CTNF 18/865,944 CTNF 80774 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: The specification has been amended in a manner that is not consistent with 37 CFR 1.121. The substitute specification filed on 14 November 2024 is in a format that includes editorial comments throughout the disclosure. PNG media_image1.png 277 609 media_image1.png Greyscale These comments do not conform with 37 CFR 1.121(b)(1) which sets forth the manner for making amendments to the specification . Appropriate correction is required. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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: data transmission unit in claim 12. 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 1 recites a control method for a positioning tracking apparatus . The specific designation of a method “for a position tracking apparatus” is interpreted as a non-limiting statement of intended use. From MPEP 2103(I)(C): “Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.” While claim 1 recites that the method is for a positioning tracking apparatus, the claims do not recite any features or steps that are relevant to a position tracking application. The lack of any position tracking steps indicates that such features are not required for the invention. The broadest reasonable interpretation (BRI) of claim 1 therefore includes any and all devices that perform the steps of the claimed method, regardless of whether additional position tracking steps are performed. Claim 1 recites the following contingent limitation: “… when the positioning tracking apparatus starts to transmit data, determining a duration required for transmitting the data to be transmitted…” This limitation is contingent because it recites steps that are only required to be performed if their conditions are met. The limitation of “determining a duration” (and all of the subsequent steps which depend on this step) only needs to be performed if the apparatus starts to transmit data 1 . The use of “when” in the limitation implies circumstances when the condition is not met (i.e., when the apparatus is not starting to transmit data). The claims do not recite any limitations for steps that are performed for the mutually exclusive condition of when the apparatus does not start to transmit data. Therefore, the BRI of claims 1-20 includes any and all methods that include steps for devices when they are not transmitting data. This interpretation does not apply to claims 9, 10, and 16-20. The BRI of a process claim reciting actions that are performed only when a condition is met requires only those steps that must be performed and does not include steps that are not required to be performed because the condition is not met . The BRI of a product claim reciting structure for performing a function, which function only needs to occur if a condition precedent is met, still requires that structure for performing the function whether or not the condition is met . Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Claim 12 is 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 12 recites a “data transmission unit” which is subject to interpretation according to 35 U.S.C 112(f). The specification discloses a “data transmission unit” (pp. 5), but it does so in an entirely functional manner. It fails to provide any indication of structure or internal composition and consistently references what it does rather than what it is. Given that “data transmission unit” is subject to 112(f) interpretation, the specification’s lack of any teaching regarding its structure therefore fails to provide adequate written description of a corresponding structure for the claimed functions. 07-30-02 AIA 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. 07-34-01 Claims 9, 10, 12-14, and 16-20 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 9 recites “a positioning tracking apparatus” in lines 1 and 5. Claim 1 has provided an original recitation of a positioning tracking apparatus in line 1. It is therefore unclear whether lines 1 and 5 of claim 9 are intended to reference the original positioning tracking apparatus or establish an additional apparatus. Claims 10 and 16-20 are rejected on the same basis. Claim 10 recites “the computer-readable storage medium” in line 2. There is insufficient antecedent basis for this limitation. There is no prior original recitation of a computer-readable storage medium in the claim or its parent. Claim 1 provides an original recitation of a storage medium for non-transitory computer-readable storage , but fails to recite a computer-readable storage medium per se . Claim 12 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 specification discloses a “data transmission unit” (pp. 5), but it does so in an entirely functional manner. It fails to provide any indication of structure or internal composition and consistently references what it does rather than what it is. Given that “data transmission unit” is subject to 112(f) interpretation, the specification’s lack of any teaching regarding its structure therefore fails to provide adequate written description of a corresponding structure for the claimed functions. 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. 07-34-23 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 12 recites “the maximum data transmission rate” in line 3. There is insufficient antecedent basis for this limitation. Claim 13 recites “a gain value” in lines 1 and 5. Claim 7 has provided an original recitation of a gain value in line 5. It is therefore unclear whether lines 1 and 5 of claim 13 are intended to reference the original gain value or establish an additional gain value. Claim 13 also recites the limitation “the found gain value” in line 7. There is insufficient antecedent basis for this limitation. Claim 14 recites the limitations “the duration required for the positioning tracking apparatus to enter the standby mode” and “the duration required for the positioning tracking apparatus to exit the standby mode”. There is insufficient antecedent basis for these limitation. There is no prior original recitation of durations required to enter and exit the standby mode in claim 14 or its parent (claim 1). Claim 2, which is not in the lineage of claim 14, provides an original recitation for each duration. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is directed to a computer-readable storage medium that is not limited to non-transitory storage media. Claim 10 is rejected because the Applicant has not provided evidence that the term “computer-readable storage medium” (CRSM) excludes non-statutory subject matter. The broadest reasonable interpretation (BRI) of CRSM includes both transitory and non-transitory media. The specification describes a CRSM using sufficiently open-ended language such that it is reasonable to interpret a CRSM as including all possible media, including non-statutory media. Absent an explicit and deliberate limiting definition, or a clear differentiation between non-transitory and transitory media in the disclosure, the words "storage", "recording", “tangible”, etc. are insufficient to convey only statutory embodiments to one of ordinary skill in the art. Therefore, the claims are directed towards non-statutory subject matter since CRSM may be interpreted to include transitory media. Transitory media cannot be classified as a machine, process, article of manufacture, or composition of matter as required by 35 U.S.C. 101. The Examiner recommends that all instances of CRSM be amended to specifically recite non-transitory storage media . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-8 and 11-15 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Wienders, U.S. Patent Application Publication No. 2020/0079475 . The BRI of claims 1-8 and 11-15 includes methods with steps that are performed when the condition of claim 1 is met (when the positioning tracking apparatus starts to transmit data) and also methods with steps that are performed when the condition of claim 1 is not met (when the positioning tracking apparatus is not transmitting data). Because those conditions are mutually exclusive, the BRI only requires that a reference disclose methods directed to one of the conditions. Claims 1-8 and 11-15 do not recite any limitations for the condition of not transmitting data. Therefore, the BRI of claims 1-8 and 11-15 includes any and all methods for apparatuses when they are not transmitting data. Wienders discloses a method that includes steps for when an apparatus is not transmitting data [Fig. 14, step 202-212, 216: steps executed when not transmitting data (step 214)] . Wienders therefore anticipates the method of claims 1-8 and 11-15 based on this interpretation of the contingent limitation. As noted in the “Claim Interpretation” section above, the BRI of claims 1-20 is not restricted to a positioning tracking apparatus, as that language has been interpreted as a non-limiting statement of intended use. Notwithstanding this interpretation, Wienders teaches that the apparatus is a positioning tracking apparatus [Fig. 14: determining GNSS information; para. 0052: “The GNSS information may include geolocation information (e.g. latitude and longitude)…”] that employs GPS [para. 0072: “The patch antenna may be, for example, a dual-band antenna (PA45-1615-1575SA (ATI)) that covers both GPS (1575 MHz) and GlobalStar (1615 MHz) frequencies.”] . Allowable Subject Matter Claims 9, 10, and 16-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 101 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. More specifically, claims 9, 10, and 16-20 would be allowable if rewritten in independent form as being directed to an apparatus, thereby restricting the BRI to an apparatus that includes structure for performing a function that is performed conditionally, even if the condition for performing the function is not met. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Liu et al., U.S. Patent Application Publication No. 2022/0256618, discloses a device that transmits uplink data while in a power-saving idle or inactive mode and without entering a connected mode [para. 0046] . Wang, U.S. Patent Application Publication No. 2022/0124839, discloses a device that remains in an idle, suspend, or inactive state while completing data transmission [para. 0028] . Zhao et al., U.S. Patent Application Publication No. 2022/0107677, discloses a device that determines a data transmission duration and enters a low power mode for the data transmission duration when it is determined that the device is not the recipient for the data transmission [abstract] . Sinha, U.S. Patent No. 10,890,962, discloses a device that sends data by a burst transmission and then enters a sleep mode for a period of time while a receiving device consumes the received data [claim 1] . Homchaudhuri et al., U.S. Patent Application Publication No. 2014/0208138, discloses a device that estimates an amount of time to transmit data in a buffer and switches the device from a power saving mode to an active mode for the amount of time [para. 0010] . Wang et al., U.S. Patent No. 8,112,651, discloses a device that determines a power saving state based on a break-even period, the break-even period being a minimum amount of time the device should remain in the power saving state to compensate for power consumed to enter and exit the power saving state [abstract] . Any inquiry concerning this communication or earlier communications from the examiner should be directed to JI H BAE whose telephone number is (571)272-7181. The examiner can normally be reached Tuesday to Friday and every other Monday, 9 am to 6 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jaweed Abbaszadeh can be reached at 571-270-1640. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office Phone: 571-272-7181 Fax: 571-273-7181 ji.bae@uspto.gov Application/Control Number: 18/865,944 Page 2 Art Unit: 2176 Application/Control Number: 18/865,944 Page 3 Art Unit: 2176 Application/Control Number: 18/865,944 Page 4 Art Unit: 2176 Application/Control Number: 18/865,944 Page 5 Art Unit: 2176 Application/Control Number: 18/865,944 Page 6 Art Unit: 2176 Application/Control Number: 18/865,944 Page 7 Art Unit: 2176 Application/Control Number: 18/865,944 Page 8 Art Unit: 2176 Application/Control Number: 18/865,944 Page 9 Art Unit: 2176 Application/Control Number: 18/865,944 Page 10 Art Unit: 2176 Application/Control Number: 18/865,944 Page 11 Art Unit: 2176 Application/Control Number: 18/865,944 Page 12 Art Unit: 2176 Application/Control Number: 18/865,944 Page 13 Art Unit: 2176 Application/Control Number: 18/865,944 Page 14 Art Unit: 2176 1 This reasoning may also be applied to the dependent claims that employ language such as “in a case” (claims 6 and 7) or “when” (claim 8).
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