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 .
This is in response to an amendment/response filed on 8/4/2025.
Claims 1, 3-4, 6-7, 11, 13, 15-16, 18, and 20 have been amended.
Claims 5 and 14 have been cancelled.
No new claims have been added.
Claims 1-4, 6-13, and 15-20 remain pending in the application.
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 8/4/2025, with respect to the 35 U.S.C. 112(b) rejection of claims 1-4, 6-13, and 15-20 have been fully considered and are persuasive in light of the filed claim amendments. The 35 U.S.C. 112(b) rejection of claims 1-4, 6-13, and 15-20 has been withdrawn.
Applicant's other arguments filed 8/4/2025 have been fully considered but they are not persuasive. Regarding claims 1, 11, and 16, Applicant argues that Tiwari and Youtz do not teach “based on determining that the UE is IMS-capable, disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE that is IMS-capable.” Applicant also asserts that selecting a path is vastly different than disabling a path. Applicant argues that proactively disabling the SMSoNAS path for IMS-capable UEs allows the network to avoid unnecessary signaling to the SMSF and the UDM every time such a device registers, which reduces registration signaling overhead, load on the UDM and SMSF, and redundant resource allocation for a fallback path that is never used. The Examiner respectfully disagrees with Applicant’s interpretation of the prior art. With regard to Applicant’s arguments that selecting a path is vastly different than disabling a path, the Examiner also respectfully disagrees. Configuring a device to use SMS over IMS instead of SMS over NAS (i.e., “selecting” IMS) may be broadly reasonably interpreted as disabling SMS over NAS without more specific language defining what “disabling SMS over Non-access stratum (SMSoNAS) messaging” entails. In response to applicant's argument that the references fail to show certain features of the invention, it is also noted that the features upon which applicant relies (i.e., “proactively disabling the SMSoNAS path for IMS-capable UEs allows the network to avoid unnecessary signaling to the SMSF and the UDM every time such a device registers, which reduces registration signaling overhead, load on the UDM and SMSF, and redundant resource allocation for a fallback path that is never used”) 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). With regard to the teachings of the prior art, Tiwari teaches that SMS over NAS subscription information is described as potentially being changed from “allowed” to “not allowed” (i.e., disabled) (Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048], [0054]). Tiwari may thus be broadly reasonably interpreted as teaching disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE. However, Tiwari does not specifically disclose determining the UE is IP Multimedia Subsystem (IMS)-capable; and based on determining that the UE is IMS-capable, disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE that is IMS-capable. Youtz teaches that devices may be determined to be capable of communicating over IMS (Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). Youtz may thus be broadly reasonably interpreted as teaching determining the UE is IP Multimedia Subsystem (IMS)-capable. Youtz further teaches that an SMS message may be routed via IMS protocols when the SMS capability of the wireless device indicates the wireless device can process IMS protocols (Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). Youtz also teaches that the SMS message may instead be routed via NAS protocols (e.g., SMS over NAS) when the SMS capability of the wireless device indicates the wireless device cannot process IMS protocols (Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). The SMS message may thus be broadly reasonably interpreted as being routed via IMS protocols (and thus not via SMS over NAS) based on determining that the device supports IMS protocols (i.e., is IMS-capable). At least Table 2 and its corresponding description also discuss device(s) being potentially capable of IMS SMS delivery only or IMS delivery preferred, which may also be broadly reasonably interpreted as disabling SMS over NAS for such device(s) based on determining that such device(s) are IMS-capable (Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). SMS over NAS may thus be broadly reasonably interpreted as being disabled for a UE that is IMS-capable based on determining that the UE is IMS-capable. Youtz may thus be broadly reasonably interpreted as teaching “based on determining that the UE is IMS-capable, disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE that is IMS-capable.”
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 6-13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tiwari et al. (US 2021/0360567, Tiwari hereinafter) in view of Youtz et al. (US 2017/0332217, Youtz hereinafter). Regarding claims 1, 11, and 16, Tiwari teaches a method, a non-transitory computer readable media (Memory storing instructions; Tiwari; Figs. 5-7; [0071], [0074], [0077]-[0078]), and a system for managing messaging functions (Network node(s), such as a RAN node and/or an AMF; Tiwari; Figs. 5-7; [0071], [0074]) comprising: one or more processors (Devices may be comprised of a processor; Tiwari; Figs. 5-7; [0071], [0074], [0077]-[0078]); and one or more computer storage hardware devices storing computer-usable instructions (Devices may be comprised of a memory storing instructions; Tiwari; Figs. 5-7; [0071], [0074], [0077]-[0078]) that, when used by the one or more processors, cause the one or more processors to: receive a first registration request from a user equipment (UE) (As can be seen in at least Figs. 1-3 and their corresponding descriptions, a registration request from a UE may be received; Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048]); access subscription data to confirm the UE is configured for short message service (SMS) function (As can be seen in at least Figs. 1-4 and their corresponding descriptions, subscription data may be accessed (including subscription data regarding SMS configuration); Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048], [0054]); and disable SMS over Non-access stratum (SMSoNAS) messaging for the UE (SMS over NAS subscription information is described as potentially being changed from “allowed” to “not allowed” (i.e., disabled); Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048], [0054]). However, Tiwari does not specifically disclose determining the UE is IP Multimedia Subsystem (IMS)-capable; and based on determining that the UE is IMS-capable, disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE that is IMS-capable. Youtz teaches determining the UE is IP Multimedia Subsystem (IMS)-capable (Devices may be determined to be capable of communicating over IMS; Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]); and based on determining that the UE is IMS-capable, disabling SMS over Non-access stratum (SMSoNAS) messaging for the UE that is IMS-capable (Youtz teaches that an SMS message may be routed via IMS protocols when the SMS capability of the wireless device indicates the wireless device can process IMS protocols. Youtz also teaches that the SMS message may instead be routed via NAS protocols (e.g., SMS over NAS) when the SMS capability of the wireless device indicates the wireless device cannot process IMS protocols. The SMS message may thus be broadly reasonably interpreted as being routed via IMS protocols (and thus not via SMS over NAS) based on determining that the device supports IMS protocols (i.e., is IMS-capable). At least Table 2 and its corresponding description also discuss device(s) being potentially capable of IMS SMS delivery only or IMS delivery preferred, which may also be broadly reasonably interpreted as disabling SMS over NAS for such device(s) based on determining that such device(s) are IMS-capable. SMS over NAS may thus be broadly reasonably interpreted as being disabled for a UE that is IMS-capable based on determining that the UE is IMS-capable; Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]). Regarding claims 2, 12, and 17, Tiwari and Youtz teach the limitations of claims 1, 11, and 16 respectively. Youtz further teaches the one or more processors communicate with the UE via SMS over IMS (SMSoIMS) (Devices may communicate via SMS over IMS; Youtz; Figs. 3-11; [0049], [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]). Regarding claim 3, Tiwari and Youtz teach the limitations of claim 1. Tiwari further teaches accessing subscription data from a Unified Data Management (UDM) function (Subscription data is described as being accessed from a UDM; Tiwari; Figs. 1-4; [0014], [0039], [0047]-[0048], [0054]). Regarding claims 4, 13, and 18, Tiwari and Youtz teach the limitations of claims 1, 11, and 16 respectively. Tiwari further teaches accessing a local configuration to disable SMSoNAS (SMS over NAS subscription information is described as potentially being changed from “allowed” to “not allowed” (i.e., disabled). Such information may be broadly reasonably interpreted as a local configuration; Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048], [0054]). Regarding claims 6 and 15, Tiwari and Youtz teach the limitations of claims 1 and 11 respectively. Youtz further teaches registering a second UE that is not IMS-capable for the SMS function when the local configuration option to disable SMSoNAS is not enabled (Youtz teaches wireless devices (e.g., a second UE) that are not capable of receiving SMS messages via IMS (i.e., not IMS-capable for the SMS function) may be registered based at least on the UE being capable of SMS via NAS. Such a device configured for SMS via NAS may also be broadly reasonably interpreted as having a local configuration option to disable SMSoNAS that is not enabled. Youtz may thus be broadly reasonably interpreted as teaching at least registering a second UE that is not IMS-capable for the SMS function when the local configuration option to disable SMSoNAS is not enabled; Youtz; Figs. 3-11; Table 2; [0016], [0018], [0040], [0049], [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]). Regarding claims 7 and 20, Tiwari and Youtz teach the limitations of claims 1 and 16 respectively. Tiwari further teaches the one or more processors register the UE for SMS function when the UE is not IMS-capable (As can be seen in at least Figs. 1-3 and their corresponding descriptions, the UE may be registered for SMS function. Because the UE is not described as being IMS-capable, the UE may be broadly reasonably interpreted as being registered for SMS function when the UE is not IMS-capable; Tiwari; Figs. 1-4; [0014], [0038], [0047]-[0048]). Regarding claim 8, Tiwari and Youtz teach the limitations of claim 1. Youtz further teaches data-centric devices are not IMS-capable (Data centric devices are described as potentially not supporting IMS; Youtz; Figs. 3-11; [0001], [0049], [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]). Regarding claim 9, Tiwari and Youtz teach the limitations of claim 1. Youtz further teaches voice-centric devices are IMS-capable (Data centric devices are described as potentially not supporting IMS, whereas other devices may support IMS. Voice-centric devices may thus be broadly reasonably interpreted as being IMS-capable; Youtz; Figs. 3-11; [0001], [0049], [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]). Regarding claims 10 and 19, Tiwari and Youtz teach the limitations of claims 1 and 16 respectively. Youtz further teaches the first registration request includes an indication of whether the UE is voice-centric or data-centric (A connectivity request (i.e., a registration request) may indicate at least whether the device is a data centric device which only supports SMS over NAS; Youtz; Figs. 3-11; [0059]-[0060]). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings as in Youtz regarding short message service with the teachings as in Tiwari regarding short message service. The motivation for doing so would have been at least to reduce device cost, complexity, and testing (Youtz; [0014]-[0016]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC A MYERS whose telephone number is (571)272-0997. The examiner can normally be reached Monday - Friday 10:30am to 7:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Thier can be reached at 5712722832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC MYERS/Primary Examiner, Art Unit 2474