DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
Applicant has submitted large amount of Information Disclosure Statements and/or huge number of references and/or reference(s) which are very hefty. Where applicant points the Examiner to large reference or references without citing a specific portion or page, the Examiner will not pour over the documents to extract the relevant information, Ernst Haas Studio, Inc. v. palm Press, Inc. 164 F.3rd 110, 112 (2d Cir. 1999), Winer International Royalty Corp. v. Wang, 202 F3d 1340, 1351 (Fed. Cir. 2000). It is not true, if applicant presents an overload of irrelevant or non-probative references, somehow the irrelevancies will add up to relevant evidence, DeSilva v. DiLeonardi, 181 F.3d 865, 867. Information Disclosure Statements must make all relevant information accessible to the Examiner, rather ask him to play archaeologist with the references, Shiokawa v. Maienfisch, 56 USPQ2d 1406, 1413 and LeVeen v. Edwards 57 USPQ2d 1406, 1413. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). With this in mind, the Information Disclosure Statement has been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of implied phrases. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
Under the broadest reasonable interpretation standard, the conditional “if” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). “If” conditions are not limitations against which prior art must be found because the step or function only occurs “if” the answer is positive. A conditional limitation is a claim feature that depends on a certain condition being present. For example, when or if condition X is present, feature Y is implemented or has effect. Without condition X, feature Y may be dormant or have no effect. It was not necessary for the Examiner to show that both paths of a conditional limitation were anticipated or obvious over prior art. Ex Parte Schulhauser, Appeal No. 2013-007847 (PTAB April 28, 2016). Conditional limitations that are not recited as structure that is capable of or configured to perform the conditional function may render the conditional limitation as “optional” and not truly “conditional.” The M.P.E.P. provides, “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” See M.P.E.P § 2111.04; see also M.P.E.P §§ 2103(C) and 2173.05(h). Furthermore, all alternative conditional limitations in system claims that are not limited to a particular structure may also be given no patentable weight if every alternate limitation is interpreted as “optional.” See MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d at 1379. Under the broadest scenario, the steps or functions dependent on the “if” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
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 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding the independent claims, please note paragraph 5 above. Because of the “or” clauses the claim is confusing. For example, the detecting can be based on an available transmission opportunity, but the transmitting a request for positioning assistance data at least partially over an unlicensed carrier can be based on the set of triggering criteria, which makes “the set of triggering criteria” having insufficient antecedent basis for this limitation in the claim and vice versa. Also, the claimed language makes the step of transmitting optional.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-20, as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by United States Patent Application Publication 2019/0327706 (Agnihotri, et al).
The claims are confusing and poorly written and is not fully understood by the Examiner. For compact prosecution, the Examiner will try to apply art as best understood by the Examiner.
Agnihotri, et al discloses claim 1, a method performed by a user equipment (UE) (figure 3, #120). The method comprising detecting an available transmission opportunity or a set of triggering criteria (figure 3, 5, 7, ¶ 66, 70, 72-73, etc.) Regarding, transmitting a request for positioning assistance data at least partially over an unlicensed carrier based on the available transmission opportunity or the set of triggering criteria, this is optional and note paragraph 5 above. The detecting can be only based on an available transmission opportunity and the set of triggering condition would never happen and hence, transmitting a request for positioning assistance data at least partially over an unlicensed carrier based the set of triggering criteria would also never happen. Also note in Agnihotri, et al, figures 3, 5, 7 and ¶5, 66, 70, 72-73, 98, 101.
Claims 2 and 3 is also optional, note paragraph 6 above. Also note ¶51, 61, 66-78, figures 3, 5, 7 in Agnihotri, et al. Regarding claim 3, also note paragraphs 7 and 8 above.
Regarding claim 4, providing the triggering criteria based on location service requirements and UE capabilities, note ¶66-75, figure 5 and 6.
Regarding claims 5 and 13, transmitting is performed via an omnidirectional listen-before-talk (LBT) procedure, a directional LBT procedure, or a no- LBT procedure based on the triggering criteria, note ¶41, 66-75. 141, etc and figure 3. Also note paragraph 5 above.
Claim 6 is optional, note paragraph 5 above, since the transmitting can be other than non-LBT procedure. Also note ¶66-75, 141, figure 3.
Regarding claim 7, transmitting the request for positioning assistance data comprises transmitting to a licensed network node and a transmission to an unlicensed network node, note ¶59, 62, 66-76, 98 etc. and figures 3, 5, 7.
Regarding claim 8, transmitting the request for positioning assistance data comprises transmitting the request for positioning assistance data to a single network node capable of receiving licensed and unlicensed transmissions, note ¶59, 62, 66-76, 98 etc. and figures 3, 5, 7.
Regarding claim 9, transmitting the request for positioning assistance data comprises transmitting the request for positioning assistance data to a single network node dedicated to receiving unlicensed transmissions, note ¶59, 62, 66-76, 98 etc. and figures 3, 5, 7.
Regarding claim 10, transmitting the request for positioning assistance data is performed using long term evolution (LTE) positioning protocol (LPP) signaling, medium access control element (MAC CE) signaling, or radio resource control (RRC) signaling; and further comprising receiving positioning assistance data in response to the request for positioning assistance data via LPP dedicated signaling, RRC signaling, or broadcast signaling, ¶3, 5, 7, 70-88. Also note paragraph 5 above.
Regarding claim 11, receiving a request for positioning over unlicensed or licensed assisted access positioning capabilities; and transmitting a response to a location management function (LMF) server with the unlicensed positioning capabilities, note ¶66-80, 97-101.
Regarding claim 12, this is the inherent apparatus of the above claim method since this claim has the same functions of the method and is rejected for the same reasons above. Also note #314, 318.
Regarding claims 14, 17, the code is further executable by the processor to determine if a quality of service (QoS) value of the available transmission opportunity greater than a threshold amount; and transmit the request for assistance data responsive to the QoS being greater than the threshold amount, wherein the QoS includes an accuracy value and an end-to-end latency value, ¶51, 61, 66-78, figures 3, 5, 7.
Regarding claim 15, an apparatus for performing a network function (#110A, 110B),the apparatus comprising at least one memory (#358, 368) and at least one processor (#354, 364) coupled with the at least one memory (#358, 368) and configured to cause the apparatus to receive a request for positioning over unlicensed or licensed assisted access capabilities (¶55, 56, 58, 66, 67, 70, 116-118, figures 3 and 9, #902, 904) and transmit a response to the location management function server with unlicensed positioning capabilities (¶66, 67, 70, 116-118). Also note paragraph 5 above.
Regarding claim 16, a processor (#314) for wireless communication, comprising at least one controller (#324) coupled with at least one memory (#318) and configured to cause the processor #314) to detect an available transmission opportunity or a set of triggering criteria (figure 3, 5, 7, ¶ 66, 70, 72-73, etc.) and transmit via the transceiver (#312) a request for assistance data at least partially over an unlicensed carrier based on the available transmission opportunity or the set of triggering criteria (figures 3, 5, 7 and ¶5, 66, 70, 72-73, 98, 101). Also note paragraph 5.
Regarding claim 18, this claim is non-functional descriptive material and note paragraphs 7 and 8 above.
Regarding claim 19, this claim is optional since the trigger criteria is optional in the parent claim, note paragraph 5 above. Also note ¶66-75, figures 5, 6.
Regarding claim 20, transmit via an omnidirectional listen-before-talk (LBT) procedure, a directional LBT procedure, or a no-LBT procedure based on the triggering criteria, note 66-75, 141, figure 3. Also note paragraph 5 above.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645