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 .
Response to Arguments
Applicant's arguments filed 7/21/2026 have been fully considered but they are not persuasive. The Examiner has reviewed the filed remarks and related amendments to the claims, but respectfully disagrees that all claims are now in condition for allowance.
Applicant’s argument: Regarding the 112(b) rejection of remaining claims 2 and 3.
Examiner’s response: The applicant has cited an amendment to the claims, but has not entered a corresponding interview for claims 2 and 3 to correct the noted issues. The grounds for rejection are therefore maintained and will be reiterated below.
Interview Summary – Please note, the Examiner contacted the applicant (on 8/19/2026) and discussed with representative Attorney James Barta a proposed Examiner’s amendment to change the noted ‘and’ to ‘or’ in each of claims 2 and 3 and place them in better condition for allowance. However, in light of the remaining grounds for rejection of claim 47 (detailed below) these amendments have not been entered by the Examiner as the case is no longer viewed as in condition for allowance should the amendments to claims 2 and 3 be entered.
Applicant’s argument: New claim 47 is in condition for allowance.
Examiner response: Claim 47 is a method claim, which recites contingent limitations. Per the guidance of MPEP 2111.04(II) and 2143.03, method claims and system claims are treated differently with regards to what limitations are given patentable weight when dealing with contingent limitations. Specifically, MPEP 2111.04(II) states:
“The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.
The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The system claim interpretation differs from a method claim interpretation because the claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed.
See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) for an analysis of contingent claim limitations in the context of both method claims and system claims. In Schulhauser, both method claims and system claims recited the same contingent step. When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed" (quotation omitted). Schulhauser at 10. When analyzing the claimed system as a whole, the PTAB determined that "[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [ ] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);" however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14.”.
In the current claim 47, there is a limitation regarding ‘receiving a positioning configuration related indication from the location server’ that comprises at least one of three alternative limitations. These alternative limitations, in a method claim, create three contingent claim paths. For the system claim, it must be shown that all variations can be performed; however, for the method claim only one contingency path need be shown to encompass the scope of the claimed limitations. Therefore, the contingency path not related to paths created by previous claim 7 is still subject to the grounds for rejection previously applied. Please note that as claim 47 is a new claim, an associated new rejection of this claim is provided below.
Claim Rejections - 35 USC § 112
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 2-3 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.
Claims 2-3 recite limitations in the format of ‘at least one of A, B and C’, which per MPEP 2111.01 reads as ‘at least one of A, at least one of B and at least one of C’. However, the disclosure only appears to support the requirement of only 1 condition, not the requirement of all conditions. As such the scope of the claim is indefinite. In order to facilitate compact prosecution, the claims will be reviewed for prior art purposes as or rather than and; and the claim language must be corrected via amendment. [note each claim recites distinct limitations, but the nature of the issue is the same regardless of the specific limitations, the claims are grouped for clarity and need to be addressed individually in the response]
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.
Claim 47 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qualcomm Incorporated (herein after QI)(NPL “On Demand Transmission of PRS for NR” see IDS).
Re claim 47, QI discloses a method performed by an apparatus, the method comprising:
transmitting, to a location server in the communication network (Section 6; Fig 6 steps 4 and 5 -gNB to LMF, and the associated descriptive paragraphs labelled 4 and 5), information of one or more non-preferred resources for positioning reference signal, PRS (Section 6; Fig 6 steps 4 and 5, descriptive paragraphs 4 and 5 –‘preferred or supported PRS configurations’ – P5 describes aspects such as ‘PRS transmission on new frequencies’ and other examples supporting increased PRS transmission on resource that a not ‘preferred’), measurement at a terminal device (Section 6; Fig 6 step 9 -UE, descriptive paragraph 9) in the communication network (Section 6; Fig 6 steps 4 and 5, descriptive paragraphs 4 and 5 –‘preferred or supported PRS configurations’ – P5 describes aspects such as ‘PRS transmission on new frequencies’ and other examples supporting increased PRS transmission on resource that a not ‘preferred’);
receiving a positioning configuration related indication from the location server (Section 6 Fig 6 steps 11-14, descriptive paragraphs 5, 11-14), wherein the positioning configuration related indication is obtained in connection with the transmitted information (Section 6 Fig 6 steps 11-14, descriptive paragraphs 5, 6, 8, 11-14) and comprises at least one of:
a PRS configuration for receiving PRSs at the terminal device (lacks patentable weight as an alternative limitation);
a request to change a PRS configuration for transmitting the PRSs at a network device in the communication network (Section 6 descriptive paragraphs 5, 6, 8, 11-14); or
a request to change a PRS measurement related configuration for measuring the PRSs at the terminal device (lacks patentable weight as an alternative limitation); and
updating, by the apparatus in response to the positioning configuration related indication (Section 6 Fig 6 steps 11-14, descriptive paragraphs 11-14-restore or update configuration to account for increased PRS is no longer needed), a positioning configuration to reduce PRS measurement of the terminal device on the one or more non-preferred resources (Section 6 Fig 6 steps 11-14, descriptive paragraphs 11-14-restore or update configuration to account for increased PRS is no longer needed),
wherein, when the positioning configuration related indication comprises the PRS configuration for receiving the PRSs at the terminal device, the apparatus comprises the terminal device and the updating comprises applying, at the terminal device, the PRS configuration for receiving the PRSs (lacks patentable weight as a contingent limitation),
wherein, when the positioning configuration related indication comprises the request to change the PRS configuration for transmitting the PRSs (Section 6 Fig 6 steps 11-14, descriptive paragraphs 11-14-restore or update configuration to account for increased PRS is no longer needed), the apparatus comprises the network device and the updating comprises changing, at the network device (Section 6 Fig 6 steps 13-14, descriptive paragraphs 13-14-restore or update configuration to account for increased PRS is no longer needed), the PRS configuration for transmitting the PRSs (Section 6 Fig 6 step 14, descriptive 14), and
wherein, when the positioning configuration related indication comprises the request to change the PRS measurement related configuration, the apparatus comprises the terminal device and the updating comprises changing, at the terminal device, the PRS measurement related configuration for measuring the PRSs (lacks patentable weight as a contingent limitation).
Allowable Subject Matter
Claim 1 is allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to anticipate or render obvious the limitations of the above cited claims. Re claim 1 the prior art fails to disclose the specific apparatus characteristics and relationships to the updating processing based on signals received.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R NEFF whose telephone number is (571)270-1848. The examiner can normally be reached Mon-Fri 5:30am-2:00pm.
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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/MICHAEL R NEFF/Primary Examiner, Art Unit 2631
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