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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), filed on 12/17/2025 in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/17/2025 has been entered. Claims 1-3, 5-9, 11-15 and 17-23 are pending.
Response to Arguments
2. Applicant's arguments are moot in light of the new ground of rejection below.
Regarding the Applicant’s argument that the amended claims are “capable of dynamic diagnosis and targeted resolution between two private networks”, first of all, this argued limitation is of a different scope than the claimed limitations therefore the argument can be considered moot. Secondly, the amended limitations are taught by the prior reference as cited and explained in the rejection section below. For example, as disclosed by SEMARA in Figure 8, “Phone arrives at visited network” then “Register in 4G”, and subsequently “SGSN phatom registration to get 3G profile”, “Store 3G SGSN profile, MME profile” and then “Voice call request”, therefore the receiving steps are dynamically performed in response to the phone arriving at the visited network.
Double Patenting
3. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claims 1-2, 4-8, 10-14, 16-19 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of copending Application No. 18378961 in view of SEMAMA et al (US 2017/0134929).
As to claim 1, claim 1 of the patent application discloses the claimed invention substantially, except for wherein the first private network and the second private network use different protocols for encoding and decoding information packets or encoding data from the first information packet into a form decodable using a second protocol different than the first protocol, and wherein the received second set of connection parameters are from the second private network. SEMAMA discloses wherein the first private network and the second private network use different protocols for encoding and decoding information packets or encoding data from the first information packet into a form decodable using a second protocol different than the first protocol and receiving a set of connection parameters from a destination private network (see citation in art rejection to claim 1 below). Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine the co-pending application with SEMAMA. The suggestion/motivation of the combination would have been to enable communication between the home network and visited network using different protocols (SEMAMA, [0086]). Claims 7 and 13 are similarly rejected. Claims 2, 8, 14, and 19 are similarly rejected.
As to claims 4, 10, and 16, see the co-pending application, claim 4.
As to claims 5, 11, and 17, see the co-pending application, claim 5.
As to claims 6, 12, and 18, see the co-pending application, claim 6.
This is a provisional obviousness-type double patenting rejection.
Claim Rejections - 35 USC § 102
5. 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 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.
6. 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.
(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.
7. Claims 1-2, 5, 7-8, 11, 13-14, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by SEMAMA et al (US 2017/0134929)
As to claim 1, SEMAMA discloses a computer-implemented method comprising:
receiving, from a first private network, a first set of connection parameters; receiving, a second set of connection parameters that are different than the first set of connection parameters ([0086], “The GLR 110 may further include a Diameter—MAP translation unit 124 that translates signals between the two protocols. The translation unit may be particularly useful when the mobile handset is registered in 3G for a voice call at the visited network but the home network believes that the mobile handset is registered in 4G as the GLR has not informed the home network of the reregistration. Thus the home network sends and expects to receive messages in 4G, and the mobile handset and visited network send and expect to receive messages in 3G. The matching unit ensures that both the home and visited infrastructure receive messages in the protocol that is expected even though the messages were sent in the other protocol.” Here, the messages that the home network sends in 4G indicate connection parameters one of which is the “4G” protocol, while the message that the visited network sends in 3G indicate connection parameters one of which is the “3G” protocol, wherein the visited network is a first private network and the home network is a second private network. See also abstract and [0021]-[0022].
The connection parameters such as the protocols are received from the respective private networks, e.g., see Figure 8, “Phone arrives at visited network” then “Register in 4G”. It is to be noted that the GLR handling such registration is also in the visited/first private network (see [0023], “a global location register at the visited network”; [0025], “a global location register for use in a first LTE/4G cellular telephony network to support roaming by 4G mobile phones, the LTE/4G networks managing voice calls using 3G technology”, which receives the 4G protocol information from the visited/first network, see also Figure 3, step 58 and [0070], “In signal exchange 58, the GLR completes the relay of the ULR message, the 4G MME profile is made available and is also stored in the GLR, so as to be available after calls are completed to re-register the device with the 4G infrastructure.” The 3G profile is obtained from the home/second network, see [0068]-[0069], “At this point the MME provides an update location signal ULR 54, which is intercepted by the GLR as well…. GLR issues a GPRS Update Location, requesting 3G data registration for the mobile handset. The home network responds by providing an SGSN profile for the particular user. The profile may contain permissions for particular types of data use and the like, without which 3G data communication could not be allowed, and other relevant information such as destinations for particular data and personal preferences if any.”
See also Figure 8, “Phone arrives at visited network” then “Register in 4G”, and subsequently “SGSN phatom registration to get 3G profile”, “Store 3G SGSN profile, MME profile” and then “Voice call request”) and [0010]);
determining, based on the first set of connection parameters and the second set of connection parameters, that the first private network and the second private network are incompatible with respect to at least one network parameter (see citation and explanation above, wherein the connection parameters differ at least in the protocol, i.e., “4G” vs “3G”);
generating, (i) from a received first information packet and (ii) based on the determined incompatibility with respect to the at least one network parameter, a second information packet, wherein generating the second information packet comprises converting the first information packet to account for the incompatibility such that the second information packet is decodable by the second network (see citation and explanation in rejection to limitation 1, wherein the original message sent by the visited network in 3G is a first information packet, and the translated message going to the home network in 4G is a second information packet); and
routing the second information packet to the second private network (see citation and explanation in rejection to preceding limitations).
As to claim 7, see similar rejection to claim 1.
As to claim 13, see similar rejection to claim 1.
As to claim 2, SEMAMA discloses the method of claim 1, wherein each of the first and second information packets is one of a data packet or a voice packet (see citation in rejection to claim 1, “voice call”).
As to claim 8, see similar rejection to claim 2.
As to claim 14, see similar rejection to claim 2.
As to claim 5, SEMAMA discloses the method of claim 1, wherein the first information packet is in a first format that is consistent with the first set of connection parameters, the second information packet is in a second format that is consistent with the second set of connection parameters (see citation in rejection to claim 1).
As to claim 11, see similar rejection to claim 5.
As to claim 17, see similar rejection to claim 5.
As to claim 19, SEMAMA discloses the method of claim 1, wherein generating the second information packet comprises converting a data packet from a form compatible with a cellular network of a first generation to a form compatible with a cellular network of a second generation different from the first generation (see citation in rejection to claim 1, wherein the 3G message is converted to a 4G message).
Claim Rejections - 35 USC § 103
8. 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 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.
9. 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 of this title, 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.
10. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
11. Claims 3, 9, 15 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over SEMAMA, as applied to claim 1 above, and further in view of Lamb et al (US 2021/0014338).
As to claim 3, SEMAMA discloses the claimed invention substantially as discussed in claim 1, including generating the second information packet from a first information packet such that the second information packet is compatible with a roaming session between the first and second private networks (see citation in rejection to claim 1), but does not expressly disclose wrapping the first information packet with additional information. Lamb discloses a concept of wrapping the first information packet with additional information (Lamb, [0048], “cellular converter module 104 may convert the information from 3G device 100 (e.g., voice or data) into a format suitable for transmission to network 102. For example, data from 3G device 100 is downconverted and decoded into original form, then encoded, upconverted and transmitted to network 102 in conformance with protocols used by network 102”, wherein the communication session between the 3G device and network 102 that the cellular converter module 104 is coordinating is equivalent to a roaming session, because the 3G device is effectively trying to access a different network 102 which can be 5G, see [0014]. Also see [0007], “it should be understood that the concepts described herein could be applied to a number of other converter modules, such as a 3G-5G converter module, a 4G-5G converter module, etc.”. See [0002], “a system of cellular base stations (or a radio network subsystem) coupled to a core network, which provides all the central processing and management for the system, such as authentication, encryption, roaming”; [0015], “after the 3G network has been decommissioned, the security panel recognizes cellular converter module 104 as a 3G base station and continues to transmit and receive cellular signals, now with cellular converter module 104, as if the 3G network were still active.”).
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine SEMAMA with Lamb. The suggestion/motivation of the combination would have been to encoding packets to generate a compatible packet to a second network (Lamb, [0048]).
As to claim 9, see similar rejection to claim 3.
As to claim 15, see similar rejection to claim 3.
As to claim 20, SEMAMA-Lamb discloses the method of claim 19, wherein the cellular network of the first generation is a 3G network and the cellular network of the second generation is a 5G network, and wherein generating the second information packet comprises: converting a data packet compatible with the 3G network to a data packet compatible with the 5G network (see citation in rejection to claim 1, SEMAMA converts from 3G message to 4G message. See citation in rejection to claim 3, wherein 3G device is on a 3G network, and the network 102 include a 5G network, and the 3G packet is converted to a 5G packet).
As to claim 21, SEMAMA-Lamb discloses the method of claim 1, wherein the first set of connection parameters comprises (i) security requirements and (ii) transport requirements of a data packet (Lamb, [0014], wherein the first private network associated with the received first information packet is 3G cellular network, and the destination information contained in the first information packet corresponds to the second private network which can be IP-based network, wherein IP-based network has internet-based requirements for security and transport while 3G network has cellular-based requirements for security and transport).
As to claim 22, see similar rejection to claim 21.
As to claim 23, see similar rejection to claim 21.
12. Claims 6, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over SEMAMA, as applied to claim 1 above, and further in view of Mafakheri et al (“Smart Contracts in the 5G Roaming Architecture” The Fision of Blockchain with 5G Networks”).
As to claim 6, SEMAMA discloses the claimed invention substantially as discussed in claim 1, but does not expressly disclose executing a smart contract representing roaming agreements between the first private network and the second private network, wherein executing the smart contract includes recording a transaction in accordance with the roaming agreements, the transaction representing the routing of transmission. Mafakheri discloses a concept of executing a smart contract representing roaming agreements between the first private network and the second private network, wherein executing the smart contract includes recording a transaction in accordance with the roaming agreements, the transaction representing the routing of transmission (page 3, left column, “redesign the billing mechanism in roaming scenarios. Hence, we propose a new model to exploits the possibilities of DLT to remove the role of clearinghouses in LBO while avoiding the latency issues in the home-routed. In this model the home network is not fully bypassed as the ledger provides the chance to monitor the users' activities in a secure and transparent manner”; and right column, paragraphs 2-3, “The third layer of the network involves smart contracts that are deployed on a distributed virtual system. It provides a user-defined business logic aimed at automatically executing the content of the smart contract (e.g. the costs of roaming users) across inter-authorized organizations according their agreements that define the smart contracts' rules. Afterwards, the contracts are installed in the blockchain network while their self-executable nature can apply a new transaction as soon as new data is uploaded to the distributed ledger, These transactions, which are processed by the smart contract, are added to the chain of blocks when they are confirmed through a consensus mechanism. Finally, the top layer is called the application layer, and this acts as a sand-boxed run-time environment (e.g. Hyperledger Fabric) and defines a programming language implementation and user interface for the smart contracts by means of a decentralized application (DApp).”
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine SEMAMA-Lamb with Mafakheri. The results of the combination would have been to apply Lamb’s teaching of a 3G-5G converter to adopt the Mafakheri’s smart contract concept for communications between two private networks. The suggestion/motivation of the combination would have been to exploit the possibilities of DLT to remove the role of clearinghouses in LBO while avoiding the latency issues in the home-routed (Mafakheri, page 3, left column).
As to claim 12, see similar rejection to claim 6.
As to claim 18, see similar rejection to claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUA FAN whose telephone number is (571)270-5311. The examiner can normally be reached on 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Umar Cheema can be reached at 571-270-3037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUA FAN/Primary Examiner, Art Unit 2458