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 .
Response to Arguments
Applicant's arguments, see section I, have been fully considered but they are not persuasive:
Applicant argues: “Although paragraph [0023] describes private 5G as an example, nothing in paragraph [0023] states that the disclosed signaling sequence is exclusive to 5G or that the sequence is inapplicable to the LTE/4G embodiments expressly disclosed elsewhere in the Specification. Rather, one of ordinary skill in the art would read paragraph [0023] together with the Specification's broader disclosure of cellular protocols and corresponding QoS treatments”.
In response to Applicant arguments above, the Examiner respectfully disagree. Nothing in paragraph [0023] states that the disclosed signaling sequence is applicable to LTE/4G embodiments and clearly states the disclosed signaling sequence being applicable to 5G. One of ordinary skill in the art would read paragraph [0023] as a more specific implementation (a 5G implementation) of the Specification's broader disclosure of cellular protocols and corresponding QoS treatments.
Applicant argues: “The claims are consistent with this disclosure. Claim 1 recites receiving an identifier and an indication that the client device supports translation between QoS treatments in first and second wireless protocols, determining a QoS level in the first wireless protocol, mapping that QoS level to a QoS level in the second wireless protocol, and applying the mapped QoS level to wireless traffic. The Specification expressly describes these operations in its overview. The same operations are further described in connection with method 200 of FIG. 2. The originally filed claims further confirm Applicant's possession of the claimed scope. Original claim 3 recited that the first wireless protocol may comprise a protocol associated with a cellular network, and original claim 4 expressly recited that the first wireless protocol may comprise "one of 4G and 5G." Accordingly, the originally filed disclosure expressly contemplated both 4G and 5G as alternative implementations of the claimed first wireless protocol”.
In response to Applicant’s arguments above, the Examiner respectfully disagree. Originally filed claim 1 with the features listed above, the method 200 shown in figure 2, and the originally filed claims 3 and 4 are described by the specification as being applicable to both 4G and 5G and thus the originally-filed and claimed “first wireless protocol” can be 4G or 5G. However, Applicant’s claim amendments on 10/29/2025 narrows the scope of claim 1 by adding features directed to 5G as discussed by the specification’s paragraph [0023] which causes the claimed “first wireless protocol” to not be/comprise 4G.
Applicant argues: “Accordingly, when the Specification is considered as a whole, one of ordinary skill in the art would reasonably understand that Applicant possessed the claimed subject matter, including embodiments in which the first wireless protocol comprises 4G/LTE. Written description support does not require that each disclosed implementation be repeated verbatim in a single paragraph. Here, the Specification expressly identifies LTE/4G and 5G as cellular-network implementations, expressly identifies QCI and 5QI as corresponding QoS treatments, and describes the signaling and QoS translation framework in which those cellular protocols are used. Thus, the Specification reasonably conveys to one of ordinary skill in the art that Applicant had possession of the claimed invention, including the claimed "first wireless protocol" encompassing LTE/4G and 5G implementations. Applicant therefore respectfully requests withdrawal of the rejection under 35 U.S.C. § 112(a)
In response to Applicant’s arguments above, the Examiner respectfully disagree and maintains the rejection. In view of Examiner’s remarks above and in viewing the Specification as a whole and Applicant’s amendments on 10/29/25 to the independent claims to add features directed to 5G, one of ordinary skill in the art would reasonably understand that Applicant does not possess the claimed first wireless protocol comprising 4G/LTE, but instead the claimed first wireless protocol comprising 5G for claim 1. For example, claim 1 recites “sending, by the computing device to the client device, an indication that the computing device supports the first wireless protocol” which finds support in the specification’s paragraph [0023] which recites in part “first AP 115 may send a special Information Unit (IE) in beacons or probe responses showing that it may support private 5G access” and “If first client device 130 sees the configuration for the matching DNN/APN, it may share the details about the support for the private 5G at the time of association via special IE”.
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.
Claim(s) 1-3, 5-10, 12-16, and 18-20 is/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.
Regarding claim 1, in view of the first wireless protocol being interpreted as being/comprising 4G (the specification support this assertion and originally-filed claim 4 states that the first wireless protocol comprises 4G and there is nothing in the claims to indicate that the first wireless protocol cannot be/cannot comprise 4G), the specification does not support “sending…an indication…”, “sending…associated parameters”, and “receiving, in response…the identifier…”. Applicant state that support is found in at least paragraph [0023] of the specification. However, paragraph [0023] discloses 5G being the first wireless protocol in “sending…an indication…”, “sending…associated parameters”, and “receiving, in response…the identifier…” and not 4G. Claims 9 and 15 recite similar limitations of claim 1 and are thus rejected under similar rationale. Claims 2-3, 5-8, 10, 12-14, 16, and 18-20 fails to resolve the deficiency of their respective independent claim and are thus rejected under similar rationale.
Allowable Subject Matter
Claim(s) 4, 11, and 17 is/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
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 PETER P CHAU whose telephone number is (571)270-7152. The examiner can normally be reached 9:30 A.M - 6 P.M. ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ayaz Sheikh can be reached at 571-272-3795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER P CHAU/Primary Examiner, Art Unit 2476
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