DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the preliminary amendment field on 08/14/2023. Claims 46-65, of which claims 46, 57 and 65 are independent, were pending in this application and have been considered below.
Priority
Acknowledgment is made of the Applicant's indication of National Stage entry from the International Application No. PCT/EP2021/053518 dated 02/12/2021.
Information Disclosure Statement
The references cited on the information disclosure statement (IDS) submitted on 07/30/2024,10/02/2024, 06/04/2025, and 12/17/2025 have been considered and made of record by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in "at least one of two-digit, three-digit, or four-digit" representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. "The identical invention must be shown in as complete detail as is contained in the … claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01. ("(A) Prove a primary reference contains an "enabled disclosure;" (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent.").
Claim 46-48, 53-57, and 60-65 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. US 2022/0240213 A1 to Ly et al.
Regarding claims 46 and 65, Ly et al. disclose a user equipment (UE) (Fig. 1F: “102”; Fig. 5A:”UE 102”; ¶[0063]: "The communications system 100 may include wireless transmit/receive units … WTRUs 102."; ¶[0064]: "each WTRU may comprise ... user equipment (UE)") in a network (¶[0063]: "The communications system 100 may include, a radio access network (RAN) 103/104/105/103b/104b/105b, a core network 106/107/109, a public switched telephone network (PSTN) 108, the Internet 110, other networks 112, and Network Services 113.”; ¶[0065]: "The communications system 100 may also include a base station 114a and a base station 114b.") , comprising:
at least one processor; and at least one memory storing instructions that when executed by the at least one processor, cause the UE at least to perform (¶[0136] "the apparatuses, systems, methods and processes described herein may be embodied in the form of computer executable instructions (e.g., program code) stored on a computer-readable storage medium which instructions, when executed by a processor, such as processors 118 or 91, cause the processor to perform and/or implement the systems, methods and processes described herein.”):
sending, to the network, an indication that the UE supports a multi universal subscriber identity module, USIM, mode (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier"; ¶ [0231]: "UE provides multi-SIM assistance information to the CN; multi-SIM assistance information may consist of one or more of: paging criteria, limit paging area, paging occasion separation, number of missed pages before notification, proposed temporary identifier" );
receiving, from the network, an indication that the network supports both paging filtering based on paging filtering information from the UE and providing a paging cause code in a paging message to the UE (¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.; ¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”); and
in response to receiving the indication, deciding whether to provide the paging filtering information to the network to command the network to apply the paging filtering, or to apply paging response behaviour based on a paging cause code in a paging message received from the network (¶[0471]: “The Paging Criteria may be provided by the UE upon one of the registration procedures to configure the CN to filter when to page the UE when the UE has activated the registration suspend timer ... the criteria may be provided in a service request when the UE wants to inform the network it is busy and to stop paging the UE for a certain duration. The criteria may be, for example, a white or black listing of service categories/prioritization that the UE wants the CN to filter when deciding to page the UE.”) {i.e., the UE can stop the paging by e.g., sending the busy indication, or can activate/deactivate the filtering. Hence, paging causes and paging filtering could be activated or deactivated by the UE's decision.}.
Regarding claim 47, Ly et al. disclose as stated above. Ly et al. also disclose wherein deciding is based on whether the UE supports at least one of providing the paging filtering information to the network or applying the paging response behaviour based on a paging cause code in a paging message received from the network (¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.; ¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”).
Regarding claim 48, Ly et al. disclose as stated above. Ly et al. also disclose wherein the instructions, when executed by the at least one processor, further cause the UE at least to perform: wherein if the UE supports both providing the paging filtering information to the network and applying the paging response behaviour based on a paging cause code in a paging message received from the network, deciding whether to provide the paging filtering information or to apply paging response behaviour based on a paging cause code in a paging message received from the network is based on a default behaviour (¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”; ¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.).
Regarding claim 53, Ly et al. disclose as stated above. Ly et al. also disclose wherein the indication sent to the network indicates that the UE is in the multi USIM mode of operation or that the UE supports at least one of the paging filtering or the paging response behaviour based on a paging cause code in a paging message received from the network (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier”).
Regarding claim 54, Ly et al. disclose as stated above. Ly et al. also disclose wherein if the UE supports both providing the paging filtering information and applying the paging response behaviour based on a paging cause code in a paging message received from the network, the indication sent to the network further indicates that the UE supports both providing the paging filtering information and applying the paging response behaviour based on a paging cause code in a paging message received from the network (¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”; ¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.)..
Regarding claim 55, Ly et al. disclose as stated above. Ly et al. also disclose wherein the instructions, when executed by the at least one processor, further cause the UE at least to perform: sending, to the network, a message including the indication that the UE supports the multi USIM mode (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier”).
Regarding claim 56, Ly et al. disclose as stated above. Ly et al. also disclose wherein the message sent to the network is a registration request message (¶¶[0456]:” Step S4104: After the user has configured the service prioritization list, the UE sends a registration request to the RAN node with the multi-SIM policy shown in Table 2 that includes a multi-SIM indicator and the multi-SIM assistance information”).
Regarding claim 57, Ly et al. disclose a base station (¶[0065]: "The communications system 100 may also include a base station 114a and a base station 114b.") in a network (¶[0063]: "The communications system 100 may include, a radio access network (RAN) 103/104/105/103b/104b/105b, a core network 106/107/109, a public switched telephone network (PSTN) 108, the Internet 110, other networks 112, and Network Services 113.”), comprising:
at least one processor; and at least one memory including computer program code, wherein the computer program code causes the base station, when executed with the at least one processor (¶[0136] "the apparatuses, systems, methods and processes described herein may be embodied in the form of computer executable instructions (e.g., program code) stored on a computer-readable storage medium which instructions, when executed by a processor, such as processors 118 or 91, cause the processor to perform and/or implement the systems, methods and processes described herein.”), to at least:
receive, from a user equipment, UE, an indication that the UE supports a multi universal subscriber identity module, USIM, mode (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier"; ¶ [0231]: "UE provides multi-SIM assistance information to the CN; multi-SIM assistance information may consist of one or more of: paging criteria, limit paging area, paging occasion separation, number of missed pages before notification, proposed temporary identifier" ); and
send, to the UE, an indication that the network supports both paging filtering based on paging filtering information from the UE and providing a paging cause code in a paging message to the UE (¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.; ¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”), the indication commanding the UE to decide whether to provide the paging filtering information to the network to command the network to apply the paging filtering, or to apply paging response behaviour based on a paging cause code to be received in a paging message from the network (¶[0471]: “The Paging Criteria may be provided by the UE upon one of the registration procedures to configure the CN to filter when to page the UE when the UE has activated the registration suspend timer ... the criteria may be provided in a service request when the UE wants to inform the network it is busy and to stop paging the UE for a certain duration. The criteria may be, for example, a white or black listing of service categories/prioritization that the UE wants the CN to filter when deciding to page the UE.”) {i.e., the UE can stop the paging by e.g., sending the busy indication, or can activate/deactivate the filtering. Hence, paging causes and paging filtering could be activated or deactivated by the UE's decision.}.
Regarding claim 60, Ly et al. disclose as stated above. Ly et al. also disclose wherein the indication received from the UE indicates that the UE is in the multi USIM mode of operation or that the UE supports at least one of the paging filtering or the paging response behaviour based on a paging cause code in a paging message received from the network (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier”).
Regarding claim 61, Ly et al. disclose as stated above. Ly et al. also disclose wherein if the UE supports both providing the paging filtering information and applying the paging response behaviour based on a paging cause code in a paging message received from the network, the indication received from the UE further indicates that the UE supports both providing the paging filtering information and applying the paging response behaviour based on a paging cause code in a paging message received from the network (¶[0456]: "Step S4112: The AMF returns a registration accept response to the UE and includes the updates to the multi-SIM policy that were made in step S4110."; ¶[0281]” “cause code may be received from second PLMN”; ¶[0434]: "AMF2 may evaluate available multi-SIM assistance information provided by the UE to determine whether the downlink data meets the paging filter criteria. If the criteria is met, AMF2 generates a NAS notification to send to the UE.)..
Regarding claim 62, Ly et al. disclose as stated above. Ly et al. also disclose wherein the indication sent to the UE commanding the UE to decide based on a default behaviour (¶[0471]: “The Paging Criteria may be provided by the UE upon one of the registration procedures to configure the CN to filter when to page the UE when the UE has activated the registration suspend timer ... the criteria may be provided in a service request when the UE wants to inform the network it is busy and to stop paging the UE for a certain duration. The criteria may be, for example, a white or black listing of service categories/prioritization that the UE wants the CN to filter when deciding to page the UE.”) {i.e., the UE can stop the paging by e.g., sending the busy indication, or can activate/deactivate the filtering. Hence, paging causes and paging filtering could be activated or deactivated by the UE's decision.}..
Regarding claim 63, Ly et al. disclose as stated above. Ly et al. also disclose wherein the instructions, when executed by the at least one processor, further cause the base station at least to perform: receiving, from the UE, a message including the indication that the UE supports the multi USIM mode (¶[0348] "Step S1002 ... if both SIM1 and SIM2 are installed at the same time, the UE may include a Multi-SIM indication with the appropriate SIM2 identifier"; ¶ [0231]: "UE provides multi-SIM assistance information to the CN; multi-SIM assistance information may consist of one or more of: paging criteria, limit paging area, paging occasion separation, number of missed pages before notification, proposed temporary identifier" ).
Regarding claim 64, Ly et al. disclose as stated above. Ly et al. also disclose wherein the message received from the UE is a registration request message (¶¶[0456]:” Step S4104: After the user has configured the service prioritization list, the UE sends a registration request to the RAN node with the multi-SIM policy shown in Table 2 that includes a multi-SIM indicator and the multi-SIM assistance information”).
Allowable Subject Matter
Claims 49-52 and 58-59 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Examiner's note: As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631