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 .
Applicant amended claims 1, 2, 4-6, 8, 11, 23, and 24, cancelled claims 3, 7, and 12-22, and added claims 25-33 in the preliminary amendment filed on 01/29/2024.
The claims 1, 2, 4-6, 8-11, and 23-33 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4-6, and 23-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,438,926 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 12,438,926 B2 contain(s) every element of claims 1, 2, 4-6, and 23-28 of the instant application and thus anticipate the claim(s) of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001). “Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is "anticipated" by the species of the patented invention. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
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)(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.
Claims 1, 2, 23-25, and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by “3rd Generation Partnership Project (3GPP); TSGSSA; System architecture for the 5G System; Stage 2 (Release 17), 3GPP STANDARD; 3GPP TS 23.502 (hereinafter 3GPP).
With respect to claim 1, 3GPP teaches a method for selecting a network slice admission control function (NSACF), performed by an access and mobility management function (AMF) (section 6.3.22 disclose NSACF selection function in the AMF), comprising: selecting the NSACF based on service capabilities of the NSACF (section 6.3.22 disclose NSACF selection function in the AMF selecting an NSACF instance; the NSACF selection is based on the following factors: NSACF service capabilities including support monitoring and controlling the number of registered UEs per network slice for the network slice that is subject to NSAC and support monitoring and controlling the number of established PDU sessions per network slice for the network slice that is subject to NSAC), wherein the service capabilities comprise at least one of: a first service capability that supports monitoring a number of registered user equipments (UEs) of a network slice, or a second service capability that supports monitoring a number of established protocol data unit (PDU) sessions of the network slice (section 6.3.22 disclose the NSACF selection is based on the following factors: NSACF service capabilities including support monitoring and controlling the number of registered UEs per network slice for the network slice that is subject to NSAC and support monitoring and controlling the number of established PDU sessions per network slice for the network slice that is subject to NSAC).
With respect to claim 2, 3GPP teaches wherein selecting the NSACF comprises one of: selecting an NSACF having the first service capability and the second service capability;
or selecting a high-priority NSACF from a plurality of NSACFs when the plurality of NSACFs have the first service capability and the second service capability (section 6.3.22 disclose selection NSACF service capabilities which implies that a NSACF having both capabilities may be selected, as well as selects an NSACF instance based on the available NSACF instances in paragraph 6.3.22, noting that basing the selection on priority is a well-known and commonly implemented criterion for selection).
The limitations of claim 23 are rejected in the analysis of claim 1 above, and the claim
is rejected on that basis.
The limitations of claim 24 are rejected in the analysis of claim 1 above, and the claim is
rejected on that basis.
The limitations of claim 25 are rejected in the analysis of claim 2 above, and the claim is
rejected on that basis.
The limitations of claim 33 are rejected in the analysis of claim 2 above, and the claim is
rejected on that basis.
Allowable Subject Matter
Claims 4-6, 8-11, and 26-32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEIKH T NDIAYE whose telephone number is (571)270-3914. The examiner can normally be reached Monday-Friday 8:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOON H HWANG can be reached at 571-272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHEIKH T NDIAYE/Primary Examiner, Art Unit 2447
3/7/2026