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 .
Election/Restrictions
Applicant's election with traverse of Lack of Unity in the reply filed on October 28, 2025 is acknowledged. The traversal is on the ground(s) that there is a corresponding special technical feature between independent claims 1, 6, and 9, of "wherein the first indication information is configured to determine whether the UE is currently in a multi-subscriber identity module state," as recited in each of the claims. Accordingly, there is a technical relationship between these claims. This is not found persuasive because first the limitation is only information, i.e. data., and not a patentable limitation. Second, since information or data is not a physical thing and cannot do the function as claimed, hence will be rejected under 35 USC §112(a). Third, the prior art, WO 2020/225160, Singh, et al, LG Electronics, et al, or Huawei, et al all disclose a first indication information configures a device to determine whether the UE is currently in a multi-subscriber identity module state, hence not patentable limitation. Since “wherein the first indication information is configured to determine whether the UE is currently in a multi-subscriber identity module state," is not a patentable limitation, it cannot be a corresponding special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-15, 29-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 28, 2025.
Claim Interpretation
It has been held that to be entitled to weight in method claims, the recited structure limitations, like information structure, therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use or not the use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961)
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
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).
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 27 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to sending and receiving information without significantly more. The claim(s) recite(s) sending first indication information and receiving second information. This judicial exception is not integrated into a practical application because this abstract idea can be accomplished by a human with pen and paper or a common computer. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204. Similarly, a claimed process covering embodiments that can be performed on a computer, in this case processor, memory, and transceiver, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer). Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). The recitation of such generic component is insufficient to transform the nature of the claim into a patent-eligible application. These are mental process steps which can be performed in the human mind, or by a human using a pen and paper, or general purpose computer and the recitation of performing by execution of a computer program does not transform the recited abstract idea into a patentable invention. See Alice Corp. Pty, Ltd.v. CLS Bank lnt 'l, 134 S.Ct. 2347, 2355 (2014), Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372(Fed. Cir. 2011), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1304 (2012), Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (2015), As the Court stated in Alice, "if a patent's recitation of a computer amounts to a mere instruction to 'implemen[t]' an abstract idea 'on a computer,' that addition cannot impart patent eligibility." 134 S. Ct. 2358. Also, in Vehicle Intelligence v. Mercedes-Benz (Fed. Cir. 2015), the court also notes that being “tied to particular machines” is not “sufficient to confer eligibility.”
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 1-5 and 27-28 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without access network device or core network device, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The claims state that the information or data all by itself determines the UE is currently in a multi-subscriber identity module state. Software instructions or codes or data or information are not physical things (Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760) and cannot do the claimed functions as stated in the claims. According to the specification the use equipment sends the first indication information to the access network and that first indication information configures the access network device or core network device to determine whether the UE is currently in a multi-subscriber identity module state.
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.
Claim 27 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.
A patent claim that claims both an "apparatus" and a "method" is essentially describing a device or system along with the specific steps or process used to operate it, effectively covering both the physical structure of the invention and the functional steps involved in using it. This is done by including separate claims, one defining the apparatus components and another outlining the method steps for utilizing those components. A patent claim that claims both an apparatus and the method of using that apparatus is considered a "mixed apparatus and method claim," as seen as indefinite, meaning it's unclear exactly what is being claimed and could lead to legal issues regarding infringement. The courts have held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas, Jan. 29, 2019). A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011); IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
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 (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 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.
Claim(s) 1, 2, 4, 27, 28 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by United States Patent Application Publication 2022/0159607 (Singh, et al).
Singh, et al discloses a method for exchanging multi-subscriber identity module feature information (Abstract, figure 5 ), performed by user equipment (UE) (figure 2), and comprising sending first indication information to an access network device (#5), wherein the first indication information is configured a device to determine whether the UE (figure 2) is currently in a multi-subscriber identity module state (¶9, 10, 13-16, 71, etc., #0, 1) and receiving second indication information sent by the access network device (#5), wherein the second indication information is configured to indicate multi-subscriber identity module feature information supported by at least one of a core network device (#10, 11) and/or or the access network device (#5) (¶71, #2a).
Regarding wherein the second indication information is configured to indicate multi-subscriber identity module feature information supported by at least one of a core network device and/or or the access network device, this limitation is in alternative style and is also non-limiting non-functional descriptive material, note paragraphs 6-8 above.
Regarding claim 2, the sending the first indication information to the access network device comprises one of sending the first indication information to the access network device through a service request, note RRC and ¶9. Also note paragraph 7 above.
Regarding claim 4, updating local multi-subscriber identity module feature information according to the second indication information, note figure 5, ¶71, #1,2.
Regarding claims 27 and 28, note processor (#37), transceiver (#31) and memory (#39) in figure 2.
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) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LG Electronics, OPPO, Fraunhofer HHI, Nokia, Nokia Shanghai Bell, “KI #1, New Sol: Network-based paging filtering” (LG Electronics, et al).
LG Electronics, et al discloses a method for exchanging multi-subscriber identity module feature information, performed by user equipment (#UE), and comprising sending first indication information to an access network device (#NG-RAN), wherein the first indication information is configured a device to determine whether the UE is currently in a multi-subscriber identity module state (figure 6.X.3.1-1, #1, page 2 and 3) and receiving second indication information sent by the access network device (#NG-RAN), wherein the second indication information is configured to indicate multi-subscriber identity module feature information supported by at least one of a core network device (#AMF, SMF) and/or or the access network device (figure 6.X.3.1-1, #NG-RAN, page 2 and 3).
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Regarding claim 5, the multi-subscriber identity module feature information comprises at least one of the following a paging cause, a busy indication, multi-subscriber identity module leaving, a filtering rule or paging collision avoidance (page 3, #2). Also note paragraph 7 above).
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 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(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2022/0159607 (Singh, et al) or LG Electronics, OPPO, Fraunhofer HHI, Nokia, Nokia Shanghai Bell, “KI #1, New Sol: Network-based paging filtering” (LG Electronics, et al) in view of CN 109076416.
Singh, et al and LG Electronics, et al disclose all subject matter, note the above paragraphs, except for determining a value of a specified bit in the first indication information according to whether the UE is currently in the multi-subscriber identity module state.
CN 109076416 teaches the use of determining a value of a specified bit in information according to whether the UE is currently in certain state for the purpose of detecting with the first base station connection of the fault and rebuilding radio resource related message. Note, “For example, the terminal of a particular controller (i.e., RRC protocol controller (RRC layer)) can store identification information of terminal whether to request the CSFB. for allowing the terminal can identify whether the terminal requesting the CSFB information method is such a method that allows terminal identifies the bits associated with the information is triggered (toggled), and the bit is triggered under the condition that the state of determining the terminal request CSFB. Alternatively, following a method is also possible, namely, the terminal can be associated with the information bit is set to a specific value, and allows the terminal is specified in the bit determining the terminal request the state of CSFB. Therefore, the terminal can execute the CSFB request during the starting operation or in the request transmission process after the trigger information or the information to manage the information set to a specific value. Alternatively, the terminal can according to the RLF has occurred to identify whether to request the CSFB procedure to control plane protocol controller of the terminal (NAS layer), the terminal also can identify whether the terminal requesting the CSFB. This can be achieved by the following method as follows: it allows another specific controller (i.e., control plane protocol controller, NAS layer) is stored identifying the terminal whether to request the CSFB information and in response to the request from the controller to send the information, and for allowing the other controller identification and recognition of the information.” Hence, it 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 of determining a value of a specified bit , as taught by CN 109076416 in the information according to whether the UE is currently in certain state in determining a value of a specified bit in the first indication information according to whether the UE is currently in the multi-subscriber identity module state of Singh, et al and LG Electronics, et al in order to determine the terminal state.
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).
Conclusion
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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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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645