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 .
This action is in response to the filing of 7/26/2024. Claims 1-17 are pending and have been considered below.
Claim Objections
Claims 5,11,17 are objected to because of the following informalities: claim 5 recites in lines 3-4, “wherein each of the plurality of PRS resources is each of a plurality of transmission beams, respectively”; consistent with the specification [see para 21,247 of PGpub] this should be changed to “wherein each of the plurality of PRS resources is related to each of a plurality of transmission beams, respectively”. Claims 11,17 recite similar language, and are object for the same reason as above.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-17 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 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.
Claim 1 recites in lines 3-4 “receiving, from a user equipment (UE), first positioning reference signal (PRS) information which is most preferred by the UE”. This subject matter 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 [this application is continuation of 17/431,027; the present claims are filed 7/26/24]. The examiner is unable to find support for any level of ‘preferred’ PRS. Thus this subject matter is not supported by the original specification, and fails to comply with the written description requirement. [for examination purpose, this is interpreted as “receiving, from a user equipment (UE), first positioning reference signal (PRS) information which indicate resources for the UE”]
Independent claims 7,13 recite similar language as above, and therefore are rejected for the same reasons as in claim 1 above.
Dependent claims 2-6, 8-12, 14-17 are rejected for their direct/indirect dependencies on claims 1,7,13.
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.
Claim 16 is 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 16 recites the limitation "the network node" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 of U.S. Patent No. 12,095,691. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim 13 is broader than the above-mentioned patent claim 4. That is, present claim 13 is anticipated by claim 4 of the U.S. Patent No. 12,095,691.
US Patent 12,095,691 claims
Present Application claims
4. A user equipment (UE) configured to operate in a wireless communication system, the UE comprising:
a transceiver; a memory storing instructions; and
at least one processor connected to the memory and the transceiver, wherein the at least one processor is configured to execute the instructions to perform operations comprising:
transmitting first information including a best positioning reference signal (PRS) resource which is determined by the UE;
receiving, after the transmission of the first information, second information including configuration for a reference transmission point (TP);
receiving a plurality of PRSs from a plurality of TPs including the reference TP;
performing a reference signal time difference (RSTD) measurement based on (i) the plurality of PRSs and (ii) a reference timing, wherein the reference timing is obtained based on the reference TP; and
reporting the RSTD measurement, wherein the configuration for the reference TP includes PRS resource information of the reference TP.
5. The UE of claim 4, wherein the PRS resource information of the reference comprises information indicating a PRS resource set of the reference TP.
13. A user equipment (UE) in a wireless communication system, the UE comprising:
a memory configured to store instructions, and
a processor configured to perform operations, by executing the instructions, the operations comprising:
transmitting first positioning reference signal (PRS) information which indicate resources for the UE;
receiving, after the transmission of the first PRS information, configuration information for PRS receptions, which includes second PRS information of a reference transmission point (TP);
performing a reference signal time difference (RSTD) measurement which is related to the PRS receptions and the reference TP, and
transmitting the RSTD measurement.
14. The UE of claim 13, wherein the second PRS information comprises information regarding a PRS resource set of the reference TP.
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(s) 1,3,6-7,9,12-13,15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edge et al. (US 2019/0037338).
Regarding claim 1:
Edge discloses a system and method performed by a network node in a wireless communication system (see figures; abstract), the method comprising:
receiving, from a user equipment (UE), first positioning reference signal (PRS) information which indicate resources for the UE (para 3-8; figures 2-3; para 62, partially reproduced herein with emphasis {message sent at actions 204 and 205 may indicate the positioning capabilities of the UE … determine a suitable position method… UE 105 indicates support for OTDOA and for requesting increased PRS resource}; fig 6);
transmitting, after the reception of the first PRS information, configuration information for PRS transmissions, which includes second PRS information of a reference transmission point (TP) (para 47 {PRS configuration for the reference and neighbor cells...} [reference cell is reference TP]; para 63 {send an NRPPa Information Request message at action 206 to AMF 115, which may be relayed to the serving node gNB 110-1 by the AMF 115 at action 207. The NRPPa Information Request may request location-related information for the gNB 110-1, such as the location of the gNB 110-1, PRS configuration parameters}[serving node is reference TP]; fig 2-6), and
receiving a reference signal time difference (RSTD) measurement which is related to the PRS transmissions and the reference TP (; para 43,48; figs 2-3; para 65 {positioning measurements may for example include Reference Signal Time Difference (RSTD) measurements}; and see throughout the disclosure).
Regarding claim 7:
Edge discloses all of the subject matter as described above and further discloses a network node in a wireless communication system (figs 1-3; network node in figure 8), comprising: a memory configured to store instructions (fig 8 [memory 840]; para 115-118,136), and a processor configured to perform operations (fig 8 [processor 830]; and throughout disclosure), by executing the instructions, as described in claim 1 above, thus claim 7 is rejected with similar rationale under teachings of the prior art as above.
Regarding claim 13:
Edge discloses a user equipment (UE) in a wireless communication system (abstract; figures), the UE comprising:
a memory configured to store instructions (figures 1-3; figure 9 [memory 940]), and
a processor configured to perform operations, by executing the instructions (fig 9 [processor 911]; para 119-126), the operations comprising:
transmitting first positioning reference signal (PRS) information which indicate resources by the UE (para 3-8; figs 2-3; para 62 {message sent at actions 204 and 205 may indicate the positioning capabilities of the UE … determine a suitable position method… UE 105 indicates support for OTDOA and for requesting increased PRS resource}; fig 6);
receiving, after the transmission of the first PRS information, configuration information for PRS receptions, which includes second PRS information of a reference transmission point (TP) (para 47 {PRS configuration for the reference and neighbor cells...} [reference cell is reference TP]; para 63 {send an NRPPa Information Request message at action 206 to AMF 115, which may be relayed to the serving node gNB 110-1 by the AMF 115 at action 207. The NRPPa Information Request may request location-related information for the gNB 110-1, such as the location of the gNB 110-1, PRS configuration parameters}[serving node is reference TP]; fig 2-6);
performing a reference signal time difference (RSTD) measurement which is related to the PRS receptions and the reference TP (para 43,48; para 65 {positioning measurements may for example include Reference Signal Time Difference (RSTD) measurements}), and
transmitting the RSTD measurement (figs 2-3; para 65-67; para 76 {UE 105 may also be configured to then include the RSTD measurements obtained at the action 311 in an LPP/NPP Provide Location Information message which may be sent to LMF 120 via AMF 115 (e.g., similar to or the same as the transmission performed at action 215 }; figures; and see throughout the disclosure).
Regarding claims 3,9,15:
Edge discloses all of the subject matter as described above and performing PRS transmissions based on the configuration information for the PRS transmissions (para 42 {configuration information for PRS transmission and location coordinates }; para 87,110; figs; and see throughout the disclosure).
Regarding claim 6,12:
Edge discloses all of the subject matter as described above and wherein the network node comprises a location management function (LMF) server (fig 1a,2 [LMF 120]; para 38; throughout the disclosure).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2,4,5,8,10,1114,16,17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edge et al. (US 2019/0037338) in view of Edge et al. (US 2022/0408220; Edge ‘220 hereinafter).
Regarding claims 2,8,14:
Edge discloses all of the subject matter as described above, except for specifically teaching that wherein the second PRS information comprises information regarding a PRS resource set of the reference TP.
However, Edge ‘220 in the same field of endeavor discloses a system and method for data communication wherein the second PRS information comprises information regarding a PRS resource set of the reference TP (para 47,63; figures ; para 37 {..transmit PRS using an increased quantity of resources..}; para 51,55; para 108 {PRS transmission over a whole network in a consistent manner such that the same set of additional REs are either used for increased PRS transmission…}; and see throughout the disclosure).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use teachings of Edge ‘220 in Edge in order to provide location service that enable PRS transmission to be responsive to whether or not PRS measurement by mobile devices is needed [2,3] (KSR: Combining Prior Art Elements According to Known Methods to Yield Predictable Results).
Regarding claims 4,10,16:
Edge discloses all of the subject matter as described above, except for specifically teaching that wherein the network node is related to one or more TPs for the PRS transmissions.
However, Edge ‘220 in the same field of endeavor discloses a system and method for data communication wherein the network node is related to one or more TPs for the PRS transmissions (para 59,65,84,114; figs; and see throughout the disclosure).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use teachings of Edge ‘220 in Edge in order to provide location service that enable PRS transmission to be responsive to whether or not PRS measurement by mobile devices is needed [2,3] (KSR: Combining Prior Art Elements According to Known Methods to Yield Predictable Results).
Regarding claims 5,11,17:
Edge discloses all of the subject matter as described above, except for specifically teaching that wherein each of the one or more TPs is allocated with a plurality of PRS resources, and wherein each of the plurality of PRS resources is related to each of a plurality of transmission beams, respectively.
However, Edge ‘220 in the same field of endeavor discloses a system and method for data communication wherein each of the one or more TPs is allocated with a plurality of PRS resources, and wherein each of the plurality of PRS resources is related to each of a plurality of transmission beams, respectively (para 59,65,84,114; para 70 {determine directional PRS beams for each gNB}; figs; para 88-91,110; and see throughout the disclosure).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use teachings of Edge ‘220 in Edge in order to provide location service that enable PRS transmission to be responsive to whether or not PRS measurement by mobile devices is needed [2,3] (KSR: Combining Prior Art Elements According to Known Methods to Yield Predictable Results).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Manolakos et al. (US 2021/0050978) discloses a system and method for interaction of DRX with PRS resources.
Lincoln et al. (US 2019/0158345) discloses a system and method for dormant mode measurement optimization.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HIRDEPAL SINGH whose telephone number is (571)270-1688. The examiner can normally be reached 8:00-5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S Wang can be reached on (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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/HIRDEPAL SINGH/Primary Examiner, Art Unit 2631
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