reissue Oath/Declaration makes it clear that the term “measurement gap configuration” is broader and therefore is attempting to claim that a “measurement configuration” does not explicitly include a “measurement gap configuration”. The interpretation of the claims is also discussed in the decision by the PTAB mailed October 22, 2024.
Claim Rejections – Res Judicata
Claims 1-26 remain rejected on the grounds of Res Judicata based on a prior adjudication against the inventor (see PTAB decision mailed on October 22, 2024 affirming the examiner’s rejection of claims 1-26) on patentably nondistinct claims involving the same issues. The period for filing an appeal of this decision has expired (see 37 CFR 90.3(a)(1)).
Claims 1-26 remain unchanged from the previously appealed claims.
Thus, all of the currently pending claims as filed are rejected on the grounds of Res Judicata based on a prior adjudication against the inventor on patentably nondistinct claims involving the same issues, in effect barring the examiner from issuing these claims.
Claim Rejections - 35 USC § 251
Claims 1-26 remain rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(II)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(II)(A)) In the instant case and by way of the preliminary amendment, Applicant seeks to broaden at least independent claims 1, 3, 5, and 16 with amendments to said claims at least by deleting/omitting limitations found in the original patent claims.
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 15/663,729 application prosecution indicates prior to allowing the application the applicant made the following amendments in order to overcome a rejection in view of the Tenny and Pani references (using claim 1 as example, similar amendments made to claims 3 and 5):
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The applicant made the following arguments regarding said rejections in reference to claims 1 and 3.
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The applicant made the following arguments regarding said rejections in reference to claims 5 and 16.
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Thus, at least the following limitations found in patent claims 1, 3, 5, and 16 that correspond to the amendments and arguments made during prosecution which state the following are all considered to be surrender generating limitations:
Claim 1:
send, to the radio network node, an indication indicating a need for measurement gaps for positioning measurements, wherein the indication further comprises a parameter indicating a radio access technology (RAT);
upon receipt of the measurement gap configuration, perform the positioning measurements,
Claim 3:
sending, by the UE to the radio network node, an indication indicating a need for measurement gaps for positioning measurements, wherein the indication further comprises a parameter indicating a radio access technology (RAT);
upon receiving the measurement gap configuration, performing, by the UE, the positioning measurements.
Claim 5:
upon receipt of the measurement gap configuration, perform the positioning measurements and one or more non-positioning measurements;
Claim 16:
upon receiving the measurement gap configuration, performing, by the UE, the positioning measurements and one or more non-positioning measurements.
Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. Additionally, reissue recapture applies to related family member applications (See MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (a more limited recapture rule would undercut “the rule against recapture’s public-reliance rationale” and a patent family’s entire prosecution history should be reviewed “when applying both the rule against recapture and prosecution history estoppel.”)). It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application and the patent family's prosecution for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the complete or partial omission of the surrender-generating limitations discussed above equates to attempting to recapture surrendered subject matter and thus by omission some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(II)(C)) It must be determined whether the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it includes other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu , 258 F.3d at 1371-72, 59 USPQ2d at 1600. Simply stated, claims 1-26 either completely or partially omit the following surrender-generating limitations found in claim 1, “upon receipt of the measurement gap configuration, perform the positioning measurements,”; found in claim 3, “upon receiving the measurement gap configuration, performing, by the UE, the positioning measurements.”; found in claim 5, “upon receipt of the measurement gap configuration, perform the positioning measurements and one or more non-positioning measurements;”; and found in claim 16, “upon receiving the measurement gap configuration, performing, by the UE, the positioning measurements and one or more non-positioning measurements.” (emphasis added). Thus, the amendments to said claims would amount to impermissible recapture due to the omission of surrender-generating limitations.
Additionally, reissue claims 1-26 are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based (see 37 CFR 1.175 and MPEP § 1414). As explained below in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture. More specifically, the error states that the limitation to be removed in order to broaden the claims is one of the surrender-generating limitations as discussed above.
Claims 1-26 remain rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above (this rejection has been affirmed by the PTAB decision mailed October 22, 2024). See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Response to Arguments
Applicant's arguments filed May 5, 2025 have been fully considered but they are not persuasive.
Regarding the rejection under Res Judicata:
Applicant argues that that Res Judicata does not apply because, even though the claims are identical, (a) the prior rejections were not subject to final judgement and (b) because the current arguments are not “involving the same issues.” More specifically, applicant argues that the applicant did not present arguments because the rejections were based on an incorrect claim interpretation, thus the Board’s affirmation was not based on the new and correct claim interpretations. Additionally, applicant argues that the arguments rely on “new evidence”, specifically the new claim interpretation affirmed by the Board and thus Res Judicata does not apply.
The examiner respectfully disagrees. First, it is extremely important to understand that the appellant’s failure to present arguments on a particular issue/rejection does not in any way remove affirmation of said rejection from being subject to final judgement. Thus, the prior rejections were indisputably subject to final judgement.
Regarding the applicant assertions that the rejections were based on an incorrect claim interpretation and said new interpretation constitutes new evidence, in the actions prior to the appeal the examiner addressed the two possible interpretations of the claim language in question. The examiner provided rejections for both possible interpretations separately in order to provide a clear record. The Final Rejection mailed on May 26, 2023 (which is the action on which the applicant’s appeal was based) states the following in the section labeled “Claim Interpretation”:
“The rejections provided below effectively address both possible interpretations. “Interpretation 1” constitutes the interpretation in view of the Reissue Oath/Declaration that “measurement configuration” is broader than “measurement gap configuration” and therefore does not include the “measurement gap configuration”. “Interpretation 2” constitutes the argued position that “measurement configuration” must include the “measurement gap configuration” and is therefore not broader than the language of the original claims. In either interpretation there are outstanding rejections resulting in the claims not being suitable for allowance.”
(page 6 of Final Rejection mailed May 26,2023, emphasis added)
As can clearly be seen in the citation above, the rejections presented regarding “Interpretation 1” are based on the applicant’s assertion that the term “measurement configuration” is broader than “measurement gap configuration”. The rejection of the claims under 35 U.S.C. 251 as being impermissible recapture is found under the heading “Rejections for Interpretation 1”.
“Rejections for Interpretation 1
Claim Rejections - 35 USC § 251
8) Claims 1-26 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.”
(page 7 of Final Rejection mailed May 26,2023)
The rejection that was Affirmed at the PTAB was based on the proper interpretation of the claims in question and because it was clearly addressed towards this interpretation of the claims in the actions prior to appeal it is not a new interpretation in any way as argued. Due to the fact that the rejection is not based on an improper interpretation there is no new evidence, examiner notes that attorney arguments do not constitute evidence. Thus, the rejection under Res Judicata is proper and must be maintained.
Regarding the reissue oath/declaration:
Applicant argues that the reissue oath/declaration is proper.
The examiner respectfully disagrees. This rejection and the rejection under 35 U.S.C. 251 regarding impermissible recapture were both affirmed in the PTAB decision mailed October 22, 2024.
Regarding the rejection under 35 U.S.C. 251 as being an improper recapture:
Applicant argues again that the rejection is improper.
The examiner respectfully disagrees. This rejection was affirmed in the PTAB decision mailed October 22, 2024. As discussed in the Res Judicata rejection the period to appeal that decision has expired. As presented in previous actions, it can be seen in the original prosecution, applicant explicitly argued that the prior art does not teach performing the positioning measurements “upon receipt of the positioning measurement gap configuration,” (emphasis previously added by applicant) as claimed.
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Performing the measurement is not what was argued, rather very specifically performing it upon receipt of the “measurement gap configuration” was what was argued. Thus, not performing the measurement based on the receipt of the “measurement gap configuration” results in clear improper recapture.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992