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 amendment field on 05/11/2026. Claims 1-20, of which claims 1 and 15 are independent, were pending in this application and have been considered below.
Specification objection is withdrawn.
Claim rejections under 35 USC § 103 are withdrawn in view of the amendment.
Response to Arguments---
Applicant’s arguments filed 05/11/2026 (see Remarks, pages 9-16), regarding the rejection of claims under 35 USC § 112(a) and 35 USC § 112(b) have been fully considered but they are not persuasive.
Applicant’s Argument: "First, Applicants note that the Office Action fails to make a prima facie case of indefiniteness because "leaves the reader in doubt as to the meaning" is not the correct standard for determining definiteness." (lines 3-5 of page 13 of Remarks)
Examiner Response: Examiner respectfully disagrees. MPEP 2171, 35 U.S.C. 112(b) sets forth the Underlying Standard with two specific requirements for patent claims:
- They must set forth the subject matter the inventor regards as their invention.
- They must particularly point out and distinctly define the metes and bounds of that subject matter.
Originating from property law, the term "Metes and Bounds" is used objectively in patent law to describe the clear outer boundaries of the claimed invention. The claims fail to set forth the "metes and bounds, when the claim language is ambiguous, vague, or overly broad, preventing a person of ordinary skill in the art from determining exactly where the invention’s boundaries lie.
The term "Leaves the Reader in Doubt as to the Meaning" is the operational test used to determine if a claim fails to define its "metes and bounds". Derived from the landmark Supreme Court case Nautilus, Inc. v. Biosig Instruments, Inc, 572 U.S. 898 (2014), patent claims are held invalid or properly rejected as indefinite if their language fails to inform those skilled in the art about the scope of the invention with reasonable certainty.
Therefore, if a claim's terminology "leaves the reader in doubt" about what is meant, it legally fails to establish those required "metes and bounds". In practice:
- Failure to state the "metes and bounds" is the statutory defect.
- “Leaving the reader in doubt" is the evidentiary standard used to prove that defect.
Applicant’s Argument: “Second, the recited claim feature is not indefinite. At least when read in light of the specification, a person having ordinary skill in the art would understand "reference signal configuration" to relate to different features, for example, those the Office refers to on page 9 of the Office Action, viz, "more than two positioning states, i.e., state 1, ... , state N, wherein the states may have different degrees of complexity, latency, and/ or accuracy." Indeed, even the Office is able to sufficiently ascertain what the Office believes to be the metes and bounds of the claimed invention in rejecting the claims. Therefore, the "reference signal configuration" recited by claims 1 and 15 would be clear to a person having ordinary skill in the art, and these claims comply with the requirements of 35 U.S.C. § 112(b).” (lines 7-16 of page 13)
Examiner Response: Examiner respectfully disagrees. What office refers to on page 9 of the office action is simply the specification description., and details discussion and recommendation to amend the claims 1 and 15 to include “wherein the first and second positioning states have different degrees of complexity, latency and/or accuracy”, which applicant does not address.
Applicant’s Argument: "The Office, on page 6 of the Office Action, asserts that claim 1 is limited to an embodiment "illustrated in Fig. 11." The Office subsequently cites a portion of the specification which discloses "The functions illustrated in Fig. 11 may be performed by an apparatus such as, or comprised in, a terminal device or a base station." (emphasis added)" (line 22 of page 10 to line 2 of page 11).
"the specification discloses, regarding Fig. 12, that the functions may be performed by an apparatus such as, or comprised in, a network element of a wireless communication network. The apparatus may also be referred to, for example, as a network node, a RAN node, a NodeB, an LTE evolved NodeB (eNB), a gNB, a base station, an NR base station, a 5G base station, an access node, an access point (AP), a distributed unit (DU), a central unit (CU), a baseband unit (BBU), a radio unit (RU), a radio head, a remote radio head (RRH), a transmission and reception point (TRP), a location server, or a location management function (LMF)." (lines 3-12 of page 11).
"Example embodiments of an apparatus disclosed by the specification and drawings do not limit the written description or claim 1 to only a terminal device or base station. Rather, the present application's disclosure of multiple embodiments illustrates examples of the broader claimed genus of apparatuses. Therefore, claim 1 complies with the written description requirement under 35 U.S.C. § 112(a)." (lines 16-20 of page 11 – emphasis added)
"Claim 15 recites similar features to claim 1 and also complies with the written description requirement for at least similar reasons." (lines 21-22 of page 11 – emphasis added)
Examiner Response: Examiner respectfully disagrees. A patent applicant cannot claim an invention scope broader than what is supported by the original written description and drawings. Under patent law, claims must find clear support in the specification so that the public receives an enabling disclosure in exchange for the monopoly right.
Examiner notes that in addition to describing “base station” and “network element” in the above-mentioned reference to Fig. 12, the specification also describe “terminal device” as follows: “The terminal device may also be referred to as a UE, user equipment, reduced capability (RedCap) device, NR-lite device, NR-light device, low-complexity device, low-power device, or asset-tracking device herein.” (lines 4-6 of page 36)
However, it seems the applicant by referring to the specification, argues that the term “apparatus” covers all three limitations, i.e., "terminal device", "Base stations”, and “network element”.
Dose the patent application, as originally filed, actually support aforesaid arguments. Let us examine it by, for instance, replacing the term "apparatus" with "network element" in claim 1, and with "terminal device" in claim 14. Then, claim 1 would recite: “... the network element comprising ... switch from the first positioning state to a second positioning state of the at least two positioning states ...”, and claim 15 would recite: “... the terminal device comprising ... transmit, during a positioning session for positioning of a terminal device in the wireless communication network, to one or more network elements in the wireless communication network, an indication to communicate at least one positioning signal by switching from a first positioning state to a second positioning state of at least two positioning states configured for the positioning session ...”. However, none of the above languages are supported by the originally filed patent application.
Furthermore, as noted in the last office action: "Examiner Note - It is noted that similar issues has been raised by the European patent office in the “extended European search report” for European patent application No. EP 21957698 A1 dated 04/17/2025 (see IDS) in which the applicant concurred in their response “Amendments received before examination” on 10/10/2025 (see attached) by amending the claims." Specifically, the applicant in their response amended claims to define term "apparatus" as follows (lines 2-6 of page 12): "Regarding item 1-2.2 in the Communication:
Claim 1 has been further amended to state that the apparatus comprises or is
comprised in a terminal device by combining the subject matter of claim 14
thereto. Claim 14 (renumbered from claim 15) has been amended correspondingly.
Claim 14 has been further amended to state that the apparatus comprises or is
comprised in a network element. Support for this amendment can be found
e.g. on page 41, lines 20 and 21, and page 42, lines 23 and 24 of the description
as filed.
• The correspondence between amended claim 1 and amended claim 14 is rovided by the fact that amended claim 1 seeks protection for an apparatus that
comprises or is comprised in a terminal device, while amended claim 14 refers
to positioning of said apparatus."
Applicant has nevertheless maintained the corresponding broader claims in the present application. Applicant's amendment in the corresponding European application is not controlling of the present examination; however, it further demonstrate that the originally recited language does not adequately define the intended scope of the invention.
Claim Rejections - 35 USC § 112(a) or pre-AIA 35 USC § 112, first 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(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 the first paragraph 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.
The test for enablement is whether Applicant's specification provides sufficient detail so one of ordinary skill in the art at the time of filing could make and use the full scope of the claimed invention without undue experimentation. In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP § 2164.01. To determine whether the amount of experimentation would be undue, or unreasonable, the Court of Appeals for the Federal Circuit has enumerated several non-exclusive factors, any of which may not apply in agiven case. In re Wands at 1404; MPEP § 2164.01(a). The factors include (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands at 1404; MPEP § 2614.01(a). The scope of enablement provided by a disclosure must be commensurate in scope with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); MPEP § 2164.08. Moreover, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Automotive Technologies International Inc. v. BMW of North America Inc., 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007)
Applicant's Specification must provide written description support for all that is claimed. See 35 USC § 112 ¶ 1; MPEP § 2163. Written description support requires a disclosure that would reasonably convey Applicant's possession of all claimed subject matter to one of ordinary skill in the art at the time of the invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc); MPEP § 2163. While written description support requires neither in haec verba description of the claim limitations nor any particular form of disclosure, all claim limitations must be equivalently described and not merely rendered obvious. Ariad at 1162. Accordingly, a patent claim cannot recite subject matter that is not expressly, implicitly or inherently disclosed by Applicant's written description. See Hyatt v. Boone, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); In re Wright, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989); MPEP § 2163.
Reasonable possession of a claimed invention is also not shown when the disclosure merely amounts to a hoped for result, instead of a specifically claimed invention. See University of California v. Eli Lilly, 43 USPQ2d 1398 (Fed Cir 1997). In Eli Lilly, the court held that where a specification merely includes generic statements that distinguish multiple genus by function alone, those statements are generally insufficient sources of written description support because they fail to define structures/identities of species within the genus. Patents must describe "an invention, not an indication of a result that one might achieve if one made that invention." Id.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter ““an apparatus”” (line 1 of claims 1 and 15), which is broader than the enabling disclosure.
Regarding claim 1, which is illustrated in Fig. 11, the specification disclose: “FIG. 11 illustrates a flow chart according to an exemplary embodiment. The functions illustrated in FIG. 11 may be performed by an apparatus such as, or comprised in, a terminal device or a base station.” (lines 2-4 of page 36; emphasis added). Therefore, the apparatus of claim 1 is limited only to be either a terminal device or a base station.
Regarding claim 15, which is illustrated in Fig. 12, the specification disclose: “FIG. 12 illustrates a flow chart according to an exemplary embodiment. The functions illustrated in FIG. 12 may be performed by an apparatus such as, or comprised in, a network element of a wireless communication network.” (lines 5-7 of page 38; emphasis added). Therefore, the apparatus of claim 15 is limited only to be a network element.
Regarding claims 2-14 and 16-20, claims are rejected due to their dependency to the rejected claims 1 and 15, correspondingly.
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 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 1, claim recites the limitation “at least one positioning signal” (line 10 of claim 1). There is insufficient antecedent basis for this limitation in the claim. It is recommended to replace the limitation with phrase --at least one first positioning signal--.
Regarding claims 1 and 15, claims recite “communicate, during a positioning session for positioning of the apparatus, at least one first positioning signal in a first positioning state of at least two positioning states configured for the positioning session … the first and second positioning states correspond to different reference signal configuration used for communicating the at least one positioning signal” (lines 5-11 of claim 1 – truncated, emphasis added), and “transmit … an indication to communicate at least one positioning signal by switching from a first positioning state to a second positioning state of at least two positioning states configured for the positioning session, wherein the first and second positioning states correspond to different reference signal configurations used for communicating of the at least one positioning signal.” (lines 5-11 of claim 15 – truncated, emphasis added), which term “different … configuration” makes it vague and indefinite. It is not clear what term “different … configuration” is referring to, e.g., does it refers to “carrier frequency” or “frequency hopping scheme or bandwidth”, or some or all or other configurations? 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.
The specification merely disclose: “Referring to FIG. 2, the UE and TRPs are configured with two positioning states: a first positioning state 201 called "position_fix", and a second positioning state 202 called "position_tracking". For example, the "position_fix" state may be triggered when the UE is localized for the first time, or when the required location accuracy is very high. On the other hand, the "position_tracking" state may deploy a more relaxed positioning session, where the LMF has some information about the UE trajectory, speed, and/or past locations, and can locate the UE with a smaller number of instantaneous measurements.” (line 30 of page 17 to line 5 of page 18 – emphasis added). “It should be noted that the multi-state configuration may also comprise more than two positioning states, i.e., state 1, ... , state N, wherein the states may have different degrees of complexity, latency, and/or accuracy.” (lines 27-29 of page 19 – emphasis added).
As cited above, the specification specifically disclose switching from position_fix to position -tracking which is change of approach. Therefore, claims should specify that the reconfiguration/switching relates to such change of approach. For instance, Akkarakaran et al. (see IDS) disclose: “The BSA may include various parameters for each cell/TRP, such as ... configuration information for one or more reference signals (e.g., PRS or CRS) transmitted by the base station or cell/TRP (e.g., carrier frequency, bandwidth, frequency hopping scheme, encoding, muting pattern, timing and occurrence of transmissions, direction of transmission(s), horizontal and/or vertical beam width(s)) ...” (¶¶[0085]-[0092] – truncated, emphasis added), which are common known adapting, when UE receives the base station almanac (BSA) from a network node. However, in Akkarakaran et al., the approach, before and after such adaptation and change, remain the same, e.g., fast and coarse positioning happens at the cost of accuracy. But this is not the case in the claimed invention, because it is contrary to the invention in which complexity, latency, and/or accuracy before and after aforesaid adaptation and change are not the same. Therefore, the claim should describe that reconfiguration/switching relates to a change in approach, i.e. switching e.g., from position_fix to position_tracking. Hence, it is recommended to replace the limitation with phrase --communicate, during a positioning session for positioning of the apparatus, at least one first positioning signal in a first positioning state of at least two positioning states configured for the positioning session … the first and second positioning states correspond to different reference signal configuration used for communicating the at least one positioning signal, wherein the first and second positioning states have different degrees of complexity, latency and/or accuracy.--.
Claims 1 and 15 also recite “an apparatus” which is vague and indefinite because the type of apparatus is not clear.
Regarding claim 1, which is illustrated in Fig. 11, the specification disclose: “FIG. 11 illustrates a flow chart according to an exemplary embodiment. The functions illustrated in FIG. 11 may be performed by an apparatus such as, or comprised in, a terminal device or a base station.” (lines 2-4 of page 36; emphasis added), i.e., the apparatus of claim 1 is limited only to be either a terminal device or a base station.
Regarding claim 15, which is illustrated in Fig. 12, the specification disclose: “FIG. 12 illustrates a flow chart according to an exemplary embodiment. The functions illustrated in FIG. 12 may be performed by an apparatus such as, or comprised in, a network element of a wireless communication network.” (lines 5-7 of page 38; emphasis added), i.e., the apparatus of claim 15 is limited only to be a network element.
Regarding claims 2-14 and 16-20, claims are rejected due to their dependency to the rejected claims 1 and 15, correspondingly.
Examiner Note - It is noted that similar issues has been raised by the European patent office in the “extended European search report” for European patent application No. EP 21957698 A1 dated 04/17/2025 (see IDS) in which the applicant concurred in their response “Amendments received before examination” on 10/10/2025 (see attached) by amending the claims.
Conclusion
The attention of the applicant is drawn to the fact that the application may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed. In order to facilitate the examination of the conformity of the amended application, the applicant is respectfully requested to clearly identify the amendments carried out, irrespective of whether they concern amendments by addition, replacement or deletion, and to indicate the passages of the application as filed on which these amendments are based.
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).
THIS ACTION IS MADE FINAL. 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 extension fee 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.
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
Prosecution Insights