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 office action is in response to Applicant’s preliminary amendment filed on 03/31/2025.
Claims 21-34 are currently pending.
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.
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Claims 21, 22, 23, 24, 25, 28, 29, 30, 31, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7, 8, 9, 13, and 14 of U.S. Patent No. 12,137,403 B2 in view of Edge (US 11,019,487 B2; hereafter EDGE).
With respect to pending claim 21, Issued claim 8 of U.S. 12,137,403 B2 discloses a method performed by a wireless device for receiving positioning system information from a radio network node, the method comprising (Lines 1-2):
receiving positioning system information scheduling information (pSI) from the radio network node; (Lines 3-4)
determining in which subframes at least one positioning system information message (pSIM) comprising one or more positioning system information blocks is scheduled by the radio network node based on the pSI and based on the indication of a shifted starting position, (Lines 6-8)
a start subframe number a for a pSIM being determined as a = X mod 10 in a radio frame for which SFN mod T = Floor (x/10)+8, SFN being a system frame number, T being a system information (SI) periodicity of the pSIM, 8 being the indicated shift in starting position and X being an integer value given by X = m*wm + (n - 1)*wn, m being a number of SI messages, wm being a window length of an SI message, n giving an order of entry in a list of pSIMs and being given by the pSI, and wn being a window length of the pSIM; (Lines 8-15) and
using the determined scheduling of the at least one pSIM for receiving the at least one pSIM. (Lines 16-17)
Pending claim 21 does not disclose ‘receiving, from the radio network node, a scheduling offset;’
Issued claim 8 of U.S. 12,137,403 B2 further discloses ‘receiving, from the radio network node, a scheduling offset;’
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 21 of the current application merely broadens the scope of issued claim 8 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Issued claim 8 of U.S. 12,137,403 B2 does not disclose the pSI comprising an indication of a shifted starting position
EDGE disclose the pSI comprising an indication of a shifted starting position (column 12, lines 44-50, see the defined starting frame for a positioning information configuration).
EDGE teaches the benefit of reduced network resource consumption and terminal battery consumption (column 1, lines 55-62). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the shifted or moved frame as taught by EDGE with the method and wireless device of issued claim 8 and issued claim 1 to produce an expected result.
With respect to pending claim 22, Issued claim 9 of U.S. 12,137,403 B2 discloses the method of claim 21, further comprising:
decoding information of the at least one pSIM; and (Line 3-3)
using the decoded information to assist positioning of the wireless device. (Line 4-4)
With respect to pending claim 23, Issued claim 13 of U.S. 12,137,403 B2 discloses the method of claim 21, wherein each pSIM of the at least one pSIM comprises at least one positioning System Information Block (pSIB), and wherein each pSIB comprises at least one segment of positioning assistance data. (Lines 1-3)
With respect to pending claim 24, Issued claim 14 of U.S. 12,137,403 B2 discloses the method of claim 21, wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type.
Issued claim 14 of U.S. 12,137,403 B2 further discloses ‘an indication of whether each pSIM is encrypted’.
Pending claim 24 does not disclose ‘an indication of whether each pSIM is encrypted’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 24 of the current application merely broadens the scope of issued claim 14 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to pending claim 25, Issued claim 14 of U.S. 12,137,403 B2 discloses the method of claim 21, wherein the pSI comprises an indication of whether each pSIM is encrypted.
Issued claim 14 of U.S. 12,137,403 B2 further discloses ‘wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type’.
Pending claim 25 does not disclose ‘wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 25 of the current application merely broadens the scope of issued claim 14 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to pending claim 28, Issued claim 1 of U.S. 12,137,403 B2 discloses a wireless device configured to receive positioning system information from a radio network node, the wireless device comprising a processor and a memory, the memory containing instructions executable by the processor to configure the wireless device to: (Lines 1-4)
receive positioning system information scheduling information (pSI) from the radio network node; (Lines 5-6)
determine in which subframes at least one positioning system information message (pSIM) comprising one or more positioning system information blocks is scheduled by the radio network node based on the pSI and based on the indication of a shifted starting position, (Lines 8-10)
a start subframe number a for a pSIM being determined as a = X mod 10 in a radio frame for which SFN mod T = Floor (x/10)+8, SFN being a system frame number, T being a system information (SI) periodicity of the pSIM, 8 being the indicated shift in starting position and X being an integer value given by X = m*wm + (n - 1)*wn, m being a number of SI messages, wm being a window length of an SI message, n giving an order of entry in a list of pSIMs and being given by the pSI, and wn being a window length of the pSIM; and (Lines 10-17)
use the determined scheduling of the at least one pSIM for receiving the at least one pSIM. (Lines 18-19)
Pending claim 28 does not disclose ‘receiving, from the radio network node, a scheduling offset;’
Issued claim 1 of U.S. 12,137,403 B2 further discloses ‘receiving, from the radio network node, a scheduling offset;’
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 28 of the current application merely broadens the scope of issued claim 1 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Issued claim 1 of U.S. 12,137,403 B2 does not disclose the pSI comprising an indication of a shifted starting position.
EDGE disclose the pSI comprising an indication of a shifted starting position (column 12, lines 44-50, see the defined starting frame for a positioning information configuration).
EDGE teaches the benefit of reduced network resource consumption and terminal battery consumption (column 1, lines 55-62). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the shifted or moved frame as taught by EDGE with the method and wireless device of issued claim 8 and issued claim 1 to produce an expected result.
With respect to pending claim 29, Issued claim 2 of U.S. 12,137,403 B2 discloses the wireless device of claim 28, the memory containing instructions executable by the processor to configure the wireless device to:
decode information of the at least one pSIM; and (Lines 3-3)
using the decoded information to assist positioning of the wireless device. (Lines 4-4)
With respect to pending claim 30, Issued claim 6 of U.S. 12,137,403 B2 discloses the wireless device of claim 28, wherein each pSIM of the at least one pSIM comprises at least one positioning System Information Block (pSIB), and wherein each pSIB comprises at least one segment of positioning assistance data. (Lines 1-3)
With respect to pending claim 31, Issued claim 7 of U.S. 12,137,403 B2 discloses the wireless device of claim 28, wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type. (Lines 3-3)
Issued claim 7 of U.S. 12,137,403 B2 further discloses ‘an indication of whether each pSIM is encrypted’.
Pending claim 31 does not disclose ‘an indication of whether each pSIM is encrypted’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 31 of the current application merely broadens the scope of issued claim 7 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to pending claim 32, Issued claim 7 of U.S. 12,137,403 B2 discloses the wireless device of claim 28, wherein the pSI comprises an indication of whether each pSIM is encrypted. (Lines 4-4)
Issued claim 7 of U.S. 12,137,403 B2 further discloses ‘wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type’.
Pending claim 32 does not disclose ‘wherein the pSI comprises a Global Navigation Satellite System identity (GNSS ID) per pSIB type’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 32 of the current application merely broadens the scope of issued claim 7 of Patent No. 12,137,403 B2 by omitting the above feature.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Allowable Subject Matter
Claims 26, 27, 33, and 34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/BRIAN T O CONNOR/Primary Examiner, Art Unit 2465 June 9, 2026
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