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 .
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-7, 10, 13-14, 17, 24, 29-30, 33, 36-37, 40, 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 1, 6-7, 1, 1, 6-7, 1, 6-7, 1, 6 of U.S. Patent No.11, 792, 767. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims are only subset of the claims of the instant application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 6-7, 9, 11, 15, 21, 23-27, 29-30, 32, 34, 10, 12-14, 16-17, 33, 35-39, 40, 43-44, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faccin et al. (hereinafter Faccin)(US 2018/0279400) in view of Kumar et al. (hereinafter Kumr)(US 2022/0132406).
Regarding claim 1, Faccin teaches a method comprising: receiving, by a wireless device via a first base station
sending, by the wireless device to a second base station via a second access technology of the mobile network, a response to the paging request rejecting the connection with the mobile network(P[0227], UE may receive paging message; P[0229], perform procedure to communicate the PDU session over the non-3GPP access; P[0283], establishing user plane connectivity for non-3GPP access; P[0285],paging request rejection may indicate that the user plane resources cannot be established),
wherein the response comprises: one or more parameters comprising one or more protocol data unit PDU} session identities (P[0229], PDU session forbidden over 3GPP access; Fig. 2, UE and second RAN; P[0153], UE may communicate over second RAT).
Faccin did not teach specifically wherein the response rejection comprises: information indicating availabilities for a plurality of service types; and one or more parameters comprising one or more protocol data unit (PDU) session identities; wherein the one or more parameters indicate available for services available by the mobile network. However, Kumar teaches in an analogous wherein the response rejection comprises: information indicating availabilities for a plurality of service types; and one or more parameters comprising one or more protocol data unit (PDU) session identities; wherein the one or more parameters indicate available for services available by the mobile network(Fig. 11, service request….notification reject containing all non-3gpp PDUs which can’t be activated over 3GPP). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention wherein the response rejection comprises: information indicating availabilities for a plurality of service types; and one or more parameters comprising one or more protocol data unit (PDU) session identities; wherein the one or more parameters indicate available for services available by the mobile network in order to have improved efficiency.
Kumar did not teach specifically in this embodiment paging request and response. However, Kumar teaches in analogous art paging request and response(Fig. 12, paging request; service request containing list of Non-3GPP PDU’s that can be activated). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention paging request and response in order to have improved applicability while the device is in CM-IDLE state with reference to first access technology.
Regarding claim 2, Kumar teaches the method of claim 1, wherein the response comprises a PDU session identity list of one or more allowed PDU session identities(Fig. 13, PDU’s (2,3,4) that can be activated).
Regarding claim 3, Faccin teaches wherein the response indicates one or more PDU sessions unavailable for paging(P[0237], establishment request with list of PDU sessions forbidden over 3GPP).
Regarding claim 4, Lee teaches the method of claim 1, wherein the sending the response comprises sending a non-access stratum (NAS) response to an access and mobility management function (AMF) device via the second base station(Fig. 11, service request to AMF).
Regarding claim 6, Faccin teaches the method of claim 1, wherein: the first access technology is a third-generation partnership project (3GPP) access technology; the second access technology is a non-third generation partnership project (non-3GPP) access technology; and the sending the response further comprises sending the response to a computing device via the second base station(Faccin: P[0227-0229], 3GPP, non-3GPP; PDU transmission over non-3GPP access).
Regarding claim 7, Kumar teaches the method of claim 1, wherein the response comprises a cause value indicating at least one of: a connection status is busy; a connection status is weak; a connection with the second base station that is different from a connection with the first base station; or the wireless device has more than one subscriber identity module (SIM)(Fig. 14, UES is moving from CM idle(3gpp) to connected in wifi(non-3gpp)).
Regrading claim 9, Kumar teaches the method of claim 1, wherein, during the receiving the paging message, the wireless device is in an idle state for the first access technology and in a connected state for the second access technology(Fig. 14, CM-IDLE state with respect to the 3GPP access and in a CM-connected state with respect to the non-3GPP access) .
Regarding claim 11, Faccin teaches wherein the response indicates a determination not to accept service associated with the paging request(P[0227-0229], PDU session is forbidden over 3GPP access).
Regarding claim 15, Faccin in view of Lee teaches the method of claim 10, wherein: the indication to send the paging message comprises an N2 paging message; and the paging message comprises a radio resource control (RRC) paging message(Lee: N2 paging and RAN paging).
Regarding claim 21, Kumar teaches the method of claim 17, wherein the paging message is a radio access message(Fig. 12, paging message with access)
Claims 10, 12-14, 16 are rejected for the same reason as set forth in claims 1, 4, 6-7, 9 respectively.
Claim 17 is rejected for the same reason as set forth in claim 1.
Regrading claim 23, Faccin in view of Kumar teaches the method of claim 1, wherein, during the receiving the paging request, the wireless device is in an idle state for the first access technology and in a connected state for the second access technology(Kumar: Fig. 14, CM-IDLE state with respect to the 3GPP access and in a CM-connected state with respect to the non-3GPP access).
Claims 24-25, 27, 29-30, 32 are rejected for the same reason as set forth in claims 1-2, 4, 6-7, 9 respectively.
Claim 26 is rejected for the same reason as set forth in claim 3.
Claims 33, 35-37 are rejected for the same reason as set forth in claims 1, 4, 6-7 respectively.
Claim 34 is rejected for the same reason as set forth in claim 11
Claim 38 is rejected for the same reason as set forth in claim 15.
Claims 40, 43, 44 are rejected for the same reason as set forth in claims 1, 6 and 21 respectively.
Claims 39, 46 are rejected for the same reason as set forth in claim 23.
Claim(s) 5, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faccin et al. (hereinafter Faccin)(US 2018/0279400) in view of Kumar et al. (hereinafter Kumr)(US 2022/0132406).
Regarding claim 5, Faccin in view of Kumar teaches all the particulars of the claim except the method, wherein the response indicates to stop retransmission of the paging message. However, Tang teaches in an analogous art the method, wherein the response indicates to stop retransmission of the paging message (P[0017, 0080, 0097], response message to indicate that the paging message successfully received…stops transmitting the paging message to the terminal device). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method the method, wherein the response indicates to stop retransmission of the paging message in order to have improved efficiency.
Claim 28 is rejected for the same reason as set forth in claim 5
Claim(s) 8, 20, 23, 31, 39, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faccin et al. (hereinafter Faccin)(US 2018/0279400) in view of Kumar et al. (hereinafter Kumr)(US 2022/0132406) and Kim et al. (hereinafter Kim)(US 2018/0227699).
Regarding claim 8, Faccin in view of Kumar teaches all the particulars of the claim except the method, receiving, by the wireless device from the first base station with the first access technology, a second paging request; and based on a determination to communicate using the first access technology, sending a radio resource control (RRC) setup message to the first base station. However, Kim teaches in an analogous art receiving, by the wireless device from the first base station with the first access technology, a second paging request; and based on a determination to communicate using the first access technology, sending a radio resource control (RRC) setup message to the first base station(P[0139],second paging message; signaling connection ; also Fig. 1, over 3GPP). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method of receiving, by the wireless device from the first base station with the first access technology, a second paging request; and based on a determination to communicate using the first access technology, sending a radio resource control (RRC) setup message to the first base station in order to have improved efficiency(only forbidden services from first network are to be received from second network).
Claims 20, 31 are rejected for the same reason as set forth in claim 8.
Claim(s) 18-19, 41-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faccin et al. (hereinafter Faccin)(US 2018/0279400) in view of Kumar et al. (hereinafter Kumr)(US 2022/0132406) and Kim et al. (hereinafter Kim-1)(US 2019/0230625).
Regarding claim 18, Faccin in view of Kumar teaches all the particulars of the claim except the method, further comprising receiving, from an access and mobility management function (AMF) device and based on the response, an indication comprising a context release command message requesting a context release associated with the wireless device. However, Kim-1 teaches in an analogous art the method, further comprising receiving, from an access and mobility management function (AMF) device and based on the response, an indication comprising a context release command message requesting a context release associated with the wireless device (P[0093], context release command from AMF). Therefore, it would be obvious to one of ordinary skill in the art at the time of the invention to use the method, further comprising receiving, from an access and mobility management function (AMF) device and based on the response, an indication comprising a context release command message requesting a context release associated with the wireless device in order to have improved efficiency.
Regarding claim 19, Kim teaches the method of claim 18, further comprising: based on the indication received from the AMF device comprising a context release command message, performing a context release associated with the wireless device(P[0093], UE context release command from AMF).
Claim(s) 22, 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faccin et al. (hereinafter Faccin)(US 2018/0279400) in view of Kumar et al. (hereinafter Kumr)(US 2022/0132406) and Jangid et al. (hereinafter Jangid)(US 2023/0081141).
Regarding claim 22, Faccin view of Kumar teaches all the particulars of the claim except based on a determination that a response to the paging request has not been received during a time period, retransmit the paging request; and receive, from the wireless device, a radio resource control (RRC) setup message.
However, Jangid teaches in an analogous art based on a determination that a response to the paging request has not been received during a time period, retransmit the paging request; and receive, from the wireless device, a radio resource control (RRC) setup message.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to use the method based on a determination that a response to the paging message has not been received during a time period, retransmit the paging message; and receive, from the wireless device, a radio resource control (RRC) setup message in order to have improved efficiency.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUTHUSWAMY GANAPATHY MANOHARAN whose telephone number is (571)272-5515. The examiner can normally be reached 6:30am-3:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison T Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MUTHUSWAMY G MANOHARAN/ Primary Examiner, Art Unit 2647
Prosecution Insights