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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/23/2026 has been entered.
This Office Action is responsive to the amendment filed on 07/23/2026. Claims 1, 3, 5-7, 12, 14, 16, 18, 23-24, 26-28, 32-33, 35, 37, and 44, of which claims 1, 23 and 44 are independent, were pending in this application and have been considered below.
Claim Rejections - 35 U.S.C. 112(d) and 35 U.S.C. 112 (pre-AIA ), Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-7, 14, 18, 27-28, 33, and 37 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims are dependent upon claims 1 and 23, which use bare “or” to set simple disjunctive phrasing in citing the limitations “the positioning request is configured to indicate a network device to send resource configuration parameters of a positioning reference signal (PRS) to the terminal” (hereinafter “alternative A”) and “the positioning request is configured to indicate the terminal to send a positioning measurement result to the network device” (hereinafter “alternative B”) in alternative form. However, when alternative A is chosen, claims 6-7, 14, 18, 27-28, 33, and 37 which are expanded upon alternative B, add zero limitation to their base method claim. Therefore, they fail to properly limit the base claim across its entire scope. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3, 12, 23-24, 28, 32, and 44 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. US 2023/0413218 Al to Dong.
Regarding claims 1 and 44, Dong discloses a method for reference signal transmission, performed by a terminal (¶[0003]), the method comprising:
determining a positioning request (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal.”), wherein the positioning request is configured to (¶[0003]: “After receiving the positioning request, the terminal completes a positioning measurement of a positioning reference signal (PRS) according to information carried in the positioning request, and reports a positioning measurement result or location information of the terminal, to complete a positioning process of the terminal”)
Dong also discloses a processor; a transceiver connected to the processor; and a memory configured to store an instruction executable by the processor; wherein, the processor, when executing the instructions stored in the memory, is configured to perform aforesaid method (claim 45: “communication device, comprising: an antenna; a memory; and a processor, connected to the antenna and the memory respectively, and configured to, by executing computer-executable instructions stored on the memory, control transmission and reception of the antenna and perform the method”).
Regarding claim 23, Dong discloses method for reference signal transmission, performed by a network device (¶[0003]), the method comprising: determining a positioning request (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal.”), wherein the positioning request is configured to(¶[0003]: “After receiving the positioning request, the terminal completes a positioning measurement of a positioning reference signal (PRS) according to information carried in the positioning request, and reports a positioning measurement result or location information of the terminal, to complete a positioning process of the terminal”); and
Regarding claim 3, Dong discloses as stated above. Dong also discloses sending the positioning request to the network device (¶[0003]: “After receiving the positioning request, the terminal completes a positioning measurement of a positioning reference signal (PRS) according to information carried in the positioning request, and reports a positioning measurement result or location information of the terminal, to complete a positioning process of the terminal”), wherein the network device is (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal.”).
Regarding claim 12, Dong discloses as stated above. Dong also discloses wherein determining the positioning request comprises: receiving the positioning request sent by the network device, wherein the network device is an access network device or a network element with a location management function (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal).
Regarding claim 24, Dong discloses as stated above. Dong also discloses wherein determining the positioning request comprises: receiving the positioning request sent by the terminal (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal. After receiving the positioning request, the terminal completes a positioning measurement of a positioning reference signal (PRS) according to information carried in the positioning request, and reports a positioning measurement result or location information of the terminal, to complete a positioning process of the terminal”).
Regarding claim 32, Dong discloses as stated above. Dong also discloses sending the positioning request to the terminal (¶[0003]: “The 5th generation (5G) mobile communication technology in the release 16 (R16) introduces … When a network needs to position a terminal, a location management function (LMF) sends a positioning request to the terminal.”).
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 5, 16, 26, and 35 rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2023/0413218 Al to Dong in view of U.S. Patent Application Publication No. US 2022/0110085 A1 to Khoryaev et al.
Regarding claim 5, Dong discloses as stated above, except for additional features below.
Khoryaev et al., in the same field of endeavor, disclose wherein sending the positioning request to the network device comprises: sending the positioning request to the access network device through a random access channel; or, sending the positioning request to the access network device through a scheduling request (SR) (¶[0046]). It is desirable for a terminal to efficiently receive and respond to the positioning request by reporting its positioning measurement of the positioning reference signal according to the positioning request. 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 Khoryaev et al. with the system and method of Dong in order to take advantage of random access channel for both sending the positioning request to the terminal and receiving the positioning measurement from the terminal, as suggested by Khoryaev et al. (abstract).
Regarding claim 16, Dong discloses as stated above, except for additional features below.
Khoryaev et al., in the same field of endeavor, disclose wherein the positioning request is configured to indicate the terminal device to send the positioning measurement result to the network device (“gNBs … signals for UE positioning measurements …” 612, Fig. 6); wherein the method further comprises: sending the positioning measurement result to the access network device through physical uplink shared channel resources in a Msg3 of a 4-step random access channel or in a Msg A in a 2-step random access channel (¶[0046]). It is desirable for a terminal to efficiently receive and respond to the positioning request by reporting its positioning measurement of the positioning reference signal according to the positioning request. 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 Khoryaev et al. with the system and method of Dong in order to take advantage of random access channel for both sending the positioning request to the terminal and receiving the positioning measurement from the terminal, as suggested by Khoryaev et al. (abstract).
Regarding claim 26, Dong discloses as stated above, except for additional features below.
Khoryaev et al., in the same field of endeavor, disclose wherein the network device is an access network device (Fig.1); wherein receiving the positioning request sent by the terminal device comprises: receiving the positioning request sent by the terminal device through a random access channel; or receiving the positioning request sent by the terminal device through a scheduling request (SR) (¶[0046]). It is desirable for a terminal to efficiently receive and respond to the positioning request by reporting its positioning measurement of the positioning reference signal according to the positioning request. 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 Khoryaev et al. with the system and method of Dong in order to take advantage of random access channel for both sending the positioning request to the terminal and receiving the positioning measurement from the terminal, as suggested by Khoryaev et al. (abstract).
Regarding claim 35, Dong discloses as stated above, except for additional features below.
Khoryaev et al., in the same field of endeavor, disclose wherein the positioning request is configured to indicate the terminal device to send the positioning measurement result to the network device (312, Fig. 3); wherein the method further comprises: receiving the positioning measurement result sent by the terminal device through physical uplink shared channel resources in a Msg3 of a 4-step random access channel or in a Msg A in a 2-step random access channel (¶[0046]). It is desirable for a terminal to efficiently receive and respond to the positioning request by reporting its positioning measurement of the positioning reference signal according to the positioning request. 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 Khoryaev et al. with the system and method of Dong in order to take advantage of random access channel for both sending the positioning request to the terminal and receiving the positioning measurement from the terminal, as suggested by Khoryaev et al. (abstract).
Conclusion
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).
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).
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
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