DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the amendment field on 07/27/2026. Claims 45-56 and 58-63, of which claims 45, 56 and 61 are independent, were pending in this application and have been considered below.
Applicant canceling claim 57 is acknowledged.
Rejection of claim 57 is rendered moot in view of their cancellation by the applicant’s amendment.
Claim rejections under 35 USC § 101 are withdrawn in view of the amendment.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/27/2026 has been entered.
Response to Arguments---
Applicant’s arguments filed 07/27/2026 (see Remarks, pages 7-13), regarding the rejection of claims have been fully considered, which except for rejections under 35 USC 101, are not persuasive.
At the outset, Applicant(s) are reminded that MPEP 2141.02 VI. states: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Applicant’s Argument: “Applicant submits that the independent Claims 45, 56, and 61 … supported by the disclosure as originally filed, for example, in page 12, line 30 - page 13, line 5; page 14, line 15-17; page 17, line 33-page 18, line 10; page 21, lines 24-27; page 22, lines 27-30; and page 25, lines 31-22. " (Remarks, line 26 of page 7 to line 2 of page 8 - redacted)
Examiner Response: Examiner respectfully disagrees. Applicant has provided different passages of the specification, without properly indicating the correspondence of the aforesaid passages and the rejected limitation under 35 USC 112(a). For instance, where the terms “optimize resource allocation”, “forecasting paging occasion”, “adjust paging parameter” , “network efficiency”, “selective paging decisions”, “signaling overhead” appears in the disclosure, as originally filed.
Applicant’s Argument: “Claim Rejections under 35 U.S.C. 101 … Applicant respectfully submits that taking all the elements of Claims 45, 46, 51, 61, and 62 individually, and in combination, as a whole amount to an eligible subject matter under 35 U.S.C. 101. Therefore, Applicant respectfully requests the rejection of Claims 45, 46, 51, 61, and 62 under 35 U.S.C. 101 be withdrawn." (Remarks, lines 9 of page 8 to line 12 of page 11 – redacted, emphasis in the original)
Examiner Response: Claim rejections under 35 USC § 101 are withdrawn in view of the amendment.
Applicant’s Argument: “Claim 56 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ianev. Office Action at Page 18. In response, Applicant submits that independent Claim 56 is amended to incorporate limitations of allowable dependent Claim 5" (Remarks, lines 25-28 of page 12)
Examiner Response: Examiner respectfully disagrees. Rejection under 35 U.S.C. 102(a)(2) is withdrawn in view of amendment. However, claim stands rejected under 35 U.S.C. 112(a). (Examiner note – there is no allowable subject matter in the final office action mailed 05/28/2026. Typographical error in the index of claim has been rectified, correspondingly.)
Claim Rejections - 35 USC § 112(a) or pre-AIA 35 USC § 112, first paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The test for enablement is whether Applicant's specification provides sufficient detail so one of ordinary skill in the art at the time of filing could make and use the full scope of the claimed invention without undue experimentation. In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP § 2164.01. To determine whether the amount of experimentation would be undue, or unreasonable, the Court of Appeals for the Federal Circuit has enumerated several non-exclusive factors, any of which may not apply in agiven case. In re Wands at 1404; MPEP § 2164.01(a). The factors include (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands at 1404; MPEP § 2614.01(a). The scope of enablement provided by a disclosure must be commensurate in scope with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); MPEP § 2164.08. Moreover, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Automotive Technologies International Inc. v. BMW of North America Inc., 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007)
Applicant's Specification must provide written description support for all that is claimed. See 35 USC § 112 ¶ 1; MPEP § 2163. Written description support requires a disclosure that would reasonably convey Applicant's possession of all claimed subject matter to one of ordinary skill in the art at the time of the invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc); MPEP § 2163. While written description support requires neither in haec verba description of the claim limitations nor any particular form of disclosure, all claim limitations must be equivalently described and not merely rendered obvious. Ariad at 1162. Accordingly, a patent claim cannot recite subject matter that is not expressly, implicitly or inherently disclosed by Applicant's written description. See Hyatt v. Boone, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); In re Wright, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989); MPEP § 2163.
Reasonable possession of a claimed invention is also not shown when the disclosure merely amounts to a hoped for result, instead of a specifically claimed invention. See University of California v. Eli Lilly, 43 USPQ2d 1398 (Fed Cir 1997). In Eli Lilly, the court held that where a specification merely includes generic statements that distinguish multiple genus by function alone, those statements are generally insufficient sources of written description support because they fail to define structures/identities of species within the genus. Patents must describe "an invention, not an indication of a result that one might achieve if one made that invention." Id.
Claims 45-56 and 58-63 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The subject matter not supported by the disclosure, as originally filed, includes the added material as follows: "the predictive model being configured for integration into paging procedures of the communications network to optimize resource allocation by forecasting paging occasions based on historical network events” (lines 4-7 of claim 1), "the determined predictive model thereby enabling the second node to adjust paging parameters in real-time for improved network efficiency” (lines 5-7 of claim 56), "the predicted future need thereby providing a basis for selective paging decisions that minimize signaling overhead in the communications network” (lines 5-7 of claim 61). Nowhere in the disclosure, as originally filed, has such restriction been indicated.
Regarding claims 46-55, 58-60, and 62-63, claims are rejected due to their dependency to the rejected claims 45, 56, and 61, correspondingly.
Examiner Note – for the purpose of art rejection, the features not supported by the specification are discounted.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in "at least one of two-digit, three-digit, or four-digit" representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. "The identical invention must be shown in as complete detail as is contained in the … claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01. ("(A) Prove a primary reference contains an "enabled disclosure;" (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent.").
Claims 45-46 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. US 2022/0053530 A1 to Ahmed et al.
Regarding claim 45, Ahmed et al. disclose computer-implemented method (¶[0089]: “the functions and means explained herein may be implemented using software functioning in conjunction with a programmed microprocessor or general-purpose computer”), performed by a first node, the first node operating in a communications network (¶[0080]: "The term "network node" as is used can be any kind of network node that handles some of the scheduling functions, possibly in cooperation with the Cloud in which some of the scheduling functions such as ... prediction of DL data arrival timing may be computed” {the first node is the node in the Cloud in which the prediction of DL data arrival timing is computed}, the method comprising:
determining a predictive model of a future need to page a device operating in the communications network (¶[0042: "The Wake-up ... may be sent ... when there is no data awaiting transmission in the downlink. The Wakeup ... may be sent for example when the network estimates that DL data will arrive"; ¶[0063]: "the arrival timing of the DL data may be predicted. The prediction may be based on the average time between UL data transmission on PUSCH and a corresponding arrival of data in DL"; ¶[0080]: "The term "network node" as is used can be any kind of network node that handles some of the scheduling functions, possibly in cooperation with the Cloud in which some of the scheduling functions such as ... prediction of DL data arrival timing may be computed”), and
outputting a first indication, the first indication being based on the determined predictive model (¶[0080]: "The term "network node" as is used can be any kind of network node that handles some of the scheduling functions, possibly in cooperation with the Cloud in which some of the scheduling functions such as ... prediction of DL data arrival timing may be computed”{the node in the Cloud computing the prediction of DL data arrival must send an indication to the network node in charge of transmitting the Wake-up assignment to the UE};.
Regarding claim 46, Ahmed et al. disclose as stated above. Ahmed et al. also disclose wherein the first indication indicates one of: the determined predictive model, a predicted future need to page the device, an instruction to page the device and a recommendation to page the device (¶[0080]: "The term "network node" as is used can be any kind of network node that handles some of the scheduling functions, possibly in cooperation with the Cloud in which some of the scheduling functions such as ... prediction of DL data arrival timing may be computed”; ¶[0042: "The Wake-up ... may be sent ... when there is no data awaiting transmission in the downlink. The Wakeup ... may be sent for example when the network estimates that DL data will arrive").
Claims 45-46, 52, and 55 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. US 2022/0070963 A1 to Ianev et al.
Regarding claim 45, Ianev et al. disclose computer-implemented method, performed by a first node (¶[0029]: “Network Data Analytic Function (NWDAF) node”), the first node operating in a communications network (¶[0015]: “the 5G network”), the method comprising:
determining a predictive model of a future need to page a device operating in the communications network (Ianev et al. does not explicitly mention a predictive model of a future need to page a device, but expressly disclose a method and system for customizing a Discontinuous Reception (DRX) cycle length per user equipment (UE) based on analytical results from a Network Data Analytics Function (NWDAF) (see ¶[0025]), in which the NWDAF analyses statistics collected from different sources (see ¶[0049]) and generates an analytic result indicative of a communication pattern for a specific UE (see [0050]). The aforesaid analytic result is delivered to an Access and Mobility Management Function (AMF) (see ¶[0051]), which determines a DRX cycle for the UE based on the analytic result (see ¶[0054]). If the analytic result/communication pattern reveals that the UE use frequent communication with predominantly mobile terminating (MT) type calls, then a relatively short DRX cycle is determined for said UE, to reduce the delay associated with paging of the UE. The call delays for the UE may thereby be reduced (see ¶[0056]). Then, the aforesaid analytic result (generated by the NWDAF) which is indicative of an expected frequency of MT type calls, is inherently also indicative of an expected/predicted need of paging a UE, i.e., the above discussed analytic result correspond to the claimed "predictive model of a future need to page a device".), and
outputting a first indication, the first indication being based on the determined predictive model (providing the analytic result from the NWDAF to the AMF - see ¶[0051]).
Regarding claim 46, Ianev et al. disclose as stated above. Ianev et al. also disclose wherein the first indication indicates: the determined predictive model (providing the analytic result from the NWDAF to the AMF - see ¶[0051])
Regarding claim 52, Ianev et al. disclose as stated above. Ianev et al. also disclose wherein the outputting comprises sending the first indication to: a second node operating in the communications network, wherein the first indication indicates the determined predictive model (providing the analytic result from the NWDAF to the AMF - see ¶[0051])
Regarding claim 55, Ianev et al. disclose as stated above. Ahmed et al. also disclose wherein the first node is a Network Data Analytics Function, NWDAF (¶[0029]: “Network Data Analytic Function (NWDAF) node”), and the at least one of the one or more other nodes is one of an Access Management Function, AMF (¶0043]: “The AMF 710”) and a Centralized Unit — Control Plane, CU-CP.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
The foregoing obviousness inquiry requires an expansive and flexible approach, not a rigid approach demanding express teachings, suggestions and motivations to combine prior art teachings. KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395, 97 (US 2007). The rationale supporting a conclusion of obviousness should be made explicit for review, but the rationale does not require precise teachings directed to the specific subject matter of the claim. Id. at 1396. A rejection can rely on inferences and creative steps that a person of ordinary skill in the art would employ. Id. Obviousness rejections are not limited to showing the obviousness of solutions to the problems Applicant was trying to solve. Id. at 1397. Rather, one can show obviousness of a claim by establishing the obviousness of any solution to any known problem in the field of endeavor and addressed by a patent application's subject matter. Id. Moreover, one of ordinary skill in the art is not an automaton, but is possessed of ordinary creativity. Id. One of ordinary skill could find alternative uses for prior art elements beyond the elements' primary purposes and fit prior art teachings together like a puzzle. Id. A combination of prior art teachings does not require absolute predictability. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals Inc., 81 USPQ2d 1324, 1329 (Fed. Cir. 2006). All that is required is a reasonable expectation of success. Id.
Claim 47 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2022/0053530 A1 to Ahmed et al
Regarding claim 47, Ahmed et al. disclose as stated above. Ahmed et al. also disclose wherein the determining is performed [0063]: "the arrival timing of the DL data may be predicted. The prediction may be based on the average time between UL data transmission on PUSCH and a corresponding arrival of data in DL"). Ahmed et al. is silent about using machine learning. However, use of machine learning in in a NWDFA for performing data analytics is well-known and common knowledge in the art (see for example IDS: ETRI: "TR 23.791: Update of Solution 5 to Avoid Biased Data Sample", 3GPP Draft; S2-188111 Update of Solution 5 to Avoid Biased Data Sample, 3rd Generation Partnership Project (3GPP), Mobile Competence Centre ; 650, route des Lucioles ; F-06921 Sophia-Antipolis Cedex; France, Publishing date: 2018-08-14.). Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use the well-known machine learning techniques with the system of Ahmed et al. to reach at the claimed invention with a reasonable expectation of success, because such a combination would have represented the combination of known techniques through conventional manners to provide predictable and expected results.
Claim 48-49 and 53 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Application Publication No. US 2022/0070963 A1 to Ianev et al.
Regarding claim 48, Ianev et al. disclose as stated above, except for expressly teaching subscribing with one or more other nodes to receive the first data from the one or more first devices in the communications network. However, Ianev et al. disclose that the AMF subscribes to data from the NWDAF (see for example Fig. 3). Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, that the NWDAF could subscribe to the UE data (corresponding to the claimed first data), which is used for determining the communication pattern of the UE, thereby arrives at the claimed invention with a reasonable expectation of success.
Regarding claim 49, Ianev et al. disclose as stated above, except for expressly teaching wherein the determining further comprises performing iteratively: testing an accuracy of the determined predictive model with second data indicating one or more of: second paging requests sent to the one or more second devices operating, or having operated, in the communications network over a second time period, second transitions by the one or more second devices, over the second time period, from the first state wherein the one or more second devices had an active connection with the communications network to the second state wherein the one or more second devices had a standby connection with the communications network, a second mobility pattern of the one or more second devices, a second location of the one or more second devices, a second pattern of communications by the one or more second devices in the communications network, and second services used by the one or more second devices in the communications network, and one of: determining the determined predictive model is ready to be used with the proviso that the accuracy exceeds a threshold, and continuing the training of the determined predictive model with the proviso that the accuracy is lower than the threshold. However, aforesaid features relates to a standard solution for testing a machine learning model, which is obvious to a person skilled in the art.
Regarding claim 53, Ianev et al. disclose as stated above, except for expressly teaching wherein the first data comprises at least one of: a respective first time paging started, a respective identifier of the one or more first devices, a respective second time period it took to locate the one or more first devices and a respective reason for paging. However, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, that the data collected by the NWDAF includes an identifier of the UE, which enables the NWDAF to determine the
communication pattern for the UE.
Conclusion
As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The attention of the applicant is drawn to the fact that the application may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed. In order to facilitate the examination of the conformity of the amended application, the applicant is respectfully requested to clearly identify the amendments carried out, irrespective of whether they concern amendments by addition, replacement or deletion, and to indicate the passages of the application as filed on which these amendments are based.
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang, SPE can be reached on (571) 272-9018. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Communications via Internet e-mail are at the discretion of the applicant. See MPEP § 502.03. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122 and will not initiate communications with applicants via Internet e-mail. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.
The following is a sample authorization form, which may be used by applicant:
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To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, filed via EFS-Web. The Form is available at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631
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