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 .
Claim Objections
Claims 1-6 are objected to for the following informalities:
In claim 1, 5 and 6; please define “ID” in the claim limitations for clarity of the intended scope.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
‘receiving section’ in claim 1
‘control section’ in claim 1
‘transmitting section’ in claim 6
‘control section’ in claim 6
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-4 and 6 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.
Claim limitations ‘receiving section’ and ‘control section’ in claim 1, as well as ‘transmitting section’ and ‘control section’ in claim 6; invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The above noted limitations are interpreted to invoke a 112(f)-interpretation based on the use of a generic placeholder term in ‘section’ and the provided disclosure at paragraphs 206-216 which equates the ‘section’ to a ‘unit’ or ‘module’. The elements of claim 1, the UE are described in Par 185-202 of the present disclosure. The elements of claim 6, the base station is described in Par 167-184 of the present disclosure. In each instance, the provided figures equate to black box implementations. Further, the noted paragraphs recite the various ‘sections’ as potential software without providing the specific computer/algorithm combination for the function, or they attempt to show the structural support for the ‘sections’ by listing a series of possible functions, but without anything that is actually the specific structure for the claimed element. Rather, the disclosure attempts to broadly claim any conceivable means of performing the functions rather that providing a specific and sufficient structural implementation of the claimed ‘section’ limitations.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 112(a)
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 1-4 and 6 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.
Per MPEP 2163.03 (VI) and 2181; “A claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”. As per the merits of the provided explanation regarding 112(f) and 112(b) above, the noted claim limitations fail to meet the written description requirement as they to provide the specific and sufficient structural disclosure for the noted limitations.
Enablement has been reviewed but is not considered an issue as the various functions have been disclosed, regardless of the lack of sufficient structural support.
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.
Claims 1, 2, 3, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edge (US Pub 20220094430, see IDS).
Re claims 1 and 5, Edge discloses a terminal and the associated radio communication terminal for a terminal, the radio communication method comprising:
a receiving section that receives configuration information (Fig 7 stage 5; Par 100, 105-107; Fig 9 transceiver elements, Par 138 – signaling from gNB 106/202/307 to UE 105) for positioning included in a specific system information block (SIB) (Fig 7 stage 5; Par 100, 105-107 – signaling from gNB 106/202/307 to UE 105 - posSIB),
the configuration information being associated with a Public Land Mobile Network (PLMN) ID (Fig 7 stage 5; Par 100, 105-107 – signaling from gNB 106/202/307 to UE 105); and
a control section that performs (Fig 7 stage 8-9; Par 108-109; Fig 9 Par 138, 142-143) based on the configuration information (Fig 7 stage 8-9; Par 108-109; Fig 9 Par 138, 142-143), positioning-related control associated with the PLMN ID (Fig 7 stage 8-9; Par 108-109; Fig 9 Par 138, 142-143).
Re claim 6, Edge discloses a base station comprising:
a transmitting section that transmits configuration information (Fig 7 stage 5; Par 100, 105-107; Fig 10, Par 149 – signaling from gNB 106/202/307 to UE 105) for positioning included in a specific system information block (SIB) for positioning included in a specific system information block (SIB) (Fig 7 stage 5; Par 100, 105-107 – signaling from gNB 106/202/307 to UE 105 - posSIB),
the configuration information being associated with a Public Land Mobile Network (PLMN) ID (Fig 7 stage 5; Par 100, 105-107 – signaling from gNB 106/202/307 to UE 105); and
a control section that indicates (Fig 7 stage 8-9; Par 108-109; Fig 10, Par 149), by using the configuration information (Fig 7 stage 8-9; Par 108-109; Fig 10, Par 149), positioning-related control associated with the PLMN ID (Fig 7 stage 8-9; Par 108-109; Fig 10, Par 149).
Re claim 2, Edge discloses the terminal according to claim 1, and further discloses wherein the specific SIB is a positioning SIB (Par 104-107 – posSIB, defined in par 96), and the configuration information is at least one of information related to a positioning SIB type (Par 104-107) transmitted by using the positioning SIB (Par 104-107) and at least one specific parameter (Par 104-107) included in the information related to a positioning SIB type (Par 104-107).
Re claim 3, Edge discloses the terminal according to claim 1, and further discloses wherein the PLMN ID (Par 5-6; 100-107, 116) is associated for each category of assistance data notified by using the SIB (Par 5-6; 100-107, 116), for each type of the assistance data (Par 5-6; 100-107, 116), or for each element of the assistance data (Par 5-6; 100-107, 116).
Claim Rejections - 35 USC § 103
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 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Edge (US Pub 20220094430, see IDS) as applied to claim 1 above, and further in view of Fischer (US Pub 20200053690).
Re claim 4, Edge discloses the terminal according to claim 1, but fails however to explicitly disclose wherein the specific SIB is SIB1, and the configuration information is at least one of scheduling information of positioning system information transmitted by using the SIB1 and at least one specific parameter included in the scheduling information of the positioning system information.
This design is however disclosed by Fischer. Fischer discloses wherein the specific SIB is SIB1 (Par 70-71, 78, 90, 157), and the configuration information (Par 70-71, 78, 90, 157) is at least one of scheduling information of positioning system information transmitted by using the SIB1 (Par 70-71, 78, 90, 157) and at least one specific parameter included in the scheduling information of the positioning system information (Par 70-71, 78, 90, 157).
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 Edge in order to incorporate the SIB configuration of Fischer based on the rationale of the use of known techniques to improve similar designs in the same way, in this instance it would be obvious to use known and functionally understood SIB communications to provide detailed information at the first opportunity to clarify the intended communication patterns and reduce variables in the processing for improved UE functionality and operational performance, thereby improving the quality of communication and the user experience.
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 attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang can be reached at (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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/MICHAEL R NEFF/ Primary Examiner, Art Unit 2631
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