DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements (IDSs) submitted on 01/06/2025 and 06/16/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
3. 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.
4. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12185189.
Although the claim at issue is not identical, it is not patentably distinct from each other because
Application claim defines an obvious variation of the invention claimed in U.S. Patent No. 12185189.
The assignee of all applications of all applications is the same.
Claim 1 of the instant application is anticipated by patent claim 16 in that claim of the patent contains all the limitations of claim 1 of the instant application. Claim 1 of the instant application therefore is not patently distinct from the earlier patent claim and as such is unpatentable for obvious-type double patenting.
For example:
Claims of instant application:
1. A method comprising: receiving, by a base station, a first message comprising a request for a positioning measurement associated with a wireless device; performing the positioning measurement associated with the wireless device; and sending, to the wireless device based on the positioning measurement, a positioning measurement report.
Claim of U.S. Patent No. 12185189:
16. A method comprising: receiving, by a base station from a wireless device, a first message comprising: an indication of a positioning method of a plurality of positioning methods; and a request for a positioning measurement associated with the wireless device; performing, based on the indicated positioning method, the positioning measurement associated with the wireless device; and sending, to the wireless device and based on the positioning measurement, a positioning measurement report.
5. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12185189 in view of Prakash et al. (US 20210329584).
Application claim 11 defines an obvious variation of the invention claimed in U.S. Patent No. 12185189.
The assignee of all applications of all applications is the same.
Claim 11 of the instant application is anticipated by patent claim 1 in that claim of the patent contains all the limitations of claim 1 of the instant application. Claim 1 of the instant application therefore is not patently distinct from the earlier patent claim and as such is unpatentable for obvious-type double patenting.
For example:
Claims of instant application:
11. A wireless device comprising: the wireless device to: receive a first message comprising a request for an indication, via a user plane, of a position of the wireless device; send, to a base station, a second message comprising a request for a positioning measurement associated with the wireless device; receive, from the base station, a positioning measurement report; and send, via the user plane, information indicating a position of the wireless device, wherein the information indicating the position of the wireless device is based on the positioning measurement report.
Claim of U.S. Patent No. 12185189:
1. A method comprising: receiving, by a wireless device, a first message comprising a request for an indication, via a user plane, of a position of the wireless device; sending, to a base station, a second message comprising a request for a positioning measurement associated with the wireless device; receiving, from the base station, a positioning measurement report; and sending, via the user plane, information indicating a position of the wireless device, wherein the information indicating the position of the wireless device is based on the positioning measurement report.
U.S. Patent No. 12185189 discloses all of the subject matter as described above except for specifically teaching one or more processors; and memory storing instructions that, when executed by the one or more processors.
However, Prakash in the same field of endeavor teaches one or more processors (1502 in figure 15); and memory (1520 in figure 15) storing instructions that, when executed by the one or more processors (1502 in figure 15) (par 00783-0204). Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to use processor and the memory as taught by Prakash to modify the system and method of U.S. Patent No. 12185189 in order to perform at least a portion of a data signal computing procedure or process related to the operation of base station (par 0185) (See KSR Rationale: Combining prior art elements according to known methods to yield predictable results).
6. 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.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well.
Applicants are reminded that MPEP 2141.02 states:
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Claim Rejections - 35 USC § 102
7. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claim 1-2, 4-7 and 9-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Prakash et al. (US 20210329584) (hereinafter Prakash).
Regarding claims 1 and 6:
As shown in figures 1-16, Prakash discloses a base station (see base station in figures 1-3, 5-6, 10 and 15) comprising:
one or more processors (1502 in figure 15); and
memory (1520 in figure 15) storing instructions that, when executed by the one or more processors (1502 in figure 15), cause the base station (102 in figure 10) (see base station in figures 1-3, 5-6, 10 and 15) (par 00783-0204) to:
receive (see stage 6 in figure 10) a first message comprising a request for a positioning measurement associated with a wireless device (104 in figure 10) (in par 0122, Prakash teaches “At stage 6, the UE 104 may transmit UL PRS, e.g., if the location request in stage 3 instructed the UE 104 to transmit UL PRS. The transmission of UL PRS may be aligned with the time point for positioning measurements as specified in the location request message of stage 3”);
perform the positioning measurement (see stage 7b and 7C in figure 10) associated with the wireless device (104 in figure 10) (par 0124-0125); and
send (see stage 8 in figure 10), to the wireless device (104 in figure 10) based on the positioning measurement, a positioning measurement report (par 0124-0125).
Regarding claims 2 and 7:
Prakash further discloses wherein the instructions, when executed by the one or more processors (1502 in figure 15), cause the base station (102 in figure 10) to receive the first message by causing receiving the first message (see stage 6 in figure 10) from one of:
the wireless device (104 in figure 10),
a location management component (LMC),
a location management function (LMF),
an access and mobility management function (AMF), or
a gateway mobile location center (GMLC).
Regarding claims 4 and 9:
Prakash further discloses the first message comprises an indication of a positioning method (see stage 6 in figure 10, par 0122), and the performing the positioning measurement comprises performing the positioning measurement based on the indicated positioning method (see stage 7 in figure 10, par 0122-0124).
Regarding claims 5 and 10:
Prakash further discloses wherein the first message comprises a radio resource control (RRC) message (par 0050).
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. Claims 3, 8 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash in view of YANG et al. (US 20230040349) (hereinafter Yang).
Regarding claims 3 and 8:
Prakash discloses all of the subject matter as described above except for specifically teaching wherein the sending the positioning measurement report comprises sending the positioning measurement report for a user plane transmission of a position of the wireless device.
However, Yang in the same field of endeavor teaches wherein the sending the positioning measurement report comprises sending the positioning measurement report for a user plane (see UPF in figure 4A) transmission of a position of the wireless device (see Terminal in figure 4A) (par 0140). Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to use measurement report as taught by Yang to modify the system and method of Prakash in order to obtain location information of the terminal (par 0140) (See KSR Rationale: Combining prior art elements according to known methods to yield predictable results).
Regarding claim 16:
As shown in figures 1-16, Prakash discloses a system comprising (see figure 10):
a base station (see serving base station in figure 10 and figure 15); and
a core network device (see location server in figure 10 and figure 16),
wherein the base station (see serving base station in figure 10 and figure 15) comprises:
one or more first processors (1502 in figure 15); and
memory (1504 in figure 15) storing first instructions that, when executed by the one or more first processors (1502 in figure 15), cause the base station (see serving base station in figure 10 and figure 15) to:
receive a message (see stage 6 in figure 10) comprising a request for a positioning measurement associated with a wireless device (104 in figure 10) (in par 0122, Prakash teaches “At stage 6, the UE 104 may transmit UL PRS, e.g., if the location request in stage 3 instructed the UE 104 to transmit UL PRS. The transmission of UL PRS may be aligned with the time point for positioning measurements as specified in the location request message of stage 3”);
perform the positioning measurement (see stage 7b and 7C in figure 10) associated with the wireless device (104 in figure 10) (par 0124-0125); and
send (see stage 8 in figure 10), based on the positioning measurement, a positioning measurement report (par 0124-0125), and
wherein the core network device (see location server in figure 10 and figure 16) comprises:
one or more second processors (1602 in figure 16); and
memory (1604 in figure 16) storing second instructions that, when executed by the one or more second processors (1602 in figure 16), cause the core network device (see location server in figure 10 and figure 16).
Prakash discloses all of the subject matter as described above except for specifically teaching receive, from a second core network device, network status information; and send, based on the network status information, indication of user plane transmission for a wireless device positioning.
However, Yang in the same field of endeavor teaches receive, from a second core network device (AMF in figure 4A), network status information (see S404 in figure 4A); and send, based on the network status information, indication of user plane (see UPF in figure 4A) transmission for a wireless device positioning (see Terminal in figure 4A) (par 0122-0140). Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to use measurement report as taught by Yang to modify the system and method of Prakash in order to obtain location information of the terminal (par 0140) (See KSR Rationale: Combining prior art elements according to known methods to yield predictable results).
Regarding claim 17:
Prakash further discloses the first instructions, when executed by the one or more first processors, cause the base station to send the positioning measurement report by causing sending the positioning measurement report (see stage 8 in figure 10) to the wireless device 104 in figure 10) (par 0124-0125) or, via a user plane, to the core network device.
Regarding claim 18:
Prakash further discloses wherein: the core network device corresponds to a gateway mobile location center (GMLC) (par 0057-0058), and the second core network device corresponds to an access and mobility management function (AMF) (par 0058, 0061-0062), unified data management (UDM) network function, or an operation, administration, and maintenance (OAM) network function.
Regarding claim 19:
Prakash further discloses wherein: the message comprises an indication of a positioning method (see stage 6 in figure 10, par 0122), and the first instructions, when executed by the one or more first processors, cause the base station to perform the positioning measurement by causing performing the positioning measurement based on the indicated positioning method (see stage 7 in figure 10, par 0122-0124).
Regarding claim 20:
Prakash further discloses wherein: the first instructions, when executed by the one or more first processors, cause the base station to receive the message by causing receiving the message from a wireless device (see stage 6 in figure 10) or the core network device, and the second instructions, when executed by the one or more second processors, cause the core network device (see location server in figure 9) to send the indication by causing sending the indication to the base station (see step 908 in figure 9) or the wireless device.
Allowable Subject Matter
12. Claims 11-15 would be allowable if overcome the above nonstatutory double patenting rejection.
13. The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, Prakash teach a wireless network including user equipment (UE) and base stations is configured to perform position determination with low latency and high availability within the Time-Sensitive Networking (TSN) framework. For example, the UE may be integrated as a sensor in a motion control system or similar applications. The UE and base stations are synchronized with the TSN clock, and are configured to perform positioning measurements at a specific time point within the TSN framework. The time point, for example, may be a global sampling point, at which all sensor nodes in the TSN framework perform position measurements. A location server may be provided with the positioning measurements or a position estimate from the UE and provide the position estimate to an external client, such as a motion controller in a motion control system. However, the prior art of record, Prakash does not teach or suggest, in combination with all other limitations in the claim, receive a first message comprising a request for an indication, via a user plane, of a position of the wireless device; send, to a base station, a second message comprising a request for a positioning measurement associated with the wireless device; receive, from the base station, a positioning measurement report; and send, via the user plane, information indicating a position of the wireless device, wherein the information indicating the position of the wireless device is based on the positioning measurement report.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Siomina et al. (US 9374662) disclose a method performed by a network node for jointly selecting positioning node and PLMN including receiving a positioning-related request from a requesting node or an application. The positioning-related request may include any combination of a location request and a positioning data request. The location request may be a request for a location of a LCS target, and the positioning data request may be a request for data that may be used to determine the location of the LCS target. The method may also include selecting a PLMN and a positioning node of the selected PLMN in response to the positioning-related request. The method may further sending a positioning message to the selected positioning node, and receiving a positioning response message from the selected positioning node.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KABIR A TIMORY whose telephone number is (571)270-1674. The examiner can normally be reached Mon-Fri 7:00 AM-3:00 PM.
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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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/KABIR A TIMORY/Primary Examiner, Art Unit 2631
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