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 .
Specification
The disclosure is objected to because of the following informalities: the first paragraph should include that SN 18/299,320 is now US Patent Number 12,028,780.
Appropriate correction is required.
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.
(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.
Claim(s) 1, 11, 13, 17, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Applicant’s submission of prior art, Siomina et al., US Patent Application Publication Number 2011/0250906 (hereinafter Siomina).
Regarding claim 1, Siomina discloses a method comprising: obtaining, by a processing system including a processor of a network device, timing advance data associated with a communication device operating in a mobility network, wherein the obtaining the timing advance data comprises using control-plane data probing to obtain the timing advance data [paragraphs 0018, 0088, 0090]; processing, by the processing system, the timing advance data to determine information about a geolocation of the communication device [paragraphs 0090-0091]; storing, by the processing system, the information about the geolocation of the communication device [inherent to store the geolocation]; and providing, by the processing system, the information about the geolocation of the communication device to equipment of a network customer [paragraph 0092].
Regarding claim 11, Siomina discloses a device, comprising: a processing system including a processor; and a memory that stores executable instructions that, when executed by the processing system, facilitate performance of operations, the operations comprising: performing control-plane data probing to obtain timing advance data of a communication device operating in a control plane session on a mobility network [paragraphs 0018, 0088, 0090]; determining a geolocation of the communication device based on the timing advance data of the communication device [paragraph 0090-0091]; storing information about the geolocation of the communication device at a storage device associated with the mobility network [inherent to store the geolocation]; receiving, in the control plane session, a query about the geolocation of the communication device [paragraphs 0089-0090]; and providing, in the control plane session, the geolocation of the communication device to equipment of a network customer [paragraph 0092].
Regarding claim 13, Siomina discloses wherein the operations further comprise: receiving the query from an application server, the query requesting the information about the geolocation of the communication device, wherein the receiving the query comprises receiving the query via a secure application programming interface; and providing, by the processing system, the information about the geolocation of the communication device to the application server [paragraphs 0089-0090].
Regarding claim 17, Siomina discloses a non-transitory machine-readable medium, comprising executable instructions that, when executed by a processing system including a processor, facilitate performance of operations, the operations comprising: obtaining timing advance data of a communication device operating in a control plane session on a mobility network [paragraphs 0088, 0090]; determining a geolocation of the communication device based on the timing advance data of the communication device [paragraphs 0090-0091]; storing information about the geolocation of the communication device at a storage device associated with the mobility network [inherent to store the geolocation]; receiving, in the control plane session, a query about the geolocation of the communication device [paragraphs 0089-0090]; and providing, in the control plane session, the geolocation of the communication device to equipment of a network customer [paragraph 0092].
Regarding claim 18, Siomina discloses wherein the obtaining the timing advance data of the communication device comprises: performing control-plane data probing to obtain the timing advance data [paragraph 0018].
Regarding claim 20, Siomina discloses wherein the operations further comprise: receiving a query from an application server, wherein the query includes a request for information about the geolocation of the communication device, wherein the receiving the query comprises receiving the query via a secure application programming interface; and providing, by the processing system, the information about the geolocation of the communication device to the application server [paragraphs 0089-0090].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, and 17 of U.S. Patent No. 11,228,865. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 1 is taught in patented claim 12 but is broader as it omits the limitation regarding not requiring the communication device to engage in a user-plane session. Instant independent claim 11 is taught in patented claim 1 but is broader as it omits the limitation regarding accessing the secure portion of the network. Instant independent claim 17 is taught in patented claim 17 but is broader as it omits the limitation regarding not requiring the communication device to engage in a user-plane session.
Claims 1, 11, 15, 17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 15, and 16 of U.S. Patent No. 11,659,357. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 1 is taught in patented claim 1 but is broader as it omits the limitation regarding not requiring the communication device to engage in a user-plane session. Instant independent claim 11 is taught in patented claim 1 but is broader as it omits the limitation regarding not requiring the communication device to engage in a user-plane session. Instant independent claim 17 is taught in patented claim 16 but is broader as it omits the limitation regarding not requiring the communication device to engage in a user-plane session. Instant dependent claim 15 is taught in patented claim 15. Instant dependent claims 17 and 19 are taught in patented claim 16.
Claims 1, 9-14, 16 and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,028,780. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 1 is taught in patented claim 1 but is broader as it omits the limitation regarding avoiding entry into a user-plane session. Instant dependent claims 9 and 10 are taught in patented claims 8 and 9, respectively. Instant independent claim 11 is taught in patented claim 11 but is broader as it omits the limitation regarding avoiding entry into a user-plane session. Instant dependent claim 12 is taught in patented claims 5 and 6. Instant dependent claim 13 is taught in patented claim 14. Instant dependent claim 14 is taught in patented claim 12. Instant dependent claim 16 is taught in patented claim 11. Instant independent claim 17 is taught in patented claim 16 but is broader as it omits the limitation regarding avoiding entry into a user-plane session.
Allowable Subject Matter
Claims 2-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/EAW/
June 22, 2026
/ERIKA A WASHINGTON/Primary Examiner, Art Unit 2644
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