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 12/23/2025 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/25/2025 has been entered. Claims 1-9, 11-19 and 21-22 are pending.
Response to Arguments
2. Applicant's arguments have been fully considered but they are not persuasive. The applicant argues the following issues.
(A) Rejection under 35 U.S.C. 112
Issue: The applicant argues that the amended limitations overcome the current 112 rejections.
This argument is moot in light of the new ground of 112 rejections set forth below.
(B) Rejection under 35 U.S.C. 103(a)
Issue: The applicant argues that the amened limitations overcome the current 103 rejections.
Examiner respectfully disagrees. See Examiner’s response in the rejection section below. It is to be noted that the rejections are based on the Examiner’s interpretations in the corresponding 112 rejection section. Applicant is suggested to clarify the claim language in order to move the prosecution forward.
Claim Rejections - 35 USC § 112
3. 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.
4. 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.
5. Claims 1-9, 11-19 and 21-22 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.
a) Claim 1 has been amended to recite “
receiving, from a domain name system (DNS) server, a plurality of DNS response messages comprising address information of edge application servers (EASs) to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS responses correspond to a same data network;
determining, based on first indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, to send only one DNS message report for the plurality of DNS response messages to a first core network element;
sending the DNS message report for the plurality of DNS response messages only once to the first core network element; and
wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages”.
These amended limitations do not find support in the originally filed application.
The specification discloses a different scope, e.g., in
[0129], “S380. The EASDF sends a DNS message report to the SMF by triggering a DNS context notify request.”
[0153], “For example, the DNS handling rule may indicate the server discovery function network element to send the plurality of buffered DNS response messages to the terminal device, or indicate the server discovery function network element to send a DNS response message for a specified EAS address range to the terminal device.”.
As cited above, the originally filed application discloses either sending a DNS message report to a core network element such as the SMF but without disclosing that the DNS message report is for a plurality of DNS response messages or corresponds to one of the plurality of DNS response messages, or, sending a DNS response message for a specified EAS address range to the terminal device, not to the core network element such as the SMF. The amended limitations as a whole, therefore, are not supported by the originally filed application. Claims 2-9, 11-19 are similarly rejected. All new matters shall be deleted from the claims.
b) Claim 12 has been amended to recite “
receive, from a DNS server, a plurality of domain name system (DNS) response messages comprising address information of edge application servers (EASs) to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS responses correspond to a same data network;
determine, based on first indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, to send only one DNS message report for the plurality of DNS response messages to a first core network element, wherein the DNS message report comprises a first DNS response message of the plurality of DNS response messages;
send the DNS message report for the plurality of DNS response messages only once to the first core network element; and
wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages”.
These amended limitations do not find support in the originally filed application.
The specification discloses a different scope, e.g., in
[0151] The server discovery function network element may buffer the plurality of DNS response messages. Subsequently, the server discovery function network element may determine, based on the DNS handling rule sent by the first core network element, to send all or some of the plurality of DNS response messages to the terminal device.
[0153] For example, the DNS handling rule may indicate the server discovery function network element to send the plurality of buffered DNS response messages to the terminal device, or indicate the server discovery function network element to send a DNS response message for a specified EAS address range to the terminal device. Alternatively, the DNS handling rule may indicate the server discovery function network element not to buffer a first DNS response message following the plurality of DNS response messages, where the first DNS response message is also a response to the plurality of DNS query request messages sent by the terminal device. Alternatively, the DNS handling rule may indicate the server discovery function network element to discard a first DNS response message following the plurality of DNS response messages.
As cited above, the originally filed application discloses sending all or some of the already buffered response messages to the terminal device, but may ALTERNATIVELY being instruct not to buffer a first DNS response message FOLLOWING the plurality of DNS response message. As a result, the claim limitations that require only send a DNS message report comprising a first DNS response message of the plurality of DNS response messages that were already received, is not supported by the originally filed application.
Moreover, see similar rejection to claim 1, the originally filed application discloses either sending a DNS message report to a core network element such as the SMF but without disclosing that the DNS message report is for a plurality of DNS response messages or corresponds to one of the plurality of DNS response messages, or, sending a DNS response message for a specified EAS address range to the terminal device, not to the core network element such as the SMF. The amended limitations as a whole, therefore, are not supported by the originally filed application.
c) Claims 2-9, 11, 13-19 and 21-22 are similarly rejected. All new matters shall be deleted from the claims.
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
7. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claims 1-9, 11-19 and 21-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a) Claim 1 has been amended to recite:
receiving, from a domain name system (DNS) server, a plurality of DNS response messages comprising address information of edge application servers (EASs) to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS responses correspond to a same data network;
determining, based on first indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, to send only one DNS message report for the plurality of DNS response messages to a first core network element;
sending the DNS message report for the plurality of DNS response messages only once to the first core network element; and
wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages”.
i) First of all, limitation 1 recites “the plurality of DNS responses” which lacks sufficient antecedent basis. It is unclear whether this refers to the earlier recited “a plurality of DNS response messages” or something else. Applicant is required to clarify. For the sake of the examination, Examiner interprets any plurality of DNS responses.
ii) Secondly, limitation 3 recites “sending the DNS message report for the plurality of DNS response messages” which lacks sufficient antecedent basis. It is unclear whether the recited “the DNS message report” refers to the earlier recited “only one DNS message report”, or some other DNS message report. Applicant is required to clarify. For the sake of the examination, Examiner assumes any DNS message report.
iii) Thirdly, the last limitation recites “the DNS message for the plurality of DNS response messages” which lacks sufficient antecedent basis. There is no “DNS message” recited in the previous limitation. Applicant is required to clarify. For the sake of the examination, Examiner assumes any DNS message.
iv) Fourthly, limitations 1 and 2 recite that the DNS message report is for a plurality of DNS response message, but the last limitation require that the DNS message corresponds to one of the DNS response messages. It is unclear how both can be made true. If the DNS message report only corresponds to one of the DNS response messages, then how can it be for the plurality of DNS response messages, unless the plurality of DNS response messages are repeated messages for the same/identical EAS address which would, however, conflict with the recitation in limitation 1 that the address information is for multiple EASs. Moreover, this recitation is inconsistent with the disclosure in the specification (see Examiner’s citation and explanation in 112(a) rejection above). As a result, the scope of the claim cannot be definitely determined. For the sake of the examination, Examiner presumes that the DNS message report is for any one or more of the plurality of DNS response messages and corresponds to any one or more of the plurality of DNS response messages, and is sent to any entity.
Claims 2-9, 11-19 and 21-22 are similarly rejected.
b) claim 2 recites “the first DNS response message” which lacks sufficient antecedent basis. Applicant is required to clarify. For the sake of the examination, Examiner interprets any DNS response message. Claims 3, 8, 18 are similarly rejected.
c) Claim 12 has been amended to recite “
receive, from a DNS server, a plurality of domain name system (DNS) response messages comprising address information of edge application servers (EASs) to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS responses correspond to a same data network;
determine, based on first indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, to send only one DNS message report for the plurality of DNS response messages to a first core network element, wherein the DNS message report comprises a first DNS response message of the plurality of DNS response messages;
send the DNS message report for the plurality of DNS response messages only once to the first core network element; and
wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages”.
As cited and explained in the above 112, first paragraph rejection, the scope of the claimed limitations different from the disclosed scope, e.g., the specification discloses sending all or some of the already buffered response messages to the terminal device, but may ALTERNATIVELY being instruct not to buffer a first DNS response message FOLLOWING the plurality of DNS response message. However, only send a DNS message report comprising a first DNS response message of the plurality of DNS response messages that were already received. The scope of the claimed limitations cannot be definitely determined in light of the specification due to the inconsistency. Applicant is required to clarify. For the sake of the examination, Examiner interprets as any relationship between the DNS response message comprised in the DNS message report and the plurality of DNS response messages. Claims 13-16 are similarly rejected.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. 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.
12. Claims 1-9, 11-19 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over MIHALY et al (US 2024/0048524) in view of Samprathi et al (US 7526562).
As to claim 1, MIHALY discloses a method implemented by a server discovery function network element, wherein the method comprises:
receiving, from a domain name system (DNS) server, a plurality of DNS response messages comprising address information of edge application servers (EASs), to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS responses correspond to a same data network (See Figure 7, step 4a2, the LDNSR receives DNS response “list of EAS FQDNs with Distance info”, wherein each list can be considered a message. It is to be noted that the claim does not require specific format of the messages and how the messages relate to each other therefore Examiner interprets as any format and any relationship. The “list of EAS FEDNs with Distance info” indicates a same data network; [0186], “including their corresponding EAS IP addresses as well). In some aspects, the step 2 may include the LDNSR 806 buffering the DNS query also for the Early DNS handling case to potentially resend it with a different ECS option if needed”); and
determining, based on first indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, to send only one DNS message report for the plurality of DNS response messages to a first core network element (see 112 rejection above and Examiner’s interpretation therein. See Figure 7, step 4b1, wherein LDNSR sends, “Send DNS response with received EAS IP addresses (ordered list)” based on “Interaction with SMF”, wherein the result of “Interaction with SMF” is first indication information. e.g., [0177], “the process 700 may include a step 3 in which, the LDNSR 706 interacts with the SMF 704 and receives from the SMF 704 a configuration for the FQDN in the DNS query”; [0178], “the step 3 may include the LDNSR 706 determining forwarding parameters based on the configuration for the FQDN in the DNS query received from the SMF 704. In some aspects, the forwarding parameters may include the IP address to add as ECS DNS option. This IP address may correspond to the DNAI/Local PSA selected by the SMF 704 for the UE location and a target domain. [0180], “as shown in FIG. 7, the process 700 may include a step 4b1 in which, after receiving the DNS response, the LDNSR 706 informs SMF 704 with IP address of EASs and received EAS FQDNs including the distance information (or location information for the candidate EASs) if certain criteria set by SMF 704 are matched (e.g., the IP address of EAS in DNS response is within the IP range(s) indicated by SMF 704, or the FQDN is matched)”. It is to be noted that the claim limitation merely requires that the DNS message report comprises a first DNS response message of the DNS response message, but does not preclude comprising other DNS response messages or other messages),
sending the DNS message report to the first core network element (see 112 rejection above and Examiner’s interpretation therein. See citation above);
wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages (see 112 rejection and Examiner’s interpretation therein. See citation in rejection to the preceding limitations above, e.g., Figure 7, wherein the LDNSR in step 6 “Send DNS response with received EAS IP addresses (ordered list)”, indicating that the EAS IP addresses [obtained from the DNS server] are at least temporarily saved/buffered at the LDNSR, in order to select/filter based on said forwarding parameter/configuration. It is to be noted that the claimed limitation does not require a specific duration for the buffering therefore Examiner interprets as any duration), but does not expressly disclose alternatively the buffering is except the first DNS response message (see 112 rejections above and the Examiner’s interpretation therein).
Alternatively, if the limitations were to be given narrow interpretation to require selecting a subset of the plurality of DNS response messages for sending, then MIHALY does not expressly teaching. Samprathi discloses a concept of selecting a subset of a plurality of DNS response messages for sending (col. 4, lines 45-51, “It is then determined whether to forward the current DNS response to the DNS client, discard the current DNS response, or hold the current DNS response and wait for a second DNS response corresponding to the first DNS query”; col. 5, lines 18-25, “determining whether to forward or hold the current DNS response includes (c) when the current DNS response is held as a first DNS response and a second DNS response (i) is received, (ii) requires translation, and (iii) contains a null record, determining to forward the first DNS response to the DNS client; and ( d) when the current DNS response is held as a first DNS response and a second DNS response is (i) received, (ii) requires translation, and (iii) does not contain a null record, translating the second DNS response and forwarding the translated second DNS response to the DNS client.”).
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine MIHALY with Samprathi. The suggestion/motivation of the combination would have been to enable options as to whether forward, discard, or hold the current DNS response (Samprathi, col. 4, lines 45-51).
As to claim 12, see similar rejection to claim 1. Regarding the additional limitation, “wherein the DNS message report comprises a first DNS response message of the plurality of DNS response messages”, see 112 rejection and Examiner’s interpretation therein. See citation in rejection to claim 1, wherein any DNS response message in the plurality of DNS response messages can be considered a first DNS response message.
It is to be noted that the claim does not require a specific criterion as to what is considered a first DNS response message. Alternatively, if the limitations were given narrow interpretations to require only sending an earliest received DNS response message, then MIHALY does not expressly teaching. Samprathi discloses a concept of sending an earliest-received DNS response message of a plurality of DNS response messages (col. 5, lines 18-30, “determining whether to forward or hold the current DNS response includes (c) when the current DNS response is held as a first DNS response and a second DNS response (i) is received, (ii) requires translation, and (iii) contains a null record, determining to forward the first DNS response to the DNS client”).
Before the effective filing date of the invention, it would have been obvious for an ordinary skilled in the art to combine MIHALY with Samprathi. The suggestion/motivation of the combination would have been to enable options as to whether forward, discard, or hold the current DNS response (Samprathi, col. 4, lines 45-51).
As to claim 2, MIHALY-Samprathi discloses the method according to of claim 1, wherein the first DNS response message is the only DNS response message in the DNS message report (see 112 rejection and Examiner’s interpretation therein. See citation in rejection to claim 1, e.g., MIHALY, Figure 7, when the number of candidate EAS is one, and Samprathi, col. 5, lines 18-25 in the case when only the first DNS response is forwarded).
As to claim 13, see similar rejection to claim 2.
As to claim 3, MIHALY-Samprathi discloses the method of claim 1, further comprising:
sending, to the terminal device and based on the second indication information, buffered version of all of the DNS response messages except for the first DNS response message (see 112 rejection and Examiner’s interpretation therein regarding “the first DNS response message”. See citation in rejection to claim 1 , NIHALY, herein when any DNS response message out of the specified address range can be considered a first DNS response message. Alternative, see Samprathi, col. 5, lines 18-25, “determining whether to forward or hold the current DNS response includes (c) when the current DNS response is held as a first DNS response and a second DNS response (i) is received, (ii) requires translation, and (iii) contains a null record, determining to forward the first DNS response to the DNS client; and ( d) when the current DNS response is held as a first DNS response and a second DNS response is (i) received, (ii) requires translation, and (iii) does not contain a null record, translating the second DNS response and forwarding the translated second DNS response to the DNS client”).
As to claim 14, see similar rejection to claim 3.
As to claim 4, MIHALY-Samprathi discloses the method of claim 1, wherein before receiving the DNS response messages, the method further comprises receiving the first indication information from the first core network element (See MIHALY, Figure 7, step 4b1, wherein LDNSR sends, “Send DNS response with received EAS IP addresses (ordered list)” based on “Interaction with SMF”, wherein the result of “Interaction with SMF” is first indication information. e.g., [0177], “the process 700 may include a step 3 in which, the LDNSR 706 interacts with the SMF 704 and receives from the SMF 704 a configuration for the FQDN in the DNS query”; [0180], “as shown in FIG. 7, the process 700 may include a step 4b1 in which, after receiving the DNS response, the LDNSR 706 informs SMF 704 with IP address of EASs and received EAS FQDNs including the distance information (or location information for the candidate EASs) if certain criteria set by SMF 704 are matched (e.g., the IP address of EAS in DNS response is within the IP range(s) indicated by SMF 704, or the FQDN is matched)”, wherein the IP range indicated by SMF is an example of first indication received during interaction with SMF which occurs before receiving the DNS response messages).
As to claim 15, see similar rejection to claim 4.
As to claim 5, MIHALY-Samprathi discloses the method of claim 1, wherein the first core network
element is a session management function network element (MIHALY, Figure 7, “SMF”).
As to claim 16, see similar rejection to claim 5.
As to claim 6, MIHALY-Samprathi discloses the method of claim 1, wherein the first indication information comprises identification information of a data network, and wherein the identification information comprises at least one of a data network access identifier (DNAI) of the data network or a data network name (DNN) of the data network (MIHALY, [0178], “the step 3 may include the LDNSR 706 determining forwarding parameters based on the configuration for the FQDN in the DNS query received from the SMF 704. In some aspects, the forwarding parameters may include the IP address to add as ECS DNS option. This IP address may correspond to the DNAI/Local PSA selected by the SMF 704 for the UE location and a target domain.”).
As to claim 11, see similar rejection to claim 6.
As to claim 7, MIHALY-Samprathi discloses a method implemented by a first core network element, wherein the method comprises:
sending, to a server discovery function network element, first indication information indicating to send only one a domain name system (DNS) message report to the first core network element for a plurality of DNS response messages, wherein the plurality of DNS response messages comprise address information of edge application servers (EASs) to be queried by a terminal device, and wherein the address information of the EASs in the plurality of DNS response messages correspond to a same data network; and receiving, from the server discovery function network element, and based on the first
indication information and the address information of the EASs in the plurality of DNS response messages corresponds to a same data network, the DNS message report for the plurality of DBS response messages only once, wherein the DNS message for the plurality of DNS response messages corresponds to one of the plurality of DNS response messages. (see similar rejection to claim 1); and
As to claim 17, see similar rejection to claim 7.
As to claim 8, MIHALY-Samprathi discloses the method of claim 7, wherein the DNS message report is the only DNS response message in the DNS message report (see similar rejection to claim 2).
As to claim 18, see similar rejection to claim 8.
As to claim 9, MIHALY-Samprathi discloses the method of claim 7, wherein the first core network element is a session management function network element (see similar rejection to claim 5).
As to claim 19, see similar rejection to claim 9.
As to claim 22, MIHALY-Samprathi discloses the apparatus of claim 12, wherein the first indication information comprises identification information of a data network, and wherein the identification information comprises at least one of a data network access identifier (DNAI) of the data network or a data network name (DNN) of the data network (MIHALY, Figure 7, step 4b1, “Send DNS response with received EAS IP addresses (ordered list)” based on “Interaction with SMF”, wherein the result of “Interaction with SMF” is first indication information. e.g., [0177], “the process 700 may include a step 3 in which, the LDNSR 706 interacts with the SMF 704 and receives from the SMF 704 a configuration for the FQDN in the DNS query”; [0178], “the step 3 may include the LDNSR 706 determining forwarding parameters based on the configuration for the FQDN in the DNS query received from the SMF 704. In some aspects, the forwarding parameters may include the IP address to add as ECS DNS option. This IP address may correspond to the DNAI/Local PSA selected by the SMF 704 for the UE location and a target domain. [0180], “as shown in FIG. 7, the process 700 may include a step 4b1 in which, after receiving the DNS response, the LDNSR 706 informs SMF 704 with IP address of EASs and received EAS FQDNs including the distance information (or location information for the candidate EASs) if certain criteria set by SMF 704 are matched (e.g., the IP address of EAS in DNS response is within the IP range(s) indicated by SMF 704, or the FQDN is matched”).
As to claim 21, see similar rejection to claim 22.
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