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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,225,495 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the reference US 12,225,495 B2. The reference and instant application are claiming common subject matter, as follows:
The instant application 18/815,696
US 12,225,495 B2
1.
receiving a positioning protocol message, from a location server, comprising positioning reference signal (PRS) information that includes first and second PRS configurations for the cell, that have respective periodicities and respective offsets; and
obtain, for transmission to a base station, measurements of time difference of arrival (TDOA) based on the first and second PRSs.
2. decoding first PRSs based on the first PRS configuration and second PRSs based on the second PRS configuration.
3.
wherein the first PRSs and the second PRSs are decoded in consecutive downlink subframes, wherein the consecutive downlink subframes exclude one or more subframes, wherein each of the one or more subframes comprises at least one of a primary synchronization signal (PSS) and a secondary synchronization signal (SSS).
4.
wherein the first PRSs and second PRSs are associated with different antenna ports of a base station.
5.
wherein the first and second PRSs are quasi-co-located.
6.
wherein the first PRS configuration comprises a legacy PRS configuration, wherein the second PRS configuration comprises a non-legacy PRS configuration.
7.
wherein the PRS information includes a first PRS information element that includes the first and second PRS configurations for the cell.
Claim 8.
decode a positioning protocol message, from a location server, comprising positioning reference signal (PRS) information for a cell for use in performing measurements of time difference of arrival (TDOA), wherein the PRS information comprises a first PRS information element, wherein the first PRS information element includes a first PRS configuration and a second PRS configuration for the cell, wherein the first and second PRS configurations have respective periodicities and respective offsets.
Claim 12.
encode, for transmission to a base station, measurements based on the first and second PRSs.
Claim 16.
decode first PRSs based on a first PRS configuration indicated by the first PRS configuration index; and decode second PRSs based on a second PRS configuration indicated by the second PRS configuration index.
Claim 17.
wherein the first PRSs and the second PRSs are decoded in consecutive downlink subframes, wherein the consecutive downlink subframes exclude one or more subframes, wherein each of the one or more subframes comprises at least one of a primary synchronization signal (PSS) and a secondary synchronization signal (SSS).
Claim 18.
wherein the first PRSs and second PRSs are associated with different antenna ports of a base station.
Claim 13.
wherein the first and second PRSs are quasi-co-located.
Claim 14.
wherein the first PRS configuration comprises a legacy PRS configuration, wherein the second PRS configuration comprises a non-legacy PRS configuration
Claim 15.
wherein the PRS information comprises at least a first PRS information element and a second PRS information element, wherein the first PRS information element includes a first PRS configuration index for the cell
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1-20, the closest prior art, EDGE et al. (US 2015/0365790 A1) teach receiving a positioning protocol message, from a location server, comprising positioning reference signal (PRS) information. However, the prior art fails to teach a message decoded by the UE that comprises PRS information including 'a first PRS configuration and a second PRS configuration for the cell, as specified in claims 1-20. Therefore, they are allowable.
Claims 1-20 are allowable if a timely filed terminal disclaimer is filed to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID Q NGUYEN whose telephone number is (571)272-7844. The examiner can normally be reached Monday-Friday 7:00 AM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jinsong Hu can be reached at 5712723965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID Q NGUYEN/Primary Examiner, Art Unit 2643
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