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 .
This Office Action is in response to communications filed 05/25/2026.
Claims 1, 2 and 4 are rejected and pending. Claim 3 is canceled.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4 are rejected under 35 U.S.C. 103 as being unpatentable over Prabhakar et al (US 20210211975 A1) (hereinafter “Prabhakar”) in view of Tamura et al (US 20230337122 A1) (hereinafter “Tamura”).
Regarding claim 1, Prabhakar discloses a User Equipment (UE) comprising:
transmission and reception circuitry (see para. [0148] discloses UE includes one or more antennas for communication using one or more RAT standards, share one or more parts of a receive chain and transmit chain between standards, or may include separate transmit and receive chain for each wireless communication protocol);
storage circuitry (see Fig. 3 (306-Memory), para. [0150] UE may include memory 306, read only memory 350, flash memory 310; UE may include various types of memory); and
control circuitry (see Fig. 3 (330), para. [0152] discloses radio circuitry may include controllers dedicated to controlling communications from various RATs):
wherein the transmission and reception circuitry is configured to transmit a registration request message including information indicating that the UE supports an equivalent Stand-alone Non-Public Network (SNPN) in a registration procedure (see Fig. 10 (1006), para. [0188]; [0203] discloses in response to NAS registration request (from UE) the list of eSNPN (equivalent SNPN) may be transmitted to the UE; flow diagram procedure for updating a UE with eSNPN as part of the registration process, UE may send registration request), and
Prabhakar does not clearly disclose but Tamura teaches the control circuitry is configured to delete an equivalent SNPN list stored in the storage circuitry, in a case that a registration accept message that does not contain an equivalent SNPN list has been received during the registration procedure (see Fig. 8 (UE modules, processor), para. [0057] discloses AMF may send the configured NSSAI IE to the UE to configure or update NSSAI storage or other configuration, this message may be a Registration Accept message; in response the UE updates the NSSAI Storage stored in a memory of the UE, specifically, the UE deletes or removes the S-NSSAIs stored in the configured NSSAI IE).
Prabhakar and Tamura are considered analogous to the claimed invention because both are in the field of wireless communication methods, apparatus and network slice management.
Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify Prabhakar to include the deletion of SNPN list as described by Tamura.
The motivation to combine both references would come from improving access to NPN.
Regarding claim 4, Prabhakar discloses a communication control method performed by a User Equipment (UE), the communication control method comprising:
transmitting a registration request message including information indicating that the UE supports an equivalent Stand-alone Non-Public Network (SNPN) in a registration procedure (see Fig. 10 (1006), para. [0188]; [0203] discloses in response to NAS registration request (from UE) the list of eSNPN (equivalent SNPN) may be transmitted to the UE; flow diagram procedure for updating a UE with eSNPN as part of the registration process, UE may send registration request).
Prabhakar does not clearly disclose but Tamura teaches deleting an equivalent SNPN list stored in the UE, in a case that a registration accept message that does not contain an equivalent SNPN list has been received in the registration procedure (see Fig. 8 (UE modules, processor), para. [0057] discloses AMF may send the configured NSSAI IE to the UE to configure or update NSSAI storage or other configuration, this message may be a Registration Accept message; in response the UE updates the NSSAI Storage stored in a memory of the UE, specifically, the UE deletes or removes the S-NSSAIs stored in the configured NSSAI IE).
Prabhakar and Tamura are considered analogous to the claimed invention because both are in the field of wireless communication methods, apparatus and network slice management.
Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify Prabhakar to include the deletion of SNPN list as described by Tamura.
The motivation to combine both references would come from improving access to NPN.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Prabhakar et al (US 20210211975 A100 (hereinafter “Prabhakar”) in view of Tamura et al (US 20230337122 A1) (hereinafter “Tamura”) as applied to claim 1 above, and further in view of Chun et al (US 20200245235 A1) (hereinafter “Chun”).
Regarding claim 2, Prabhakar discloses a UE (see para. [0148] discloses UE includes one or more antennas for communication using one or more RAT standards, share one or more parts of a receive chain and transmit chain between standards, or may include separate transmit and receive chain for each wireless communication protocol).
Prabhakar fails to but Chun teaches wherein, in a case that the UE is switched off, the control circuitry is further configured to maintain the equivalent SNPN list stored in the storage circuitry (see Fig. 12 (S1200), para. [0570]- [0572]; [0014] discloses the UE powered on starts the NPN selection process checking NPN related list and selecting item for registration; UE method selecting NPN, processor selecting list stored in memory or USIM, the list including NPN identifier).
Prabhakar and Chun are considered analogous to the claimed invention because both are in the field of wireless communication methods, apparatus and NPN.
Therefore, it would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to modify Prabhakar to include the storage of SNPN list as described by Chen.
The motivation to combine both references would come from improving access to NPN.
Response to Arguments
Applicant's arguments filed 05/25/2026 have been fully considered but they are not persuasive.
The examiner interprets the claim in light of the specification and during examination the claims are given the broadest reasonable interpretation (BRI).
In pages 1-3 of the remarks, regarding the rejection of claim 1 and 4, under 35 U.S.C. §103, applicant argues that the combination Prabhakar and Tamura fails to teach or disclose limitation “the controlling circuitry is configured to delete an equivalent SNPN list stored in the storage circuitry, in a case that a registration accept message that does not contain an equivalent SNPN list has been received in the registration procedure”, that the S-NSSAI entails information, whereas SNPN entails a network, and that the deleting of S-NSSAI as described by Tamura could not be equated with deleting of the SNPN. However, Examiner respectfully disagrees.
The claim does not provide clarification of what SNPN is, and therefore according with BRI, Examiner correctly interprets NSSAI as SNPN. Although SNPN and NSSAI are different. If applicant desires to distinguish SNPN from NSSAI, then clarifying amendments should be made.
“During examination, the claims must be interpreted as broadly as their terms reasonably allow.” MPEP § 2111.01(1) (citing to In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004)). “This means that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification.” MPEP § 2111.01(1) (citing to In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004)). Here, examiner notes that Applicant has not set forth a definition of “SNPN” to exclude the NSSAI of Tamura. Since Applicant failed to disclose a definition for the term “SNPN”, plain meaning is to be applied. As such, “NSSAI” as described by Tamura, interprets as “SNPN”.
“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” MPEP 2111.01 (ID) citing to Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
Also, in page 3, Applicant argues that Tamura describes the case where a Registration Accept message contains the configured NSSA IE, the UE deletes the S-NSSAIs stored in the configured NSSAI, in contrast with the limitation reading “the controlling circuit is configured to delete an equivalent SNPN list stored in the storage circuitry, in a case that a registration accept message that does not contain an equivalent SNPN list has been received in the registration procedure”. However, Examiner respectfully disagrees.
Tamura (para. [0058]-[0059]) discloses a procedure for updating the NSSAI storage. Tamura teaches or suggests (Fig. 3) a UE with NSSAI storage in the UE, sending a request message 302 (S-NSSAI#1, S-NSSAI#2) and receiving accept message 306 with (S-NSSAI#3 and S-NSSAI#1). This accept message does not contain S-NSSAI#2 and the NSSAI storage on 307 does not contain S-NSSAI#2 (deleted).
Therefore, under BRI the combination reads on the claim.
In pages 3-4 of the remarks, regarding the rejection of claim 2, under 35 U.S.C. §103, applicant argues that the combination Prabhakar, Tamura, Chun, and Kim fails to disclose “in a case that the UE is switched off, the controlling circuitry is configured to maintain the equivalent SNPN list stored in the storage circuitry.” Chun provides a processor that may select a network based on the network selection list stored in the memory or an USIM, that includes NPN identifier. Chun also discloses the UE checking the PLMN/NPN list after turning on, implicitly indicating that the information of the list remains after the UE is turned off.
Therefore, the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 LUIS GUILLERMO LEMA LEMOS whose telephone number is (571)-272-5710. The examiner can normally be reached M-F 8-5 EST.
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/LUIS GUILLERMO LEMA LEMOS/Examiner, Art Unit 2419
/Nishant Divecha/Supervisory Patent Examiner, Art Unit 2419
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