DETAILED ACTION
Response to Amendment
This Action is in response to the amendment dated 11/28/2025, for which the amendment and corresponding arguments filed on the same date have been entered. Claims 16, 18, 20, 21, 23, 24, 26-28 and 30 are currently pending in this application, with claims 16, 21, 24 and 28 being independent. Claims 16, 18, 21, 23, 24, 26-28 and 30 have been amended. Claims 17, 19, 22, 25 and 29 have been cancelled. No claims have been added. This Action is made FINAL.
Response to Arguments
Applicant’s arguments have been considered, but are moot, because the new ground of rejection was caused by the amendment and does not rely on any reference applied in the aforementioned rejection for any teaching or matter specifically challenged in the argument.
Information Disclosure Statement
The information disclosure statements submitted on 11/12/2025 has been considered by the Examiner and made of record in the application file.
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.
Claims 16, 18, 20, 21, 23, 24, 26-28 and 30 are rejected under 35 U.S.C. 112(a), 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, because it does not include any support for the claimed “in case that the network capability information changes from indicating that the second network is not supported to indicating that the second network is supported, receiving, from the mobility management entity, a second message including connection reactivation request information” from claim 16 and the similar limitation found in the other independent claims 21, 24 and 28, and thus, these limitations constitute New Matter. The reasons for this are explained below.
Explanation of New Matter
In the specification, on pg. 9, lines 12-24, although the specification describes network interruption due to capability change, the interruption is with the first and not the second network. In the specification, on pg. 14, lines 32 and 33, although the specification describes a re-enabling of UE capability, there is no clear indication that, in the case of that re-enabling, there is a receiving of a message that includes reactivation request information, as required by the claim. In addition, although pg. 3, lines 13-17, which describes “transmitting a first message, comprising network capability information of the terminal, to a mobility management entity associated with a first network; receiving a second message comprising connection reactivation request information from the mobility management entity in case that the network capability information indicates support for a second network”, includes receiving a reactivation request, this does not state that the receiving is done, based on the network capability information indicating support for a second network changes from indicating that the second network is not supported to indicating that the second network is supported.
Thus, the specification does not include any support for the claimed “in case that the network capability information indicates support for a second network changes from indicating that the second network is not supported to indicating that the second network is supported, receiving, from the mobility management entity, a second message including connection reactivation request information” from claim 16 and the similar limitation found in the other independent claims, and thus, this limitation constitutes New Matter.
Furthermore, regarding the limitation “indicating that the second network is not supported”, although this is a negative limitation, the limitation must still be supported in the specification.
Specifically, according to MPEP:
2173.05(i) Negative Limitations [R-07.2022]
The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Some older cases were critical of negative limitations because they tended to define the invention in terms of what it was not, rather than pointing out the invention. Thus, the court observed that the limitation "R is an alkenyl radical other than 2-butenyl and 2,4-pentadienyl" was a negative limitation that rendered the claim indefinite because it was an attempt to claim the invention by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent. In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).
A claim which recited the limitation "said homopolymer being free from the proteins, soaps, resins, and sugars present in natural Hevea rubber" in order to exclude the characteristics of the prior art product, was considered definite because each recited limitation was definite. In re Wakefield, 422 F.2d 897, 899, 904, 164 USPQ 636, 638, 641 (CCPA 1970). In addition, the court found that the negative limitation "incapable of forming a dye with said oxidized developing agent" was definite because the boundaries of the patent protection sought were clear. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971).
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172). Any claim containing a negative limitation which does not have basis in the original disclosure should be 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. See MPEP § 2163 - § 2163.07(b) for a discussion of the written description requirement of 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.
Claims 18 and 20 are also rejected under 112(a) by virtue of their dependency on Claim 16.
Claim 23 is also rejected under 112(a) by virtue of its dependency on Claim 21.
Claims 26 and 27 are also rejected under 112(a) by virtue of their dependency on
Claim 24.
Claim 30 is also rejected under 112(a) by virtue of its dependency on Claim 28.
Conclusion
Citation of Pertinent Prior Art not Applied
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gupta (US PG Publication 2019/0159157) teaches enabling intersystem changes between 4G and 5G.
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 extension fee 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 date of this final action.
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/FRANK E DONADO/Examiner, Art Unit 2641
/Rafael Pérez-Gutiérrez/Supervisory Patent Examiner, Art Unit 2642