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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 X has been entered.
This Office Action is responsive to the amendment field on 08/27/2026. Claims 1, 12-13, 16, 19, 31, and 35-36, of which claims 1, 13 and 19 are independent, were pending in this application and have been considered below.
Applicant canceling claim 9 is acknowledged.
Rejection of claim 9 under 35 USC §112(d) is rendered moot in view of its cancellation by the applicant’s amendment.
Response to Arguments---
Applicant’s arguments filed 08/27/2026 (see Remarks, pages 6-15), regarding the rejection of claims under 35 USC 101, have been fully considered but they are not persuasive.
Applicant’s Argument: "M.P.E.P. § 2106.04(a)(2)(111) specifies that: "the 'mental processes' abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." (Emphasis added)" (Remarks, lines 1-4 of page 8)
Examiner Response: Examiner concurs, as stated in the final office action mailed on 06/25/2026. For instance, “Step 2A, Prong 1: the limitations, “A method for determining a paging group … determining the paging group of the UE based on the target paging group parameter” are Mental Processes (observation, evaluation, judgment, and/or opinion)” (lines 3-5 of page 6), i.e., the limitation or step of “determining” is considered a mental process.
Applicant’s Argument: “Here, amended independent claim 1 recites "receiving a paging group parameter ..." followed by "determining the paging group of the UE ...". These operations require ... Such operations are performed by dedicated telecommunications network components and UE hardware, and cannot be practically performed mentally or with pen and paper." (Remarks, lines 5-18 of page 8 - truncated)
Examiner Response: Examiner respectfully disagrees. The additional element “receiving …” is discussed in Step 2A, Prong 2 of above mentioned office action, as follows: “The additional element, “receiving a paging group parameter sent by an access network device” is merely data gathering and insignificant extra-solution activity (pre-solution activity) (MPEP 2106.05 (g)).” (see lines 15-17 of page 6)
Applicant’s Argument: “Accordingly, amended claim 1 applies any alleged mental processes in a specific wireless-network paging-group determination framework involving dedicated RRC signaling, UE-context-based coordination between a core network device and an access network device, protocol-based paging-type determination, and UE-side paging group determination. Such framework improves the operation of wireless paging-group determination by enabling effective determination of a UE paging group and consistent understanding of the paging group between the UE and network entities. When considered as a whole, claim 1 therefore integrates any alleged abstract into a practical application and satisfies Step 2A, Prong 2." (Remarks, lines 3-11 of page 12)
Examiner Response: Examiner respectfully disagrees. Under Step 2B, of the above mentioned office action, limitation(s) that are insignificant extra-solution activity under step 2A, Prong 2, have been evaluated, as follows: “the limitation, “receiving a paging group parameter sent by an access network device, wherein UE is in an inactive state” is just receiving/transmitting data over a network, which is mere judicial-recognized well-understood, routine, conventional activity (MPEP 2106.05(d)(II).” (see lines 1-4 of page 8)
Claims 1 and 19 merely recite the limitations and steps of “determining” and “receiving” without providing any limitation and step, as the outcome of the “determining” and “receiving”, which results in a specific, unconventional technological solution.
Claim Objections
The claims 1, 12-13, 16, 19, 31, and 35-36 of the disclosure is objected to because of the following informalities:
The recitation "RAN paging" (line 9 of claim 1; line 8 of claim 13; line 12 of claim 19) seems to be improper, the acronym “RAN” has not been introduced previously. It is suggested the first instance of any abbreviation in claims appear in the parenthesis preceded by its definition, e.g., “radio access network (RAN)”. Appropriate correction is required.
Claims 12, 16, 31, 35, and 36 are objected to due to their dependency to the objected claims 1 and 13, correspondingly.
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.
There are four statutory classes of invention defined in 35 USC § 101: machine, process, article of manufacture and composition of matter. 35 USC § 101. The Supreme Court of the United States has further delineated several subject matter exceptions that are ineligible for patenting. Bilski v. Kappos, 95 USPQ2d 1001, 1005-06 (2010); MPEP § 2106. In particular, claims embracing abstract ideas, physical phenomena and laws of nature are patent ineligible. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, 134 S. Ct. 2347 (2014), slip op., at 5 (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S 576 (2013), slip op., at 11)); Bilski at 1005-06; MPEP § 2106. According to Alice, the two part analysis of Mayo Collaborative Services v. Prometheus Laboratories Inc., 566 U.S. 66 (2012) should be used for all types of judicial exceptions and all categories of claims. Alice Corp., slip op., at 7, 16, 17. The first part of the analysis is to "determine whether the claims at issue are directed to a patent- ineligible concept." Alice Corp., slip op., at 7. Upon determining that an abstract idea is present in the claim, the second part of the analysis is to determine whether the claim "contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice Corp., slip op., at 11 (citing Mayo, slip op., at 3, 11). Claims, therefore, must do more than merely add insignificant limitations, such as limiting the field of use, adding token extra solution activity that lacks a particular machine or transform and adding wholly conventional machines and acts. See Alice Corp., slip op., at 12-13 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention . “Stating an abstract idea while adding the words 'apply it with a computer' simply combines those two steps, with the same deficient result."); Bilski at 1009-10; MPEP § 2106.
Claims 1, 12, 19, and 35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, Step 1: a process/method claim.
Step 2A, Prong 1: the limitations, “A method for determining a paging group … determining the paging group of the UE based on the target paging group parameter” are Mental Processes (observation, evaluation, judgment, and/or opinion).
Step 2A, Prong 2: the additional elements individually or as a whole do not integrate the judicial exception into a practical application.
The additional element, “a user equipment (UE),” is applying abstract idea using a general-purpose computer (i.e., “apply it”, MPEP 2106.05(f)). It invokes a generic computer (UE) merely as a tool to perform the judicial exception or an existing process by using of a computer or other machinery in its ordinary capacity.
The additional element, “receiving a paging group parameter sent by an access network device” is merely data gathering and insignificant extra-solution activity (pre-solution activity) (MPEP 2106.05 (g)).
The additional elements, “wherein … the paging group parameter is determined by the access network device based on auxiliary information provided by a core network device through a UE context request, and the paging group parameter is determined as a target paging group parameter based on determining that a paging type monitored by the UE is a core network paging or a RAN paging according to a communication protocol” and “wherein the core network device or the access network device is able to simultaneously page UEs belonging to the paging group using the target paging group parameter” describes the details of parameters, functionality of other devices, and are generally linking the use of the judicial exception to a particular technological environment or field of use (user equipment) (MPEP 2106.05(h)).
When considered a whole, the claimed invention fails to recite any improvement in any technology or technical field (MPEP 2106.05(a)) or recite any meaningful limitations (MPEP 2106.05(e)). The limitations are no more than mere automation of a mental process to determine a paging based on paging group parameter(s).
Step 2B: the claim does not recite additional elements that are sufficient to amount to significantly more than the abstract idea when considered both individually and as a whole.
under Step 2B, limitation(s) that are insignificant extra-solution activity under step 2A, Prong 2, need to be re-evaluated to determine whether they are well-understood, routine, conventional activities.
Specifically, the limitation, “receiving a paging group parameter sent by an access network device via a dedicated radio resource control (RRC) signaling, wherein UE is in an inactive state” is just receiving/transmitting data over a network, which is mere judicial-recognized well-understood, routine, conventional activity (MPEP 2106.05(d)(II).
When considered as a whole, the claimed invention still fails amount to significantly more than applying a judicial exception in a particular technological environment (network paging) using a generic computer.
Regarding claims 19 and 35, claims recite similar limitations as those of claim 1 and additional elements: “a transceiver, a memory, and a processor connected to the transceiver and the memory respectively” and “a non-transitory computer storage medium having stored thereon instructions”. The additional elements are applying abstract idea using a general-purpose computer (i.e., “apply it”, MPEP 2106.05(f)).
Regarding claims 12, the limitations, “determining the paging group of the UE based on the target paging group parameter” and “determining the paging group of the UE based on a default paging group parameter” are Mental Processes (observation, evaluation, judgment, and/or opinion).
The additional elements, “wherein the target paging group parameter is consistent with a paging group parameter specified in a protocol or indicated by the access network device” and “wherein the target paging group parameter is inconsistent with a paging group parameter specified in a protocol or indicated by the access network device” describes the details of parameters, functionality of other devices, and are generally linking the use of the judicial exception to a particular technological environment or field of use (user equipment) (MPEP 2106.05(h)).
Claim fails to recite additional elements that could integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Allowable Subject Matter
Claims 13, 16, 31, and 36 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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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The following is a sample authorization form, which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
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“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.”
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
