DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2012/0295623 (Siomina, et al).
Siomina, et al disclose a radio base station (figures 1, 13, #1, 140, ¶77) comprising transmission unit or transmitter (#1320) that transmits a measurement report according to a protocol based on a location service to a positioning server (#110, ¶53-53, 76, 87, 215) and a control unit or processor (#1310) that includes, in the measurement report, a measurement result of a cell belonging to a different radio access technology, together with identification information uniquely specifying the cell belonging to the different radio access technology (¶76, 87-102, 105, 220, 226-229, 255, 321, 369-371).
Siomina, et al disclose claim 2, the control unit (#1310) specifies the identification information by referring to correspondence information associating a cell belonging to the radio base station and the identification information with each other in a case where a measurement result has been received from a terminal existing in the cell belonging to the radio base station (¶40, 98-102, 106, etc.).
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Siomina, et al reveal claim 3, the correspondence information associates at least any one of a frequency and physical cell identification information of the cell belonging to the different radio access technology with the cell belonging to the radio base station (#1, 140, ¶220,226,341,365-371, 374, etc.).
Siomina, et al unveil claim 4, a reception unit that receives the correspondence information from a management server (figure 8, #1300, MME, ¶281, 407).
Siomina, et al divulge claim 5, transmission unit transmits the measurement report according to a location information related protocol applied between the radio base station and the positioning server (figure 8, ¶76, 87, 215, etc.).
Siomina, et al expose claim 6, a reception unit that receives the correspondence information from a management server (figure 8, #1300, MME, ¶281, 407).
Siomina, et al discloses claims 7-9, the transmission unit transmits the measurement report according to a location information related protocol applied between the radio base station and the positioning server (¶76, 87, 215, 220, etc.).
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Response to Arguments
Applicant's arguments filed July 9, 2024 have been fully considered but they are not persuasive.
Applicant’s attorney states, “…while Siomina discusses radio transmission nodes participating in assistance data exchange and receiving measurement requests, Siomina does not disclose that the base station itself generates and transmits multi-RAT measurement reports.” This is a false statement. The reference clearly states, “[0103] B16. Between said radio transmission node 145 and said positioning node 100 transmission of request for measurements from the said positioning node to said radio transmission nodes, and transmissions of the measurement results conducted by radio transmission nodes that belong to RATs/RANs 110, 120 to the positioning node. Examples of said measurements are receive-transmit time or angle of arrival measured at a radio transmission node.”
Also, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. base station itself generates multi-RAT measurement reports) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Also the reference discloses different embodiments of the measurement reports or results. It seems Applicant’s attorney is not taking the references as a whole, picking and choosing what references embodiments which boost his argument and willfully ignoring the rest of the reference. The reference clearly shows the measurement reports can contain measurement result of a cell belonging to a different radio access technology and identification information uniquely specifying the cell belonging to the different radio access technology at paragraphs 1121, 132, 221, 321, 359, and 372.
Anticipatory reference need not duplicate, word for word, what is in claims seems as Applicant’s attorney arguring, anticipation can occur when claimed limitation is "inherent" or otherwise implicit in relevant reference (Standard Havens Products Incorporated v. Gencor Industries Incorporated, 21 USPQ2d 1321). “...a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all of the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, (Fed. Cir. 2015). Thus, “a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example, Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. Mar. 1, 2016). During examination before the Patent and Trademark Office, claims must be given their broadest reasonable interpretation and limitations from the specification may not be imputed to the claims (Ex parte Akamatsu, 22 USPQ2d, 1918; In re Zletz, 13 USPQ2d 1320, In re Priest, 199 USPQ 11). During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In response to Applicant's argument, the law of anticipation requires that a distinction be made between the invention described or taught and the invention claimed. It does not require that the reference "teach" what the subject patent teaches. Assuming that a reference is properly "prior art," it is only necessary that the claims under consideration "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or "fully met" by it. It was held in In re Donohue, 226 USPQ 619, that, "It is well settled that prior art under 35 USC §102(b) must sufficiently describe the claimed invention to have placed the public in possession of it...Such possession is effected if one of ordinary skill in the art could have combine the description of the invention with his own knowledge to make the claimed invention." Clear inference to the artisan must be considered, In re Preda, 159 USPQ 342. A prior art reference must be considered together with the knowledge of one of ordinary skill in the pertinent art, In re Samour, 197 USPQ 1. During patent examination, the pending claims must be “given the broadest reasonable interpretation consistent with the specification.” Claim term is not limited to single embodiment disclosed in specification, since number of embodiments disclosed does not determine meaning of the claim term, and applicant cannot overcome "heavy presumption" that term takes on its ordinary meaning simply by pointing to preferred embodiment (Teleflex Inc. v. Ficosa North America Corp., CA FC, 6/21/02, 63 USPQ2d 1374). Applicant always has the opportunity to amend the claims during prosecution and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA1969). “Arguments that the alleged anticipatory prior art is nonanalogous art’ or teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not germane’ to a rejection under section 102.” Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir.1998).
Applicant has not presented any substantive arguments directed separately to the patentability of the dependent claims or related claims in each group, except as will be noted in this action. In the absence of a separate argument with respect to those claims, they now stand or fall with the representative independent claim. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
This application is NOT in condition for allowance and no patent monopoly shall be issue at this time.
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.
The USPTO will not accept requests for consideration under the AFCP 2.0 filed after December 14, 2024.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645