DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 July 2026 has been entered.
By the above submission, Claims 1, 19, 20, and 30 have been amended. No claims have been added or canceled. Claims 3-7, 12-18, 22-24, and 27-29 were previously withdrawn from further consideration as being drawn to nonelected species. Claims 1, 2, 8-11, 19-21, 25, 26, and 30 are currently under examination in the present application.
Response to Arguments
Applicant's arguments filed 24 July 2026 have been fully considered but they are not persuasive.
Regarding the rejection of Claims 1, 2, 8-11, 20, 21, 25, and 26 under 35 U.S.C. 101 as directed to abstract ideas, although Applicant asserts that agreement was reached that including transmission of positioning measurements to a positioning entity would be sufficient to integrate a practical application and overcome the outstanding rejection under 35 U.S.C. 101 (page 12 of the present response), first, it is noted that there was no specific language that was proposed to incorporate such transmission into the claims (see the interview summary mailed 09 July 2026, noting discussion of general categories of potential amendments and that the Examiner indicated that certain amendments could potentially constitute a practical application). Upon further consideration of the claims as amended, merely transmitting the positioning measurements elsewhere would amount to insignificant post-solution activity, because there is no further significant use of the measurements after they are transmitted. Note that “enabling” the positioning entity to determine a position is not a positively recited step that provides a limitation on the claimed method.
Regarding the rejection of Claims 1, 2, 8-11, 20, 21, 25, and 26 under 35 U.S.C. 103 as unpatentable over Edge et al, US Patent Application Publication 2018/0324740, Applicant again asserts that agreement was reached that changing “other parameters” to “remaining parameters” would likely overcome the cited reference (pages 13-14 of the present response). However, the Examiner indicated that further consideration of detailed written arguments would be required before making a final determination of whether the argument was persuasive or that the rejection was overcome (see the interview summary mailed 09 July 2026). Further, as per 37 CFR 1.133(b), a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant, and an interview does not remove the necessity for reply to Office actions as specified in 37 CFR 1.111 and 1.135. However, Applicant has not provided such a written argument detailing why the amendments are seen to overcome the outstanding rejection under 35 U.S.C. 103.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Specification
The objection to the specification as failing to provide proper antecedent basis for the claimed subject matter is NOT withdrawn, because the amendments have raised new issues, as detailed below.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Independent Claims 19 and 30 have been amended to recite “transmitting the one or more PRS resources to the UE using the encrypted values of the one or more parameters”. However, the specification only appears to describe transmitting the resources using original values of the parameters and appears to be silent with respect to transmitting resources using encrypted values of the parameters. Therefore, there is not clearly proper antecedent basis for the claimed subject matter. For further detail, see below with respect to the rejection under 35 U.S.C. 112(a) for failure to comply with the written description requirement.
Claim Rejections - 35 USC § 101
The rejection of Claims 1, 2, 8-11, 20, 21, 25, and 26 under 35 U.S.C. 101 as directed to abstract ideas without significantly more is NOT withdrawn for the reasons detailed above.
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.
Claims 1, 2, 8-11, 20, 21, 25, and 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Independent Claim 1 recites a method that includes receiving a positioning reference signal configuration and a secret key, applying the key to a parameter of the PRS configuration to recover an original value of the parameter, obtaining positioning measurements based on the original value, and transmitting the positioning measurements to a positioning entity. The step of applying the key constitutes a mathematical calculation, noting that applying the key may be a simple bitwise XOR operation (see Claim 2). This calculation constitutes a mathematical concept, which is one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Additionally, the step of obtaining the positioning measurements could also encompass a mathematical calculation and constitute a mathematical concept, or the obtaining could be a simple extraction of the positioning information from abstract data, which constitutes a mental process. Mental processes are another one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Abstract ideas are judicial exceptions as per MPEP § 2106.04(I). See also Alice Corporation Pty. Ltd. v. CLS Bank, International, et al, 573 U.S. 208, 110 USPQ2d 1976 (2014).
The judicial exception is not integrated into a practical application because there is no use or further action with respect to the result of the calculation. There is nothing in the claim that would result in a particular transformation, as per MPEP § 2106.05(c), nor does the claim require the use of the abstract idea in conjunction with a particular machine or manufacture, as per MPEP § 2106.05(b). The recitations of the steps being performed by user equipment or as part of a method of wireless communication constitutes nothing more than a limitation to a particular technological environment or field of use, as per MPEP § 2106.05(h). Although the claims recite receiving the configuration and key, this constitutes mere data gathering, which is insignificant extra-solution activity, as per MPEP § 2106.05(g). Similarly, although the claim recites transmitting the positioning measurements to a positioning entity to enable the positioning entity to determine a position of the UE, the transmitting is recited in a generic manner and constitutes insignificant post-solution activity, as per MPEP § 2106.05(g). Although this recites “to enable the positioning entity to determine a position”, this is merely an intended use and does not provide a clear positive recitation of such an action. There are no additional elements that apply or use the abstract idea in a meaningful way beyond merely linking the use of the judicial exception to a particular technological environment. There is no further step taken beyond recovering the original value of the parameter that would result in a practical application of the abstract ideas. Therefore, the claim is not directed to a practical application of the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for similar reasons as detailed above with respect to the question of a practical application of the judicial exception. The steps of receiving the configuration and key do not require more than receiving data over a network, and obtaining the measurements could merely involve reading the data from memory, which have been recognized by the courts as well-understood, routine, and conventional functions. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs., and buySAFE. Therefore, the claim as a whole, whether the functions are considered individually or as an ordered combination, is not directed to significantly more than the abstract idea.
Independent Claim 20 is directed to user equipment having functionality corresponding to the method of Claim 1 and recites abstract ideas for similar reasons. The recitations of the memories, transceivers, and processors in Claim 20 are at a generic level and constitute nothing more than mere instructions to implement the abstract ideas on a computer. See MPEP § 2106.05(f). Therefore, the device claims are also not directed to significantly more than the abstract ideas.
Dependent Claims 2, 8-11, 21, 25, and 26 only recite further details of the abstract idea (mathematical calculations such as XOR operations) or of the abstract data that is operated upon. These claims recite abstract ideas for the same reasons as the independent claims, and also are not directed to a practical application and do not add significantly more to the abstract ideas recited in the independent claims.
Based upon consideration of all of the relevant factors with respect to the claims as an ordered combination and as a whole, Claims 1, 2, 8-11, 20, 21, 25, and 26 are determined to be directed to abstract ideas without a practical application and without significantly more, as detailed above. Therefore, based on the above analysis, the claimed inventions are not directed to patent eligible subject matter.
It is acknowledged that Claims 19 and 30 recite transmitting resources using the original parameter, which constitutes a practical application of the abstract idea, and therefore Claims 19 and 30 are directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
The rejections of Claims 1, 2, 8-11, 20, 21, 25, and 26 under 35 U.S.C. 112(a) for failure to comply with the written description requirement and under 35 U.S.C. 112(b) as indefinite are withdrawn in light of the amendments to the claims. The rejection of Claims 19 and 30 under 35 U.S.C. 112(a) is NOT withdrawn, because the amendments have raised new issues, as detailed below. Further, the rejection of Claims 19 and 30 under 35 U.S.C. 112(b) is NOT withdrawn, because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
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 pre-AIA 35 U.S.C. 112:
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.
Claims 19 and 30 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 claims contain 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent Claims 19 and 30 have been amended to recite “transmitting the one or more PRS resources to the UE using the encrypted values of the one or more parameters”. However, the specification only appears to describe transmitting the resources using original values of the parameters and appears to be silent with respect to transmitting resources using encrypted values of the parameters. Further, Applicant has not clearly pointed out where support is to be found for the amended claims. See also MPEP § 2163.04. Therefore, there is not clearly sufficient written description of the claimed subject matter in the specification.
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 19 and 30 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.
Claim 19 recites “the encrypted values of the one or more parameters and the remaining parameters” in lines 10-11. There is not clear antecedent basis for “the encrypted values of the remaining parameters” because the remaining parameters are explicitly described as not being encrypted; however, the placement of the phrase “and the remaining parameters” appears to make this an object of the phrase “the encrypted values of…”
Claim 30 recites “at least one or more PRS resources” in line 8. The grammar of the phrase “at least one or more” is not in proper idiomatic English, and it is not clear whether this is intended to read “at least one PRS resource” or “one or more PRS resources” or similar. The claim further recites “the encrypted values of the one or more parameters and the remaining parameters” in lines 17-18. There is not clear antecedent basis for “the encrypted values of the remaining parameters” because the remaining parameters are explicitly described as not being encrypted; however, the placement of the phrase “and the remaining parameters” appears to make this an object of the phrase “the encrypted values of…”
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 8-11, 19-21, 25, 26, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Edge et al, US Patent Application Publication 2018/0324740.
In reference to Claim 1, Edge discloses a method that includes receiving a positioning reference signal configuration for one or more PRS resources where one or more parameters of the configuration are encrypted using at least one secret key (paragraphs 0054-0057); and receiving and applying the secret key to recover an original value of the parameters and obtain one or more positioning measurements of the PRS resources based on the original values (paragraph 0056) and transmitting the positioning measurements to enable a positioning entity to determine a position based on the positioning measurements (paragraphs 0055-0056). However, although Edge discloses that the data may be encrypted, Edge does not explicitly disclose that remaining parameters are not encrypted. Official notice is taken that one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that not all data (e.g. not all parameters) may need to be secured by encryption, and further, because encryption is a processor-intensive function, the amount of processing required could be reduced by not encrypting the data that does not need to be secured. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Edge to include parameters that are not encrypted, in order to reduce processing load, use less processing power, and thereby increase efficiency.
In reference to Claim 2, Edge further discloses that the key is a binary string and is applied by performing an XOR operation on the key and encrypted value (see paragraph 0088).
In reference to Claims 8 and 11, Edge further discloses that the parameters can include a comb size, pattern index, number of symbols, slot offset, frequency hop, output sequence, initialization parameter, reference sequence, or downlink identifier (see paragraphs 0065 and 0120-0122, for example).
In reference to Claims 9 and 10, Edge further discloses receiving, at a base station, an indication of how the parameter is encrypted (see paragraph 0056, for example).
In reference to Claim 19, Edge discloses a method that includes transmitting a positioning reference signal configuration for one or more PRS resources where one or more parameters of the configuration are encrypted using at least one secret key (paragraphs 0054-0057); and transmitting the key and the resource using values of the parameters (paragraph 0056). However, although Edge discloses that the data may be encrypted, Edge does not explicitly disclose that other parameters are not encrypted. Official notice is taken that one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that not all data (e.g. not all parameters) may need to be secured by encryption, and further, because encryption is a processor-intensive function, the amount of processing required could be reduced by not encrypting the data that does not need to be secured. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Edge to include parameters that are not encrypted, in order to reduce processing load, use less processing power, and thereby increase efficiency.
Claims 20, 21, 25, 26, and 30 are directed to user equipment or a base station having functionality corresponding to the methods of Claims 1, 2, 8, 11, and 19, respectively, and are rejected by a similar rationale, mutatis mutandis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
Examiner interviews are available via telephone 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, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Zachary A. Davis/Primary Examiner, Art Unit 2492
