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
Election by Original Presentation
1. The newly submitted claims 11 and 17-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Clams 1-8 of the originally presented claims contain claims directed to patentable species A.
However the newly submitted claims 11 and 17-27 contain claims directed to patentable species B.
The above species are independent or distinct because each species recite the mutually exclusive characteristics of such species.
For example, in Species A (claim 1 discusses claimed limitations which is not recited in the other Species.
For example, in Species B (claims 11 and 18 discuss claimed limitations which are not recited in the other Species.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries);
and/or the prior art applicable to one species would not likely be applicable to another species;
and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 11 and 17-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 102
2. 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.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horn et al., (US 2019/0313239), (hereinafter, Horn).
Regarding claim 1, Horn discloses a device, comprising: a processing system including a processor; and a memory that stores executable instructions that, when executed by the processing system, facilitate performance of operations (= apparatus such as a UE for optimizing UE radio capability signaling, see [0009-10 and 0101]), the operations comprising:
permanently hardcoding, in user equipment (UE) capability information, at least a portion of a device identifier of a UE, wherein the hardcoding is performed only once
(= determining, based at least on the type of network, at least one capability identifier associated with at least one of UE radio capabilities for type of the network, see [0009-10 and 0077]); and
causing the UE capability information to be transmitted in resource control messaging (= transmitter is configured to transmit, via RRC message, the at least one capability identifier to the network, see [0010 and 0106]).
Regarding claim 2, as mentioned in claim 1, Horn discloses the device, wherein the device identifier comprises an International Mobile Equipment Identity (IMEI) (see, [0069]).
Regarding claim 3, as mentioned in claim 2, Horn discloses the device, wherein the at least the portion of the device identifier comprises a Type Allocation Code (TAC) portion of the IMEI (see, [0069]).
Regarding claim 4, as mentioned in claim 2, Horn discloses the device, wherein the resource control messaging comprises radio resource control (RRC) messaging (see, [0064 and 0100]).
Regarding claim 5, as mentioned in claim 4, Horn discloses the device, wherein the UE capability information comprises a UECapabilitylnformation information element (IE) in an RRC message (see, [0063 and 0100]).
Regarding claim 6, as mentioned in claim 4, Horn discloses the device wherein the permanently hardcoding further comprises one or more of encoding, encrypting, or both at least a portion of the device identifier in the UE capability information (see, [0049, 0064 and0066]).
Regarding claim 7, as mentioned in claim 4, Horn discloses the device wherein the operations further comprise obtaining the at least the portion of the device identifier from a storage element of the UE (see, [0099]).
Regarding claim 8, as mentioned in claim 1, Horn explicitly fails to disclose that the device further comprising a secure memory: wherein the permanently hardcoding comprises storing the UE capability information in the secure memory and wherein the causing involves accessing the UE capability information from the secure memory (see, [0066 and 0064]).
CONCLUSION
3. 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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of 33the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kwasi Karikari whose telephone number is
571-272-8566.The examiner can normally be reached on M-Sat (6am – 10pm).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Charles Appiah can be reached on 571-272-7904.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8566.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Kwasi Karikari/
Primary Examiner: Art Unit 2641.
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