DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
2. This office action is in response to the amendment filed on 07/14/2026. Claims 21-40 are pending in this application and have been considered below. Claims 1-20 are canceled by the applicant.
3. The rejection under 35 USC 101 of claim 21 and 31 is corrected by the amendment. Therefore, the rejection is withdrawn.
4. Applicant’s arguments with respect to claims 21, 26, 31 and 36 have been considered but are moot in view of new ground(s) of rejection because of the amendments. See 35 USC 112(a) (new matter) rejection below. However, the examiner responds to the following applicant’s argument:
Applicant’s argument: It is respectfully noted that the cited paragraph teaches "a mobile device capable of supporting estimating a position of the mobile device," thus failing to teach identifying whether the terminal can operate as a PRU, as this is different from merely supporting estimation of the position of the terminal. That is, one of ordinary skill in the art would readily recognize that the claimed PRU is a node enabled for positioning measurement when a network condition is improved or degraded, unlike the teachings relied on in Opshaug.
It was further alleged that "transmitting an indication indicating that the terminal is capable of serving as the PRU" is taught in step 602 of FIG. 6 in Opshaug. However, the teachings in Opshaug set forth that the terminal transmits a capability message to a location server, and the capability message may include OTDOA positioning capability information of the terminal. It is respectfully asserted that these teachings differ from transmitting an indication that the terminal can operate as a PRU, as in the amended independent claims.
Examiner’s response: The examiner respectfully disagrees with applicant’s argument above. In paragraph 0006, Opshaug teaches “a mobile device capable of supporting estimating a position of the mobile device includes a wireless transceiver configured to wirelessly communicate with a wireless network and to receive signals transmitted from one or more base stations; at least one memory; and at least one processor coupled to the wireless transceiver and the at least one memory, the at least one processor configured to: receive a first bundle of a plurality of position referencing signals occasions via the wireless transceiver from the one or more base stations, wherein each position referencing signal occasion comprises one or more slots; determine positioning measurements based on the plurality of position referencing signal occasions from the first bundle for determining a first position estimate; and receive a second bundle of a plurality of position referencing signal occasions from the one or more base stations, wherein the first bundle and the second bundle are separated in time by more slots than a number of slots in the first bundle and no position referencing signal occasions are transmitted by the one or more base stations between the first bundle and the second bundle.” In figure 6A, Opshaug shows a procedure that supports downlink positioning methods using bundled PRS signals. At stage 602 of figure 6A, Opshaug shows that the mobile device 120 is transmitting an “LLP Provide Capabilities” to the Location Server 150. In paragraph 0087, Opshaug teaches “at stage 602, the mobile device 120 sends a Provide Capabilities message (e.g. an LPP Provide Capabilities message) to the location server 150 to provide the positioning capabilities of mobile device 120.” Thus, the examiner interprets “LPP Provide Capabilities message” to be “an indication indicating that the terminal is capable of serving as the PRU”.
Applicants are remained that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claim. So the Examiner considers “LPP Provide Capabilities message” to be “an indication indicating that the terminal is capable of serving as the PRU” within the broad meaning of the term. The Examiner is not limited to Applicant’s definition, which is not specifically set forth in the claims. In re Tanaka et al., 193 USPQ 139, (CCPA) 1977.
Claim Objections
5. Claims 21-40 are objected to because of the following informalities:
(1) In claim 21, line 5, define “/” in the claim. However, for the purpose of examination, the examiner interprets “/” to be --and/or--. Same issue exists in claims 26, 31 and 36. Appropriate correction is required.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The new limitation added by the amendment filed on 07/14/2026 in theindependent claims 21 and 31 “indicating an availability of the terminal as the PRU; receiving information indicating that the terminal is determined as the PRU” and in the independent claims 26 and 36 “indicating an availability of the terminal as the PRU” (hereinafter newly added limitations) is not supported by the applicant's original disclosure. The examiner has reviewed the entire original disclosure of instant application and is unable to find support for the above newly added limitation in the applicant's original disclosure. Moreover, none of the originally filed drawings show the above newly added limitation.
On page 6 of the Applicant Argument/Remarks, filed on 07/14/2026, the applicant’s representative discloses: “No new matter has been added. Support may be found in at least page 19, lines 24-25 and page 20, lines 6-13 of the Specification.”
For clarity of the record, the examiner provides the teaching of page 19, lines 24-25 and page 20, lines 6-13 of the original disclosure of the instant application below:
Below is page 19, lines 24-25 of the original disclosure of the instant application:
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Below is page 20, lines 6-13 of the original disclosure of the instant application:
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Nowhere in the above sections of the original disclosure of the instant application, is there any teaching showing support for above newly added limitations “indicating an availability of the terminal as the PRU; receiving information indicating that the terminal is determined as the PRU”.
Also, the examiner has reviewed the original disclosure of the instant application in its entirety and was unable to find support for the above newly added limitations anywhere in the original disclosure of the instant application.
For example,
On page 21, lines 21-22 of the original disclosure of the instant application, the applicant discloses:
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On page 23, lines 4-27 of the original disclosure of the instant application, the applicant discloses:
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On page 24, lines 6-16 of the original disclosure of the instant application, the applicant discloses:
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Hence, the above newly added limitation lacks "written description requirement" in the original disclosure of the application.
Therefore, the newly added limitation in claims 21, 26, 31, and 36 raises an issue of "new matter" as the limitation is not supported by the applicant's original disclosure.
8. 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.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well.
Applicants are reminded that MPEP 2141.02 states:
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 21-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by OPSHAUG et al. (US 20200145955) (hereinafter OPSHAUG).
Regarding claims 21 and 31:
As shown in figures 1-12, OPSHAUG discloses a terminal (see mobile device 120 in figures 1-2 and 6), in a communication system (figures 1-2), the terminal comprising:
a transceiver (1110 in figure 11); and
at least one processor (1102 in figure 11) configured to:
identify that the terminal is capable of serving as a positioning reference unit (PRU) (in par 0006 OPSHAUG teaches “a mobile device capable of supporting estimating a position of the mobile device),
transmit (602 in figure 6A) an indication indicating that the terminal is capable of serving as the PRU (in par 0087 OPSHAUG teaches at stage 602, the mobile device 120 sends a Provide Capabilities message (e.g. an LPP Provide Capabilities message) to the location server 150 to provide the positioning capabilities of mobile device 120), wherein the indication includes information on a PRU on/off state indicating an availability of the terminal as the PRU (in par 0062, OPSHAUG teaches “PRS can also be transmitted with zero power (i.e., muted). Muting, which turns off a regularly scheduled PRS transmission, may be useful when PRS patterns between cells overlap. Muting aids signal acquisition by mobile device 120. Muting may be viewed as the non-transmission of a PRS for a given positioning occasion in a particular cell. Muting patterns may be signaled to mobile device 120 using bitstrings. For example, in a bitstring signaling a muting pattern, if a bit at position j is set to “0”, then an MS may infer that the PRS is muted for the j.sup.th positioning occasion”);
receive information indicating that the terminal is determined as the PRU (see stages 603-605 in figure 6A, par 0088-0090); and
perform a positioning measurement (606-608 in figure 6A) and reporting (610 in figure 6A) a result of the positioning measurement to a location server (150 in figure 6A) (par 0091-0093).
Regarding claims 26 and 36:
As shown in figures 1-12, OPSHAUG discloses an entity served as a location server (150 in figures 1-2 and 6) in a communication system (figures 1-2), the entity comprising:
a network interface (1230 in figure 12) (par 0196); and
at least one processor (1202 in figure 12) (par 0196) configured to:
receive (602 in figure 6A), from a terminal (120 in figure 6A), an indication indicating that the terminal identifies that is capable of serving as a positioning reference unit (PRU) (in par 0087 OPSHAUG teaches at stage 602, the mobile device 120 sends a Provide Capabilities message (e.g. an LPP Provide Capabilities message) to the location server 150 to provide the positioning capabilities of mobile device 120), and
receive (610 in figure 6A), from the terminal (120 in figure 6A), a result of a positioning measurement by the terminal served as the PRU (150 in figure 6A) (par 0091-0093),
wherein the indication includes information on a PRU on/off state indicating an availability of the terminal as the PRU (in par 0062, OPSHAUG teaches “PRS can also be transmitted with zero power (i.e., muted). Muting, which turns off a regularly scheduled PRS transmission, may be useful when PRS patterns between cells overlap. Muting aids signal acquisition by mobile device 120. Muting may be viewed as the non-transmission of a PRS for a given positioning occasion in a particular cell. Muting patterns may be signaled to mobile device 120 using bitstrings. For example, in a bitstring signaling a muting pattern, if a bit at position j is set to “0”, then an MS may infer that the PRS is muted for the j.sup.th positioning occasion”).
Regarding claims 22, 27, 32 and 37:
OPSHAUG further discloses wherein the result of the positioning measurement includes at least one of a reference signal received power, a phase of arrival, a phase difference of arrival, or a time difference of arrival (par 0040-0041).
Regarding claims 23, 28, 33 and 38:
OPSHAUG further discloses receiving, from the location server, time window information for a positioning reference signal, wherein the time window information includes time resource information for the positioning reference signal (table 1 shows PRS periodicity (interpreted to be time window information for a positioning reference signal) that includes time resource information for the positioning reference signal).
Regarding claims 24, 29, 34 and 39:
OPSHAUG further discloses wherein the positioning reference signal corresponds to a sounding reference signal (abstract).
Regarding claims 25, 30, 35 and 40:
OPSHAUG further discloses wherein the result of the positioning measurement is used by the location server to correct a measurement result (see 612 in figure 6A, par 0094).
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KABIR A TIMORY whose telephone number is (571)270-1674. The examiner can normally be reached Mon-Fri 7:00 AM-3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S Wang can be reached at 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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/KABIR A TIMORY/Primary Examiner, Art Unit 2631
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