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 Amendment
The amendment filed June 11, 2026 has been accepted and entered. Accordingly, claims 5 and 13 are amended.
Claims 1-16 are pending in this application.
In view of the amendment, the 35 U.S.C. 112(b) rejection of claims 5 and 13 are not withdrawn.
Response to Arguments
Applicant’s arguments regarding the rejection of independent Claim 1 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues that “There is no teaching of ‘performing an intersystem change from 5GS to EPS’ AND ‘triggering a tracking area update (TAU) procedure’” (Response filed on June 11, 2026, page 7), “Liu teaches a different TAU/attach rule, and the Office Action reverses Liu's teaching” (Response filed on June 11, 2026, page 7) and “the Office Action's proposed modification is entirely contrary to the express teachings of Liu” (Response filed on June 11, 2026, page 8). Examiner respectfully disagrees.
Liu teaches that “the network device sends indication information to a terminal device, where the indication information is used to indicate the support for interoperations with an N26 interface or without an N26 interface” (Liu [Col. 19 lines 57-60]) and “Optionally, if the terminal device does not recognize indication or does not receive information that is sent by a network side and is used to indicate that the network side supports a handover without an N26 interface, the terminal device sends a location update TAU request message after performing a triggered redirection procedure. That is, the execution starts from 401” (Liu [Col. 15 lines 46 – 52]). The phrase “does not receive information” is listed separately, the phrase “does not recognize the information” is an alternative to “does not receive information” to indicate to “receive the information but not recognize the information”. Under definition of the Merriam-Webster dictionary, the word “recognize” is defined as “to acknowledge formally: such as to admit as being of a particular status or to acknowledge or take notice of in some definite way”. Therefore, the phrase “not recognize the information” in Liu indicates to receive the information, but not take notice of or ignore the information.
Liu also states “Optionally, if the terminal device recognizes indication information that is sent by a network side and is used to indicate that the network side supports a handover without an N26 interface” (Liu [Col. 15 lines 37 - 41]). However, this is an approach alternative to the approach of not recognizing the indication that N26 is not supported. That the paragraph describing recognizing the indication and the paragraph describing not recognizing the indication each starts with “Optionally” respectively indicates that they describe two embodiments independent of each other. Therefore, the embodiment of ignoring the indication does not depend upon the embodiment of recognizing the indication, and the embodiment of ignoring the indication is consistent with the limitation of claims 1 and 9 that TAU procedure is triggered after receiving the indication that N26 is not supported.
Applicant argues that “The rejection uses Liu only for the existence of a TAU request, divorced from the condition that causes the TAU request in Liu. That is not a proper mapping of the claimed limitation”. Examiner respectfully disagrees.
Huang-Fu teaches “establishing a PDU session in 5GS after a UE is registered over both 3GPP and non-3GPP access types, indicating that the UE has received REGISTRATION ACCEPT messages over both access types. UE sends a PDU SESSION ESTABLISHMENT REQUEST message to gNB. The user plane resource on 3GPP access is then established. Next, UE 401 sends another PDU SESSION ESTABLISHMENT REQUEST message to AP 403. The user plane resource on non-3GPP access is then established. Since UE 401 is registered to the network over both RAT access types belonging to different PLMNs, the MA PDU session is first established over 3GPP access type and then established over non-3GPP access type in two separate steps” (Huang-Fu [Col. 7 lines 29 – 51]) and “Upon intersystem change from 5GS to EPS over the 3GPP access, the 3GPP part of an MA PDU session is transferred to a PDN connection” (Huang-Fu [Abstract]). According to Huang-Fu, the UE is connected with two PLMN networks and intersystem change is performed.
Liu teaches that “two access network devices, two core network devices, and one terminal device” (Liu [Col. 9, lines 54-55] and [FIG. 1]) and “the support for interoperations with an N26 interface or the support for interoperations without an N26 interface by the first system or the second system may be the support for interoperations with an N26 interface or the support for interoperations without an N26 interface by a core network device in the first system or a core network device in the second system” (Liu [Col 14 lines 8 – 15]). According to Liu, the two cores that the terminal connects to may each support N26 or not support N26.
Won teaches “the AMF supporting inter-system change with EPS can or shall set the IWK N26 bit to either: a) “interworking without N26 not supported” if the AMF supports N26 interface; or b) “interworking without N26 supported” if the AMF does not support N26 interface in the 5GS network feature support IE in the REGISTRATION ACCEPT message (Won [Para. 0333-0336]), indicating that a network supporting N26 indicates to the UE that N26 is supported and a network not supporting N26 indicates to the UE that N26 is not supported.
According to Liu, the TAU procedure is performed based on the terminal not recognizing the indication that N26 is not supported in the system of two networks. This condition is consistent with the teaching of Huang-Fu, Liu and Won as stated above that the UE receives REGISTRATION ACCEPT message over non-3GPP access from a second network that carries an information element (IE) indicating that N26 is not supported.
Applicant argues that “ii) Won only teaches the IWK N26 bit format; it does not teach the claimed UE behavior” (Response filed on June 11, 2026, page 8), “First, Won merely teaches the existence and meaning of the IE” (Response filed on June 11, 2026, page 9) and “Second, Won actually undercuts the Office Action's combination theory” (Response filed on June 11, 2026, page 9).
As stated above, Won teaches the conditions that the network indicates that N26 is supported and that N26 is not supported respectively. Based on Huang-Fu, Liu and Won, the UE connected to the two networks receives the indications that N26 is supported and N26 is not supported respectively, ignores the indication that N26 is not supported, and initiates TAU to perform intersystem change.
Won states in paragraph 0341 that “In some embodiments, the UE can or shall treat the received interworking without N26 interface indicator for inter-system change with EPS as valid in the entire PLMN and its equivalent PLMN(s)”. This statement is restricted to some embodiments, not every embodiment. Additionally, the teaching that Won provides is the conditions that the networks indicate to the UE with respect to N26 support. That teaching is consistent with Huang-Fu and Liu for receiving the indications with respect to N26 support from the networks.
Claim Objections
Claims 1 and 9 are objected because of the following informalities.
In claim 1 and 9, “carries an information element (IE) indicates” should read “carries an information element (IE) indicating”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “wherein based on ignoring the indication from the second network, the UE considers interworking without N26 interface not supported and does not send an ATTACH REQUEST message to EPS”. In claim 1, UE receives the information of interworking without N26 interface supported in REGISTRATION ACCEPT message. Additionally, claim 1 recites that “the first network indicates interworking without N26 interface not supported”. Given these recitations in claim 1, it is not clear which network is UE considering when UE considers in claim 5, and if the consideration is for the second network, then how can UE “considers” interworking without N26 interface is not supported when the received message specifically indicates that interworking without N26 interface is supported. The specification (e.g., para. [0025] of the Application Publication) teaches that ATTACH REQUEST message is needed to be send if “N26 interface is not supported”. This seems contradicting to the feature of claim 5. However, no other teaching supporting claim 5 is found in the specification. The addition of “based on ignoring the indication from the second network” does not make it clear as to which network is UE considering when UE considers. In view of this, the metes and bounds of claim 5 are not clear.
Similar issue is noted in claim 13.
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 1-4, 7-12 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Huang-Fu et al (US11265767B2, hereinafter Huang-Fu) in view of Liu (US11240775B2, hereinafter Liu), and Won (US20210250890A, hereinafter Won).
For claims 1 and 9, Huang-Fu teaches maintaining one or more Protocol Data Unit (PDU) sessions by a User Equipment (UE) in fifth generation system (5GS), wherein the UE is registered to a first network via a first access type ([Col. 7 lines 52 – 55], establishing a PDU session in 5GS when a UE is registered to one RAT access type, and then registered to another RAT access type), receiving a REGISTRATION ACCEPT message over a second access type from a second network ([Col. 7 lines 29 – 51], establishing a PDU session in 5GS after a UE is registered over both 3GPP and non-3GPP access types, indicating that the UE has received REGISTRATION ACCEPT messages over both access types. UE sends a PDU SESSION ESTABLISHMENT REQUEST message to gNB. The user plane resource on 3GPP access is then established. Next, UE 401 sends another PDU SESSION ESTABLISHMENT REQUEST message to AP 403. The user plane resource on non-3GPP access is then established. Since UE 401 is registered to the network over both RAT access types belonging to different PLMNs, the MA PDU session is first established over 3GPP access type and then established over non-3GPP access type in two separate steps), and performing an intersystem change from 5GS to evolved packet system (EPS) ([Abstract lines 9-10], Upon intersystem change from 5GS to EPS over the 3GPP access).
Although teaching establishing session with networks over 3GPP and non-3GPP access types and performing intersystem change, Huang-Fu does not expressly disclose and wherein the first network indicates interworking without N26 interface not supported, and triggering a tracking area update (TAU) procedure in EPS.
Liu, from the same or similar field of endeavor, discloses that and wherein the first network indicates interworking without N26 interface not supported ([Col. 9, lines 54-55], FIG. 1 shows two access network devices, two core network devices, and one terminal device as an example. [Col 14 lines 8 – 15], the support for interoperations with an N26 interface or the support for interoperations without an N26 interface by the first system or the second system may be the support for interoperations with an N26 interface or the support for interoperations without an N26 interface by a core network device in the first system or a core network device in the second system. [Col. 19 lines 57-61], the network device sends indication information to a terminal device, where the indication information is used to indicate the support for interoperations with an N26 interface by the system), and triggering a tracking area update (TAU) procedure in EPS ([Col. 15 lines 46 – 51], if a terminal device does not recognize indication sent by a network side and used to indicate that the network side supports a handover without an N26 interface, the terminal device sends a TAU request).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and apparatus of Huang-Fu, so that a terminal device recognizing indication sent by a network side and used to indicate that the network side supports a handover without an N26 interface sends a TAU request, as taught by Liu. The modification would have implemented an inter-system network handover in the case of flexible registration modes of a terminal device (Liu [Col. 1 lines 35-37]).
Although teaching the UE receiving a REGISTRATION ACCEPT message indicating N26 interface is not supported, Huang-Fu and Liu do not explicitly disclose wherein the REGISTRATION ACCEPT message from the second network carries an information element (IE) indicates interworking without N26 interface supported.
Won is directed to providing methods, apparatuses, and computer program products for handling emergency services in private networks. More specifically, Won teaches wherein the REGISTRATION ACCEPT message from the second network carries an information element (IE) indicates interworking without N26 interface supported ([Para. 0333], if the UE included S1 mode supported indication in the REGISTRATION REQUEST message, the AMF supporting inter-system change with EPS can or shall set the IWK N26 bit to either: [Para. 0334], a) “interworking without N26 not supported” if the AMF supports N26 interface; or [Para. 0335], b) “interworking without N26 supported” if the AMF does not support N26 interface [Para. 0336], in the 5GS network feature support IE in the REGISTRATION ACCEPT message [Examiner’s Note: “interworking without N26 not supported” is N26 interface supported. “interworking without N26 supported” is N26 interface not supported]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and apparatus of Huang-Fu and Liu, so that indication of N26 interface not supported is carried in the 5GS network feature support IE in the REGISTRATION ACCEPT message, as taught by Won. The modification would have allowed a UE to locally release of all protocol data unit (PDU) session(s) except for an emergency PDU session without authorization for the access to the network (Won [Para. 0006]).
For claims 2 and 10, Huang-Fu, Liu, and Won disclose every limitation of claims 1 and 9. Huang-Fu also teaches wherein the first access type is third generation partnership project (3GPP) access, and wherein the second access type is non-3GPP access (Huang-Fu, [Col. 7 lines 29 – 32], establishing a PDU session in 5GS after a UE is registered over both 3GPP and non-3GPP access types to different networks).
For claims 3 and 11, Huang-Fu, Liu, and Won disclose every limitation of claims 1 and 9 respectively. Liu also teaches the UE supports sending an ATTACH REQUEST message to transfer the one or more PDU session from 5GS to EPS (Liu, [Fig. 5 405], Attach request), and wherein the ATTACH REQUEST message carries a PDN CONNECTIVITY REQUEST message (Liu, [Fig. 5 413], PDN connection requested by the UE) with a request type set to handover (Liu, [Col. 15 lines 9-10], the UE sends an attach request carrying a handover ID).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and apparatus of Huang-Fu and Won so that the UE supports sending an ATTACH REQUEST message to transfer the one or more PDU session from 5GC to EPS, as taught by Liu. The modification would have implemented an inter-system network handover in the case of flexible registration modes of a terminal device (Liu [Col. 1 lines 35-37]).
For claims 4 and 12, Huang-Fu, Liu, and Won disclose every element of claims 1 and 9 respectively. Liu also teaches wherein the UE ignores the indication from the second network (Liu, [Col. 15 lines 46 – 51], if a terminal device does not recognize indication sent by a network side and used to indicate that the network side supports a handover without an N26 interface, the terminal device sends a TAU request).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and apparatus of Huang-Fu and Won so that the UE ignores the indication from the second network, as taught by Liu. The modification would have implemented an inter-system network handover in the case of flexible registration modes of a terminal device (Liu [Col. 1 lines 35-37]).
For claims 7 and 15, Huang-Fu, Liu, and Won disclose every element of claims 1 and 9, respectively. Huang-Fu further teaches wherein the first network and the second network belong to the same public land mobile network (PLMN) (Huang-Fu, [Col. 7 lines 52 – 55], establishing a PDU session in 5GS when a UE is registered to one RAT access type, and then registered to another RAT access type to the same PLMN) or the same standalone non-public network (SNPN).
For claims 8 and 16, Huang-Fu, Liu, and Won teach every element of claims 1 and 9, respectively. Huang-Fu further teaches wherein the first network and the second network belong to different public land mobile networks (PLMNs) (Huang-Fu, [Col. 7 lines 29 – 32], establishing a PDU session in 5GS after a UE is registered over both 3GPP and non-3GPP access types belonging to different PLMNs) or different standalone non-public networks (SNPNs).
Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Huang-Fu et al (US11265767B2, hereinafter Huang-Fu) in view of Liu (US11240775B2, hereinafter Liu), and Won (US20210250890A, hereinafter Won), and further in view of ETSI TS (124 501 Version 16.5.1).
For claims 6 and 14, Huang-Fu, Liu, and Won disclose every limitation of claim 1 and 9 respectively. Huang-Fu, Liu, and Won do not teach the REGISTRATION ACCEPT message carries a 5GS network feature support information element (IE) with an internetworking (IWK) N26 indication in supporting N26 interface.
ETSI TS (124 501 Version 16.5.1), from the same or similar field of endeavor, teaches the REGISTRATION ACCEPT message carries a 5GS network feature support information element (IE) with an internetworking (IWK) N26 indication (ETSI TS [Page 30, lines 37-40], “the UE has received either a 5GS network feature support IE with IWK N26 bit set to "interworking without N26 interface not supported" or an EPS network feature support IE with IWK N26 bit set to "interworking without N26 interface not supported"”). Thus, it would have been obvious to one skilled in the art to use IWK N26 bit in the REGISTRATION ACCEPT message in the network systems of Huang-Fu, Liu, and Won.
Allowable Subject Matter
Claims 5 and 13 are objected to being dependent upon rejected claims, but would be allowable if rewritten in independent form including all of the limitations of the base claims and intervening claims, and outstanding 112b rejection is overcome.
Conclusion
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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/S.L./Examiner, Art Unit 2417
/REBECCA E SONG/Supervisory Patent Examiner, Art Unit 2417
Prosecution Insights