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 .
Response to Amendment
Office action in response to amendment entered 12/3/2025. Claims 1-6, 8-14 and 20-21 are amended, claims 15-19 are canceled, and claims 22-31 are added; pending in this application.
The examiner thanks the applicant for indicating the support for the claim amendments in the remarks.
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
Applicants respectfully submit that Tenny's modification of priorities of frequencies/RATs for reselection to avoid CS fallback such as via the UE 110 autonomously modifying the priorities of frequencies/RATs, e.g., based on its knowledge of which RAT(s) can support voice service and/or other information stored in UE 110 does not teach or suggest the claim elements. Examiner respectfully disagrees.
Examiner does not comment on whether “Tenny's modification of priorities of frequencies/RATs for reselection to avoid CS fallback” teaches on the claim. But Tenny also teaches a standard circuit switched fallback procedure and applicants claims do not go beyond the standard procedure as taught by Tenny Fig. 2 and outlined in the claim rejections below.
Examiner further notes that the claims are directed to user equipment and thus material differences from prior art must be reflected in the user equipment and not the intended environment such as the base station or network that the user equipment communicates with.
Rejections are thus maintained.
Claim Interpretation
Examiner notes that claim 21 does not raise 35 USC 101 issues because of the plain meaning of “hardware” and additionally as used in the specification (see: par.16-18 of PGPUB) does not include signals per se or carrier waves that are barred by 35 USC 101.
Claim Rejections - 35 USC § 102 / 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
Claim(s) 1-14, 21-25, 27-28 and 30-31 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 20100113010 A1 Tenny; Nathan Edward et al.
Regarding claims 1, 11 and 21 (in exemplary language of claim 1):
Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches A system (102 104 200) comprising:
user equipment (110) operative to:
establish first wireless connectivity (fig. 1 connection 110 to 120 or 130) with a first wireless station (122 or 132), the first wireless station being part of a first wireless network that supports first wireless communications (Network 120 or 130 as serving network, see par. 26); and receiving a notification from the first wireless network over the first wireless connectivity (Fig. 4, ¶44 “UE 110 may receive the priority list from the current serving network (e.g., from MME 126 via E-UTRAN 120, as shown in FIG. 4), from a prior serving network, etc.”)
in response to the first wireless network detecting that a subscriber operating the user equipment is assigned use ( ¶¶43—44 “the LTE network may become aware of the UE's support for voice service on a particular RAT, e.g., 1xRTT. LTE network 102 may then provide, as part of the idle mode configuration, an indication that UE 110 can reprioritize this particular RAT for mobile-originated voice calls. . . UE 110 may initially receive a priority list of frequencies/RATs and their priorities, which may be used by UE 110 for reselection (step 1). UE 110 may receive the priority list from the current serving network (e.g., from MME 126 via E-UTRAN 120, as shown in FIG. 4). . .”; See also ¶46: “allowed RATs” determined based on policies of network operator) of a second wireless network supporting second wireless communications (¶27 “ the priority list may include any number of frequencies for any set of RATs and may be specific for the UE location. . .”), the notification indicating a set of carrier frequencies (par. 27 “priority list”; Fig. 4, par. 43-44 UE receiving priority lists), the set of carrier frequencies including first wireless carrier frequencies associated with the first wireless network and second wireless carrier frequencies associated with the second wireless network (par. 27: ‘priority list’ containing frequencies and priorities for LTE and 1xRTT networks).
Regarding claims 2-10, 12-20 (in exemplary language of claims 12-20):
Claim 12. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The system as in claim 11, wherein the notification indicates a ranking of the first wireless carrier frequencies and the second wireless carrier frequencies (par. 27: ‘priority list’ containing frequencies and priorities for LTE and 1xRTT networks).
Claim 13. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The system as in claim 12, wherein the notification indicates that the first wireless carrier frequencies are ranked higher in priority than the second wireless carrier frequencies (par. 26-28: ‘priority list’ containing frequencies and priorities for LTE and 1xRTT networks).
Claim 14. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The system as in claim 13, wherein ranking of the first wireless carrier frequencies higher than the second wireless carrier frequencies as indicated by the notification causes the user equipment to camp on the first wireless network instead of the second wireless network (par. 26-28: UE camps according to ‘priority list’ containing frequencies and priorities for LTE and 1xRTT networks).
Claim 20. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 19, wherein the second wireless carrier frequencies support wireless connectivity to a second wireless station, the second wireless station disposed in the second wireless network; wherein the first wireless station supports connectivity in a first region of wireless coverage; and wherein the second wireless station supports wireless connectivity in a second region of wireless coverage, the first region of wireless coverage disposed within the second region of wireless coverage (Fig. 1, par. 21-24 ‘multiple wireless networks have overlapping coverage’ networks 120 130 base stations 122 132).
Claims 22 and 23. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The system as in claim 3, wherein the notification indicates a ranking of the first wireless carrier frequencies and the second wireless carrier frequencies (par. 27: ‘priority list’ containing frequencies and priorities for LTE and 1xRTT networks) wherein ranking of the first wireless carrier frequencies higher than the second wireless carrier frequencies as indicated by the notification causes the user equipment to use the first wireless network instead of the second wireless network during a first condition in which the first wireless network is available for use by the user equipment, and ii) use the second wireless network instead of the first wireless network during a second condition in which the first wireless network is unavailable for use by the user equipment. (par. 26-28: “UE 110 may then camp on the frequency/RAT with the highest priority among all identified frequencies/RATs. UE 110 may remain camped on this frequency/RAT until either (i) the frequency/RAT is no longer available at a predetermined threshold or (ii) another frequency/RAT with a higher priority reaches this threshold.”).
Claim 24. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 3 further comprising: subsequent to receiving the notification, transmitting a request over the first wireless connectivity to the first wireless station, the request requesting establishment of a voice communication session; and in response to transmitting the request, receiving a redirect communication from the first wireless network, the redirect communication causing the user equipment to terminate the first wireless connectivity and establish second wireless connectivity between the user equipment and the second wireless network (¶29 “.. For call origination with CS fallback, UE 110 may initially become connected to a wireless network of a source RAT (e.g., LTE) that may not support voice service. The UE may originate a voice call with this wireless network and may be transferred through higher-layer signaling to another wireless network of a target RAT that can support the voice call. The higher-layer signaling to transfer the UE to the target RAT may be for various procedures, e.g., connection release with redirection, PS handover, etc. . .”; Fig. 2 step 6 par. 32: RRC connection release with redirection); par 29, 32: ‘After step 6, UE 110 may perform mobile-originated call establishment with 1xRTT network 104 in accordance with 3GPP2 specifications (step 11)’).
Claim 25. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 24 further comprising: in response to receiving the redirect communication, using a first wireless carrier frequency of the second wireless carrier frequencies to establish the second wireless connectivity between the user equipment and the second wireless network, the first wireless carrier frequency ranked lower in the set than the first wireless carrier frequencies (¶29 “.. For call origination with CS fallback, UE 110 may initially become connected to a wireless network of a source RAT (e.g., LTE) that may not support voice service. The UE may originate a voice call with this wireless network and may be transferred through higher-layer signaling to another wireless network of a target RAT that can support the voice call. The higher-layer signaling to transfer the UE to the target RAT may be for various procedures, e.g., connection release with redirection, PS handover, etc. . .”; where 1xRTT of lower priority than LTE ¶27).
Claim 27. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 1 further comprising: subsequent to receiving the notification, transmitting a request from the user equipment over the first wireless connectivity to the first wireless station, the request requesting establishment of a communication session; and in response to transmitting the request, and the user equipment, receiving a redirect communication from the first wireless network, the redirect communication causing the user equipment to terminate the first wireless connectivity and establish second wireless connectivity between the user equipment and the second wireless network, the second wireless connectivity established to support the communication session (¶29 “.. For call origination with CS fallback, UE 110 may initially become connected to a wireless network of a source RAT (e.g., LTE) that may not support voice service. The UE may originate a voice call with this wireless network and may be transferred through higher-layer signaling to another wireless network of a target RAT that can support the voice call. The higher-layer signaling to transfer the UE to the target RAT may be for various procedures, e.g., connection release with redirection, PS handover, etc. . .”; Fig. 2 step 6 par. 32: RRC connection release with redirection); par 29, 32: ‘After step 6, UE 110 may perform mobile-originated call establishment with 1xRTT network 104 in accordance with 3GPP2 specifications (step 11)’).
Claim 28. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 27 further comprising: in response to receiving the redirect communication at the user equipment, using a highest ranked wireless carrier frequency of the second wireless carrier frequencies to establish the second wireless connectivity between the user equipment and the second wireless network, the highest ranked wireless carrier frequency of the second wireless carrier frequencies being ranked lower than the first wireless carrier frequencies session (¶29 “.. For call origination with CS fallback, UE 110 may initially become connected to a wireless network of a source RAT (e.g., LTE) that may not support voice service. The UE may originate a voice call with this wireless network and may be transferred through higher-layer signaling to another wireless network of a target RAT that can support the voice call. The higher-layer signaling to transfer the UE to the target RAT may be for various procedures, e.g., connection release with redirection, PS handover, etc. . .” where 1xRTT of lower priority than LTE ¶27).
Claim 30. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 1, wherein the first wireless carrier frequencies are ranked higher in the set than the second wireless carrier frequencies; and wherein ranking of the first wireless carrier frequencies higher in the set than the second wireless carrier frequencies results in redirection of the user equipment back to the first wireless network after termination of second wireless connectivity between the user equipment and the second wireless network (after terminating WELL-KNOWN/OFFICIAL NOTICE that UE returns to idle mode and thus back to idle mode priority operation ¶28 “..UE 110 may operate in the idle mode as follows. ..UE 110 may then camp on the frequency/RAT with the highest priority among all identified frequencies/RATs. UE 110 may remain camped on this frequency/RAT until either (i) the frequency/RAT is no longer available at a predetermined threshold or (ii) another frequency/RAT with a higher priority reaches this threshold. . .”; See also ¶ 44 “..The priority list may be sent to UE 110 when a connection is released, when UE 110 enters the idle mode, etc…” andExaminer notes specification par. 18 equating “termination” and “release”)
Claim 31. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 1 further comprising: subsequent to receiving the notification, transmitting a request from the user equipment over the first wireless connectivity to the first wireless station, the request prompting the first wireless network to establish a communication session to support the second wireless communications; and in response to transmitting the request, receiving a redirect communication from the first wireless network, the redirect communication causing the user equipment to establish second wireless connectivity between the user equipment and a target communication device through the second wireless network, the second wireless connectivity supporting the communication session (¶29 “.. For call origination with CS fallback, UE 110 may initially become connected to a wireless network of a source RAT (e.g., LTE) that may not support voice service. The UE may originate a voice call with this wireless network and may be transferred through higher-layer signaling to another wireless network of a target RAT that can support the voice call. The higher-layer signaling to transfer the UE to the target RAT may be for various procedures, e.g., connection release with redirection, PS handover, etc. . .”).
Claim(s) 26 and 29 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 20100113010 A1 Tenny; Nathan Edward et al. in view of US 20140247730 A1 Thota; Mohan Rao et al.
Claim 26 Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 25 further comprising: via the user equipment: during an idle mode of operating the user equipment, using a highest ranked wireless carrier frequency of the first wireless carrier frequencies to camp on the first wireless network (after terminating that UE returns to idle mode and thus back to idle mode priority operation ¶28 “..UE 110 may operate in the idle mode as follows. ..UE 110 may then camp on the frequency/RAT with the highest priority among all identified frequencies/RATs. UE 110 may remain camped on this frequency/RAT until either (i) the frequency/RAT is no longer available at a predetermined threshold or (ii) another frequency/RAT with a higher priority reaches this threshold. . .”; See also ¶ 44 “..The priority list may be sent to UE 110 when a connection is released, when UE 110 enters the idle mode, etc…” and Examiner notes specification par. 18 equating “termination” and “release”).
Tenny does not teach terminating the second wireless connectivity between the user equipment and the second wireless network; and during an idle mode of operating the user equipment after terminating the second wireless connectivity.
Thota teaches terminating the second wireless connectivity between the user equipment and the second wireless network; and during an idle mode of operating the user equipment after terminating the second wireless connectivity (See Thota Fig. 4 ¶39—40: 410 termination of the voice call; 420 reselection to reselect to the first network; 460 completing reselection to the first network).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the invention of Tenny to include the noted teachings of Thota in order to return to a first network from a second network after performance of a circuit switched fallback (CSFB) procedure (Thota ¶1)
Claim 29. Tenny (Figs. 1-2 par.21-26; Fig. 4, par. 43-44) teaches The method as in claim 28 further comprising: at the user equipment, utilizing a highest ranked wireless carrier frequency of the first wireless carrier frequencies to camp on the first wireless network (after terminating WELL-KNOWN/OFFICIAL NOTICE that UE returns to idle mode and thus back to idle mode priority operation ¶28 “..UE 110 may operate in the idle mode as follows. ..UE 110 may then camp on the frequency/RAT with the highest priority among all identified frequencies/RATs. UE 110 may remain camped on this frequency/RAT until either (i) the frequency/RAT is no longer available at a predetermined threshold or (ii) another frequency/RAT with a higher priority reaches this threshold. . .”; See also ¶ 44 “..The priority list may be sent to UE 110 when a connection is released, when UE 110 enters the idle mode, etc…” andExaminer notes specification par. 18 equating “termination” and “release”)
Tenny does not teach in response to terminating the second wireless connectivity, camp on the first wireless network,
Thota teaches in response to terminating the second wireless connectivity, camp on the first wireless network, (See Thota Fig. 4 ¶39—40: 410 termination of the voice call; 420 reselection to reselect to the first network; 460 completing reselection to the first network).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the invention of Tenny to include the noted teachings of Thota in order to return to a first network from a second network after performance of a circuit switched fallback (CSFB) procedure (Thota ¶1)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4, 7, 10, 11, 12, 14, 15, 16, 19, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10595251.
(see combined rejection below)
Claims 1, 2, 4, 7, 10, 11, 12, 14, 15, 16, 19, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11659463.
Although the claims at issue are not identical, they are not patentably distinct from each other because, as seen in the table below, independent claims of issued US patent 10595251 and US 11659463 B2, severable, disclose all of the limitations of instant application claim 1, as can be seen in the color coding in the table below. The three predominant features of claim 1 shown in green, red and blue are also taught claim 1 of the previous issued patents. Examiner also illustrates claims 2 and 3 as taught by previous issued patent ‘116 in burnt-orange color font in the table.
US Patent 10595251 Claims 1 and 21
US 11659463 B2 Claims 1
18/143,342 – Current App
Claim 1. A method comprising:
providing first wireless connectivity to user equipment via a base station in a first wireless network that supports first wireless communications;
receiving configuration information assigned to a subscriber operating the user equipment, the configuration information indicating that the subscriber is assigned use of a second wireless network to support second wireless communications;
communicating a set of wireless carrier frequencies to the user equipment, the set of wireless carrier frequencies allocated to support the second wireless communications via the second wireless network; and
Claim 21. The method as in claim 20, wherein the list includes: i) first wireless carrier frequencies to connect to the user equipment to the first wireless network
Claim 1 continued:
in response to detecting a trigger event subsequent to communicating the set of wireless carrier frequencies to the user equipment, initiating: i) termination of the first wireless connectivity, and ii) establishment of second wireless connectivity between the user equipment and a base station in the second wireless network to communicate the second wireless communications.
1. A method comprising:
via a first wireless base station: providing first wireless connectivity to user equipment, the first wireless base station being part of a first wireless network that supports first wireless communications;
in response to detecting that a subscriber operating the user equipment is assigned use of a second wireless network supporting second wireless communications, producing a notification indicating a set of wireless carrier frequencies;
communicating the notification indicating the set of wireless carrier frequencies to the user equipment, the set of wireless carrier frequencies in the notification including first wireless carrier frequencies associated with the first wireless network and second wireless carrier frequencies associated with the second wireless network; and
wherein the first wireless carrier frequencies in the set are ranked higher in priority than the second wireless carrier frequencies.
1. A method comprising:
via user equipment:
establishing first wireless connectivity with a first wireless station, the first wireless station being part of a first wireless network that supports first wireless communications; and
based on a subscriber operating the user equipment being assigned use of a second wireless network supporting second wireless communications,
receiving a notification indicating a set of carrier frequencies, the set of carrier frequencies including first wireless carrier frequencies associated with the first wireless network and second wireless carrier frequencies associated with the second wireless network.
2. The method as in claim 1, wherein the notification indicates a ranking of the first set of wireless carrier frequencies and the second set of wireless carrier frequencies.
3. The method as in claim 2, wherein the first wireless carrier frequencies in the notification are ranked higher in priority than the second wireless carrier frequencies.
.
Similarly dependent claims 2-10 and 12-20 are also taught by claims of U.S. Patent No. 10595251 and US 11659463 B2 in a similar manner.
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 extension fee 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 date of this final action.
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/UMAIR AHSAN/Primary Examiner, Art Unit 2647