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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-13, 27, 28, and 31-45 in the reply filed on 10/22/2025 is acknowledged. The non-elected invention is cancelled by the applicant’s amendment.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 44 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it could cover transitory medium. Paragraphs 141, 143, and 145 state that the medium could cover non-transitory mediums but such statements do not preclude the medium from covering transitory mediums. Transitory mediums do not fit into any of the statutory categories of invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-13, 27, 28, and 31-45 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.
Claims 1, 27, 44 and 45 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: In order to transmit a report comprising at least one of a KPI associated with a location-based service or an indicator that the KPI associated with the location-based service is within a failure threshold range, the applicant would have to at least monitor and measure a set of KPIs associated with the location-based service and, in the case where the indicator is part of the report, compare such a measured set of KPIs to the failure threshold. See paragraphs 103 and 127. The previous “measuring the set of positioning signals” limitation in claims 1, 27, 44 and 45 is disclosed as a separate step from the monitoring and measuring of KPIs, as indicated by Figures 6, 7, and 8 and paragraphs 102-103, 108-110, and 127, so it does not establish the KPI.
Claims 1, 27, 44 and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 applicant is claiming a step of a UE receiving “an indicator to change a positioning method of the UE based on the report” that the UE transmitted. In order to receive such an indicator in a manner “based on the report”, the applicant’s disclosed invention requires a network entity (ref. no. 508 or 606) to evaluate the report (see paragraphs 128, 129, 136 and 137). The applicant is trying to claim the invention from only the perspective of the UE but the actions of the network entity are essential for receiving the claimed second indicator in a manner that is “based on the report” as the claim requires the network entity to evaluate the report in order to produce the second indicator.
Claims 7 and 37 recite the limitation "the trigger". There is insufficient antecedent basis for this limitation in the claim. Claims 6 and 36 only list the trigger as possibly being part of the configuration so the there is not antecedent basis in claims 7 and 37 in the scenarios where it is not covered in claims 6 and 36.
Claim limitations “means for” in claim 45 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Paragraph 142 provides literal support for the claimed phrases but does not provide any description of particular structures that would be implemented to perform each distinct function claimed. The applicant discloses a computing device (508 or 606) implementing software (paragraphs 31, 32, 141, 143, and 145) for carryout the invention and not distinct structures for performing each claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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) 1-13, 27, 28, 31-45 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WIPO publication WO 2022/226445 by Manolakos et al.
As to claim 1, Manolakos teaches an apparatus for wireless communication at a user equipment (UE), comprising: at least one memory; and at least one processor coupled to the at least one memory and, based at least in part on information stored in the at least one memory, the at least one processor, individually or in any combination, is configured to: receive a set of positioning signals (paragraph 58, DL-PRS signals); measure the set of positioning signals (paragraph 59); receive a set of location-based service signals associated with a location-based service of the UE (paragraphs 73, 74, and 83, other types of reference signals in final sentence of paragraph 73); transmit a report comprising at least one of a key performance indicator (KPI) associated with the location-based service or a first indicator that the KPI associated with the location-based service is within a failure threshold range (paragraph 83); receive a second indicator to change a positioning method of the UE based on the report (paragraph 85, the DOP value is communicated to the UE used by the UE to switch to a different position method); and calculate a location of the UE using the changed positioning method based on the measured set of positioning signals (paragraph 85, the UE switches methods).
As to claims 27, 44, and 45, they are rejected for the same reasoning as claim 1.
As to claims 2 and 32, the final sentence of paragraph 85 shows an activation of a site-specific location-based service model.
As to claims 3 and 33, see paragraph 79, the difference in Rx-Tx times is an indicator of perceived throughput.
As to claims 4 and 34, see paragraph 85.
As to claims 5-7 and 35-37, see paragraph 109, the information received is the configuration information which indicates what triggers certain measurements.
As to claims 8 and 38, see paragraph 56.
As to claims 9 and 39, see Figure 10.
As to claims 10, 28, and 40, see Figure 10.
As to claims 11 and 31, the set of Rx chains can be an indicator of a set of KPI.
As to claims 12 and 42, see paragraph 56.
As to claim 13 and 43, see Figure 10.
As to claim 31, see paragraph 130.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached at 571-272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454