DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the communication(s) filed on 04/29/2026. Claims 1, 6, 8, 13, and 21-32, of which claims 1, 8 and 28 are independent, were pending in this application and are considered below.
Applicant canceling claims 2-5, 7, 9-12, and 14-20 and adding new claims 21-32 is acknowledged.
Response to Arguments---
Applicant’s arguments regarding the rejection of claims filed on 04/29/2026 have been fully considered. The Examiner thoroughly reviewed Applicant’s arguments and noted that the Applicant’s argument is based on the newly amended limitations, which are addressed in a new ground(s) of rejection presented in this Office action below.
A new ground(s) of rejection presented in this Office action, which is necessitated by Applicant’s amendment. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112(a) or pre-AIA 35 USC § 112, first paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The test for enablement is whether Applicant's specification provides sufficient detail so one of ordinary skill in the art at the time of filing could make and use the full scope of the claimed invention without undue experimentation. In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP § 2164.01. To determine whether the amount of experimentation would be undue, or unreasonable, the Court of Appeals for the Federal Circuit has enumerated several non-exclusive factors, any of which may not apply in agiven case. In re Wands at 1404; MPEP § 2164.01(a). The factors include (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands at 1404; MPEP § 2614.01(a). The scope of enablement provided by a disclosure must be commensurate in scope with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); MPEP § 2164.08. Moreover, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Automotive Technologies International Inc. v. BMW of North America Inc., 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007)
Applicant's Specification must provide written description support for all that is claimed. See 35 USC § 112 ¶ 1; MPEP § 2163. Written description support requires a disclosure that would reasonably convey Applicant's possession of all claimed subject matter to one of ordinary skill in the art at the time of the invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc); MPEP § 2163. While written description support requires neither in haec verba description of the claim limitations nor any particular form of disclosure, all claim limitations must be equivalently described and not merely rendered obvious. Ariad at 1162. Accordingly, a patent claim cannot recite subject matter that is not expressly, implicitly or inherently disclosed by Applicant's written description. See Hyatt v. Boone, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); In re Wright, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989); MPEP § 2163.
Reasonable possession of a claimed invention is also not shown when the disclosure merely amounts to a hoped for result, instead of a specifically claimed invention. See University of California v. Eli Lilly, 43 USPQ2d 1398 (Fed Cir 1997). In Eli Lilly, the court held that where a specification merely includes generic statements that distinguish multiple genus by function alone, those statements are generally insufficient sources of written description support because they fail to define structures/identities of species within the genus. Patents must describe "an invention, not an indication of a result that one might achieve if one made that invention." Id.
Claims 1, 6, 8, 13, and 21-32 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The subject matter not supported by the disclosure, as originally filed, includes the added material as follows: "the first information is used to request target PRS configuration information” (line 13 of claim 1; line 8 of claim 8; line 6 of claim 28); “the fifth information indicates the updated PRS configuration information” (line 4 of claim 26; line 5 of claim 31); “the fifth information is carried in one of: a radio resource control (RRC) signaling, a media access control control element (MAC CE) signaling, or downlink control information (DCI)” (lines 1-3 of claims 27 and 32). Nowhere in the disclosure as originally filed, has such restriction been indicated.
Claims 6, 8, 13, and 21-24, 25, and 29-30 are rejected due to their dependency to the rejected claims 1, 8, and 28, correspondingly.
Claim Rejections - 35 USC § 112(b) or pre-AIA 35 USC § 35 USC § 112, second paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
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 pre-AIA 35 U.S.C. 112, 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.
Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention
Regarding claims 1, 8, and 28, claim recites the limitation “the first information is used to request target PRS configuration information” (line 13 of claim 1; line 8 of claim 8; line 6 of claim 28), which is vague and indefinite, because claims later recite “the first information comprises the requested target PRS configuration information” (line 14 of claim 1; line 10 of claim 8; line 7 of claim 28). It is not clear why the first information is used to request the information that it already has, which leaves the reader in doubt as to the meaning of the technical feature to which it refers to, thereby rendering the definition of the subject matter of the claim indefinite.
Regarding claims 6, 8, 13, and 21-24, 25-27, and 29-32, claims are rejected due to their dependency to the rejected claims 1, 8, and 28, correspondingly.
Conclusion
The attention of the applicant is drawn to the fact that the application may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed. In order to facilitate the examination of the conformity of the amended application, the applicant is respectfully requested to clearly identify the amendments carried out, irrespective of whether they concern amendments by addition, replacement or deletion, and to indicate the passages of the application as filed on which these amendments are based.
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang, SPE can be reached on (571) 272-9018. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Interviews are available via telephone and video conferencing using a USPTO web-based Video Conferencing and Collaboration Tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Communications via Internet e-mail are at the discretion of the applicant. See MPEP § 502.03. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122 and will not initiate communications with applicants via Internet e-mail. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.
The following is a sample authorization form, which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.”
To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, filed via EFS-Web. The Form is available at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf.
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.
/Nader Bolourchi/
Primary Examiner, Art Unit 2631
Prosecution Insights