Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant has claimed a priority date of 12/06/2011 (parent provisional application).
Response to Amendment
Office action in response to amendment entered on 3/10/2026. Claims 1 and 5 are amended. Claim 1-6 remain pending.
Regarding the pending double patenting rejection, applicant notes that a “terminal disclaimer will be submitted if claims are otherwise found allowable.” Remarks pg. 1
Response to Arguments
Applicant’s arguments with respect to claims 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 3/10/2026 regarding claim 5 have been fully considered but they are not persuasive.
Applicant submits that “Edge fails to teach ‘determining an estimated location of the telematics device using the tracking information with a map database’ as recited in amended claims 1 and 5.” Examiner respectfully disagrees.
Importantly here claim 5 does not recite the aforementioned limitation of “determining an estimated location of the telematics device using the tracking information with a map database,” only claim 1 does. Thus applicant argues features which are not recited in the claim. Thus the remarks for claim 5 are not persuasive.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the relationship between the “determining if the telematics device can provide tracking information” as amended in claim 5, and the existing limitations of claim 5. There is no connection recited between the determination and any other steps and thus the claim scope is unclear and suggests the claim is missing essential steps.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) 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.
Claim 5 is rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by US20070135089 A1 “Edge”
Regarding Claim 5, Edge discloses A method of providing wireless telematics device location information to an access point during an emergency call (Edge Fig. 4 and accompanying text) comprising:
establishing a voice channel to an access point (Edge Fig. 4 steps 1-6, culminating par. 48 “.. In step 6, the call is established between UE 110 and PSAP 180 via MSC 230a…”) in response to the telematics device initiating an emergency call via a wireless network switch (Edge Fig. 4, Step 1, par. 44 “..In step 1, UE 110 sends a request for an emergency services call (e.g., E911 in North America or E112 in Europe) to MSC 230a in 3GPP V-PLMN 130a…”);
receiving, at the wireless network switch, location information generated at the telematics device comprising recent position coordinates (Edge Fig. 8, Step 15 and 16, par. 77 “The PDE then returns the position estimate to E-PS 238 either directly if the PDE is associated with E-PS 238 or indirectly (not shown in FIG. 8) if the PDE is associated with a V-PS. E-PS 238 then forwards the position estimate to MPC 232b in an Emergency Services Position Response. In step 16, MPC 232b returns the position estimate to PSAP 180 in an Emergency Services Position Request Response..”);
determining if the telematics device can provide tracking information (Edge et al. Fig. 8, Step 10. [0077]: “In step 15, the selected PDE obtains a position estimate either by computing this from measurements received from UE 110 in steps 13 and 14 or by verifying a position estimate received from the UE.” Teaching implicit determination if position estimates received or not);
generating, at the wireless network switch device, at least one of an audio message and a textphone message that comprises the telematics device location information; and transmitting the at least one of an audio message and a textphone message to the access point on the voice channel (Edge Fig. 8, Step 15 and 16, par. 77 “ E-PS 238 then forwards the position estimate to MPC 232b in an Emergency Services Position Response. In step 16, MPC 232b returns the position estimate to PSAP 180 in an Emergency Services Position Request Response..” par. 86 “..SMS is used for all SUPL communication. With SMS, signaling and information for location (e.g., SUPL messages) are sent inside SMS messages that are conveyed between the MPC/GMLC and the MSC and between the MSC and the UE using existing SMS point-to-point transport protocols (e.g., SMS MAP messages) in 3GPP and 3GPP2. SMS signaling may be sent directly between the MSC and the GMLC or MPC…”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 20070135089 A1 “Edge” in view of US 20070082681 A1 Kim; Joo-Young et al., and in further view of US 20110051665 A1 Huang; Ronald Keryuan.
Consider claim 1:
Edge discloses A method of providing wireless telematics device location information to an access point (Edge Fig. 4, Fig. 8 and accompanying texts) comprising
receiving, at a wireless network switch device, location information generated at the telematics device comprising at least one of current position coordinates, and tracking information (Edge Fig. 8, steps 13 and 14 par. 76 “..UE 110 sends to E-PS 238 a SUPL_POS that may carry serving cell information, an embedded positioning message (e.g., using the 3GPP2 C.S0022 or TIA-801 protocol), and/or other information…” par. 77 “..the UE may provide location measurements (e.g., A-GPS and/or A-FLT measurements) or a position estimate to the E-PS or PDE…”);
determining, by a computer, if the telematics device can provide tracking information on a condition that the location information generated at the telematics device includes the tracking information (Edge et al. Fig. 8, Step 10. [0077]: “In step 15, the selected PDE obtains a position estimate either by computing this from measurements received from UE 110 in steps 13 and 14 or by verifying a position estimate received from the UE.” Teaching implicit determination if position estimates received or not, where tracking information BRI equivalent to position estimate measurements);
determining a network-based location of the telematics device using received signal information corresponding to signals received from the telematics device at cellular base stations (Edge Fig. 8, pars 76-77 PDE determines position from measurements received from UE teaching ‘network-based location’);
determining an estimated location using the current position coordinates and the network-based location when the telematics device cannot provide tracking information (Edge et al. Fig. 8, Step 14 and 15. [0077]: In step 15, the selected PDE obtains a position estimate . . . by verifying a position estimate received from the UE.)
Edge does not teach tracking information comprising at least one previous position coordinate; determining an estimated location using the tracking information when the telematics device can provide the tracking information; determining an estimated location of the telematics device using the tracking information with a map database.
Kim teaches tracking information comprising at least one previous position coordinate; determining an estimated location using the current position coordinates and the network-based location when the telematics device cannot provide tracking information (Kim pars 47-50 “..The H-SLP 200 or the target SET 300 newly computes the location of the target SET 300 when it is unable to reuse the previously computed location information of the target SET 300…”)
determining an estimated location using the tracking information when the telematics device can provide the tracking information (Kim [0044] In a case in which a SET has previous position assistant data instead of previous position estimates, when a transmission request for the previous position assistant data is received, the set performs the same condition comparison as that in a case where the previous position estimates have been requested, and selects proper previous location information.; [0045] As a result of determining the reuse or non-reuse of the previous location information previously stored in the target SET 300, if the previous location information can be reused, the H-SLP 200 or the target SET 300 determines if an event has occurred by using the previously computed location information, without computing new location information.)
Therefore, it would have been obvious to one of ordinary skill in the art at the time that the invention was made to modify the invention of Edge invention by employing the teaching as taught by Kim in order to provide a location service that can provide a deferred location request service (Kim par. 3)
The combination does not teach determining an estimated location of the telematics device using the tracking information with a map database.
Related art Huang teaches determining an estimated location of the telematics device using the tracking information with a map database (See Huang ¶ [0018] “. . . compute estimated position coordinates (e.g., latitude, longitude, altitude) for location aware device 102 over a period of time, resulting in a location history for location aware device 102. . . .The position coordinates can be reverse geocoded to map locations (e.g., street locations). The map locations can be represented by markers (e.g., pushpin icons) on a map view displayed by location aware device 102, or used for other purposes by location aware applications.” ¶ [0025] “. . . The location history can be correlated or related to data from other recording events, allowing the data to be displayed or otherwise made accessible to a user in a map view application or other application. A sequence of locations traveled by location aware device 102 in the past can be displayed in a map view as a timeline, the span of which can be specified by a user or application generated query, as described in reference to FIG. 3B. . .”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time that the invention was made to modify the combination by employing the teaching as taught by Huang in order to create a travel timeline (Huang ¶5)
Regarding Claim 2. The combination teaches The method of claim 1, further comprising transmitting the estimated location to the access point on a voice channel (Edge Fig. 8, par. 86 “..SMS is used for all SUPL communication. With SMS, signaling and information for location (e.g., SUPL messages) are sent inside SMS messages that are conveyed between the MPC/GMLC and the MSC and between the MSC and the UE using existing SMS point-to-point transport protocols (e.g., SMS MAP messages) in 3GPP and 3GPP2. SMS signaling may be sent directly between the MSC and the GMLC or MPC…”).
Regarding Claim 3. The combination teaches The method of claim 2, further comprising transmitting the estimated location to the access point on a voice channel using at least one of an audio messages and a textphone message (Edge Fig. 8, par. 86 “..SMS is used for all SUPL communication. With SMS, signaling and information for location (e.g., SUPL messages) are sent inside SMS messages that are conveyed between the MPC/GMLC and the MSC and between the MSC and the UE using existing SMS point-to-point transport protocols (e.g., SMS MAP messages) in 3GPP and 3GPP2. SMS signaling may be sent directly between the MSC and the GMLC or MPC…”) that comprises the estimated location and is generated at the wireless network switch device (See Edge Fig. 8, Step 15 and 16. [0077]: The PDE then returns the position estimate to E-PS 238 either directly if the PDE is associated with E-PS 238 or indirectly (not shown in FIG. 8) if the PDE is associated with a V-PS. E-PS 238 then forwards the position estimate to MPC 232b in an Emergency Services Position Response. In step 16, MPC 232b returns the position estimate to PSAP 180 in an Emergency Services Position Request Response..”)
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 20070135089 A1 “Edge” in view of US 20070082681 A1 Kim; Joo-Young et al.
Regarding Claim 4. The combination teaches The method of claim 2, further comprising:
wherein the telematics device generates at least one of an audio message and a textphone message that comprises the estimated location. (Edge Fig. 8, par. 86 “..SMS is used for all SUPL communication. With SMS, signaling and information for location (e.g., SUPL messages) are sent inside SMS messages that are conveyed between the MPC/GMLC and the MSC and between the MSC and the UE using existing SMS point-to-point transport protocols (e.g., SMS MAP messages) in 3GPP and 3GPP2. SMS signaling may be sent directly between the MSC and the GMLC or MPC…”)
The combination does not teach transmitting the estimated location to the telematics device.
Halfmann teaches transmitting the estimated location to the telematics device ([0122] According to an embodiment, the location proposals with better radio channel conditions are transmitted to each UE over a specific control channel. According to a further embodiment, the location proposals with better radio channel conditions are transmitted to each UE over the physical downlink shared channel (PDSCH) as application data. However, other channels are also possible. According to a further embodiment, the application software at the UEs will read their location hints and display them for the user for example as arrows or in the form of colour marked radio conditions in the near vicinity.)
Therefore, it would have been obvious to one of ordinary skill in the art at the time that the invention was made to modify the invention of Edge invention by employing the teaching as taught by Halfmann in order to allow the user to make its decision based on possible gains as well as suitability of the locatio (Halfmann par. 130)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 20070135089 A1 “Edge” in view of US 5854977 A Oksanen; Markku et al.
Regarding Claim 6, Edge discloses The method of claim 5.
Edge does not disclose further comprising selectively muting at least one of receive audio and transmit audio at the telematics device during transmission of the at least one of an audio message and a textphone message to the access point on the voice channel.
Related art Oksanen teaches selectively muting at least one of receive audio and transmit audio at the telematics device during transmission of the at least one of an audio message and a textphone message to the access point on the voice channel. (Oksanen Col. 5 L45-55 “..In this case, and assuming that the MS.sub.1 is transmitting, the transmission from MS.sub.1 is routed from the output of the receiver/demodulator 34 through switches S1 and S2, through the modulator/transmitter 32, and is then transmitted from antenna 6 to both MS.sub.1 and MS.sub.3. The receive audio path can be selectively muted, if so desired, using the signal line 30a…”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time that the invention was made to modify the invention of Edge invention by employing the teaching as taught by Oksanen to provide selectively muting at least one of receive audio and transmit audio at the telematics device during transmission of the at least one of an audio message and a textphone message to the access point on the voice channel in order to “..provides a simplex calling capability between MSs…” (Oksanen Col. 1 L 60-65).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U. S. Patent No. 10009714. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application are transparently found in the U. S. Patent No. 10009714 (with obvious wording variations). Take an example of comparing claim 1 of current application and claim 1 of the U. S. Patent No. 10009714
Current Application 18203343
U. S. Patent No. 10009714
1. A method of providing wireless telematics device location information to an access point comprising receiving, at a wireless network switch device, location information generated at the telematics device comprising
at least one of current position coordinates, and tracking information comprising at least one previous position coordinate;
determining, by a computer, if the telematics device can provide tracking information;
determining a network-based location of the telematics device using received signal information corresponding to signals received from the telematics device at cellular base stations;
determining an estimated location using the current position coordinates and the network-based location when the telematics device cannot provide tracking information; and
determining an estimated location using the tracking information when the telematics device can provide the tracking information.
1. A method of providing wireless telematics device location information
to an access point, comprising:
receiving, by a wireless network, location information generated at a telematics device comprising at least one of (i) current position coordinates, or (ii) tracking information comprising at least one previous position coordinate;
determining, by the wireless network, if the telematics device can provide tracking information; and when the location information generated at the telematics device includes the tracking
information:
determining, by the wireless network, an estimated location of the telematics device using the tracking information with a map database; and
when the location information generated at the telematics device does not include
the tracking information:
determining, by the wireless network, a network-based location of the telematics device using received signal information
corresponding to one or more signals received from the telematics device at one or more cellular base stations; and
determining, by the wireless network, an
estimated location of the telematics device using the current position
coordinates and the network-based location,
wherein the determining if the
telematics device can provide tracking information includes determining, by the
wireless network, whether data transmitted by the telematics device indicates that predefined handling of tracking information is required, the data
including (i) a flag or data field set in a control channel message or (ii) a
callback number that falls within a preset range of callback numbers,
wherein the tracking information includes dead reckoning information that includes a series of coordinates representing points along a path, vector, or trajectory of the telematics device, and
wherein the processing of the tracking
information with a map database includes comparing the series of coordinates in the dead reckoning information with data in the map database so as to determine
a last trajectory coordinate of the telematics device reverse geocoded to a
nearest street or geographic location proximate to the telematics device.
5. A method of providing wireless telematics device location information to an access point during an emergency call comprising:
establishing a voice channel to an access point in response to the telematics device initiating an emergency call via a wireless network switch;
receiving, at the wireless network switch, location information generated at the telematics device comprising recent position coordinates;
generating, at the wireless network switch device, at least one of an audio message and a textphone message that comprises the telematics device location information; and
transmitting the at least one of an audio message and a textphone message to the access point on the voice channel.
6. The method of claim 5, further comprising selectively muting at least one of receive audio and transmit audio at the telematics device during transmission of the at least one of an audio message and a textphone message to the access point on the voice channel.
10. A method of providing wireless telematics device location information to an access point during an emergency call, comprising: establishing a voice channel to an access point in response to a telematics device initiating an emergency call via a wireless network; receiving, by the wireless network, location information generated at the telematics device comprising recent position coordinates; determining, by the wireless network, if the telematics device can provide tracking information; post-processing the position coordinates with a map database by the wireless network to obtain an estimated location of the telematics device; generating, by the wireless network, at least one of an audio message and a textphone message that comprises the telematics device location information; and transmitting, by the wireless network, the at least one of an audio message and a textphone message to the access point on the voice channel; wherein the determining if the telematics device can provide tracking information includes determining, by the wireless network, whether data transmitted by the telematics device indicates that predefined handling of tracking information is required, the data including (i) a flag or data field set in a control channel message or (ii) a callback number that falls within a preset range of callback numbers, wherein the tracking information comprises dead reckoning information that includes a series of coordinates representing points along a path, vector, or trajectory of the telematics device, and wherein the processing of the position coordinates with a map database includes comparing the series of coordinates in the dead reckoning information with data in the map database so as to determine a last trajectory coordinate of the telematics device reverse geocoded to a nearest street or geographic location proximate to the telematics device.
11. The method of claim 10, further comprising selectively muting at least one of receive audio and transmit audio at the telematics device during transmission of the at least one of an audio message and a textphone message to the access point on the voice channel.
Pertinent Prior Art(s)
The prior art made of record though not relied upon in the current rejection is considered pertinent to applicant's disclosure:
US 20090168974 A1 “McCormick”
US 20110117924 A1 to “Brunner”
Brunner par. 22 “..The wireless location database may be stored in memory 154 or, alternatively, in a server database that is accessed via the wireless transceiver 135. Moreover, in some embodiments, the location engine may also be located on a server, e.g., server 112 in FIG. 2, in network 110 that is accessed and queried via the wireless transceiver 135…”
Brunner par. 38 “..For example, the wireless signal based position estimate may be provided to the location engine 159, e.g., with an estimate of the confidence of the position estimate, and the location engine 159 may combine the wireless signal based position estimate with position estimates based on the previous position estimate based on SPS enhanced dead reckoning. It should be understood that that the previous position estimate may also be an SPS enhanced dead reckoning position that is fused with a previously determined wireless signal based position estimate…”
CN 1475092 A GRIFES, J et al. Grifes CN Fig. 6, “..the user of mobile electronic device 105 is connected to communication network 102, then is connected to location resource server 103 and information server 104. according to the front for a user planning knowledge of sexual behaviour, the user can initially select download map or map segment downloading. when the communication, mobile electronic device 105 is capable of uploading position history information to location resource server 103, same as above noted, location resource server 103 allows to process the long position distribution, and implementing the map download…”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 UMAIR AHSAN whose telephone number is (571)272-1323. The examiner can normally be reached Monday - Friday 10-5 PM EST or by emailing UMAIR.AHSAN@USPTO.GOV.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Slater can be reached at (571) 270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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UMAIR AHSAN
Primary Examiner
Art Unit 2647
/UMAIR AHSAN/Primary Examiner, Art Unit 2647
Prosecution Insights