CTNF 18/721,103 CTNF 83530 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 2-11, 15, 18 and 20 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, 4, 5, 6, 15, 18 and 20 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 § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 1-6, 9, 13-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Qualcomm Incorporated (herein after QI)(NPL “On Demand Transmission of PRS for NR” see IDS) in view of Edge (US Pub 20200137715) . Re claim 1, QI discloses an apparatus in a communication network comprising: transmit 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’); and receive a positioning configuration related indication from the location server (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 the positioning configuration related indication is obtained in connection with the transmitted information (Section 6 Fig 6 steps 11-14, descriptive paragraphs 11-14-restore or update configuration to account for increased PRS is no longer needed) and it indicates the apparatus to update 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); however QI fails to explicitly disclose the specifics of the apparatus embodiment wherein the apparatus comprises at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code being configured to, with the at least one processor, cause the apparatus to perform functions. This design is however disclosed by Edge. Edge discloses wherein the apparatus comprises at least one processor (Fig 3 el 304/334; Fig 19; Par 82, 83, 294, 296); and at least one memory including computer program code (Fig 3 el 304/340; Fig 19; Par 82, 83, 294, 296), the at least one memory and the computer program code being configured to, with the at least one processor (Fig 3 el 304; Fig 19; Par 82, 83, 294, 296), cause the apparatus to perform functions (Fig 3 el 304; Fig 19; Par 82, 83, 294, 296). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the component embodiment of Edge based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance it is functionally common to provide a device for operation in a communication environment and that device comprise a processor and connected memory to perform the processing necessary to functionally operate the communicating device within a given environment, allowing for compatibility and operational consistency in for the device in the environment. Re claim 2, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 1, QI further discloses wherein the information of the one or more non- preferred resources is transmitted when at least one of following conditions is satisfied: a request for the information is received from the location server (Section 6 Figure 6 steps 1/3 resulting in step 4; descriptive paragraphs 1, 3, 4); a number of available PRS resources is less than or equal to a first threshold; PRS measurement quality is lower than or equal to a second threshold; and positioning performance is worse than or equal to a third threshold. [see associated 112b rejection above] Re claim 3, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 1, QI further discloses wherein the information of the one or more non- preferred resources is indicative of the one or more non-preferred resources in at least one of a frequency domain (Section 6 descriptive paragraphs 5, 6), a time domain (Section 6 descriptive paragraphs 5, 6), a spatial domain (Section 6 descriptive paragraphs 5, 6) and a code domain. [see associated 112b rejection above] Re claim 4, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 1, QI further discloses wherein the positioning configuration related indication comprises at least one of a PRS configuration for receiving PRSs at the terminal device, 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, 9) and a request to change PRS measurement related configuration for measuring the PRSs at the terminal device (Section 6 descriptive paragraphs 5, 6, 8, 9). [see associated 112b rejection above] Re claim 5, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 4, QI further discloses wherein the request to change the PRS configuration for transmitting the PRSs comprises at least one of an indication to change the PRS configuration for transmitting the PRSs (Section 6 descriptive paragraphs 4, 5, 6), information of preferred PRS resources (Section 6; Fig 6 steps 4-6, descriptive paragraphs 4-6 –‘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’), and information of non-preferred PRS resources (Section 6; Fig 6 steps 4-6, descriptive paragraphs 4-6 –‘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’). [see associated 112b rejection above] Re claim 6, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 4, QI further discloses wherein the request to change the PRS measurement related configuration comprises an indication to change the PRS measurement related configuration (Section 6 descriptive paragraphs 4, 5, 6) and/or at least one of a measurement gap configuration, a PRS processing window configuration (Section 6 descriptive paragraphs 4, 5, 6 – longer duration) and a PRS priority configuration for the terminal device. [see associated 112b rejection above] Re claim 9, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 4, QI further discloses wherein the apparatus comprises the network device (Section 6 descriptive paragraphs 4, 5, 6 - gNB) when the positioning configuration related indication comprises the request to change the PRS configuration for transmitting the PRSs (Section 6 descriptive paragraphs 4, 5, 6) or the request to change the PRS measurement related configuration (Section 6 descriptive paragraphs 4, 5, 6). Re claim 13, QI discloses a location server in a communication network comprising: receive from a terminal device or a network device serving the terminal device 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 resource 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 the terminal device (Section 6; Fig 6 step 9 -UE, descriptive paragraph 9); and transmit a positioning configuration related indication to the terminal device and/or one or more network devices positioning the terminal device (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 the positioning configuration related indication is obtained in connection with the received information (Section 6 Fig 6 steps 11-14, descriptive paragraphs 11-14-restore or update configuration to account for increased PRS is no longer needed) and it indicates the terminal device or the one or more network devices to update 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); however QI fails to explicitly disclose the specifics of the location server embodiment wherein the location server comprises at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code being configured to, with the at least one processor, cause the location server to perform functions. This design is however disclosed by Edge. Edge discloses wherein the location server embodiment wherein the location server comprises at least one processor (Fig 3 el 306/336; Par 78, 82-83, 85); and at least one memory including computer program code (Fig 3 el 306/342; Par 78, 82-83, 85), the at least one memory and the computer program code (Fig 3 el 306; Par 78, 82-83, 85) being configured to, with the at least one processor (Fig 3 el 306; Par 78, 82-83, 85), cause the location server to perform functions (Fig 3 el 306; Par 78, 82-83, 85). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the component embodiment of Edge based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance it is functionally common to provide a device for operation in a communication environment and that device comprise a processor and connected memory to perform the processing necessary to functionally operate the communicating device within a given environment, allowing for compatibility and operational consistency in for the device in the environment. Re claim 14, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 13, QI further discloses wherein the at least one memory and the computer program code are further configured to, with the at least one processor, cause the location server at least to: transmit a request for the information of the one or more non-preferred resources (Section 6 Figure 6 steps 1/3 resulting in step 4; descriptive paragraphs 1, 3, 4) to the terminal device or the network device (Section 6 Figure 6 steps 1/3 resulting in step 4; descriptive paragraphs 1, 3, 4) serving the terminal device before receiving the information of the one or more non-preferred resources (Section 6 Figure 6 steps 1/3 resulting in step 4; descriptive paragraphs 1, 3, 4). Re claim 15, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 13, QI further discloses wherein the information of the one or more non- preferred resources is indicative of the one or more non-preferred resources in at least one of a frequency domain (Section 6 descriptive paragraphs 5, 6), a time domain (Section 6 descriptive paragraphs 5, 6), a spatial domain (Section 6 descriptive paragraphs 5, 6) and a code domain. [see associated 112b rejection above] Re claim 19, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 13, QI further discloses wherein the positioning configuration related indication includes a request to change PRS measurement related configuration for measuring PRSs at the terminal device (Section 6 descriptive paragraphs 5, 6, 8, 9), the request to change the PRS measurement related configuration being transmitted (Section 6 descriptive paragraphs 5, 6, 8, 9) to the terminal device or to the network device serving the terminal device (Section 6 descriptive paragraphs 5, 6, 8, 9). Re claim 20, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 19, QI further discloses wherein the request to change the PRS measurement related configuration (Section 6 descriptive paragraphs 5, 6, 8, 9) comprises an indication to change the PRS measurement related configuration (Section 6 descriptive paragraphs 5, 6, 8, 9) and/or at least one of a measurement gap configuration, a PRS processing window configuration (Section 6 descriptive paragraphs 4, 5, 6 – longer duration) and a PRS priority configuration, the request to change the PRS measurement related configuration being determined for the terminal device at least partially based on the information of the one or more non-preferred resources (Section 6 descriptive paragraphs 5, 6, 8, 9). [see associated 112b rejection above] 07-21-aia AIA Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaomi (herein after Xi)(NPL “Positioning enhancement to on-demand DL PRS” see IDS) in view of Edge (US Pub 20200137715) . Re claim 12, Xi discloses an apparatus in a communication network comprising: receive from a location server in the communication network (Section 2.1.2 both cases; 2.3 – assistance information included preferences – LMF sends on-demand PRS request to gNB), information of one or more non-preferred resources for positioning reference signal, PRS (Section 2.1.2 both cases; 2.3 – assistance information included preferences), measurement at a terminal device in the communication network (Section 2.1.2 both cases; 2.3 – assistance information included preferences); determine updated PRS configuration for transmitting the PRSs at least based on the information of the one or more non-preferred resources (Section 2.1.2 last paragraph of proposal 4; Section 2.2 option 1 using assistance information from 2.3); and transmit the PRSs based on the updated PRS configuration (Section 2.1.2 last paragraph of proposal 4; Section 2.2 option 1 using assistance information from 2.3); however Xi fails to explicitly disclose the specifics of the apparatus embodiment wherein the apparatus comprises at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code being configured to, with the at least one processor, cause the apparatus perform to functions. This design is however disclosed by Edge. Edge discloses wherein the apparatus comprises at least one processor (Fig 3 el 304/334; Fig 19; Par 82, 83, 294, 296); and at least one memory including computer program code (Fig 3 el 304/340; Fig 19; Par 82, 83, 294, 296), the at least one memory and the computer program code being configured to, with the at least one processor (Fig 3 el 304; Fig 19; Par 82, 83, 294, 296), cause the apparatus to perform functions (Fig 3 el 304; Fig 19; Par 82, 83, 294, 296). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of Xi in order to incorporate the component embodiment of Edge based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance it is functionally common to provide a device for operation in a communication environment and that device comprise a processor and connected memory to perform the processing necessary to functionally operate the communicating device within a given environment, allowing for compatibility and operational consistency in for the device in the environment . 07-22-aia AIA Claim s 10, 11, 16, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over QI and Edge as applied to claim s 9 and 13 above, and further in view of Fischer (US Pub 20220120841) . Re claim 10 the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 9, but fails however to explicitly disclose wherein the at least one memory and the computer program code are further configured to, with the at least one processor, cause the apparatus at least to: when the positioning configuration related indication comprises the request to change the PRS configuration for transmitting the PRSs, update the PRS configuration for transmitting the PRSs at least based on the request to change the PRS configuration for transmitting the PRSs; and transmit, to the location server, the updated PRS configuration for transmitting the PRSs. This design is however disclosed by Fischer. Fischer discloses wherein the at least one memory (Par 84) and the computer program code (Par 84) are further configured to, with the at least one processor (Par 84), cause the apparatus at least to: when the positioning configuration related indication comprises the request to change the PRS configuration for transmitting the PRSs (Fig 11A step 6; Par 133), update the PRS configuration for transmitting the PRSs at least based on the request to change the PRS configuration for transmitting the PRSs (Fig 11A step 7; Par 133); and transmit, to the location server, the updated PRS configuration for transmitting the PRSs (Fig 11A step 8; Par 133). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the PRS configuration processing of Fischer based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance the additional PRS configuration processing allows for a dynamic considerations of the communication environment to meet on-demand requests and provide corrective updates, improving both communication and connection quality and efficiency. Re claim 11, the combined disclosure of QI and Edge as a whole discloses the apparatus of Claim 9, but fails however to explicitly disclose wherein the at least one memory and the computer program code are further configured to, with the at least one processor, cause the apparatus at least to: when the positioning configuration related indication comprises the request to change the PRS measurement related configuration, update the PRS measurement related configuration for the terminal device at least based on the request to change the PRS measurement related configuration; and transmit the updated PRS measurement related configuration to the terminal device. This design is however disclosed by Fischer. Fischer discloses wherein the at least one memory (Par 84) and the computer program code (Par 84) are further configured to, with the at least one processor (Par 84), cause the apparatus at least to: when the positioning configuration related indication comprises the request to change the PRS measurement related configuration (Fig 11A step 6; Par 133), update the PRS measurement related configuration for the terminal device at least based on the request to change the PRS measurement related configuration (Fig 11A step 7; Par 133); and transmit the updated PRS measurement related configuration to the terminal device (Fig 11A step 9; Par 133). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the PRS configuration processing of Fischer based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance the additional PRS configuration processing allows for a dynamic considerations of the communication environment to meet on-demand requests and provide corrective updates, improving both communication and connection quality and efficiency. Re claim 16, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 13, but fails however to explicitly disclose wherein the positioning configuration related indication comprises a PRS configuration for receiving PRSs at the terminal device, the PRS configuration for receiving the PRSs at the terminal device is determined at least partially based on the information of the one or more non- preferred resources and is transmitted to the terminal device. This design is however disclosed by Fischer. Fischer discloses wherein the positioning configuration related indication comprises a PRS configuration for receiving PRSs at the terminal device (Fig 11A step 6; Par 133), the PRS configuration for receiving the PRSs at the terminal device is determined at least partially based on the information of the one or more non- preferred resources (Fig 11A step 7; Par 133) and is transmitted to the terminal device (Fig 11A step 9; Par 133). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the PRS configuration processing of Fischer based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance the additional PRS configuration processing allows for a dynamic considerations of the communication environment to meet on-demand requests and provide corrective updates, improving both communication and connection quality and efficiency. Re claim 17, the combined disclosure of QI and Edge as a whole discloses the location server of Claim 13, but fails however to explicitly disclose wherein the positioning configuration related indication comprises a request to change a PRS configuration for transmitting PRSs, the request to change the PRS configuration for transmitting PRSs being transmitted to the one or more network devices positioning the terminal device, and wherein the at least one memory and the computer program code are further configured to, with the at least one processor, cause the location server at least to: receive, from the one or more network devices positioning the terminal device, updated PRS configuration for transmitting the PRSs. This design is however disclosed by Fischer. Fischer discloses wherein the positioning configuration related indication comprises a request to change a PRS configuration for transmitting PRSs (Fig 11A step 6; Par 133), the request to change the PRS configuration for transmitting PRSs being transmitted to the one or more network devices positioning the terminal device (Fig 11A step 6; Par 133), and wherein the at least one memory (Par 84) and the computer program code (Par 84) are further configured to, with the at least one processor (Par 84), cause the location server at least to: receive, from the one or more network devices positioning the terminal device (Fig 11A step 8; Par 133), updated PRS configuration for transmitting the PRSs (Fig 11A step 8; Par 133). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the disclosure of QI in order to incorporate the PRS configuration processing of Fischer based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance the additional PRS configuration processing allows for a dynamic considerations of the communication environment to meet on-demand requests and provide corrective updates, improving both communication and connection quality and efficiency. Re claim 18, the combined disclosure of QI, Edge and Fischer as a whole disclose the location server of Claim 17; Fischer further discloses wherein the request to change the PRS configuration for transmitting the PRSs comprises at least one of an indication to change the PRS configuration for transmitting the PRSs (Fig 11A step 6; Par 133), information of preferred PRS resources (Par 133 – requested parameter for PRS config), and information of non-preferred PRS resources (Par 133 – configuration different from requested if request cannot be met). [see associated 112b rejection above] Allowable Subject Matter 07-43-02 AIA Claim s 7-8 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. 13-03-01 AIA 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 7 the prior art of record fails to explicitly disclose wherein the device in communication and performing the disclosed functions if the user terminal . Conclusion 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL R NEFF/ Primary Examiner, Art Unit 2631 Application/Control Number: 18/721,103 Page 2 Art Unit: 2631 Application/Control Number: 18/721,103 Page 3 Art Unit: 2631 Application/Control Number: 18/721,103 Page 4 Art Unit: 2631 Application/Control Number: 18/721,103 Page 5 Art Unit: 2631 Application/Control Number: 18/721,103 Page 6 Art Unit: 2631 Application/Control Number: 18/721,103 Page 7 Art Unit: 2631 Application/Control Number: 18/721,103 Page 8 Art Unit: 2631 Application/Control Number: 18/721,103 Page 9 Art Unit: 2631 Application/Control Number: 18/721,103 Page 11 Art Unit: 2631 Application/Control Number: 18/721,103 Page 12 Art Unit: 2631 Application/Control Number: 18/721,103 Page 13 Art Unit: 2631 Application/Control Number: 18/721,103 Page 14 Art Unit: 2631 Application/Control Number: 18/721,103 Page 15 Art Unit: 2631 Application/Control Number: 18/721,103 Page 16 Art Unit: 2631 Application/Control Number: 18/721,103 Page 17 Art Unit: 2631
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