DETAILED ACTION
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Claims: 23-27, 30-32, 34 and 59-60 have been withdrawn.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.
EXAMINER’S NOTES:
The examiner notes that the previous 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph rejection indicated on pages 3-4 of the previous office action filed on 09/08/25 has been withdrawn in view of the applicant’s current amendments.
Response to Arguments
Applicant’s arguments filed 11/26/25 with regards to claims 1-4, 6, 51-52 and 63-64 have been fully considered but they are not persuasive.
APPLICANT’S ARGUMENTS:
The applicant argues that … However, this combination of Jeong's WLAN offloadability indicator (for "indicator whether the PDN connection is allowed to be moved from an EPS") and Jin's moving PDN connections from 4G (EPS) to 5G (5GS) (for the "to a fifth generation system (5GS)" element) is improper. Jeong and Jin address fundamentally different technical problems. Jeong addresses WLAN offloading within EPS. Jeong [0218] teaches a "WLAN offloadability IE" that indicates "offloadability or non-offloadability" of PDN connections to WLAN. This is an indicator dedicated to WLAN offloading functionality-it indicates whether traffic can be routed through WLAN while the UE remains connected to EPS. Jin, on the other hand, addresses registration of a UE with a 5G network and obtaining PDN connection context from an MME (See Page 8 of Applicant’s Arguments filed on 11/26/25).
EXAMINER’S RESPONSE:
The examiner respectfully disagrees. Contrary to the applicant’s arguments the combination of the teachings of Jeong in view of Jin together as a whole is proper as will be apparent in the following explanations provided below.
Applicant’s Arguments appears to be that said combination of the teachings of Jeong in view of Jin together is improper is due “Jeong and Jin address fundamentally different technical problems”.
In response to applicant's argument that is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) and the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In addition, the examiner directs the applicant to the highlighted portions of MPEP 2144, Section lV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE that recites “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)” and MPEP 2141.01(a), Section l. TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS ART TO THE CLAIMED INVENTION that recites “In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. The examiner must determine whether a reference is analogous art to the claimed invention when analyzing the obviousness of the subject matter under examination. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other.”
As can be seen from the highlighted teachings of the MPEP seen above, it is clear that the guidelines for obviousness do not require the prior art to address the same technical problems of the invention or of each other and as such, applicant’s arguments regarding the cited prior art addressing different technical problems is moot.
In addition, the examiner would also like to note that the cited prior art of Jeong and Jin are analogous to the claimed invention and to each other as Jeong, Jing and the claimed invention are directed towards the use of a mobility management entity of a 4G or EPS system transmitting a PDN context indicating as to whether the PDN can be moved to another radio access technology RAT.
APPLICANT’S ARGUMENTS:
The applicant argues that … First, the rationale does not explain why one of ordinary skill would modify Jeong's WLAN offloadability indicator to create the claimed indicator for EPS to 5GS handover. The Examiner's rationale addresses only the general concept of moving PDN connections from EPS to 5G, not the specific claimed limitation of including an indicator for EPS to 5GS handover in an indication flags IE during inter-MME mobility. The Examiner's rationale does not explain how or why Jeong's WLAN offloadability mechanism would be modified to serve this fundamentally different purpose. Second, the rationale relies on generic benefits: "making the system more dynamic and adaptable" (Office Action, at page 13). Such vague rationale could justify virtually any modification, and does not satisfy the requirement for a reasoned explanation of why the specific combination would have been obvious. See MPEP 2141, at III ("Rationales To Support Rejections Under 35 U.S.C. 103") (citing KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (rejecting "broad generalizations" in favor of "some articulated reasoning with some rational underpinning")). Third, Jeong provides no motivation to modify its WLAN offloadability procedures for use in 5GS migration. Jeong is entirely focused on WLAN offloading within EPS and contains no discussion of 5GS or inter-system mobility. The Examiner has not explained why one of ordinary skill would look to Jeong's WLAN offloading mechanism when addressing the entirely different problem of 5GS migration. Fourth, Jin addresses communication from an MME to an AMF during UE-initiated registration with 5GS, not MME-to-MME communication during inter-MME mobility within EPS. Jin's teaching is directed to a different scenario than the claimed invention. The Examiner has not explained how Jin's teaching of MME-to-AMF communication would motivate modification of Jeong's inter-MME signaling. Further to this point, a fundamental problem with the proposed combination is that Jin teaches communication from an AMF (5G core network entity) to an MME (4G core network entity), whereas the claims require communication from a first MME to a second MME. This is communication from a 5G core network entity to a 4G core network entity. The claims, by contrast, require "a method performed by a first mobility management entity (MME) during an inter-MME mobility procedure from the first MME to a second MME" where "the second MME is not an access management function (AMF)." Moreover, Jin's procedure involves UE-initiated registration with a 5G network, not inter-MME mobility within EPS followed by potential migration to 5GS. Jin does not teach or suggest including an indicator in an inter-MME context response message or forward relocation request that indicates whether a PDN connection can be moved to 5GS. The combination of Jeong and Jin would not have been obvious to one of ordinary skill, and only can be argued to be by the impermissible use of Applicant's disclosure as a roadmap. Nothing in Jeong suggests that its WLAN offloadability indicator could or should be repurposed for 5GS migration. Nothing in Jin suggests including an indicator for EPS to 5GS handover in inter-MME signaling. The only reason to make such a combination is knowledge of Applicant's invention-classic hindsight reconstruction. The Amended Claims Recite an Indicator "For an EPS to 5GS Handover" Which Is Not Taught or Suggested by the Combination of Jeong and Jin … Even if Jeong's "WLAN offloadability IE" could be stretched to read on "an information element," the combination of Jeong and Jin does not teach or suggest including an indicator for EPS to 5GS handover in an indication flags IE. Jeong teaches including WLAN offloadability information in a WLAN-specific IE. Jin teaches that an AMF can obtain PDN connection context from an MME during UE registration. Neither reference teaches or suggests including an indicator for EPS to 5GS handover in an indication flags IE of a context response message or forward relocation request. Moreover, Jeong's "WLAN offloadability IE" is not an "indication flags IE." Jeong teaches a WLAN-specific information element dedicated to WLAN offloading functionality. The claims, by contrast, require an "indication flags IE"-a term that denotes a general-purpose flags field that can include various indicators. The claimed structure-an indicator for EPS to 5GS handover included within an indication flags IE-is fundamentally different from Jeong's dedicated WLAN-specific IE. The Examiner has not explained how or why one of ordinary skill would transform Jeong's WLAN-specific IE into an indication flags IE containing an indicator for EPS to 5GS handover (See Pages 8-11 of Applicant’s Arguments filed on 11/26/25).
EXAMINER’S RESPONSE:
The examiner respectfully disagrees. Contrary to the applicant’s arguments, the examiner has properly provided the motivation and reasons for modifying the invention of the cited Jeong reference with the teachings of Jin reference on pages 13-14 of the previous office action filed on 09/08/25 that is in accordance with the guidelines set forth by the MPEP as will be apparent in the following explanations seen below:
To begin with, Applicant’s Arguments that the combination of the cited art is improper because “The Examiner's rationale addresses only the general concept” and “The Examiner's rationale does not explain how or why Jeong's WLAN offloadability mechanism would be modified to serve this fundamentally different purpose” and “the rationale relies on generic benefits” and “Such vague rationale could justify virtually any modification, and does not satisfy the requirement for a reasoned explanation of why the specific combination would have been obvious” is incorrect as the guidelines set forth by the MPEP does not restrict a general concept being utilized as a motivation or reasons for combination and in fact, acknowledges a general concept of modifying an invention to prompt variations as part of the exemplary rationales that support a conclusion of obviousness being as is apparent in the highlighted portions of the MPEP seen below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In addition, the examiner directs the applicant to the highlighted portions of MPEP 2143, Section l. EXAMPLES OF RATIONALES that recites “Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. … It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed herein, they are to adhere to the guidance provided regarding the necessary factual findings. It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly. The subsections below include discussions of each rationale along with examples illustrating how the cited rationales may be used to support a finding of obviousness. Some examples use the facts of pre-KSR cases to show how the rationales suggested by the Court in KSR may be used to support a finding of obviousness. The cases cited (from which the facts were derived) may not necessarily stand for the proposition that the particular rationale is the basis for the court’s holding of obviousness, but they do illustrate consistency of past decisions with the lines of reasoning laid out in KSR. Other examples are post-KSR decisions that show how the Federal Circuit has applied the principles of KSR. Cases are included that illustrate findings of obviousness as well as nonobviousness. Note that, in some instances, a single case is used in different subsections to illustrate the use of more than one rationale to support a finding of obviousness. It will often be the case that, once the Graham inquiries have been satisfactorily resolved, a conclusion of obviousness may be supported by more than one line of reasoning” and MPEP 2143, Section l, Subsection B. Simple Substitution of One Known Element for Another To Obtain Predictable Results that recites “To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following: (1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components; (2) a finding that the substituted components and their functions were known in the art; (3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and (4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. … Example 3: The fact pattern in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) is set forth above in Example 2 in subsection I.A., above. The prior art showed differing load-bearing members and differing means of attaching the foundation to the member. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the metal bracket taught in Gregory for Fuller’s concrete haunch for the predictable result of transferring the load.” and MPEP 2143.01 Suggestion or Motivation To Modify the References that recites “Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis). Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957-58, 2023 USPQ2d 795 (Fed. Cir. 2023) (the court found an erroneous framing of the motivation inquiry led to an incorrect conclusion of nonobviousness). A "motivation to combine may be found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill." Zup v. Nash Mfg., 896 F.3d 1365, 1371, 127 USPQ2d 1423, 1427 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 [107 USPQ2d 1706] (Fed. Cir. 2013) (citing Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 [92 USPQ2d 1849] (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418-21)).”
As can be seen from the highlighted portions of the MPEP seen above, the guidelines for obviousness provided by the MPEP clearly shows that there is no requirement for any of the cited art to provide a motivation to combine and the MPEP also clearly shows that variations to an invention is rendered obvious by utilizing simple substation of one element for another, using a known technique to improve similar devices, applying a known technique to improve similar devices and utilizing a known work in one field of endeavor to prompt variations for use in the same field or a different one based on design incentives and a review of the motivation and reasons for modifying the invention of the cited Jeong reference with the teachings of the Jin reference on pages 13-14 of the previous office action filed on 09/08/25 clearly shows that the examiner performed the required analysis for the combination that is in accordance with the guidelines set forth by the MPEP 2143 as seen above.
In addition, the examiner would like to note that the applicant’s arguments against Jeong (i.e. “This is fundamentally different from Jeong’s WLAN offloadability indicator …”) and Jin alone (i.e. “Jin addresses communication from an MME to an AMF during UE-initiated registration with 5GS, not MME-to-MME communication during inter-MME mobility within EPS. Jin's teaching is directed to a different scenario than the claimed invention. …”) is made without considering what the combination of the cited references together as a whole would teach and as such, the applicant’s arguments are against the references individually and are not therefore not based on the combination of the references as a whole.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually (i.e. see MPEP 2145, Section lV).
In addition, the examiner directs the applicant to the highlighted portions of MPEP 2141, Section lll. RATIONALES TO SUPPORT REJECTIONS UNDER 35 U.S.C. 103 that recites “The obviousness analysis cannot be confined by . . . overemphasis on the importance of published articles and the explicit content of issued patents. . . . . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.KSR, 550 U.S. at 419, 82 USPQ2d at 1396. Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. … The "mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). The gap between the prior art and the claimed invention may not be "so great as to render the [claim] nonobvious to one reasonably skilled in the art." Id. … The proper analysis is whether the claimed invention would have been obvious as of the relevant time to one of ordinary skill in the art after consideration of all the facts.” and MPEP 2141, Section ll, Subsection C. Resolving the Level of Ordinary Skill in the Art that recites "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton."KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ."Id. at 418, 82 USPQ2d at 1396. In addition to the factors above, Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art. The Federal Circuit has stated that examiners and administrative patent judges on the Board are "persons of scientific competence in the fields in which they work" and that their findings are "informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art." In re Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003). In addition, examiners "are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art ." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1360, 220 USPQ 763, 770 (Fed. Cir. 1984).” and MPEP 2143, Section A, Example 2 & Section B, Example 3 & Section C, Example 2 that recites “Example 2: The claimed invention in Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) was directed to a system which employs a screw anchor for underpinning existing foundations and a metal bracket to transfer the building load onto the screw anchor. The prior art (Fuller) used screw anchors for underpinning existing structural foundations. Fuller used a concrete haunch to transfer the load of the foundation to the screw anchor. The prior art (Gregory) used a push pier for underpinning existing structural foundations. Gregory taught a method of transferring load using a bracket, wherein a metal bracket transfers the foundation load to the push pier. The pier is driven into the ground to support the load. Neither reference showed the two elements of the claimed invention – screw anchor and metal bracket – used together. The court found that “artisans knew that a foundation underpinning system requires a means of connecting the foundation to the load-bearing member” … The nature of the problem to be solved – underpinning unstable foundations – as well as the need to connect the member to the foundation to accomplish this goal, would have led one of ordinary skill in the art to choose an appropriate load bearing member and a compatible attachment. Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) in combination with the screw anchor (as shown in Fuller) to underpin unstable foundations” and recites “Example 3: The fact pattern in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) is set forth above in Example 2 in subsection I.A., above. The prior art showed differing load-bearing members and differing means of attaching the foundation to the member. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the metal bracket taught in Gregory for Fuller’s concrete haunch for the predictable result of transferring the load.” and recites “Example 2: The fact pattern in Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004) is set forth above in Example 2 in subsection I.A. The nature of the problem to be solved may lead inventors to look at references relating to possible solutions to that problem. Id. at 1277, 69 USPQ2d at 1691. Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) with the screw anchor (as shown in Fuller) to underpin unstable foundations.”
As can be seen from the highlighted portions of the MPEP seen above, the guidelines for obviousness indicated by the MPEP does not require any of the cited prior art to explicitly recite or disclose each and every limitation of the claimed limitation in order to render a teaching as obvious and as such, Jeong or Jin does not need to teach each and every limitations of the claimed invention.
In this instance, Jeong discloses performing an inter-MME procedure where a PDN context response message is sent by the old MME to a new MME wherein the context response message includes a PDN IE that includes a WLAN offloadability indicator IE indicating whether PDN connections can be moved to a WLAN network (i.e. Jeong, Fig. 11 & [0218]) and further discloses that the message may include WLAN offloadability information for the target PDN connection or EPS bearer (i.e. Jeong, [0222]) which clearly indicates that the context response message includes an offloadability IE is an indicator of an EPS handover to another system.
In a related field of endeavor, Jin discloses a PDN context response message is sent from an old MME that indicates that a PDN connection can be moved from the first communication system such as for example 4G to the second communication system for example 5G (i.e. Jin, Fig. 5 & [0269}) which clearly indicates that the context response message includes an indicator of an EPS handover to another system such as 5G which reads on applicant’s argued “EPS to 5GS handover”.
Therefore, considering the similarities of the functionalities and elements involved and based on the guidelines of obviousness as indicated by the MPEP sections as explained above, one of ordinary skill in the art would clearly recognize and find obvious that the WLAN communication system in the Jeong reference can be substituted for a 5G communication system as taught by Jin and the combination of the references together as a whole would therefore read on applicant’s argued limitations.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an "indication flags IE"-a term that denotes a general-purpose flags field that can include various indicators.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
APPLICANT’S ARGUMENTS:
The applicant argues that The Office Action's Treatment of Claims 63-64 Under MPEP § 2111.04 is Incorrect. The Office Action states that claims 63-64 "are not given patentable weight" because they depend on the "forward relocation request" alternative of claim 1's disjunctive limitation. (See Office Action, pages 5-6, 19-20.) The Office Action cites MPEP § 2111.04, Section II, which addresses contingent limitations. However, this section applies to conditional claim language within a single claim (e.g., "if condition X exists, then perform step Y"). It does not apply to dependent claims that further limit one branch of a parent claim's disjunctive "or" clause. Claims 63-64 are standard dependent claims that add limitations to the "forward relocation request" embodiment of claim 1. Under 35 U.S.C. § 112(d), dependent claims are presumed to include all limitations of the claims from which they depend. When claim 1's disjunctive limitation selects the "forward relocation request" alternative, claims 63-64 properly add further limitations to that alternative. For these reasons, Applicant respectfully requests that the Examiner examine claims 63-64 on their merits and give full patentable weight to their limitations (See Pages 11-12 of Applicant’s Argument’s filed on 11/26/25).
EXAMINER’S RESPONSE:
The examiner respectfully disagrees. Contrary to the applicant’s arguments, the examiner’s interpretation of the treatment of claims is in accordance with the guidance set forth by the MPEP as will be apparent in the following explanation seen below:
The examiner directs the applicant to the highlighted portions of MPEP 2143.03 that recites “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. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art” and 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”.
In this instance, while the example provided is directed towards "if condition X exists, then perform step Y", there is no indication that said guidelines are limited to that specific example alone.
As the applicant’s claimed limitations recite an alternative “or” language indicating a list of elements to be selected (i.e. either A or B), then selection of one element A over the other element B would result in the limitations of B being optional and never occurring and would only occur contingent on the selection of element B and as such the examiner’s interpretation and rejection is therefore proper.
APPLICANT’S ARGUMENTS:
The applicant argues that Jin Does Not Cure the Deficiencies in the Jeong + Jin Combination for Claim 6. Claim 6 depends from claim 1 and adds: "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." The Office Action relies on Jin [0281] for this limitation, stating (page 18): "Jin, [0281] discloses the MME sends a relocation request to the core network entity AMF in the second communications system and the relocation request includes a PDN connection context of the UE" However, Jin [0281] teaches that "the MME sends a relocation request to the core network entity AMF" - i.e., from an MME to an AMF. Claim 6, by dependency from claim 1, requires sending "to a second MME" where "the second MME is not an access management function (AMF)." Jin [0281] therefore does not teach the claimed limitation because Jin's relocation request is sent to an AMF, not to "a second MME" that "is not an access management function (AMF)." For this additional reason, the rejection of claim 6 should be withdrawn. Claims 2 and 52 Are Patentable Over Jeong + Jin + 3GPP + Kawasaki. Claims 2 and 52 depend from claims 1 and 51, respectively, and add the limitation "wherein the indicator indicates whether the PDN connection is allowed to be moved from the EPS to the 5GS via N26." The rejection of claims 2 and 52 relies on the base Jeong + Jin + 3GPP combination discussed above, with Kawasaki added to teach the "via N26" limitation. For all the reasons set forth in Section II above, the base Jeong + Jin + 3GPP combination is improper and does not render claims 1 and 51 obvious. Accordingly, claims 2 and 52, which depend from claims 1 and 51 and add further limitations, are also patentable (See Pages 12-13 of Applicant’s Argument’s filed on 11/26/25).
EXAMINER’S RESPONSE:
The examiner respectfully disagrees. Applicant’s Arguments are against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually (i.e. see MPEP 2145, Section lV) and as is indicated in the detailed explanation provided above, the guidelines for obviousness indicated by the MPEP do not require each and every limitation to be taught by a single prior art alone and in this instance, Jin does not need to teach limitations that have already been taught by the Jeong reference but only needs to teach the missing aspects of the Jeong reference as would have been obvious to one of ordinary skill in the art and as such, one of ordinary skill in the art would recognize and find obvious that the combined teachings of the cited reference together as a whole would read on applicant’s argued limitations.
Therefore, the argued limitations read upon the cited references or are written broad such that they read upon the cited references, as follows:
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, 3-4, 6, 51 and 63-64 is/are rejected under 35 U.S.C. 103 as being unpatentable over JEONG et al. (US Patent Publication 2017/0164286 herein after referenced as Jeong) in view of Jin et al. (US Patent Publication 2020/0077315 herein after referenced as Jin) and further in view of NPL document “3GPP TS 23.502 V15.6.0 (2019-06) 3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; Procedures for the 5G System; Stage 2 (Release 15)” herein after referenced as 3GPP (i.e. Examiner’s note: a copy of the NPL document 3GPP was previously submitted by the applicant together with the IDS filed on 01/26/22).
Regarding claim 1 and claim 51, Jeong 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: (Jeong, Fig. 11 & [0216] discloses the new MME (i.e. reads on to a second MME) may identify the old MME in which the UE was previously registered (i.e. reads on first MME during an inter-MME mobility procedure from the first MME) and the new MME sends a message requesting information on the UE such as a context request message to the old MME; Jeong, Fig. 12 & [0230]-[0232] discloses a block diagram of a mobility management entity MME and discloses the MME may include a communicator and a controller to control the overall operation thereof and the MME may further include storage and discloses the storage may store programs and data needed for operation of the MME; Jeong, [0040] discloses when the loaded programs are executed by the processor, they create a means for carrying out functions described and the computer program instructions are stored in a computer readable memory that is usable in a specialized computer).
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), (Jeong, Fig. 11 & [0218] discloses the context response message sent by the old MME (i.e. reads on sending by the first MME and reads on wherein the first MME is separate from the second MME) to the new MME (i.e. reads on to a second MME and reads on and the second MME is not an access management function AMF) may have a PDN connection IE, which may then include a WLAN offloadability IE indicating offloadability or non-offloadability of individual PDN connections (i.e. reads on an indicator for a PDN connection) constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE).
wherein the (Jeong, Fig. 11 & [0218] discloses the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable (i.e. reads on PDN connection supports interworking) by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE (i.e. reads on based on UE subscription)).
wherein the indicator indicates whether the PDN connection is allowed to be moved from an evolved packet system (EPS) (Jeong, Fig. 11 & [0218] discloses the context response message send by the old MME to the new MME may have a PDN connection IE, which may then include a WLAN offloadability IE indicating offloadability or non-offloadability of individual PDN connections (i.e. reads on wherein the indicator whether the PDN connection is allowed to be moved from an EPS) constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE; Jeong, [0220] discloses the WLAN offloadability information maybe contained as a bearer context and when two or more EPS bearers are included in one PDN connection, the new MME may insert the WLAN offloadability information in the message as default bearer information of the target PDN connection; Jeong, [0222] discloses this message may include WLAN offloadability information for the target PDN connection or EPS bearer).
and wherein the indicator is for an EPS (Jeong, Fig. 11 & [0218] discloses the context response message (i.e. reads on of a context response message) send by the old MME to the new MME may have a PDN connection IE, which may then include a WLAN offloadability IE (i.e. reads on an indication flags information element IE) indicating offloadability or non-offloadability of individual PDN connections (i.e. reads on and wherein the indicator for an EPS handover and included in) constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE; Jeong, [0222] discloses this message may include WLAN offloadability information for the target PDN connection or EPS bearer. 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”).
Jeong discloses an MME transmitting an indication of a PDN connection that may be moved or offloaded to a different system such as WLAN but fails to explicitly disclose that said offloaded indication is directed towards 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)” and “wherein the indicator is for an EPS to 5GS handover”.
In addition, Jeong discloses the MME communicating with a PGW as well as disclosing PDN connection interworking is based on UE subscription but fails to explicitly disclose that said MME decides and selects a PGW based on PDN connection supporting 5GS interworking that is based on UE subscription and therefore fails to disclose “wherein the first MME decides if the PDN connection supports a 5GS interworking based on UE subscription”.
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); wherein the indicator is for an EPS to 5GS handover (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 and reads on handover) 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, [0208] discloses a mobility management entity MME and an access and mobility management function AMF; 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, [0281] discloses the MME sends a relocation request to the core network entity AMF in the second communications system and the relocation request includes a PDN connection context of the UE; Jin, [0340] discloses the core network device includes a processor, a communications interface, a memory and a bus and the memory is configured to store program code and data of the core network device).
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 Jeong to incorporate the teachings of Jin for the purpose of providing the system with a means to utilize different 3GPP access networks such as a 5G network and be able to indicate and move the PDN connection from the EPS network to a 5G network (i.e. Jin, [0269] & [0281]) and for the purpose of making the system more dynamic and adaptable by providing the system with various different alternatives in design and functionality, thereby allowing the system to handle a number of various different combination of specific design structure and scenarios and 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 transmitting an indication of a PDN connection that may be moved or offloaded to a different system via a context response message as taught by Jeong) with another known element and comparable device utilizing a known technique (i.e. performing a process of an MME transmitting an indication of a PDN connection that may be moved or offloaded to a different system via a context response message, wherein the different system includes a 5G system and sending a forward relation request for the PDN 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 transmitting an indication of a PDN connection that may be moved or offloaded to a different system via a context response message (i.e. as taught by both Jeong & 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.
Jeong in view of Jin fails to disclose “wherein the first MME decides if the PDN connection supports a 5GS interworking based on UE subscription”.
In a related field of endeavor, 3GPP discloses:
wherein the first MME decides if the PDN connection supports a 5GS interworking based on UE subscription (3GPP, Page 144, Section 4.11.0a.4 PGW Selection discloses the MME may use (i.e. reads on wherein the first MME decides) the UEs support for 5GC NAS indication included in the UE network capability and/or UE’s subscription (i.e. reads on based on UE subscription) from HSS that includes UEs mobility restriction parameters related to 5GS and/or indication of support for interworking with 5GS (i.e. reads on if the PDN connection supports a 5GS interworking) for this APN to determine if PGW-C+SMF or a standalone PGW-C should be selected).
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 Jeong in view of Jin to incorporate the teachings of 3GPP for the purpose of conforming to the teachings of a known standard and providing the system with a means to select the correct PGW (i.e. 3GPP, Page 144, Section 4.11.0a.4 PGW Selection) and for the purpose of making the system more dynamic and adaptable by providing the system with various different alternatives in design and functionality, thereby allowing the system to handle a number of various different combination of specific design structure and scenarios and 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 communicating with a PGW and determining interworking based on UE subscription data as taught by Jeong) with another known element and comparable device utilizing a known technique (i.e. performing a process of an MME communicating with a PGW and determining interworking based on UE subscription data, wherein the PGW is selected by the MME based on UE subscription data indicating the PDN connection supports 5GS interworking as taught by 3GPP) to improve the similar devices in the same way and to obtain the predictable result of the system performing a process of an MME communicating with a PGW (i.e. as taught by both Jeong & 3GPP) 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 3, Jeong in view of Jin and further in view of 3GPP discloses:
The method of claim 1, (see claim 1).
wherein the indicator is determined based on (Jeong, Fig. 11 & [0218] discloses the context response message send by the old MME to the new MME may have a PDN connection IE, which may then include a WLAN offloadability IE indicating offloadability or non-offloadability of individual PDN connections constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE; 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. 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 “based on user equipment (UE) network capability and/or”) 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 4, Jeong in view of Jin and further in view of 3GPP 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 (Jeong, Fig. 11 & [0216] discloses the new MME may identify the old MME in which the UE was previously registered and the new MME sends a message requesting information on the UE such as a context request message to the old MME; Jeong, Fig. 11 & [0218] discloses the context response message send by the old MME to the new MME may have a PDN connection IE, which may then include a WLAN offloadability IE indicating offloadability or non-offloadability of individual PDN connections constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE; 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 Jeong in view of Jin and further in view of 3GPP discloses:
The method of claim 1, (see 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 (Jin, [0281] discloses the MME sends a relocation request to the core network entity AMF in the second communications system and the relocation request includes a PDN connection context of the UE; 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; Jeong, Fig. 11 & [0218] discloses the context response message send by the old MME to the new MME may have a PDN connection IE, which may then include a WLAN offloadability IE indicating offloadability or non-offloadability of individual PDN connections constituting the UE contexts or PDN contexts association with the UE and the context response message may contain information indicating whether each existing PDN connection associated with the UE is WLAN offloadable by APN in addition to WLAN offloadability of each PDN connection and this information may be a portion of the UE context or subscription data for the UE).
Regarding claim 63 and claim 64, Jeong in view of Jin and further in view of 3GPP 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 indicator is included in the indication flags IE of 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”).
Claim(s) 2 and 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over JEONG et al. (US Patent Publication 2017/0164286 herein after referenced as Jeong) in view of Jin et al. (US Patent Publication 2020/0077315 herein after referenced as Jin) in view of NPL document “3GPP TS 23.502 V15.6.0 (2019-06) 3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; Procedures for the 5G System; Stage 2 (Release 15)” herein after referenced as 3GPP (i.e. Examiner’s note: a copy of the NPL document 3GPP was previously submitted by the applicant together with the IDS filed on 01/26/22) and further in view of KAWASAKI et al. (US Patent Publication 2020/0336964 herein after referenced as Kawasaki).
Regarding claim 2 and claim 52, Jeong in view of Jin and further in view of 3GPP 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 (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).
Jeong in view of Jin and further in view of 3GPP discloses transmitting a PDN connection context when moving from the EPS to the 5GS but fails to explicitly disclose that said transfer is via N26 and therefore fails to disclose “wherein the indicator indicates whether the PDN connection is allowed to be moved from the EPS to the 5GS via N26”.
In a related field of endeavor, Kawasaki discloses:
wherein the indicator indicates whether the PDN connection is allowed to be moved from the EPS to the 5GS via N26 (Kawasaki, [0582] discloses the MME may include an information element indicating the presence or absence of the N26 interface which is an interface between EPC and the 5GC and in the case that there is not the N26 interface, the registration procedure may be replaced with a registration procedure for initial registration; Kawasaki, [0482] discloses a handover procedure from the EPS to the 5GS for a single registration mode by using the N26 interface will be described and the handover procedure can be performed in a case that the UE establishes a PDN connection in the EPS; Kawasaki, [0313] discloses a transfer of a PDN connection from the EPS to the 5GS is performed).
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 Jeong in view of Jin and further in view of 3GPP to incorporate the teachings of Kawasaki for the purpose of providing the system with a means to determine which procedure to implement based on the presence or absence of the N26 interface information (Kawasaki, [0582]) and for the purpose of making the system more dynamic and adaptable by providing the system with various different alternatives in design and functionality, thereby allowing the system to handle a number of various different combination of specific design structure and scenarios and 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 transmitting PDN connection context when moving from EPS to 5GS as taught by Jin) with another known element and comparable device utilizing a known technique (i.e. performing a process of transmitting PDN connection context when moving from EPS to 5GS, wherein the PDN connection context includes an indication as to the presence or absence of an N26 interface as taught by Kawasaki) to improve the similar devices in the same way and to obtain the predictable result of the system performing a process of transmitting PDN connection context when moving from EPS to 5GS (i.e. as taught by Jin & Kawasaki) 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KIM et al. (US Patent Publication 2017/0374610) discloses a system wherein an indication about whether a PDN connection may be offloaded is transmitted from a source MME to a target MME during the mobility management procedure and discloses transmitting one of an indication indicating offloading to WLAN access and indication indicating offloading to 3GPP access wherein a multi-access PDN connection is a PDN connection in which traffic can be routed to the 3GPP access and/or the WLAN access and the MME (i.e. reads on from an EPS) determines whether to offload with respect to the PDN connection on the basis of the WLAN offloadability
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MICHAEL Y MAPA/Primary Examiner, Art Unit 2645