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
Claim 14 is objected to because of the following informalities:
Regarding claim 14:
Line 2 recites “the first geolocation data or the second geolocation data”; the examiner suggests changing to “the first set of geolocation data or the second set of geolocation data” with respect to the recitation in claim 10.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 18-19 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.
(1) Regarding claim 18:
Claim 18 recites the limitation "the SIM applet" in line 1. There is insufficient antecedent basis for this limitation in the claim.
(2) Regarding claim 19:
Claim 19 recites the limitation "the SIM applet" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/973989 (claims dated 12/9/2024). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following comparison.
Claim
Instant Application
Claim
US Patent Application 18/973989
1
A method for determining a location for a user device, the method comprising:
determining, by an application installed on a subscriber identity module (SIM) within the user device, that the user device has moved locations;
based on the determination that the user device has moved locations, requesting, by the application, a first set of geolocation data associated with the user device;
determining a historical location of the user device based on the first set of geolocation data;
storing the determined historical location to create a historical location record;
receiving a request from an external server for a current location of the user device;
requesting, by the application, a second set of geolocation data associated with the user device;
determining the current location of the user device based on the second set of geolocation data; and
communicating the historical location record and the current location of the user device to the external server.
1
A method for determining a location for a user device, the method comprising:
determining, by an application installed on a subscriber identity module (SIM) within the user device, that the user device has moved from a first location to a second location;
based on the determination that the user device has moved, requesting from the user device, by the application, a first set of one or more network measurement reports (NMRs) and a first set of one or more cell site location information (CGIs) for each cell site that the user device is attached to;
determining a historical location of the user device based on the first set of one or more NMRs and the first set of one or more CGIs;
storing the historical location on the SIM to create a historical location record;
receiving, by the application, a request from a network for a current location of the user device;
requesting, by the application, a second set of one or more NMRs and a second set of one or more CGIs for each cell site that the user device is attached to from the user device;
determining the current location of the user device based on the second set of one or more NMRs and the second set of one or more CGIs;
communicating the historical location record and the current location of the user device to an external server.
(1) Regarding claim 1:
Claim 1 of US Patent 18/973989 discloses all subject matter of claim 1 as shown in the above comparison with the interpretation of “a first set of one or more network measurement reports (NMRs) and first set of one or more cell site location information (CGIs)” as the claimed first set of geolocation data.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/973989 (claims dated 12/9/2024) in view of Issakov et al. (US 2021/0314901 A1).
(1) Regarding claim 6
Claim 1 of US Patent application 18/973989 discloses all subject matter of claim 1, but fails to disclose the historical location record is stored on the SIM in encrypted form to prevent unauthorized access.
However, in the same field of endeavor, Issakov discloses positioning measurements may be encrypted by the positioning applet 118 as part of an encrypted payload of a packet (e.g., using a Triple Data Encryption Algorithm (3DES)) (para. 0024, 0029, 0032).
It is desirable to have the historical location record is stored on the SIM in encrypted form to prevent unauthorized access because it improves the privacy of the information. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the teaching of Issakov in the method of Claim 1 of US Patent application 18/973989 fir the benefit of improving the privacy of information.
(2) Regarding claim 8:
Claim 1 of US Patent application 18/973989 discloses all subject matter of claim 1, but fails to disclose providing the historical location record and the current location to the external server comprises using a secure communication protocol.
However, in the same field of endeavor, Issakov discloses the positioning applet 118 sends the encrypted positioning measurements in an SMS message via the operator's backhaul network 140 (e.g., 2G/3G/4G etc. backhaul network) to the SMSC 130 (para. 0032, 0029, the examiner interprets the encryption as the claimed secure communication protocol).
It is desirable to provide the historical location record and the current location to the external server comprises using a secure communication protocol because it improves the privacy of the information. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the teaching of Issakov in the method of Claim 1 of US Patent application 18/973989 for the benefit of improving the privacy of information.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 10-13, 15-17, and 20 are allowed.
Claims 2-5, 7, and 9 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.
The following is a statement of reasons for the indication of allowable subject matter:
(1) Regarding claims 10-13 and 15-16:
The present invention describes a method for optimizing geolocation tracking of a user device, the method comprising: collecting, by an application installed on a subscriber identity module (SIM) within the user device, a first set of geolocation data and historical geolocation associated with the user device; generating a set of predicted movements of the user device based on the first set of geolocation data and the historical geolocation data; adjusting a frequency of geolocation data collection based on the set of predicted movements of the user device; determining a historical location of the user device based on the first set of geolocation data; receiving a request from an external server for a current location of the user device; collecting a second set of geolocation data in response to the request; and providing the current location and the set of predicted movements to the external server. The closest prior art, US Patent application 18/973989 discloses al similar method, but fails to disclose collecting, by an application installed on a subscriber identity module (SIM) within the user device, a first set of geolocation data and historical geolocation associated with the user device; generating a set of predicted movements of the user device based on the first set of geolocation data and the historical geolocation data; adjusting a frequency of geolocation data collection based on the set of predicted movements of the user device.
(2) Regarding claims 17 and 20:
The present invention describes a subscriber identity module (SIM) for determining and storing historical location data of a user device, the SIM comprising: an application installed on the SIM, the application configured to: detect when the user device has moved locations based on GPS data; request geolocation data from the user device at predefined time intervals; store the geolocation data within the SIM as a historical location record; process the geolocation data to determine a current location of the user device; receive one or more requests from an external server for the current location and the historical location record of the user device; provide the current location and the historical location record to the external server via a secure communication protocol. The closest prior art, US Patent application 18/973989 discloses al similar method, but fails to disclose the application configured to detect when the user device has moved locations based on GPS data; request geolocation data from the user device at predefined time intervals; store the geolocation data within the SIM as a historical location record; process the geolocation data to determine a current location of the user device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et al. (US 10,827,422 B1) discloses intelligent steering method and system for private LTE and 5G telecommunication networks.
Shah (US 11,825,329) discloses location based resource allocation in 5G networks.
Marappa Gounder et al. (US 2026/0164401 A1) discloses subscriber identity module location service.
Marappa Gounder et al. (US 2026/0164402 A1) discloses subscriber identity module location history verification.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chieh M Fan can be reached at 571-272-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIU M LEE/Primary Examiner, Art Unit 2632 9/22/2026
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