DETAILED NON-FINAL OFFICE 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 .
Comments
This office action is in response to the preliminary amendment of April 22, 2024, which amendment has been ENTERED.
The substitute specification has been ENTERED.
The drawings of April 22, 2024 are hereby accepted as FORMAL.
The information disclosure statements (IDS) of August 8, 2024 and of November 6, 2025 have been considered during examination.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Please note that any mention of a line number of a claim in this office action refers to the claims as they appear in the official claim listing in the image file wrapper (IFW), not to any claim as it may be reproduced below.
The use of the term Bluetooth, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “acquisition module,” “determination module,” “first radio remote unit,” “second radio remote unit,” and, “adjacent radio remote units” in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 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.
Each use of “the first radio remote unit” and of “the second radio remote unit” in independent claim 8 lacks antecedent basis in that there is no earlier recitation of “a first radio remote unit” or of a “second radio remote unit.”
Similarly, throughout claims 1-7, each use of “the first radio remote unit” and of “the second radio remote unit” lacks antecedent basis in that there is no earlier recitation of “a first radio remote unit” or of a “second radio remote unit.”
In independent claim 8, each of the claim limitations “acquisition module,” “determination module,” “first radio remote unit,” “second radio remote unit,” and, “adjacent radio remote units” invokes 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. The written description fails to disclose what hardware and/or software makes up these modules or units. 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.
Each of dependent claims 2-7, 9, and 10 is unclear, at least, in that it depends from unclear, independent claim 1.
The following is a quotation of the first paragraph 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.
Claim 8 is 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 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.
Computer-implemented functions fall into two general types: The first type are specialized functions. These are functions other than those commonly known in the art. Courts often describe these functions as requiring “special programming” in order for a general purpose computer or computer component to perform the function. An example of a specialized function is a “means for matching incoming orders with inventory on a pro rata basis.” Special programming is typically described as the algorithm by which the computer operates.
The second type are non-specialized functions. Those are functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component. An example of a non-specialized function is a “means for storing data.”
Each of the recited claim limitations “acquisition module,” “determination module,” “first radio remote unit,” “second radio remote unit,” and, “adjacent radio remote units,” not having functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component, are of sufficient complexity so as to require “special programming.” So, each of these recited claim limitations contain “specialized functions.”
A specialized function must be supported in the specification by the computer and the algorithm that the computer uses to perform the claimed specialized function. The default rule for § 112(f) programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function. The reason that this is the default rule is that disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope. “And by claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the ‘overbreadth inherent in open-ended functional claims’” In re Katz Interactive Call Processing Patent Litigation, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011), citing to Halliburton Energy Services v. M-I LLC, 514 F.3d 1244, 1256 n.7 (Fed. Cir. 2008). Disclosing the algorithm for a specialized function is the quid pro quo for the ability to claim an element in purely functional terms.
The written description fails to provide adequate detail of the “specialized functions” or “specialized programming” for each of the limitations in independent claim 8 as listed above so that one of ordinary skill-in-the-art could reasonably conclude that the inventor was in possession of the invention of claim 8 at the time of filing. Drawing Figure 1 is at a high level of generality and the specification gives no useful detail for the written description of what is claimed in claim 8. Therefore, claim 8 lacks sufficient written description for, at least, the reasons set forth above.
Prior Art Rejections
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Christmann et al (US 9,322,899 B2), hereinafter Christmann et al (‘899).
A person of ordinary skill-in-the-art would be a person having a degree in some form of engineering or in physics with several years of practical experience in the design and/or testing of radio-frequency positioning equipment.
The text of independent claim 1 is as follows:
“1. (Original) A tunnel positioning method, comprising: acquiring first delay information corresponding to the first radio remote unit and second delay information corresponding to the second radio remote unit, in response to that a target device moves between a first radio remote unit and a second radio remote unit, wherein the first radio remote unit and the second radio remote unit are any two adjacent radio remote units in a tunnel, the first delay information is configured to characterize a delay generated when a signal is transmitted from the target device to the first radio remote unit, and the second delay information is configured to characterize a delay generated when a signal is transmitted from the target device to the second radio remote unit; and determining a position of the target device in the tunnel according to the first delay information, the second delay information, and a distance and a frame header delay difference between the first radio remote unit and the second radio remote unit acquired in advance.”
Looking, first, to independent claim 1, Christmann et al (‘899) plainly discloses, “A tunnel positioning method” (line 1), noting, for example, column 1, lines 20-24; and, column 13, lines 55-60 (noting the word, “tunnel”).
The claim 1 limitations, “acquiring first delay information corresponding to the first radio remote unit and second delay information corresponding to the second radio remote unit, in response to that a target device moves between a first radio remote unit and a second radio remote unit, wherein the first radio remote unit and the second radio remote unit are any two adjacent radio remote units in a tunnel, the first delay information is configured to characterize a delay generated when a signal is transmitted from the target device to the first radio remote unit, and the second delay information is configured to characterize a delay generated when a signal is transmitted from the target device to the second radio remote unit” (lines 2-9) are met in Christmann et al (‘899) by the determining of delays between the “mobile unit” and each of two different “transmitting and receiving apparatuses,” noting, for example, column 3, lines 21-39; column 6, lines 34-36 (noting this passage means “adjacent”); column 9, lines 38-42; column 10, lines 17-28; and, Figure 4.
The claim 1 limitations, “determining a position of the target device in the tunnel according to the first delay information, the second delay information, and a distance and a frame header delay difference between the first radio remote unit and the second radio remote unit acquired in advance” (lines 10-12) are substantially-met in Christmann et al (‘899), except Christmann et al (‘899) does not mention a “frame header” in determining the “delay difference.” However, Christmann et al (‘899) does generally teach/disclose that “any signal form” can be used (column 5, lines 22-25), and, “any particular nature” signal can be used such as GSM (column 11, lines 8-13). In that the disclosed GSM would include a “frame header,” it would have been obvious to one of ordinary skill-in-the-art before the effective filing date of the claimed invention that in using the disclosed GSM, the GSM frame header could be used to determine the delay in the signal in Christmann et al (‘899) as an efficient point of reference on each signal compared, with a reasonable likelihood of success.
In that each and every claimed feature recited in independent claim 1 is plainly present in Christmann et al (‘899) as modified above, independent claim 1 is obvious over Christmann et al (‘899).
The remarks with respect to independent claim 8 are substantially those made above with respect to independent claim 1, in that claim 8 is the apparatus claim corresponding to the method of claim 1.
As for the further limitations of dependent claim 9, in that Christmann et al (‘899) discloses the use of “software” to perform the function of the disclosed invention (e.g., column 7, lines 63-64; column 8, lines 11-12), and, in that Christmann et al (‘899) discloses the invention as part of a communication system (e.g., column 7, lines 63-65), It would have been obvious to one of ordinary skill-in-the-art before the effective filing date of the claimed invention in a system using “software” to implement the functions of the invention to have a “processor” to run the “software”; a “memory” to store the “software”; a “communication interface” to interface with the disclosed “communication system”; and, a “communication bus” to interconnect components dealing with processing in the “system,” with a reasonable likelihood of success. In that each and every claimed feature recited in claim 9 is plainly disclosed in Christmann et al (‘899) as applied above to claims 1 and 9, claim 9 is obvious over Christmann et al (‘899).
The further limitations of dependent claim 10 are met by Christmann et al (‘899) as applied above to claims 1 and 9. The “memory” in the rejection of claim 9 is the “non-transitory computer-readable storage medium.”
The further limitations of dependent claim 2 are met by Christmann et al (‘899) as applied above to independent claim 1.
As for the further limitations of dependent claim 3, it would have been obvious to one of ordinary skill-in-the-art before the effective filing date of the claimed invention that the recited formulas are merely one possible manner of expressing the mathematical relationships in Christmann et al (‘899) as applied above to claims 1 and 2.
As for the further limitations of dependent claim 6, it would have been obvious to one of ordinary skill-in-the-art before the effective filing date of the claimed invention that the recited formulas are merely one possible manner of expressing the mathematical relationships in Christmann et al (‘899) as applied above to claims 1-3.
Potentially-Allowable Subject Matter
Claims 4, 5, and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Prior Art of General Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bevan (‘204) is of general interest for the disclosed use of time difference with two sensors and for Figure 4.
Martin et al (‘513) is of general interest for the disclosure related to surveying conduits.
Schroder (‘120) is of general interest for the disclosure related to surveying a pipeline.
Adewumi et al (‘879) is of general interest for the disclosure related to sensing the position of blockages in a pipeline.
Paulson (‘193) is of general interest for the disclosure related to detecting the position of anomalies in a pipeline.
Kim (‘412) is of general interest for the disclosure related to tracking a moving object within a structure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNARR E GREGORY whose telephone number is (571)272-6972. The examiner can normally be reached on Mondays through Fridays from 7:30 am to 3:30 pm eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vladimir Magloire, can be reached at telephone number 571-270-5144. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNARR E GREGORY/Primary Examiner, Art Unit 3648