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 11/21/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the claim(s) 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.
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 1-22 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.
An active step of “determining data…” was added to the independent claims, previously having been and disclosed as an intended use. This step is not found in the drawings and cannot be located in the instant specification and thus is considered new matter.
A new step of “requesting” has been added to the independent claims, explicitly, “requesting, based on the first request, a first action to be performed…”. This step is not found in the drawings and cannot be located in the instant specification and thus is considered new matter. Additionally The examiner questions which part of the first request the basis is on and how the first node would determine this.
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.
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.
Claims 1-22 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.
The independent claims recite the step of “requesting, based on the first request, a first action to be performed…” however it is noted that the first request was sent by the entity that is now tasked to perform the step of requesting based on the first request. Absent testing or any determination, it is not understood how this is possible rendering the claim indefinite.
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 methods with the steps of “determining data…” and “requesting” 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 Objections
Claims 1, 11, and 13 are objected to because of the following informalities:
As to claims 1, 11, & 13 each of the steps of “determining” and “sending” end with “and”;
Also to claim 13, on line 6, “further” should be deleted to maintain consistency with the cancelled matter.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 6, 9-11, 13, 15-16, 18, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rao et al. (2019/0289080) hereinafter “Rao”, 3GPP TR 33.827 V14.0.0 (2016-09), hereinafter “3GPP”, and Li et al (2011/0280153), hereinafter “Li”.
As to claims 1, 11, & 13, (Currently Amended) Rao discloses A first network node (claim 13) in a Visited Public Land Mobile Network, VPLMN, the first network node being related to Lawful Intercept, LI, in the VPLMN, the first network node (LMISF, see Fig 4) being [[further]] configured to (perform the method of claim 1 and execute the process stored on a CRM of claim 11, see [0108]-[0111]):
determine data related to a communication between a first User Equipment (UE) and a second UE in a communication network, the first UE associated with a Home Public Land Mobile Network (HPLMN) and located in the VPLMN (see [0056]: “… a solution to provide the lawful interception of inbound roamer’s voice services in the VPLMN for the S8HR case… (LMISF), which in turn examines each SIP message to determine if the related VoIP call needs to be intercepted…”;
receive, responsive to a [[start]] of the communication, a first Session Initiation Protocol, SIP, message from a gateway node in the VPLMN, the gateway node being related to the LI in the VPLMN, (see [0056]: “… S-GW… forwards all the IMS Signalling (sic) packets related to S8HR…”, emphasis on “all”);
send a first request to a second network node (DF3) operating in the VPLMN, which the first request comprisinq the determined first communication data; and
request, based on the first request, a first action to be performed by the second network node, the first action being related to the communication based on the determined first communication data (See [0056]: “…deliver the media packets of the call associated with the IMS session to DF3, which in turn may deliver the CC to the LEMF”,
[0057]: “… the LMISF may inform… or any other network entity, about the IMS session that is being intercepted… may then inform the BBIFF to deliver the media packets of the call… to DF3, which in turn would deliver the CC to the LEMF”.)
Rao is silent to yet refers to 3GPP TR 33.827 which provides for
the first SIP message being configured to include first data related to the start of the communication (see page 15, section 5.9.1, & page 40 section 6.3.1);
determine, based on analysing the first data, first communication data comprising:
identities (page 11 sec 4.2.2) of the first UE and the second UE;
a time (page 15 sec 5.9.1) related to the communication;
type of content in the communication (page 40 section 6.3.1); and
roaming user location information related to the first UE of the communication (page 28, sections 6.1.5.4.1 – 6.1.5.4.2). Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to configure the SIP message to include first data as provided by 3GPP for the purpose of complying with accepted standards.
In an analogous art, Li discloses wherein it was known that mobile networks required services such as Lawful Interception and real time charging services. See [0106]. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao to receive the first SIP message responsive to a start of the communication for the purpose of performing LI and/or enabling real time charging services.
As to claim 3/15, (Currently Amended) the combination of Rao, 3GPP, and Li discloses The method according to claim 1/13, 3GPP further discloses comprising:
during the communication, receiving one or more second SIP messages from the gateway node (see page 34, item 2 ), which one or more second SIP messages comprises second data related to updating the communication;
determining second communication data (see page 34 item 4) based on analyzing any one out of: the second data; and
the first data and the second data; and
sending a second request (see page 34 item 4) to the second network node (DF2), which second request comprises the determined second communication data and requests a second action to be performed by the second network node, which second action (see page 35 item 5) is related to the communication based on the determined second communication data. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao to enable the process flow of the 3GPP standard for the purpose of enabling the targeting of a specific LI service.
As to claim 4/16, (Currently Amended) ) the combination of Rao, 3GPP, and Li discloses The method according to claim 1/13, and 3GPP discloses further comprising:
at the end of the communication (see page 34, item 2 ), receiving one or more third SIP messages from the gateway node, which one or more third SIP messages comprises third data related to ending the communication, and;
determining third communication data (see page 34 item 4) based on analyzing any one out of:
the third data;
the first data and the third data;
the second data and the third data; and
the first data, the second data and the third data; and
sending a third request (see page 34 item 4) to the second network node (DF2), which third request comprises the determined third communication data and requests a third action (see page 35 item 5) to be performed by the second network node, which third action is related to the communication based on the determined third communication data. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao to enable the process flow of the 3GPP standard for the purpose of enabling the targeting of a specific LI service.
As to claim 6/18, (Currently Amended) the combination of Rao, 3GPP, and Li discloses The method according to claim 1/13, 3GPP discloses wherein the requested action is a session related
action, and wherein the time related to the communication comprises any one or more out of:
a start time of the communication;
an end time of the communication;
a time duration of the communication; and
a time of the request. See page 15 section 5.9.1. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao to enable the process flow of the 3GPP standard for the purpose of enabling the targeting of a specific LI service.
As to claim 9/21, (Currently Amended) the combination of Rao, 3GPP, and Li discloses The method according to claim 1/13, Rao discloses wherein the communication is routed via the S8 interface according to the S8 Home Routing, S8HR, architecture. See [0009], Figs 4, 17, etc.
As to claim 10/22, (Currently Amended) the combination of Rao, 3GPP, and Li discloses The method according to claim 1/13, wherein any one or more out of: the first network node is a Lawful intercept Mirror Internet protocol multimedia system State Function, LMISF, node, and the gateway node is a Bearer Binding Intercept and Forwarding Function, BBIFF, node. See [0009], Figs 4, 17, etc.
Claim(s) 2 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Rao, 3GPP, and Li as applied above to claim 1/13 in view of Karlsson et al. (2018/0041350) hereinafter “Karlsson”.
The combination discloses everything according to claim 1/13, is silent to yet in an analogous art Karlsson discloses (Fig. 2) wherein: receiving the first SIP message further comprises triggering the first network node to act as a Charging Trigger Function, CTF (see [0008]); and wherein the request sent the to the second network node is a charging request and the requested action is further related to time based charging, and which second network node is a Charging Data Function, CDF (see [0008]). Also see Fig.4 [0043]. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao wherein: receiving the first SIP message further comprises triggering the first network node to act as a Charging Trigger Function, CTF; and wherein the request sent the to the second network node is a charging request and the requested action is further related to time based charging, and which second network node is a Charging Data Function, CDF, as taught by Karlsson for the purpose of implementing offline billing.
Claim(s) 5, 7, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Rao, 3GPP, and Li as applied above to claim 1/13 in view of Cai et al. (2011/0077058) hereinafter “Cai”.
As to claim 5/17, (Currently Amended) the combination of Rao, 3GPP, and Li discloses everything according to claim 1/13, is silent to yet in an analogous art Cai discloses wherein the requested action is represented by a session related action comprising any one out of:
an Accounting Request, ACR, Start, action;
an ACR Interim action; and
an ACR Stop action. See [0006],[0034]. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Rao wherein the requested action is represented by a session related action comprising any one out of: an Accounting Request, ACR, Start, action; an ACR Interim action; and an ACR Stop action, as taught by Cai for the purpose of tracking / updating the records.
As to claim 7/19, (Currently Amended) the combination of Rao, 3GPP, and Li discloses everything according to claim 1/13, is silent to yet in an analogous art Cai discloses wherein the requested action is represented by a session unrelated action comprising an ACR Event action (see [0034]). Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Rao wherein the requested action is represented by a session unrelated action comprising an ACR Event action for the purpose of offline tracking.
Claim(s) 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Rao, 3GPP, and Li as applied above to claim 1/13 in view of Sharma et al. (2010/0304710) hereinafter “Sharma”.
The combination of Rao, 3GPP, and Li discloses everything according to claim 1/13, is silent yet in an analogous art Sharma discloses wherein the requested action is a session unrelated action, and wherein the time related to the communication comprises a time of the sent request. See [0024] “It uses ACR events for… session unrelated procedures”. Before the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to modify Rao wherein the requested action is a session unrelated action, and wherein the time related to the communication comprises a time of the sent request as taught by Sharma for the purpose of utilizing known / proven tools (ACRs)
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 LESTER KINCAID whose telephone number is (571)272-7922. The examiner can normally be reached M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yuwen Pan can be reached at 571-272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LESTER G. KINCAID
Primary Patent Examiner
Art Unit 2649
/LESTER G KINCAID/Primary Examiner, Art Unit 2649