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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the receiving a list of one or more second networks, in order of decreasing priority, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 1, 2, 5-18, 22-28, 31-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification does not originally support and inadequately describes the network selection procedure includes receiving a list of one or more second networks, in order of decreasing priority, to be used in the disaster condition, refrain from removing the second network from a list of networks forbidden to the UE when the second network is on the list of networks forbidden to the UE, and perform a priority network search when the UE is roaming according to a periodicity associated with performing the priority network search when the UE is roaming. According to the specification, like paragraphs 125 and 128, the UE receives the list of one or more second networks, in order of decreasing priority, before receiving an indication that a disaster condition is associated with a first network to which the UE is registered and also before the network selection procedure begins. A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” is sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported. See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that “[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.”)
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 9 and 33 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.
Claims 9 and 33 are confusing since claims 1, 33 state that list of one or more second networks are in order of decreasing priority, how then be in an order in which the UE attempts to register on the at least one network is based at least in part on roaming information associated with the set of networks?
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5, 7, 8, 17, 18, 22, 24, 26, 27, 28, 31-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2023/0254677 (Park, et al) in view of United States Patent Application Publication 2022/0182854 (Kim, et al).
Park, et al discloses a method of wireless communication performed by an apparatus of a user equipment (UE, figure 1, #100a-f), comprising receiving an indication that a disaster condition is associated with a first network (#300) to which the UE (#100a-f) is registered (figures 7, 8, #S700, S820, ¶237-243) and performing a network selection procedure based at least in part on receiving the indication (#S710,S720). Receiving a list of one or more second networks, in order of decreasing priority, to be used in the disaster condition (¶237-243). Park, et al does not disclose the network selection procedure includes receiving a list of one or more second networks to be used in the disaster condition and the list is received via the one or more second networks. Kim, et al teach a network selection procedure includes receiving a list of one second networks to be used in the disaster condition and the list is received via the one or more second networks for the purpose of that a communication service is impossible due to a communication disaster in the first PLMN, and the base station of the second PLMN temporarily transmits information of the first PLMN on behalf of the first PLMN according to a pre-configured policy and operator command, note figures 13 a,b, ¶203, 205-208, 210-214, 220, 233, 234, 243, 244. Hence, it would have been obvious to one ordinary skill in the art before the effective filing date of the present application to incorporate the use of a network selection procedure includes receiving a list of one second networks to be used in the disaster condition and the list is received via the one or more second networks for the purpose of that a communication service is impossible due to a communication disaster in the first PLMN, and the base station of the second PLMN temporarily transmits information of the first PLMN on behalf of the first PLMN according to a pre-configured policy and operator command, as taught by Kim, et al, in the method of wireless communication performed by an apparatus of a user equipment (UE) of Park, et al in order to accept the access for providing the disaster roaming service of the UE requesting access and the range of the disaster roaming service that can be provided (e.g., a basic voice call and a specific service, etc.).
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437
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Regarding claims 5, 24, 27, note ¶7, 147-165, 169-173, figures 5 and 6 in Park, et al and figures 5, 6, ¶123, 124, 128, 168-220, in Kim, et al.
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379
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Regarding claims 7, 26, 33, note ¶74, 150, 154, etc., figure 6, in Park, et al.
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Regarding claims 8, 32, note ¶167, 185, 192, etc. in Park, et al.
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Regarding claims 17, 28 , note ¶52-53, 76, 181, etc. in Park, et al and ¶26, 31, 312, etc. in Kim, et al.
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Regarding claim 18, note ¶7, 147-165, 169-173, figures 5 and 6 in Park, et al and figures 5, 6, ¶123, 124, 128, 168-220, in Kim, et al.
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Regarding claim 22, this claim is an apparatus version of the method claims since both are claiming the same functions, hence, this claim is rejected for the same reason. Also note figure 4 in Park, et al and figure 15 in Kim, et al.
Regarding claim 34, note ¶176-176, 181-183, 187-188 in Park, et al.
Regarding claim 35, note ¶213-214 in Kim, et al.
Regarding claim 36, note ¶167, 197-201 in Kim, et al.
Regarding claim 31, note ¶243-246 in Kim, et al
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 2, 6, 9, 10, 11, 12, 14, 15, 16, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2023/0254677 (Park, et al) in view of United States Patent Application Publication 2022/0182854 (Kim, et al) as applied to claim 1 above, and further in view of WO 2020/102831 (Xiang, et al).
Park, et al in view of Kim, et al discloses all subject matter, note the above paragraphs, except for performing a legacy network selection procedure of claims 2 and 23. Xiang, et al teaches performing a legacy network selection procedure for the purpose of if a network cannot provide communications service to its users due to certain events (e.g., disasters (such as fire, earthquake, inclement weather, etc.), oversubscribed services due to too many users (such as concerts, special events, and so on), and so forth), the amount of time that users are out of communications services and the additional impact on other networks would minimize, note figure 8, #808, pages 10, lines 21-24. Hence, it would have been obvious to one ordinary skill in the art before the effective filing date of the present application to incorporate the use of performing a legacy network selection procedure for the purpose of if a network cannot provide communications service to its users due to certain events (e.g., disasters (such as fire, earthquake, inclement weather, etc.), oversubscribed services due to too many users (such as concerts, special events, and so on), and so forth), the amount of time that users are out of communications services and the additional impact on other networks would minimize, as taught by Xiang, et al, in the method of wireless communication performed by an apparatus of a user equipment (UE) of Park, et al in view of Kim, et al in order to have network selection priority comprising at least one of a service for the UE, a subscription level of the UE, a current time of day, an expected service time and period, a trigger event restriction, or services offered by the one or more networks.
Regarding claims 6, 25, page 1, lines 18-23, page 8, line 27 to page 9, line 27 in Xiang, et al.
Regarding claim 9, note page 11, lines 22-29, page 13, lines 3-28. Page 17, lines 9-16, etc. in Xiang, et al.
Regarding claim 10, note page 4, line 7-18, page 10, lines 13-26, page 11, lines 15-22, in Xiang, et al.
Regarding claim 11, note page 1, line 25 to page 2, line 28, in Xiang, et al.
Regarding claim 12, note paragraph 7 above and also, page 13, lines 23-28 in Xiang, et al.
Regarding claim 14, note page 15, lines 22-32, in Xiang, et al.
Regarding claim 15, note page 8, line 27 to page 9, line 10, in Xiang, et al.
Regarding claim 16, note title, page 8, line 28 to page 11, line 14, in Xiang, et al.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2023/0254677 (Park, et al) in view of United States Patent Application Publication 2022/0182854 (Kim, et al) as applied to claim 7 above, and further in view of CN 1039806180.
Park, et al in view of Kim, et al discloses all subject matter, note above paragraphs, except for the set of networks includes multiple networks, and an order in which the UE attempts to register on the at least one network is randomized.
CN 1039806180 teaches the use of a set of networks includes multiple networks, and an order in which the UE attempts to register on the at least one network is randomized for the purpose of a fast search method for public land mobile network, note translation ¶8, 15, 41, and claims 1 and 5. Hence, it 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 to incorporate the use set of networks includes multiple networks, and an order in which the UE attempts to register on the at least one network is randomized in the method of wireless communication performed by an apparatus of a user equipment (UE) of Park, et al in view of Kim, et al in order for the maximum possible shorten the time of the new network is registered successfully, or terminal registration network is reduced to a certain degree by the network the possibility of rejection.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 and 22-28 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants have not presented any substantive arguments directed separately to the patentability of the dependent claims or related claims in each group, except as will be noted in this action. In the absence of a separate argument with respect to those claims, they now stand or fall with the representative independent claim. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
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.
The USPTO will not accept requests for consideration under the AFCP 2.0 filed after December 14, 2024.
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) must be submitted to the Examiner prior to the interview in order to permit the Examiner and since Applicant had already an interview, a Supervisory Patent Examiner who must approve such a second interview, to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
If Applicants request an interview after this final rejection, prior to the interview, the intended purpose and content of the interview should be presented briefly, in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search will be denied.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645