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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/28/26 has been entered.
Response to Amendment
The applicant has amended the following:
Claims: 1, 51 and 63-64 have been amended.
Claims: 2-4, 6 and 52 have not been amended.
Claims: 65-68 have been added.
Claims: 23-27, 30-32, 34 and 59-60 have been withdrawn.
Claims: 5, 7-22, 28-29, 33, 35-50, 53-58 and 61-62 have been cancelled.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6, 51-52 and 63-68 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 6 is 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 6 recites “The method of claim 1, wherein the sending an indicator for a PDN connection to a second MME, further comprises: sending the forward relocation request to the second MME, wherein the indicator is included in the forward relocation request for the PDN connection” which appears to indicate an additional step by reciting “further comprises” but then recites antecedence to a previously recited limitations by reciting “the forward relocation request”.
However, a review of the limitations of claim 1 from which claim 6 is dependent upon shows the limitations reciting “and wherein the indicator is a 5GS interworking indicator included in an indication flags information element (IE) for the PDN connection … the indication flags IE being included in a context response message or a forward relocation request sent during the inter-MME mobility procedure” indicating that the indicator may be included in an alternative of either “a context response message” or “a forward relocation request message” and as such renders the claims indefinite as it is unclear to the examiner as to whether the recited “further comprises: sending the forward relocation request to the second MME” is directed towards a new second forward relocation request being sent in addition to the sending of either a first context response message or a first forward relocation request message or if said limitations refer back to the initial first forward relocation request message being sent as recited by Independent claim 1.
A review of the applicant’s specification does not appear to disclose any teaching where a first context response message or a first forward relocation request message is first sent followed by the sending of a second forward relocation request message and only appears to show that the sending of the context response message as seen on Applicant’s Fig. 3 and the sending of the forward relocation request message as seen on Applicant’s Fig. 4 are separate alternatives and as such, for the purpose of examination and the rejection presented herein, the examiner will interpret the recited “the forward relocation request” of claim 6 to be referring back to the original alternative limitations of “a forward relocation request” recited in claim 1 (i.e. “The method of claim 1, wherein the sending an indicator for a PDN connection to a second MME, ).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 63-64 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites the limitations of “sending the forward relocation request to the second MME, wherein the indicator is included in the forward relocation request for the PDN connection.”
However, said limitations are already recited by Independent claim 1 from which claim 6 is dependent upon already recites said limitations by reciting “sending, by the first MME, an indicator for a packet data network (PDN) connection to a second MME … and wherein the indicator is a 5GS interworking indicator included in an indication flags information element (IE) for the PDN connection, the indication flags IE comprising a plurality of flags relating to the PDN connection, the indication flags IE being included in a context response message or a forward relocation request sent during the inter-MME mobility procedure” and as such, claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Claims 63-64 recites, inter alia, the limitations of “wherein the indication flags IE is included in the forward relocation request.”
However, said limitations are already recited by Independent claim 1 and Independent claim 51 from which claims 63-64 are dependent upon already recites said limitations by reciting “the indication flags IE being included in a context response message or a forward relocation request sent during the inter-MME mobility procedure” and as such, claims 63-64 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4, 6, 51-52 and 63-68 is/are rejected under 35 U.S.C. 103 as being unpatentable over NPL Document “3rd Generation Partnership Project; Technical Specification Group Core Network and Terminals; 3GPP Evolved Packet System (EPS); Evolved General Packet Radio Service (GPRS) Tunnelling Protocol for Control plane (GTPv2-C); Stage 3 (Release 16)” (3GPP TS 29.274 v16.0.0 (2019-06) herein after referenced as 3GPP) in view of Jin et al. (US Patent Publication 2020/0077315 herein after referenced as Jin).
Regarding claim 1 and claim 51, 3GPP discloses:
A method performed by a first mobility management entity (MME) during an inter-MME mobility procedure from the first MME to a second MME, the method comprising: and A first mobility management entity (MME), comprising a processor and a memory, the memory comprising instructions executable by the processor whereby the first MME is operative during an inter-MME mobility procedure to: (3GPP Page 201, Lines 38-43 discloses PDN Type CO The source MME/SGSN/AMF (i.e. reads on first MME and reads on from the first MME to) shall include this IE on the S10/S3/S16/N26 interface, for a Non-IP or Ethernet PDN Connection, during an inter MME/SGSN/AMF mobility procedure (i.e. reads on during an inter-MME mobility procedure) if the new MME/SGSN/AMF (i.e. reads on a second MME) supports non-IP or Ethernet PDN connection using SGi as indicated in the Context Request message. One of ordinary skill in the art would recognize that it is inherent for a complex device such as an MME to include a processor executing instructions stored in memory in order to be able to perform the disclosed functionalities).
sending, by the first MME, an indicator for a packet data network (PDN) connection to a second MME, wherein the first MME is separate from the second MME, and the second MME is not an access management function (AMF), (3GPP Page 201, Lines 38-43 discloses PDN Type CO The source MME/SGSN/AMF (i.e. reads on by the first MME and reads on wherein the first MME is separate from the second MME) shall include this IE (i.e. reads on sending an indicator) on the S10/S3/S16/N26 interface, for a Non-IP or Ethernet PDN Connection (i.e. reads on for a PDN connection), during an inter MME/SGSN/AMF mobility procedure if the new MME/SGSN/AMF (i.e. reads on to a second MME and reads on and the second MME is not an AMF) supports non-IP or Ethernet PDN connection using SGi as indicated in the Context Request message; 3GPP Page 200, Lines 1-8 discloses Indication flags CO This IE shall be included if any one of the applicable flags is set to 1 (i.e. reads on an indicator); 3GPP Page 199, Line 1 discloses Table 7.3.6-2 MME/SGSN/AMF UE EPS PDN Connections within Context Response; 3GPP Page 202, Lines 12-15 discloses NOTE 4 The target MME respectively S4-SGSN shall ignore this IE if it is received from an S4-SGSN respectively an MME i.e. over the S3 interface).
wherein the indicator indicates whether the PDN connection is allowed to be moved (3GPP Page 259, Lines 13-16 discloses Bit 6 – 5GSIWKI 5GS Interworking Indication: This flag shall be set to 1 (i.e. reads on wherein the indicator indicates) for UEs supporting N1 mode and not restricted to interworking with 5GS by user subscription see “5GC” bit within Core-Network-Restrictions AVP and Interworking-5GS-Indicator AVP specified in 3GPP TS 29.272 [70] and 3GPP TS 29.273 [68] and hence access to 5GC is allowed (i.e. reads on is allowed to be moved to a 5GS) for the PDN connection (i.e. reads on whether the PDN connection)).
and wherein the indicator is a 5GS interworking indicator included in an indication flags information element (IE) for the PDN connection, (3GPP Page 255, Section 8.12 Indication, Fig. 8.12-1: Indication & Lines 38-39 discloses For each message the applicable flags of the Indication IE (i.e. reads on included in an indication flags IE for the PDN connection) shall be clearly specified in the individual message sub clause. The remaining flags of the Indication IE not so indicated shall be discarded by the receiver and Fig. 8.12-1 in Octets 11 & Bit 6 shows 5GSIWK (i.e. reads on wherein the indicator is a 5GS interworking indicator); 3GPP Page 259, Lines 13-16 discloses Bit 6 – 5GSIWKI 5GS Interworking Indication: This flag shall be set to 1 for UEs supporting N1 mode and not restricted to interworking with 5GS by user subscription see “5GC” bit within Core-Network-Restrictions AVP and Interworking-5GS-Indicator AVP specified in 3GPP TS 29.272 [70] and 3GPP TS 29.273 [68] and hence access to 5GC is allowed for the PDN connection).
the indication flags IE comprising a plurality of flags relating to the PDN connection, the indication flags IE being included in a context response message (3GPP Page 200, Lines 1-8 & Lines 31-34 & Lines 45-47 discloses Indication flags CO This IE (i.e. reads on indication flags IE) shall be included if any one of the applicable flags (i.e. reads on a plurality of flags) is set to 1. Applicable flags: - Subscribed QoS Change Indication: This flag shall be set to 1 if the subscribed QoS profile of the related PDN connection (i.e. reads on relating to the PDN connection) has changed in the old MME/SGSN when the UE is in ECM-IDLE state and ISR is activated and discloses Pending Network Initiated PDN Connection Signalling Indication flag: This flag shall be set to 1 by the source MME/SGSN if there is pending network initiated signalling for the PDN connection and discloses Control Plane Only PDN Connection Indication: This flag shall be set to 1 if the PDN Connection is set to Control Plane Only; 3GPP Page 199, Line 1 discloses Table 7.3.6-2 MME/SGSN/AMF UE EPS PDN Connections within Context Response (i.e. reads on being included in a context response message). EXAMINER’S NOTE: The examiner notes that the claims are written in a contingent limitation or alternative limitation format requiring the selection of only one of various alternative options presented and as such the non-selected alternative options and the limitations corresponding to said non-selected alternative options are crossed out (i.e. the limitations reciting “or a forward relocation request for the PDN connection”) and are not given patentable weight as being directed towards limitations that are not required to be performed as is indicated in MPEP 2111.04, Section ll that recites “The broadest reasonable interpretation of a claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition precedent are not met”).
sent during the inter-MME mobility procedure (3GPP Page 201, Lines 38-43 discloses PDN Type CO The source MME/SGSN/AMF shall include this IE on the S10/S3/S16/N26 interface, for a Non-IP or Ethernet PDN Connection, during an inter MME/SGSN/AMF mobility procedure (i.e. reads on sent during the inter-MME mobility procedure) if the new MME/SGSN/AMF supports non-IP or Ethernet PDN connection using SGi as indicated in the Context Request message; 3GPP Page 199, Line 1 discloses Table 7.3.6-2 MME/SGSN/AMF UE EPS PDN Connections within Context Response; 3GPP Page 200, Lines 1-8 discloses Indication flags CO This IE shall be included if any one of the applicable flags is set to 1; 3GPP Page 202, Lines 12-15 discloses NOTE 4 The target MME respectively S4-SGSN shall ignore this IE if it is received from an S4-SGSN respectively an MME i.e. over the S3 interface).
3GPP discloses an MME sending an indicator that access to a 5G system is allowed for a PDN connection via the use of an MME UE EPS PDN Connections Context Response but fails to explicitly recite that said PDN connection is initially within an EPS system that is moving to a 5G system and therefore fails to disclose “wherein the indicator indicates whether the PDN connection is allowed to be moved from an evolved packet system (EPS) to a fifth generation system (5GS)”.
In a related field of endeavor, Jin discloses:
wherein the indicator indicates whether the PDN connection is allowed to be moved from an evolved packet system (EPS) to a fifth generation system (5GS) (Jin, Fig. 5 & [0269] discloses the AMF may obtain based on the identifier of the UE, an MME that serves the UE and request the MME for the PDN connection context of the UE and the AMF obtains based on the first EPS bearer status information sent by the UE and based on the PDN connection context obtained from the MME, a PDN connection that can be moved (i.e. reads on wherein the indicator indicates whether the PDN connection is allowed to be moved) from the first communication system such as for example 4G (i.e. reads on from an EPS) to the second communication system for example 5G (i.e. reads on to a 5GS); Jin, [0196] discloses A protocol data network PDN connection or Connectivity is a combination of a group of EPS bearers that are set up on a UE in a first communications system for example, a 4G network; Jin, [0210] discloses the MME is a 4G core network device and is responsible for performing authentication, authorization, mobility management and session management on the UE; Jin, [0216] discloses the AMF is a 5G core network device and is used to authenticate and authorize the user and manage mobility of the user; Jin, [0208] discloses a mobility management entity MME and an access and mobility management function AMF).
Therefore, at the time before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the invention of 3GPP to incorporate the teachings of Jin for the purpose of providing the system with a means to conform to well known properties of a PDN connection of an MME being part of an EPS system (Jin, [0196]) where the PDN connection is moving to a 5G system (Jin, Fig. 5 & [0269] & 3GPP Page 259, Lines 13-16) and for the purpose of making the system more dynamic and adaptable by providing the system with added functionalities and various different alternatives in design, thereby allowing the system to handle a number of various different combination of specific design structure and scenarios thereby, preventing the system from being limited to a single specific design structure and scenario and furthermore, one of ordinary skill in the art would recognize based on the guidelines to rationales supporting a conclusion of obviousness seen on MPEP 2143, that the modification would involve use of a simple substitution of one known element and base device (i.e. performing a process of an MME sending an indicator that access to a 5G system is allowed for a PDN connection via the use of a Context Response as taught by 3GPP) with another known element and comparable device utilizing a known technique (i.e. performing a process of an MME sending an indicator that access to a 5G system is allowed for a PDN connection via the use of a Context Response, wherein the PDN and MME are part of the EPS system and moves to a 5G system as taught by Jin) to improve the similar devices in the same way and to obtain the predictable result of the system performing a process of an MME sending an indicator that access to a 5G system is allowed for a PDN connection via the use of a Context Response (i.e. as taught by both 3GPP & Jin) and is dependent upon the specific intended use, design incentives, needs and requirements (i.e. such as due to teachings of a known standard, current technology, conservation of resources, personal preferences, economic considerations, etc.) of the user and the system as has been established in MPEP 2144.04.
Regarding claim 2 and claim 52, 3GPP in view of Jin discloses:
The method of claim 1, (see claim 1) and The first MME of claim 51 (see claim 51).
wherein the indicator indicates whether the PDN connection is allowed to be moved from the EPS to the 5GS via N26 (3GPP Page 259, Lines 9-10 discloses If this bit is set to 0 and the 5GSIWKI 5GS Interworking Indication is set to 1, it indicates to the PGW-C+SMF that 5GS Interworking is supported with the N26 interface; 3GPP Page 259, Lines 13-16 discloses Bit 6 – 5GSIWKI 5GS Interworking Indication: This flag shall be set to 1 for UEs supporting N1 mode and not restricted to interworking with 5GS by user subscription see “5GC” bit within Core-Network-Restrictions AVP and Interworking-5GS-Indicator AVP specified in 3GPP TS 29.272 [70] and 3GPP TS 29.273 [68] and hence access to 5GC is allowed for the PDN connection; Jin, Fig. 5 & [0269] discloses the AMF may obtain based on the identifier of the UE, an MME that serves the UE and request the MME for the PDN connection context of the UE and the AMF obtains based on the first EPS bearer status information sent by the UE and based on the PDN connection context obtained from the MME, a PDN connection that can be moved from the first communication system such as for example 4G to the second communication system for example 5G).
Regarding claim 3, 3GPP in view of Jin discloses:
The method of claim 1, (see claim 1).
wherein the indicator is determined based on user equipment (UE) network capability and/or UE subscription data (3GPP Page 259, Lines 9-10 discloses If this bit is set to 0 and the 5GSIWKI 5GS Interworking Indication is set to 1, it indicates to the PGW-C+SMF that 5GS Interworking is supported with the N26 interface; 3GPP Page 259, Lines 13-16 discloses Bit 6 – 5GSIWKI 5GS Interworking Indication: This flag shall be set to 1 for UEs supporting N1 mode and not restricted to interworking with 5GS by user subscription see “5GC” bit within Core-Network-Restrictions AVP and Interworking-5GS-Indicator AVP specified in 3GPP TS 29.272 [70] and 3GPP TS 29.273 [68] and hence access to 5GC is allowed for the PDN connection).
Regarding claim 4, 3GPP in view of Jin discloses:
The method of claim 1, wherein the method further comprises: (see claim 1).
receiving a context request from the second MME; and wherein the sending an indicator for a PDN connection to a second MME, further comprises: sending the context response message to the second MME, wherein the indicator is included in the context response message for the PDN connection (3GPP Page 201, Lines 38-43 discloses PDN Type CO The source MME/SGSN/AMF shall include this IE on the S10/S3/S16/N26 interface, for a Non-IP or Ethernet PDN Connection, during an inter MME/SGSN/AMF mobility procedure if the new MME/SGSN/AMF supports non-IP or Ethernet PDN connection using SGi as indicated in the Context Request message; 3GPP Page 199, Line 1 discloses Table 7.3.6-2 MME/SGSN/AMF UE EPS PDN Connections within Context Response; 3GPP Page 200, Lines 1-8 discloses Indication flags CO This IE shall be included if any one of the applicable flags is set to 1. Applicable flags: - Subscribed QoS Change Indication: This flag shall be set to 1 if the subscribed QoS profile of the related PDN connection has changed in the old MME/SGSN when the UE is in ECM-IDLE state and ISR is activated; Jin, Fig. 5 & [0269] discloses the AMF may obtain based on the identifier of the UE, an MME that serves the UE and request the MME for the PDN connection context of the UE and the AMF obtains based on the first EPS bearer status information sent by the UE and based on the PDN connection context obtained from the MME, a PDN connection that can be moved from the first communication system such as for example 4G to the second communication system for example 5G).
Regarding claim 6, 3GPP in view of Jin discloses:
The method of claim 1, (see claim 1).
(EXAMINER’S NOTE: The examiner notes that the claims are written in a contingent limitation or alternative limitation format requiring the selection of only one of various alternative options previously presented and as such the non-selected alternative options and the limitations corresponding to said non-selected alternative options are crossed out (i.e. the limitations reciting “wherein the sending an indicator for a PDN connection to a second MME, further comprises: sending the forward relocation request to the second MME, wherein the indicator is included in the forward relocation request for the PDN connection”) and are not given patentable weight as being directed towards limitations that are not required to be performed as is indicated in MPEP 2111.04, Section ll that recites “The broadest reasonable interpretation of a claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition precedent are not met”).
Regarding claim 63 and claim 64, 3GPP in view of Jin discloses:
The method of claim 1 (see claim 1) and The first MME of claim 51 (see claim 51).
(EXAMINER’S NOTE: The examiner notes that the claims are written in a contingent limitation or alternative limitation format requiring the selection of only one of various alternative options previously presented and as such the non-selected alternative options and the limitations corresponding to said non-selected alternative options are crossed out (i.e. the limitations reciting “wherein the indication flags IE is included in the forward relocation request”) and are not given patentable weight as being directed towards limitations that are not required to be performed as is indicated in MPEP 2111.04, Section ll that recites “The broadest reasonable interpretation of a claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition precedent are not met”).
Regarding claim 65 and claim 66, 3GPP in view of Jin discloses:
The method of claim 1 (see claim 1) and The first MME of claim 51 (see claim 51).
wherein the indication flags information element comprises an MME/SGSN/AMF UE EPS PDN Connections information element (3GPP Page 199, Line 1 discloses Table 7.3.6-2 MME/SGSN/AMF UE EPS PDN Connections within Context Response; 3GPP Page 200, Lines 1-8 discloses Indication flags CO This IE shall be included if any one of the applicable flags is set to 1. Applicable flags: - Subscribed QoS Change Indication: This flag shall be set to 1 if the subscribed QoS profile of the related PDN connection has changed in the old MME/SGSN when the UE is in ECM-IDLE state and ISR is activated).
Regarding claim 67 and claim 68, 3GPP in view of Jin discloses:
The method of claim 1 (see claim 1) and The first MME of claim 51 (see claim 51).
The method of claim 1, wherein the 5GS interworking indicator comprises a 5GS Interworking Indication (5GSIWKI) as specified in 3GPP TS 29.274 (3GPP Page 259, Lines 13-16 discloses Bit 6 – 5GSIWKI 5GS Interworking Indication: This flag shall be set to 1 for UEs supporting N1 mode and not restricted to interworking with 5GS by user subscription see “5GC” bit within Core-Network-Restrictions AVP and Interworking-5GS-Indicator AVP specified in 3GPP TS 29.272 [70] and 3GPP TS 29.273 [68] and hence access to 5GC is allowed for the PDN connection; 3GPP Page 1, Line 1 discloses 3GPP TS 29.274 V16.0.0 2019-06).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL Y MAPA whose telephone number is (571)270-5540. The examiner can normally be reached Monday thru Thursday: 10 AM - 8 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Addy can be reached at (571) 272 - 7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL Y MAPA/Primary Examiner, Art Unit 2645
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