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 07/19/2023. Claims 1-20, of which claims 1, 8 and 14 are independent, were pending in this application and are considered below.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The references cited on the information disclosure statement (IDS) submitted on 07/19/2023, 04/10/2024 and 02/20/2025 have been considered and made of record by the examiner.
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 14 is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the device that the terminal device interacting with (e.g., serving cell base station, neighboring cell base station, or LMF entity, as shown in Figs. 2 and 4). The claim defines an interaction between the terminal device and a not identified second device, omits essential features. Claim merely recites determination of the target PRS configuration by LMF, but it is not clear whether LMF is the entity that transmit to terminal device. The omission makes the scope of the claim border than what is described and supported by the specification.
Regarding claims 15-20, claims are rejected due to their dependency to the rejected claim 14.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in "at least one of two-digit, three-digit, or four-digit" representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. "The identical invention must be shown in as complete detail as is contained in the … claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01. ("(A) Prove a primary reference contains an "enabled disclosure;" (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent.").
Claims 1-2, 4-14, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “lnterDigital Inc. Discussion on On-demand reference signals for positioning. 3GPP TSG-RAN WG2 #113e. R2-2100375. Electronic meeting, January 25th - February 5th, 2021. 4 ages. online https://www.3gpp.org/ftp/tsg_ran/WG2_RL2/TSGR2_113-e/Docs/R2-2100375.zip”. (“lnterDigital”, hereinafter) (see IDS)
Regarding claim 1, InterDigital disclose a location management function (LMF) entity (line 39 of page 2: "Procedures for LMF-Initiated on-demand PRS"), comprising: a transceiver {implicit}, configured to send first information to at least one access network device (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”) {The target positioning reference signal, PRS, configuration information corresponds to the preconfigured PRS.}, wherein the first information indicates an activation of target positioning reference signal (PRS) configuration information (line 39 of page 2: “preconfigured PRS”) {i.e., the activation is made implicitly by LMF sending the message with respective information to access network when coordinating with RAN}.
Regarding claim 2, InterDigital disclose as stated above. InterDigital also disclose wherein the first information comprises the target PRS configuration information or an index of the target PRS configuration information (line 1 of page 3: “Both Options 2.1 and 2.2 can also be applied for supporting aperiodic or semi-persistent PRS where the indication for changing a parameter in a PRS configuration or activating a preconfigured PRS can be sent by gNB to UE (e.g. in MAC CE) after coordination with LMF (via NRPPa). The indication sent by gNB can indicate either an identifier of PRS configuration parameter to be changed (e.g. resource set ID) or the ID of a preconfigured PRS configuration.").
Regarding claim 4, InterDigital disclose as stated above. InterDigital also disclose a processor {implicit} configured to: obtain a PRS capability or PRS configuration supported by the at least one access network device; generate a plurality pieces of PRS configuration information and indexes of the plurality pieces of PRS configuration information based on the PRS capability or the PRS configuration supported by the at least one access network device; and send third information to at least one of the at least one access network device or the terminal device, wherein the third information indicates the plurality pieces of PRS configuration information and the indexes of the plurality pieces of PRS configuration information (line 1 of page 3: "Both Options 2.1 and 2.2 can also be applied for supporting aperiodic or semi-persistent PRS where the indication for changing a parameter in a PRS configuration or activating a preconfigured PRS can be sent by gNB to UE (e.g. in MAC CE) after coordination with LMF (via NRPPa). The indication sent by gNB can indicate either an identifier of PRS configuration parameter to be changed (e.g. resource set ID) or the ID of a preconfigured PRS configuration.").
Regarding claim 5, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to receive fourth information from the at least one access network device, wherein the fourth information indicates a refusal to activate the target PRS configuration information, or the fourth information indicates an update of a PRS capability or PRS configuration supported by the at least one access network device (line 4 of page 3: "The indication sent by gNB can indicate either an identifier of PRS configuration parameter to be changed (e.g. resource set ID) or the ID of a preconfigured PRS configuration.".
Regarding claim 6, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to receive request information from a terminal device for requesting PRS configuration on demand, wherein the request information includes PRS configuration information corresponding to a current service type or a positioning accuracy, or the request information includes an index of PRS configuration information corresponding to a current service type or a positioning accuracy (line 7 of page 4: LOS/NLOS identification in on demand PRS [-] In certain deployment scenarios, the detection of LOS and NLOS paths is crucial and impacts the accuracy of positioning since NLOS paths provides erroneous timing information to UE. In the multipath environment, it may be possible for the UE to detect multipaths in a broad beam or in different narrow beams during PRS reception. In such cases, it may be beneficial to assign identification number to the discovered path such that the ID can be related to the PRS resource number for the purpose of identifying LOS/NLOS paths.").
Regarding claim 7, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to initiate an on-demand PRS configuration request (line 7 of page 4: LOS/NLOS identification in on demand PRS).
Regarding claim 8, InterDigital disclose an access network device comprising: a transceiver {implicit}, configured to receive first information from a location management function (LMF) entity (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”), wherein the first information indicates an activation of target positioning reference signal (PRS) configuration information (line 39 of page 2: “preconfigured PRS”) {i.e., the activation is made implicitly by LMF sending the message with respective information to access network when coordinating with RAN}.
Regarding claim 9, InterDigital disclose as stated above. InterDigital also disclose wherein the first information comprises the target PRS configuration information or an index of the target PRS configuration information (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”) {The target positioning reference signal, PRS, configuration information corresponds to the preconfigured PRS.}.
Regarding claim 10, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to send to the LMF entity a PRS capability or PRS configuration supported by the access network device, and wherein the transceiver is further configured to receive third information from the LMF entity, wherein the third information indicates a plurality pieces of PRS configuration information and indexes of the plurality pieces of PRS configuration information (line 1 of page 3: "Both Options 2.1 and 2.2 can also be applied for supporting aperiodic or semi-persistent PRS where the indication for changing a parameter in a PRS configuration or activating a preconfigured PRS can be sent by gNB to UE (e.g. in MAC CE) after coordination with LMF (via NRPPa). The indication sent by gNB can indicate either an identifier of PRS configuration parameter to be changed (e.g. resource set ID) or the ID of a preconfigured PRS configuration.").
Regarding claim 11, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to send fourth information to the LMF entity, wherein the fourth information indicates a refusal to activate the target PRS configuration information, or the fourth information indicates an update of a PRS capability or PRS configuration supported by the access network device (line 1 of page 3: "Both Options 2.1 and 2.2 can also be applied for supporting aperiodic or semi-persistent PRS where the indication for changing a parameter in a PRS configuration or activating a preconfigured PRS can be sent by gNB to UE (e.g. in MAC CE) after coordination with LMF (via NRPPa).").
Regarding claim 12, InterDigital disclose as stated above. InterDigital also disclose wherein in the case that the access network device is a base station or a transmission receiving point (TRP) in a serving cell of a terminal device, the transceiver is further configured to send fifth information to the terminal device, wherein the fifth information indicates activated PRS configuration information, or the fifth information indicates an index of the activated PRS configuration information (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”) {i.e., the activation is made implicitly by LMF sending the message with respective information to access network when coordinating with RAN}.
Regarding claim 13, InterDigital disclose as stated above. InterDigital also disclose wherein the access network device comprises one of: a base station in a serving cell of a terminal device, a transmission and reception point (TRP) in a serving cell of a terminal device, a base station in a neighboring cell of a serving cell of a terminal device, or a TRP in a neighboring cell of a serving cell of a terminal device (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”) {the RAN consist of radio access network}.
Regarding claim 14, InterDigital disclose a terminal device comprising: a transceiver {implicit}, configured to receive target information (line 1 of page 3: "Both Options 2.1 and 2.2 can also be applied for supporting aperiodic or semi-persistent PRS where the indication for changing a parameter in a PRS configuration or activating a preconfigured PRS can be sent by gNB to UE (e.g. in MAC CE) after coordination with LMF (via NRPPa). The indication sent by gNB can indicate either an identifier of PRS configuration parameter to be changed (e.g. resource set ID) or the ID of a preconfigured PRS configuration."), wherein the target information indicates the target positioning reference signal (PRS) configuration information or an index of target PRS configuration information, and the target PRS configuration information is activated PRS configuration information determined by a location management function (LMF) entity (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”).
Regarding claim 18, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is configured to receive the target information from the LMF entity (line 39 of page 2: "Option 2.2: LMF selects and dynamically activates a preconfigured PRS based on measurement report sent by UE. LMF coordinates with RAN (via NRPPa) for activation of PRS (pre)configuration.”) {The target positioning reference signal, PRS, configuration information corresponds to the preconfigured PRS.}.
Regarding claim 19, InterDigital disclose as stated above. InterDigital also disclose wherein the transceiver is further configured to send request information for requesting PRS configuration on demand (line 7 of page 4: LOS/NLOS identification in on demand PRS).
Regarding claim 20, InterDigital disclose as stated above. InterDigital also disclose wherein the request information comprises PRS configuration information corresponding to a current service type or a positioning accuracy, or the request information includes an index of PRS configuration information corresponding to a current service type or a positioning accuracy (line 7 of page 4: LOS/NLOS identification in on demand PRS … it may be beneficial to assign identification number to the discovered path such that the ID can be related to the PRS resource number for the purpose of identifying LOS/NLOS paths.")
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
The foregoing obviousness inquiry requires an expansive and flexible approach, not a rigid approach demanding express teachings, suggestions and motivations to combine prior art teachings. KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395, 97 (US 2007). The rationale supporting a conclusion of obviousness should be made explicit for review, but the rationale does not require precise teachings directed to the specific subject matter of the claim. Id. at 1396. A rejection can rely on inferences and creative steps that a person of ordinary skill in the art would employ. Id. Obviousness rejections are not limited to showing the obviousness of solutions to the problems Applicant was trying to solve. Id. at 1397. Rather, one can show obviousness of a claim by establishing the obviousness of any solution to any known problem in the field of endeavor and addressed by a patent application's subject matter. Id. Moreover, one of ordinary skill in the art is not an automaton, but is possessed of ordinary creativity. Id. One of ordinary skill could find alternative uses for prior art elements beyond the elements' primary purposes and fit prior art teachings together like a puzzle. Id. A combination of prior art teachings does not require absolute predictability. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals Inc., 81 USPQ2d 1324, 1329 (Fed. Cir. 2006). All that is required is a reasonable expectation of success. Id.
Claims 3 and 15-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over InterDigital in view of “XIAOMI. Discussion on PRS enhancements. 3GPP RAN WG2 Meeting #113e. R2-2100813. Electronic meeting, January 25th - February 5th, 2021.1. 19 ages. online https://www.3gpp.org/ftp/tsg_ran/WG2_RL2/TSGR2_113-e/Docs/R2-2100813.zip” (“Xiaomi”, hereinafter) (see IDS
Regarding claim 3, InterDigital disclose as stated above, except for expressly teaching the additional features, stated below.
Xiaomi, in the same field of endeavor, disclose wherein the transceiver is further configured to send second information to a terminal device, wherein the second information includes the target PRS configuration information or an index of the target PRS configuration information (line 20 of page 3: “The following procedures is an example of how to provide PRS configuration sets to UE for on-demand PRS: Step 1: gNB decides the supported typical PRS configuration sets for different LCS requirements and sends it to LMF; Step 2: When LMF receives PRS configuration sets for on-demand PRS, the LMF sends the PRS configuration sets to UE; Step 3: UE sends on-demand PRS request to LMF including recommended PRS configuration which is selected from PRS configuration sets.). InterDigital and Xiaomi are both presented in the same meeting of 3GPP RAN WG2. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use teaching of Xiaomi with the system and method of InterDigital to arrive at the claimed invention with a reasonable expectation of success.
Regarding claim 15, InterDigital disclose as stated above, except for expressly teaching the additional features, stated below.
Xiaomi, in the same field of endeavor, disclose wherein the target information comprises the target PRS configuration information or the index of the target PRS configuration information (line 20 of page 3: “The following procedures is an example of how to provide PRS configuration sets to UE for on-demand PRS: Step 1: gNB decides the supported typical PRS configuration sets for different LCS requirements and sends it to LMF; Step 2: When LMF receives PRS configuration sets for on-demand PRS, the LMF sends the PRS configuration sets to UE; Step 3: UE sends on-demand PRS request to LMF including recommended PRS configuration which is selected from PRS configuration sets.). InterDigital and Xiaomi are both presented in the same meeting of 3GPP RAN WG2. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use teaching of Xiaomi with the system and method of InterDigital to arrive at the claimed invention with a reasonable expectation of success. .
Regarding claim 16, InterDigital disclose as stated above, except for expressly teaching the additional features, stated below.
Xiaomi, in the same field of endeavor, disclose wherein the transceiver is configured to receive the target information from an access network device (line 20 of page 3: “The following procedures is an example of how to provide PRS configuration sets to UE for on-demand PRS: Step 1: gNB decides the supported typical PRS configuration sets for different LCS requirements and sends it to LMF … The PRS configuration sets for on-demand PRS could be provided to UE and UE sends on demand PRS request based on the PRS configuration sets.). InterDigital and Xiaomi are both presented in the same meeting of 3GPP RAN WG2. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use teaching of Xiaomi with the system and method of InterDigital to arrive at the claimed invention with a reasonable expectation of success..
Regarding claim 17, InterDigital disclose as stated above, except for expressly teaching the additional features, stated below.
Xiaomi, in the same field of endeavor, disclose wherein the target information is carried by one of: radio resource control (RRC) signaling, media access control control element (MAC CE) signaling, or downlink control information (DCI) (line 23 of page 1: “gNB need to activate the UE to receive the PRS by DCI and MAC CE respectively.”). InterDigital and Xiaomi are both presented in the same meeting of 3GPP RAN WG2. Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use teaching of Xiaomi with the system and method of InterDigital to arrive at the claimed invention with a reasonable expectation of success.
Conclusion
Examiner's note: As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
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).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Liu (US 2023/0388070 A1) is equivalent and trustworthy translation of the IDS cited Foreign application No. CN 112449745 A.
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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.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631