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 .
Information Disclosure Statement
As required by M.P.E.P. 609(c), the Applicant's submissions of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609 C(2), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Applicant’s Information Disclosure Statement has been received, entered into the record, and considered. See attached form PTO-1449.
Claims 29-44 are presented for examination.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 29-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without “significantly more”.
Claims 29-44 are directed to Abstract Idea such as an idea standing alone such as an instantiated concept, pan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper for example.
The apparatus and the method claim 29 and 37 recites limitation, “sending an initial connection request message to a network function, the initial connection request message comprising a temporary identifier of the UE and one or more slice descriptors, the one or more slice descriptors indicating one or more network slices that the UE is requesting to access; and receiving, from the network function, a response message comprising an indication that a connection is permitted and an indication whether or not connection is permitted to the one or more network slices indicated to the one or more slice descriptors in the initial connection request message”. Since the claim is directed to a process and a machine, which is one of the statutory categories of the invention (Step 1: YES).
The claim is then analyzed to determine whether it is directed to any judicial exception. The claim recites, sending an initial connection request message to a network function … receiving, from the network function, a response message. The sending step recited in the claim is no more than an abstract idea i.e., mental process of receiving a response message where claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished, etc., (See specifically MPEP 2106.05 (f) Sec 1. (Step 2A: Prong One Abstract Idea=Yes).
The claim is then analyzed if it requires an additional elements or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception – i.e., limitation that are indicative of integration into a practical application: improving to the functioning of a computer or to any other technology or technical field. In the current claims, there is no additional elements that would integrate the abstract idea into a practical application (Step 2A: Prong Two Abstract Idea=Yes).
Next the claim as a whole is analyzed to determine if there are additional limitation recited in the claim such that the claim amount to significantly more than an abstract idea. The claim requires the additional limitation of a computer with the central processing unit, memory, a printer, an input and output terminal and a program. These generic computer components are claimed to perform the basic functions of storing, retrieving and processing data through the program that enables. In the current scenario, there are no additional elements that would amount to significantly more than the abstract idea. Therefore, the claim does not amount to significantly more than the abstract idea itself (Step 2B: No). Accordingly, the claim is not patent eligible.
Further, dependent claims do not add any positive limitation or step that recite within the scope of the claim and does not carry patentable weight they are also rejected for the same reasons as independent claims.
Accordingly, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes”/” Mathematical concepts” grouping of abstract ideas. Accordingly, the claim(s) recites an abstract idea.
This judicial exception is not integrated into a practical application as recited in Claims 29-44.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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 non-statutory double patenting ground provided the reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 29-44 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 10986675 B2.
Although the claims at issue are not identical, but they are not patentably distinct from each other because they are both exhibiting similar initial connection message with temporary identifier with descriptors and network slices.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to reasonably interpret the limitations of the instant application, which is the fact The Same Invention in Claims 29-44 of US Patent Publication No. 18/540116 and Claims 1-20 of US Patent No. 10986675 B2, since they are utilized the similar exhibiting similar initial connection message with temporary identifier with descriptors and network slices. It is obvious to a person having ordinary skill in the art to remove steps or elements from a previously filed claim absent evidence of criticality of the step. The rationale why a modification such as removal of steps does not appear to render the prior art unsatisfactory for its intended purpose. As such the removal is obvious.
The claims are rejected under obvious type double patenting because although different they are alleged not patentably distinct, they have a common inventor. The invention is also commonly owned by Convida Wireless at the time of invention.
This is an obviousness-type double patenting rejection. Further claim tables are provided below.
The Claims 29-44, of current application and U.S. Patent No. 10986675 are compared as follows, showing the obviousness of the teachings of the patent to the claimed invention:
Current Application
US Patent No. 10986675
Claims 29 (for example):
Claim 1 (for example):
A method implemented by a user equipment (UE), the method comprising: sending an initial connection request message to a network function, the initial connection request message comprising a temporary identifier of the UE and one or more slice descriptors, the one or more slice descriptors indicating one or more network slices that the UE is requesting to access;
and receiving, from the network function, a response message comprising an indication that a connection is permitted and an indication whether or not connection is permitted to the one or more network slices indicated to the one or more slice descriptors in the initial connection request message.
A method comprising:
receiving an initial connection message from a User Equipment (UE), wherein the initial connection message comprises a temporary identifier and a plurality of service descriptors, wherein the plurality of service descriptors comprise an indication of plurality of network services that the UE is expected to access; determining, based on the temporary identifier, an authentication server for authenticating the UE; communicating with the authentication server to authenticate the UE; obtaining UE subscription information from a User Data Repository (UDR), the subscription information includes identifiers of each of one or more slices that can be used by the UE: determining, based on the plurality of service descriptors and the UE subscription information, at least one network slice to which the UE should connect; and sending, to the UE, a response message comprising a new temporary identifier for the UE, an indication of whether or not the connection to the at least one network slice is permitted, and the identifiers of at least one of the one or more slices that are available for use by UE
In addition, although the conflicting claims are not identical, they are not patentably distinct from each other because the scope of each claim in the present application is essentially identical to the scope of a corresponding claim in the instant application and US Patent No. 10986675, as indicated in the above claim diagram (see above for details).
Also, it is noted, claims 29-44 of current application and claims 1-20 of U.S. Patent No. 10986675 are exhibiting similar initial connection message with temporary identifier with descriptors and network slices, similarly.
Allowable Subject Matter
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure [see USPTO Notice of References Cited Form 892]:
Claims 29-44 would be allowable if rewritten and/or amending to remedy the 101 rejections and double patenting presented in this office action.
The following is an examiner's statement of reasons for allowance:
In regards to Independent Claims 29 and 37, BRI (broadest reasonable interpretation) in light of the specification, Examiner finds the claimed invention is patentably distinct from the prior art of record, which sets forth in the following:
Sternberg et al. (US Patent No. 10986675 and Sternberg hereinafter), the closes prior made of record, relates to virtualization and network slicing. The user equipment (UE) interacts with an underlay network that interacts with virtual network slices. The UE interacts with the underlay network (ULN) to establish a connection to a virtual network slice. Procedures are defined to assign a new slice instance to a UE (UE initiated and ULN initiated) to change a UE Profile (UE initiated and ULN Initiated); and to change a UE's assigned slice instance (ULN Initiated.
However, Sternberg fails to show “a method implemented by a user equipment (UE), the method comprising: sending an initial connection request message to a network function, the initial connection request message comprising a temporary identifier of the UE and one or more slice descriptors, the one or more slice descriptors indicating one or more network slices that the UE is requesting to access; and receiving, from the network function, a response message comprising an indication that a connection is permitted and an indication whether or not connection is permitted to the one or more network slices indicated to the one or more slice descriptors in the initial connection request message.” … As claimed (supports in Para [0150-0160]; [0186]; [0197], for example).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sternberg et al. (US Patent No. 10986675), “Connecting to Virtualized Mobile Core Networks” (April 20, 2021) discloses uses virtualization and network slicing. The user equipment (UE) interacts with an underlay network that interacts with virtual network slices. The UE interacts with the underlay network (ULN) to establish a connection to a virtual network slice. Procedures are defined to assign a new slice instance to a UE (UE initiated and ULN initiated); to change a UE Profile (UE initiated and ULN Initiated); and to change a UE's assigned slice instance (ULN Initiated).
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANE D MIZRAHI whose telephone number is 571- 272-4079. The examiner can normally be reached on 7:30-3:30 PM (7:30 - 4:30 p.m.).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison T. Slater can be reached on (571) 270-0375. The fax phone numbers for the organization where this application or proceeding is assigned are (703) 872-9306 for regular communications and for After Final communication.
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/DIANE D MIZRAHI/ Primary Examiner, Art Unit 2647
Diane.Mizrahi@USPTO.gov