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 .
Response to Arguments
Applicant's arguments filed August 15, 2025 have been fully considered but they are not persuasive because the previously cited references are disclosed the argued limitation of claim 9 moved from the previous claim 11.
On page 8, the Applicant argues, “Watfa discloses that a registration request message indicates support of NSSAI (network slice selection assistance information). However, Watfa fails to teach or suggest that the registration request message comprises an indication of whether the UE supports or requires a configuration of a UE behavior policy. Accordingly, Watfa also fails to teach or suggest "...wherein the registration request message comprises an indication of whether the UE supports or requires a configuration of a UE behavior policy." Kim, Kuppelur, Sadique, and Christoffersson also fail to teach or suggest this feature and were not cited for this purpose such that any proper combination of the cited references is therefore also necessarily deficient for at least the same reasons.
For at least the aforementioned reasons and deficiencies, Applicant respectfully submits that the cited references, taken individually or in any proper combination, fail to teach or suggest independent claim 9, at least now as amended. Applicant therefore submits that the rejection of independent claim 9, at least as now amended, under 35 U.S.C. § 103 are overcome and that independent claim 9 is in condition for allowance.”
The Examiner respectfully disagrees with the above argument. Contrary to the argument, Watfa teaches the UE transmitting to AMF a registration request including indications whether the UE supports or requires configurations, such as requested mapped NSSAI IE and S-NSSAI entries in the IE subject or not subject to NSSAA indicating whether or not the UE support NSSAA, AMF’s policy allows that the slices can be used by the UE and associated PDU session is allowed to be transferred, periodic registration updating or mobility registration updating, and these are simply of the UE behavior policy (e.g. please read [0176]-[0188]; [0286]-[0296]; and so on).
Therefore, the argument is not persuasive, and claims 9-10, 12-16 are not patentable in view of the cited prior arts.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/960,647. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include in the requesting limitation, “… based at least in part on at least one of i) the one or more PLMN types or PLMN identities”. However, it would have been obvious to incorporate the based at least in part on at least one of i) the one or more PLMN types or PLMN identities into the claims of the instant application in order to improve interoperability.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0349742 A1) in view of Kuppelur et al. (US 2022/0312360 A1), and further in view of Sadique et al. (US 2022/0232463 A1) and Watfa (US 2021/0306972 A1).
Regarding claim 9. Kim discloses a method comprising: providing, to a network entity of a communications system, from a user equipment (UE) a registration request message (paragraph [0199]-[0201]; [0217]-[0222]; [0229]-[0234]; and so on), receiving, at the UE, from the network entity, in response to the registration request message, a registration accept message (abstract; paragraph [0009]-[0011]; [0014]; [0199]-[0205]; [0208]; [0217]-[0222]; [0229]-[0234]; [0245]-[0250]; [0255]-[0261]; [0266]-[0273]; and [0281]-[0288]; and etc., illustrating UE transmitting a registration request to a network, and the network transmits back to the UE a registration accept message).
Kim doesn’t explicitly disclose wherein the registration request message comprises an indication of whether the UE support or requires a configuration of a UE behavior policy; the message comprising UE configuration information, wherein the UE configuration information includes an indication of one or more of one or more public land mobile network PLMN types or PLMN identities associated with a UE behavior for the UE; and adapting a UE behavior according to a UE behavior policy indicated in the registration accept message.
Watfa teaches wherein the registration request message comprises an indication of whether the UE support or requires a configuration of a UE behavior policy (e.g. please read [0176]-[0188]; [0286]-[0296]; and so on).
the message comprising UE configuration information, wherein the UE configuration information includes an indication of one or more of one or more PLMN types or PLMN identities associated with a UE behavior for the UE.
Kuppelur teaches the message comprising UE configuration information, wherein the UE configuration information includes an indication of one or more of one or more PLMN types or PLMN identities associated with a UE behavior for the UE (e.g. paragraph [0031]; and etc., explaining the message comprising information including PLMN identities or lists or IDs or types related to UE behavior).
Kuppelur doesn’t teach adapting a UE behavior according to a UE behavior policy indicated in the registration accept message.
Sadique teaches adapting a UE behavior according to a UE behavior policy indicated in the registration accept message (paragraph [0131]; [0141]-[0143]; [0166]-[0167], describing the resetting or modifying of UE behavior).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use wherein the registration request message comprises an indication of whether the UE support or requires a configuration of a UE behavior policy, the message comprising UE configuration information, wherein the UE configuration information includes an indication of one or more of one or more PLMN types or PLMN identities associated with a UE behavior for the UE; and adapting a UE behavior according to a UE behavior policy indicated in the registration accept message as taught by Kuppelur and Sadique into Kim in order to improve security and efficiency of communication, reduce collision, to improve interoperability, reliability, and mobility of communication.
Regarding claim 12, Kim discloses wherein the registration request message further comprises an indication of a version of a currently configured UE behavior policy (paragraph [0011]-[0013]; [0204]; [0208]; [0218]-[0222]; [0230]; [0234]; [0250]; [0256]-[0261]; [0267]-[0272]; [0282]-[0288]).
Regarding claim 13, as applied above, Kim further discloses comprising: providing, to the network entity, a registration request message. However, Kim doesn’t disclose wherein the registration accept message further comprises instructions for the user equipment to request all single network slice selection assistance information (S-NSSAI) of a configured network slice selection assistance information (NSSAI) or instructions for the user equipment to request all S-NSSAI of a default configured network slice selection assistance information (NSSAI).
Watfa teaches wherein the registration accept message further comprises instructions for the user equipment to request all single network slice selection assistance information (S-NSSAI) of a configured network slice selection assistance information (NSSAI) or instructions for the user equipment to request all S-NSSAI of a default configured network slice selection assistance information (NSSAI) (paragraph [0117]-[0118]; [0168]-[0169]; [0176]-[0188]; [0292]-[0298]; [0191]-[0193]; and so on).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use wherein the registration accept message further comprises instructions for the user equipment to request all single network slice selection assistance information (S-NSSAI) of a configured network slice selection assistance information (NSSAI) or instructions for the user equipment to request all S-NSSAI of a default configured network slice selection assistance information (NSSAI) as taught by Watfa into the modified communication of Kim in order to improve security and efficiency of communication, and to reduce collision.
Regarding claim 14, Kim discloses wherein the UE configuration information further includes an indication of a respective version of a UE behavior associated with said one or more PLMN types or PLMN identities (paragraph [0011]-[0013]; [0204]; [0208]; [0218]-[0222]; [0230]; [0234]; [0250]; [0256]-[0261]; [0267]-[0272]; [0282]-[0288]).
Claims 10 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kuppelur and Sadique, and further in view Christoffersson et al. (US 2024/0080927 A1).
Regarding claim 10, as applied above, Kim further discloses comprising: PLMN types or PLMN identities. However, Kim doesn’t explicitly disclose storing the or more PLMN types or PLMN identities and the respective version of an associated UE behavior policy.
Kuppelur teaches storing the or more PLMN types or PLMN identities (paragraph [0065]; [0031]; [0036]-[0037]; [0058]; and etc.).
Kuppelur doesn’t disclose storing the respective version of an associated UE behavior policy.
Christoffersson teaches storing the respective version of an associated UE behavior policy (paragraph [0143]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use storing the or more PLMN types or PLMN identities and the respective version of an associated UE behavior policy as taught by Kuppelur and Christoffersson into the modified communication of Kim in order to reduces interference and communication failure.
Regarding claim 15, as applied above, Kim further discloses comprising: one or more PLMN types or PLMN identities. However, Kim doesn’t disclose storing, at the UE, a respective version of a UE behavior associated with said one or more PLMN types or PLMN identities, wherein said storing is performed prior to receiving said registration accept message at the UE.
Christoffersson teaches storing, at the UE, a respective version of a UE behavior associated with said one or more PLMN types or PLMN identities, wherein said storing is performed prior to receiving said registration accept message at the UE (paragraph [0143]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use storing, at the UE, a respective version of a UE behavior associated with said one or more PLMN types or PLMN identities, wherein said storing is performed prior to receiving said registration accept message at the UE as taught by Christoffersson into Kim in order to communication failure and data loss.
Regarding claim 16, as applied above, the modified communication of Kim discloses wherein storing the respective version of the UE behavior associated (Christoffersson, paragraph [0143]). The modified communication of Kim doesn’t disclose the associated is performed upon receipt of a prior registration accept message comprising UE configuration information.
Kuppelur teaches the associated is performed upon receipt of a prior registration accept message comprising UE configuration information (paragraph [0131]; [0141]-[0143]; [0166]-[0167]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use storing the or more PLMN types or PLMN identities and the respective version of an associated UE behavior policy as taught by Christoffersson and Kuppelur into Kim in order to reduces interference and communication failure.
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 KIBROM T HAILU whose telephone number is (571)270-1209. The examiner can normally be reached M-F 8:00 AM to 5:30 PM.
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/KIBROM T HAILU/Primary Examiner, Art Unit 2461