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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7, and 14-19, drawn to a method of operating a user equipment and a device.
Group II, claim(s) 8-13, drawn to a method performed by a user equipment.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I & II lack unity of invention because the groups do not share the same or corresponding technical feature. Group II requires the steps of transmitting beam measurements for a serving base station and the at least one neighboring base stations in response to a request from a location server.
During a telephone conversation with Michael Epstein (Reg. No. 64,601) on May 13, 2026 a provisional election was made without traverse to prosecute the invention of I, claims 1-7, and 14-19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/421,248, filed on July 07, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 10, 2024 and January 31, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3-7 of U.S. Patent No. 12,025,724. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of U.S. Patent No. 12,025,724 recites a method of operating a User Equipment comprising:
sending at least one report or information (col. 15, line 52),
wherein the at least one report or information is based on at least one measurement (col. 15, lines 53-55),
wherein the at least on measurement is performed by a serving base station from the User Equipment (col. 15, lines 53-55),
wherein the measurement identifies at least one neighboring base stations (col. 15, line 51),
wherein the measurement comprises beam measurements for the serving base station and the at least one neighboring base stations (col. 15, lines 60-64);
signaling capabilities of the User Equipment (col. 15, line 57);
receiving information about resources for the serving base station and the at least one neighboring base stations (col. 15, lines 65-67);
receiving a command, wherein the command sets the User Equipment as an initiator (col. 16, lines 1-4); and
receiving initiator/responder frequency and time resources (col. 16, lines 13-15);
wherein the performing the measurement comprises:
sending at least one Positioning Reference Signal associated with at least one receiving responders (col. 16, lines 16-17), wherein the Positioning Reference Signal is an Uplink Positioning Reference Signal (col. 16, lines 18-20);
receiving a Positioning Reference Signal from the at least one receiving responders on the initiator/responder frequency and time resources (col. 16, lines 24-26); and
measuring a timing information corresponding to the signal received from the initiator (col. 16, lines 27-28).
Regarding claim 2, claim 3 of U.S. Patent No. 12,025,724 recites receiving a configuration signal for sending an initiator signal to the at least one receiving responders (col. 16, lines 35-37);
sending the initiator signal to the at least one receiving responders (col. 16, lines 35-37);
receiving from the at least one neighboring base stations a DownLink signal for Time OF Arrival measurements (col. 16, lines 38-41).
Regarding claim 3, claim 4 of U.S. Patent No. 12,025,724 recites performing periodic measurements on scheduled correction signals (col. 16, lines 43-47).
Regarding claim 4, claim 5 of U.S. Patent No. 12,025,724 recites requesting new resources for measurements with adjustment to parameters, when one of the at least one receiving responders responder nodes fails to reply or the reply information has low quality (col. 16, lines 48-52), wherein the adjustment to parameters is selected from the group consisting of transmit power, periodicity, signal duration or timing advance (col. 16, lines 52-54).
Regarding claim 5, claim 6 of U.S. Patent No. 12,025,724 recites estimating a position of the User Equipment based on information received from the serving base station or a location server (col. 16, lines 56-57), wherein the information comprises a serving base station reply time and/or a receiver transmitter time difference and/or serving base station coordinates (col. 16, lines 58-61).
Regarding claim 6, claim 7 of U.S. Patent No. 12,025,724 recites sending at least one Uplink Positioning Reference Signal signals to the at least one neighboring base stations (col. 16, lines 63-65). Even though claim 7 of U.S. Patent No. 12,025,724 does not expressly recite wherein at least one Uplink Positioning Reference Signal is received by at least two serving base stations. However, one of ordinary skilled in the art could easily modify and include two serving base stations. The motivation/suggestion for doing so would have been to accurately determine the location of the UE.
reporting a receiver transmitter time difference to the location server (col. 16, line 66).
Regarding claims 7 and 14-19, claim 7 recites a computer program, when executed by a processor performs the method of claim 1 and, claims 14-19 recites a device that is used to perform the method of claim 1. Since these claims recite different statutory classes and include similar features to those of claim 1; therefore, the Examiner rejects claims 7, and 14-19 at least for the same reasons discussed above.
Allowable Subject Matter
Claims 1-7, and 14-19 are allowed pending the Applicant overcoming the Double Patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to independent claims 1 and 14, Zhou et al. (US 2021/0185614) as cited in IDS dated June 10, 2024 discloses an uplink transmission in a wireless communication system. Zhou et al. also discloses in paragraph 0082 that a wireless device reports its radio access capability information, a base station requests what capabilities for a wireless device to report based on band information. Zhou et al. further discloses in paragraph 0125 a NR system supports a single beam operation and/or multi-beam operation, and a wireless device may measure quality of a beam pair link using one or more RSs. These teachings of Zhou read on “signaling capabilities of the UE” and “beam measurements” of claim language. However, Zhou et al does not expressly disclose receiving a command setting the UE as an initiator, and the remaining features of claim language.
Furthermore, John Wilson et al. (US 2020/0119875) as cited in IDS dated June 10, 2024 discloses an exchange quasi colocation information and acknowledging downlink control information. John Wilson et al. also discloses in paragraph 0067 a location server sends assistance data to the UE that includes an identification of one or more neighbor cells of base stations and configuration information for reference RF signals transmitted by each neighbor cell. This teaching of John Wilson et al. reads on “identifying a neighboring radio base stations” of claim language. However, John Wilson et al. does not expressly disclose the remaining features of claim language.
Since, none of the references, taken either alone or in combination teach or suggest:
“sending at least one report or information, wherein the at least one report or information is based on at least one measurement, wherein the at least on measurement is performed by a serving base station from the User Equipment, wherein the measurement identifies at least one neighboring base stations, wherein the measurement comprises beam measurements for the serving base station and the at least one neighboring base stations; signaling capabilities of the User Equipment; receiving information about resources for the serving base station and the at least one neighboring base stations; receiving a command, wherein the command sets the User Equipment as an initiator; and receiving initiator/responder frequency and time resources; wherein the performing the measurement comprises: sending at least one Positioning Reference Signal associated with at least one receiving responders, wherein the Positioning Reference Signal is an Uplink Positioning Reference Signal; receiving a Positioning Reference Signal from the at least one receiving responders on the initiator/responder frequency and time resources; and measuring a timing information corresponding to the signal received from the initiator.”
Therefore, the Examiner allows independent claims 1 and 14 at least for the reasons discussed above in combination with all other features recited within claims.
Claims 2-7, and 15-19 depend either directly or indirectly upon independent claims 1 and 14. Therefore, they are also allowed by virtue of their dependencies.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE CAI whose telephone number is (571)272-7798. The examiner can normally be reached Monday-Thursday, 7:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATHY WANG-HURST can be reached at (571)270-5371. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Wayne H Cai/Primary Examiner, Art Unit 2644
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