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 preliminary amendment field on 07/26/2023. Claims 33-52, of which claims 33 and 51-52 are independent, were pending in this application and have been considered below.
Priority
Acknowledgment is made of the Applicant's claim for foreign priority filed in UNITED KINGDOM on 09/29/2022 under 35 U.S.C. 119(a)-(d).
Information Disclosure Statement
The references cited on the information disclosure statement (IDS) submitted on 09/07/.2023 and 05/03/2024 have been considered and made of record by the examiner.
Specification
The disclosure is objected to because of the following informalities: Delete the phrase Figure proposed for filing with the Abstract: FIG. 8” (last line of Abstract in page 39). Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 33-54 are 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 claim 33 and 51-52, claims recite the limitation “receive, from a network element, information comprising a plurality of characteristics of one or more precision zones configured for the terminal device” (line 4 of claim 33), “receive configuration information of a location of a terminal device relative to one or more precision zones” (line 5 of claim 51), “determine information comprising a plurality of characteristics of one or more precision zones configured for a terminal device” (line 5 of claim 52), which term “precision zones” makes it vague and indefinite. It is not clear what term “precision zones” is referring to. There is not any canonical definition for the term “precision zones”. Specification merely describe “a low precision zone 310 corresponding to a 5 MHz bandwidth, and a high precision zone 320 corresponding to the 100 MHz bandwidth. “ (¶[0027] – emphasis added), but fails to describe the term “precision zone”, as it is done in the prior art. For instance, Taylor et al. (US 2024/0217041 A1) disclose “precision zone (i.e., the area of attachment where the alignment studs of the tooling fixture are inserted into the registration holes of the tooling base)” (¶[0026]), Sommer (US 2014/0302952 A1) discloses "The Dynamic Precision Zone (Dyn. Precision Zone) is the part of the tennis racket which can impart a relatively larger force to the ball when striking, and the ball can be directed to a desired position additionally." (¶[0056]), etc. The aforesaid issue 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. It is noted however that the specification disclose “the RedCap UE 301 may be configured with one or more geo-fence (or precision) zones” (¶[0027] – emphasis added). Therefore, it is recommended to replace the limitation ”precision zone(s)” with phrase --geo-fence zone(s)--.
Regarding claim 35, claim recites the limitation “a frequency bandwidth to be used in transmitting and/or receiving” (line 2 of claim Y), which term “transmitting and/or receiving” makes it vague and indefinite. It is not clear what term “transmitting and/or receiving” is referring to 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. It is recommended to amend the claim to clarify what is to be transmitting or receiving, e.g., replace the limitation with phrase -- a frequency bandwidth to be used in transmitting and/or receiving the reference signal for positioning--.
Regarding claims 34-50, claims are rejected due to their dependency to the rejected claim 33.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
"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 33-35, 38, 44, and 51-52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. US 10715951 B1 to Ratasuk et al.
Regarding claim 33, Ratasuk et al. disclose a terminal device (Fig. 3: “UE 110”), comprising:
at least one processor; and at least one memory storing instructions that, when executed by the at least one processor (lines 28-33 of col. 18: “A computer-readable medium may comprise a computer-readable storage medium ( e.g., memories 125, 155, 171, 71 or other device) … that can contain … the instructions for use by or in connection with an instruction execution system, apparatus, or device, such as a computer.”), cause the terminal device at least to:
receive, from a network element (lines 6-8 of col. 12: “In FIG. 3, the UE 110 is configured by the location server 90 with a measurement configuration for groups of cells ( e.g., the cells created by corresponding RAN nodes 170).”), information comprising a plurality of characteristics of one or more precision zones configured for the terminal device (lines 27-31 of col. 12: “As illustrated by reference 315, the measurement configuration can include measurement cell groups, measurement type, measurement thresholds, measurement period, RSRP/RSRQ threshold for cell measurement, and/or reference signal configuration.”); and
apply a precision zone selected from the one or more precision zones in accordance with a current location of the terminal device (lines 47-52 of col. 12: “In the case of a geofenced area where the number of cells is large ( e.g. greater than a threshold configured by the network, such as 10 or 20 cells) the UE may use the PCI ( or other indicator) of the strongest cell the UE receives to determine the group of cells to which the UE will attempt further measurements”) in communication of a reference signal for positioning of the terminal device (lines 27-33 of col. 12: “the measurement configuration can include ... reference signal configuration ... the measurement configuration can be specific to a positioning solution”).
Regarding claim 34, Ratasuk et al. disclose as stated above. Ratasuk et al. also disclose wherein the one or more precision zones are each associated with a corresponding frequency bandwidth (lines 27-31 of col. 12: “As illustrated by reference 315, the measurement configuration can include measurement cell groups, measurement type, measurement thresholds, measurement period, RSRP/RSRQ threshold for cell measurement, and/or reference signal configuration.”) {e.g., the reference signal configuration associates with frequency bandwidth}.
Regarding claim 35, Ratasuk et al. disclose as stated above. Ratasuk et al. also disclose wherein the information comprises one or more of zone boundaries, zone boundary uncertainty (lines 47-52 of col. 12: “In the case of a geofenced area where the number of cells is large ( e.g. greater than a threshold configured by the network, such as 10 or 20 cells) the UE may use the PCI ( or other indicator) of the strongest cell the UE receives to determine the group of cells to which the UE will attempt further measurements”), and a frequency bandwidth to be used in transmitting and/or receiving in a corresponding precision zone of the one or more precision zones (lines 27-31 of col. 12: “As illustrated by reference 315, the measurement configuration can include measurement cell groups, measurement type, measurement thresholds, measurement period, RSRP/RSRQ threshold for cell measurement, and/or reference signal configuration.”).
Regarding claim 38, Ratasuk et al. disclose as stated above. Ratasuk et al. also disclose wherein the terminal device is at least caused to: select the precision zone from the one or more precision zones in accordance with the current location of the terminal device (lines 47-52 of col. 12: “In the case of a geofenced area where the number of cells is large ( e.g. greater than a threshold configured by the network, such as 10 or 20 cells) the UE may use the PCI ( or other indicator) of the strongest cell the UE receives to determine the group of cells to which the UE will attempt further measurements”); and receive transmissions of the reference signal by applying the precision zone for the positioning of the terminal device (lines 27-33 of col. 12: “the measurement configuration can include ... reference signal configuration ... the measurement configuration can be specific to a positioning solution”).
Regarding claim 44, Ratasuk et al. disclose as stated above. Ratasuk et al. also disclose wherein the reference signal is a positioning reference signal (claim 5: “positioning reference signal configuration for the cells in the one or more measurement groups.”).
Regarding claim 51, Ratasuk et al. a network device (Fig. 3: “location server 90”), comprising:
at least one processor; and at least one memory storing instructions that, when executed by the at least one processor, (lines 28-33 of col. 18: “A computer-readable medium may comprise a computer-readable storage medium ( e.g., memories 125, 155, 171, 71 or other device) … that can contain … the instructions for use by or in connection with an instruction execution system, apparatus, or device, such as a computer.”) cause the network device at least to:
receive configuration information of a location of a terminal device relative to one or more precision zones (lines 27-33 of col. 12: “the measurement configuration can include ... reference signal configuration ... the measurement configuration can be specific to a positioning solution”; lines 47-52 of col. 12: “In the case of a geofenced area where the number of cells is large ( e.g. greater than a threshold configured by the network, such as 10 or 20 cells) the UE may use the PCI ( or other indicator) of the strongest cell the UE receives to determine the group of cells to which the UE will attempt further measurements”); and
generate and transmit, to the terminal device (lines 6-8 of col. 12: “In FIG. 3, the UE 110 is configured by the location server 90 with a measurement configuration for groups of cells ( e.g., the cells created by corresponding RAN nodes 170).”), a positioning reference signal configured for a precision zone selected from one of the one or more precision zones in which the terminal device is located for positioning of the terminal device (lines 27-31 of col. 12: “As illustrated by reference 315, the measurement configuration can include measurement cell groups, measurement type, measurement thresholds, measurement period, RSRP/RSRQ threshold for cell measurement, and/or reference signal configuration.”).
Regarding claim 52, Ratasuk et al. a network device (Fig. 3: “location server 90”), comprising:
at least one processor; and at least one memory storing instructions that, when executed by the at least one processor, (lines 28-33 of col. 18: “A computer-readable medium may comprise a computer-readable storage medium ( e.g., memories 125, 155, 171, 71 or other device) … that can contain … the instructions for use by or in connection with an instruction execution system, apparatus, or device, such as a computer.”) cause the network device at least to:
determine information comprising a plurality of characteristics of one or more precision zones configured for a terminal device (lines 6-8 of col. 12: “In FIG. 3, the UE 110 is configured by the location server 90 with a measurement configuration for groups of cells ( e.g., the cells created by corresponding RAN nodes 170).”); and
transmit, to the terminal device, the determined plurality of characteristics of one or more precision zones to cause the terminal device (lines 27-31 of col. 12: “As illustrated by reference 315, the measurement configuration can include measurement cell groups, measurement type, measurement thresholds, measurement period, RSRP/RSRQ threshold for cell measurement, and/or reference signal configuration.”) to apply a precision zone selected from the one or more precision zones in accordance with a current location of the terminal device lines 47-52 of col. 12: “In the case of a geofenced area where the number of cells is large ( e.g. greater than a threshold configured by the network, such as 10 or 20 cells) the UE may use the PCI ( or other indicator) of the strongest cell the UE receives to determine the group of cells to which the UE will attempt further measurements”) in communication of a reference signal for positioning of the terminal device (“the measurement configuration can include ... reference signal configuration ... the measurement configuration can be specific to a positioning solution”).
Allowable Subject Matter
Claim 36-37, 39-43, and 45-49 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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. Barbu et al. (US 2024/0353518 A1) is equivalent of the IDS cited Foreign application No. WO 2023/043461 A1; Bao et al. (US 2023/0047361 A1) is equivalent of the IDS cited Foreign application No. WO 2023/019042 A1; Alawieh et al. (US 2024/0163908 A1) is equivalent of the IDS cited Foreign application No. WO 2023/275044 A1.
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.”
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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.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631