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 .
This Office Action is responsive to the preliminary amendment field on 04/28/2026. Claims 1, 9, 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 claims 2-8, 10-11, and 14-15 is acknowledged.
Rejection of claims 2-8, 10-11, and 14-15 is rendered moot in view of their cancellation by the applicant’s amendment.
Claim rejections under 35 USC § 112(b).
Claim rejections under 35 USC § 102 are withdrawn in view of the amendment.
Claim rejections under 35 USC § 103 are withdrawn in view of the amendment.
Response to Arguments---
Applicant’s arguments regarding the rejection of claims filed on 04/28/2026 have been fully considered. The Examiner thoroughly reviewed Applicant’s arguments and noted that the Applicant’s argument is based on the newly amended limitations, which are addressed in a new ground(s) of rejection presented in this Office action below.
A new ground(s) of rejection presented in this Office action, which is necessitated by Applicant’s amendment. See MPEP § 706.07(a).
Claim Rejections - 35 U.S.C. 112(d) and 35 U.S.C. 112 (pre-AIA ), Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends, because the claim 1, which claim 9 dependent upon it, already recites "wherein the UE is in an inactive sate" (line 5 of claim 1). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 9, 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 protocol” and “wherein the core network device or the access network device is able to simultaneously page UEs belonging to the paging group” 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, 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 9, fail to recite additional elements that could integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Regarding claims 12, fail 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
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).
Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 mailing date of this final action.
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.
Interviews are available via telephone and video conferencing using a USPTO web-based Video Conferencing and Collaboration Tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Communications via Internet e-mail are at the discretion of the applicant. See MPEP § 502.03. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122 and will not initiate communications with applicants via Internet e-mail. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.
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.”
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
“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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (in USA, or CANADA) or 571-272-1000.
/Nader Bolourchi/
Primary Examiner, Art Unit 2631
Prosecution Insights