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 filed 1-16-2026 have been fully considered but they are not persuasive.
The remarks states that a terminal disclaimer was provided; however, no terminal disclaimer is attached.
Regarding applicant’s argument “While the cited portions of 3GPP TS 24.301 V16.4.0 relied upon by the Office Action may describe use of a request type "handover of emergency bearer services" in certain circumstances, 3GPP TS 24.301 V16.4.0 does not disclose the claimed two-stage retry progression from a regular "handover" request type to a "handover of emergency bearer services" request type responsive to an attach reject for the transfer of the same onqoinq emergency session. Otherwise said, even if 3GPP TS 24.301 V16.4.0 is read as disclosing that a UE may set a request type to "handover of emergency bearer services," it still lacks any disclosure or suggestion of the sequence of "while the emergency session is ongoinq between the UE and the first network, receiving... a first attach request message," in response "transmitting... an attach reject message," followed by "receiving... the second attach request message comprising a PDN CONNECTIVITY REQUEST message" with a difference request type "set to "handover of emergency bearer services" for the ongoing emergency session."”; the examiner’s position is that 3GPP TS 24.301 V16.4.0 does disclose the claimed two-stage retry progression from a regular "handover" request type to a "handover of emergency bearer services" request type responsive to an attach reject for the transfer of the same onqoinq emergency session; the first stage is the handover request is disclosed in section 6.5.1.2 and the second stage is when handling a network rejection as disclosed in section 6.5.1.4.2-3 and 6.5.3.4.2 which may result in a second attach request message comprising a PDN CONNECTIVITY REQUEST message with request type set to "handover of emergency bearer services" for the ongoing emergency session.
Applicant submits: “claim 8 requires "that the second attach request message comprises an attach type not set to 'EPS emergency attach'," which is contrary to 3GPP TS 24.301 V16.4.0. While the cited portions of 3GPP TS 24.301 V16.4.0 may use the words "not set to EPS emergency attach," it is not disclosed in the same context as claimed, that is, in the "second attach request message" as claimed in claim 1… "for initiating a PDN connection for emergency bearer services" with attach type not set to "EPS emergency attach" is the one the network cannot accept. In other words, the cited text in Section 5.5.1.2.5B does not teach the claim 8 requirement in the claimed temporal position, i.e., that the second attach request, sent responsive to an attach reject, has an attach type not set to "EPS emergency attach".”; the examiner’s position is that the relied portion of section 5.5.1.2.5B is for an attach for initiating a PDN connection for emergency bearer services not accepted by the network; thereby, it is in the same context of a second attach request.
Additionally, the steps mentioned will bring the same predictable result of making a PDN connection whether the request it is for a handover or a first rejected connection. The rest of the arguments they fall for the same reasons as shown above. The rejection of record stands.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,812,318 and 10/880,802. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are generally broader with the exception of the network component of the second network. However, although the above-mentioned patent does not explicitly recite a network component, it is clear that whatever component in the second network doing the steps would be a network component of the second network and/or intended use for claims 9; thereby, they are not patentably distinct from each other.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over 3GPP TS 24.301 V16.4.0.
As to claim 1, 3GPP TS 24.301 V16.4.0 discloses a method for transferring an ongoing emergency session from a first network to a second network [The UE shall set the request type to "handover of emergency bearer services" when a PDN connection for emergency bearer services is to be transferred from a WLAN to the 3GPP access network or when the UE supporting N1 mode requests transfer of an existing emergency PDU session in 5GS.] (see section 6.5.1.2), the method comprising:
while the emergency session is ongoing between a user equipment (UE) and the first network, receiving, by a network component in the second network from the UE, a first attach request message, the first attach request message comprising a PDN CONNECTIVITY REQUEST message with request type set to "handover" [the UE shall send a PDN CONNECTIVITY REQUEST message to the MME… If the UE supports N1 mode and the request type is: "handover" or "handover of emergency bearer services"] (see section 6.5.1.2);
transmitting, from the network component to the UE in response to receiving the first attach request message, an attach reject message [the MME shall send a PDN CONNECTIVITY REJECT message to the UE] (see section 6.5.1.4.1);
receiving, by the network component from the UE responsive to the attach reject message, a second attach request message, the second attach request message comprising a PDN CONNECTIVITY REQUEST message with request type set to "handover of emergency bearer services" for the ongoing emergency session [The UE shall set the request type to "handover of emergency bearer services" when a PDN connection for emergency bearer services is to be transferred from a WLAN to the 3GPP access network or when the UE supporting N1 mode requests transfer of an existing emergency PDU session in 5GS….If the PDN CONNECTIVITY REJECT message is due to an ESM failure notified by EMM layer (i.e., EMM cause #19 "ESM failure" included in an ATTACH REJECT message), the UE may include a different APN in the PDN CONNECTIVITY REQUEST message… the UE is allowed to initiate an attach procedure or PDN connectivity procedure if the procedure is for emergency bearer services] (see section 6.5.1.2, 6.5.1.4.1-6.5.1.4.3, 6.5.3.4.2); and
transmitting, by the network component to the UE, an attach accept message for transferring the ongoing emergency session from the first network to the second network [the MME shall send the ACTIVATE DEFAULT EPS BEARER CONTEXT REQUEST message together with ATTACH ACCEPT] (see section 6.4.1.2, 6.5.1.3). 3GPP TS 24.301 V16.4.0 is not clear which networks in the steps; however, it would be obvious that handover can go from one network to the other and vice versa. Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the present invention that the steps apply to go from one network to the other and vice versa for the simple purpose of continuing the communication as needed.
As to claim 2, 3GPP TS 24.301 V16.4.0 discloses the method of claim 1, wherein the second attach request message is an emergency attach request message [The UE shall set the request type to "handover of emergency bearer services" when a PDN connection for emergency bearer services is to be transferred from a WLAN to the 3GPP access network or when the UE supporting N1 mode requests transfer of an existing emergency PDU session in 5GS….If the PDN CONNECTIVITY REJECT message is due to an ESM failure notified by EMM layer (i.e., EMM cause #19 "ESM failure" included in an ATTACH REJECT message), the UE may include a different APN in the PDN CONNECTIVITY REQUEST message… the UE is allowed to initiate an attach procedure or PDN connectivity procedure if the procedure is for emergency bearer services] (see section 6.5.1.2, 6.5.1.4.1-6.5.1.4.3, 6.5.3.4.2.
As to claim 3, 3GPP TS 24.301 V16.4.0 discloses the method of claim 1, wherein the attach reject message comprises an evolved packet system (EPS) mobility management (EMM) cause code [If the PDN CONNECTIVITY REJECT message is due to an ESM failure notified by EMM layer (i.e., EMM cause #19 "ESM failure" included in an ATTACH REJECT message) (see section 6.5.1.4.1).
As to claim 4, 3GPP TS 24.301 V16.4.0 discloses the method of claim 3, wherein the EMM cause code is #19 and indicates EPS Session Management (ESM) failure [If the PDN CONNECTIVITY REJECT message is due to an ESM failure notified by EMM layer (i.e., EMM cause #19 "ESM failure" included in an ATTACH REJECT message)] (see section 6.5.1.4.1).
As to claim 5, 3GPP TS 24.301 V16.4.0 discloses the method of claim 1, wherein the first network is a fifth generation (5G) network and wherein the second network is a fourth generation (4G) network. [The UE shall set the request type to "handover of emergency bearer services" when a PDN connection for emergency bearer services is to be transferred from a WLAN to the 3GPP access network or when the UE supporting N1 mode requests transfer of an existing emergency PDU session in 5GS.] (see section 6.5.1.2). 3GPP TS 24.301 V16.4.0 is not clear which networks in the steps; however, it would be obvious that handover can go from one network to the other and vice versa. Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the present invention that the steps apply to go from one network to the other and vice versa for the simple purpose of continuing the communication as needed.
As to claim 6, 3GPP TS 24.301 V16.4.0 discloses the method of claim 1, wherein the first network is part of a fifth generation system (5GS) and wherein the second network is part of an EPS [The UE shall set the request type to "handover of emergency bearer services" when a PDN connection for emergency bearer services is to be transferred from a WLAN to the 3GPP access network or when the UE supporting N1 mode requests transfer of an existing emergency PDU session in 5GS.] (see section 6.5.1.2). 3GPP TS 24.301 V16.4.0 is not clear which networks in the steps; however, it would be obvious that handover can go from one network to the other and vice versa. Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the present invention that the steps apply to go from one network to the other and vice versa for the simple purpose of continuing the communication as needed.
As to claim 7, 3GPP TS 24.301 V16.4.0 discloses the method of claim 2, wherein the emergency attach request message comprises an attach type set to "EPS emergency attach" (see section 5.5.1.2.1, 6.5.1.2, 6.5.1.4.1-6.5.1.4.3, 6.5.3.4.2, Table D.1.1).
As to claim 8, 3GPP TS 24.301 V16.4.0 discloses the method of claim 1, wherein the second attach request message comprises an attach type not set to "EPS emergency attach" (see section 5.5.1.2.5B, Table D.1.1).
Regarding claims 9-16, they are the respective network component claims of method claims 1-7. Therefore, claims 10-16 are rejected for the same reasons as shown above. Please note that inherently devices require a processor and memory to accomplish a process.
Regarding claims 17-20, they are the respective non-transitory computer readable storage medium claims of method claims 1-4. Therefore, claims 17-20 are rejected for the same reasons as shown above.
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 MARCOS L TORRES whose telephone number is (571)272-7926. The examiner can normally be reached 10:00 AM - 6:00 PM M-F.
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 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.
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MARCOS L. TORRES
Primary Examiner
Art Unit 2647
/MARCOS L TORRES/Primary Examiner, Art Unit 2647