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 .
Terminal Disclaimer
The terminal disclaimer has overcome the double patenting rejection presented in the last office action.
Response to Amendment
The applicant’s amendments have overcome the rejections based on 35 USC section 101 and section 112(b) presented in the last office action. However, the amendment has introduced new rejections of claims 59-68 based on 35 USC section 112(b).
Response to Arguments
Applicant's arguments filed 1/8/2025 have been fully considered but they are not persuasive. The applicant’s explanation of “processing circuitry” implies that ASICs, FPGAs, dedicated logic gates, and “other hardware” are state machines, that must be “hard coded”. The applicant’s assessment of ASICs, FPGAs, dedicated logic gates, and “other hardware” is not factually correct since these elements are not “state machines” as alleged. State machines can be implemented by specifically designed ASICs, FPGAs, dedicated logic gates, and “other hardware” but each specific implementation would need to be described in order to cover novel hardware for performing such functions. The applicant appears to be trivializing these differing circuit technologies by stating that they can be “hard coded” as if this were some trivial task that would be the same for each type of implementation covered by the claims. The applicant is claiming they invented hardware but also arguing those skilled in the art would have to actually come up with a “hard code” solutions for implementing such state machines in various different types of hardware. This implies the applicant did not actually describe any hardware in a manner that satisfies the guidance given in sections 2161.01(I) and 2162 of the MPEP.
Regarding the 102 rejection, the applicant’s arguments are not persuasive. First the applicant discusses the “The Claimed Invention” by describing ideas which are not actually covered by the actual claimed invention. If the wants to cover SNPNs and other Onboarding services then they should explicitly claim such concepts. Next the applicant argues that Wang is unrelated to network selection but ignores the breadth of the claims. By implementing steps 630 and steps 640 Wang is selecting a single network to connect to; the claims say nothing about selecting from a variety of networks. The Examiner has mapped the claims to address the amended language. The Examiner notes that the invention appears to be implemented by the UE so claiming the invention from the perspective of the network, as inclaims 49-53 and 59-63, does not even cover a network selection (see section 2111.02(II) of the MPEP). The applicant should consider cancelling the network claims or claim them as a system with the UE in order to cover the subject matter the applicant is arguing as patentable.
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 59-68 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.
Claims 59-63 covers a radio node comprising processing circuitry configured to perform the invention. The processing circuitry is described in the specification as circuitry 601. The applicant provides no description of such circuitry or how it is configured. Claims 64-68 covers a UE comprising processing circuitry configured to perform the invention. The processing circuitry is described in the specification as circuitry 701. The applicant provides no description of such circuitry or how it is configured. The applicant uses the term “circuitry” frequently from pages 28-33 of their disclosure but does not provide any description other than describing generic computing circuitry that is not specific to the applicant’s invention. Page 33 states that the invention can be implemented solely as hardware but the applicant has not disclosed any novel hardware. The applicant has not described any circuitry or configuration of circuitry specifically for performing the functions claimed and therefore has not complied with the written description requirement as described in section 2161.01(I) of the MPEP.
Claim Rejections - 35 USC § 102
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.
Claim(s) 49-68 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication Number 2019/0182633 by Wang et al.
The Examiner notes that the phrases “of supporting selection by User Equipment (UE) of a wireless communications network” and “for supporting selection by User Equipment (UE) of a wireless communications network” in claims 49 and 59, respectively, are mapped but they are not given patentable weight based on the guidance provided in section 2111.02(II) of the MPEP.
As to claim 49, Wang teaches a method, performed by a radio network node, of supporting selection by User Equipment (UE) of a wireless communications network (steps 630 and 640 and paragraph 66 show selecting a network to connect to in response to the service indicated by the TMGI parameter)., wherein the radio network node is preconfigured with group identities (GIDs) identifying a plurality of networks and/or type parameters (paragraph 59), the method comprising: transmitting (step 610 and paragraph 61) system information (service indication information) with a type parameter (TMGI) associated with a group identity (GID) (paragraph 8, each TMGI is associated with temporary mobile group identify of a service) wherein the type parameter indicates a type of service (paragraph 59, TMGI indicates a type of service) offered by one or more networks (Figure 3 shows one network offering the services) identified by the GID (paragraph 8 and Figure 3).
As to claim 59, it is rejected for the same reasoning as claim 49.
As to claim 54, Wang teaches a method, performed by a user equipment (UE), of handling communication in selecting a wireless communications network, the method comprising: receiving system information (service indication information) with a type parameter (TMGI) associated with a group identity (GID) (paragraph 8, each TMGI is associated with temporary mobile group identify of a service) wherein the type parameter indicates a type of service (paragraph 59, TMGI indicates a type of service) offered by one or more networks (Figure 3 shows one network offering the services) identified by the GID (paragraph 8 and Figure 3); and selecting a network to which to connect, in response to the service indicated by the type parameter (steps 630 and 640 and paragraph 66 show selecting a network to connect to in response to the service indicated by the TMGI parameter).
As to claim 64, it is rejected for the same reasoning as claim 54.
As to claims 50, 55, 60, and 65, see paragraphs 48-50.
As to claims 51, 56, 61, and 66, see paragraphs 48-50.
As to claims 52, 57, 62, and 67, see paragraphs 48-50.
As to claims 53, 58, 63, and 68, see paragraphs 48-50.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454