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 .
Examiner Note
It is noted that when current application is compared with US Patent Application No. 18/018, 242, 18/272, 096 and 18/290, 151 for obviousness-type double patenting they are found to be patentably distinct from each other and cannot be anticipated by, or would have been obvious over, the reference claim (s) and for that reasons, non statutory double patenting rejection with reference application is not feasible at this time. However, based on response filed, examiner will re-consider reference application for obviousness type double patenting.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
US Patent Application No. 18/035, 611
Claims 1-3, 5-16, 18, 20, 21, 43-44 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12, 14-18, 29-30, 32 of US Patent Application No. 18/035, 611. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations recited in pending application are transparently found in US Patent Application No. 18/035, 611 with obvious wording variation. For example, compare Claim 1 of pending application with claim 1 and 8 of US Patent Application No. 18/035, 611, they both recite
A method for (A method for) rejecting a paging (not to perform a paging response), performed by a terminal supporting a multi-card capability, comprising (performed by a multi-subscriber identity module (SIM) terminal, the method comprising):
receiving a paging message sent by a network device in a case of being in a communication state (receiving a paging message for paging a second SIM in an inactive state sent by a target base station through paging signaling); and
sending a rejection response message corresponding to the paging message to the network device based on multi-card capability information and the paging message of the network device (sending target indication information to the target base station by the second SIM; wherein the target indication information is for informing a network side that the second SIM has received the paging message, but does not perform a paging response),
wherein the multi-card capability information is configured to indicate whether the network device supports a multi-card capability (claim 8, wherein the target indication information is for indicating at least one of: one or more other SIMs are in service communication on the multi-SIM terminal).
Further, analyzing and comparing dependent claims 2-12 of the pending application with claims 2-8 of US Patent Application No. 18/035, 611 it was found that they recite the same limitation with wording changes.
Similarly, analyzing and comparing independent claims 13, 43 of the pending application including its dependent claims with claims 9, 29 including its dependent claims of US Patent Application No. 18/035, 611 it was found that they recite the same limitation with wording changes.
US Patent Application No. 18/033, 062
Claims 1-3, 5-16, 18, 20, 21, 43-44 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 7, 9-11, 13-14, 17-21, 24-26, 28, 29 of US Patent Application No. 18/033, 062. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations recited in pending application are transparently found in US Patent Application No. 18/033, 062 with obvious wording variation. For example, compare Claim 1 of pending application with claim 1 of US Patent Application No. 18/033, 062, they both recite
A method for rejecting a paging (determining not to respond to the paging), performed by a terminal supporting a multi-card capability ( in response to determining that a first Subscriber Identity Module (SIM) card of a multi-card terminal is in service), comprising (An information sending method, comprising):
receiving a paging message sent by a network device in a case of being in a communication state (detecting a paging message for paging a second SIM card that is sent by a second base station); and
sending a rejection response message corresponding to the paging message to the network device (sending, by the second SIM card of the multi-card terminal, target indication information to the second base station in response to determining not to respond to the paging, wherein the target indication information is used to inform the second base station that the second SIM card has received the paging message, but not to respond to the paging) based on multi-card capability information and the paging message of the network device (claim 4, determining the target condition according to configuration of the multi-card terminal),
wherein the multi-card capability information is configured to indicate whether the network device supports a multi-card capability (claim 4, determining the target condition according to configuration of the multi-card terminal).
Further, analyzing and comparing dependent claims 2-12 of the pending application with claims 2-5, 7, 9 of US Patent Application No. 18/033, 062 it was found that they recite the same limitation with wording changes.
Similarly, analyzing and comparing independent claims 13 and 43 of the pending application including its dependent claims with claims 10, 19 including its dependent claims of US Patent Application No. 18/033, 062 it was found that they recite the same limitation with wording changes.
Note the issued claims of US Patent Application No. 18/035, 611, 18/033, 062 are narrower in scope such that the claimed limitations as recited in pending application are encompassed by US Patent Application No. 18/035, 611 and 18/033, 062 respectively.
This is a provisional nonstatutory double patenting rejection.
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 1-3, 5-16, 18, 20, 21, 43-44 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”. Claim(s) 1-3, 5-16, 18, 20, 21, 43-44 is/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 using measurement received from a mobile device, transmitting from the source relay node to a donor access node.
The apparatus and the method claim 1, 13 and 43 recites limitation, “receiving a paging message sent by a network device in a case of being in a communication state; and sending a rejection response message corresponding to the paging message to the network device based on multi-card capability information and the paging message of the network device”. 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 receiving a paging message sent by a network device in a case of being in a communication state; and then sending a rejection response message corresponding to the paging message to the network device based on multi-card capability information and the paging message of the network device, the multi-card capability information is configured to indicate whether the network device support multi-card capability. The receiving and sending steps and indicating step recited in the claim without reciting the details of how a solution to a problem is accomplished is no more than an abstract idea i.e., mental process of sending and receiving information and analyzing, i.e., "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016) (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.
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 (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 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)(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.
Claim(s) 1-3, 5-16, 18, 20, 21, 43-44 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Guttman et al. Pub. No. US 20220248368 A1
Regarding Claim 1, Guttman teaches a method for rejecting a paging (Fig. 2 and Para 46, drop the page based on the HEED message), performed by a terminal (Fig. 2 Unit 41 and Para 49, the UE may proceed to drop the paging message) supporting a multi-card capability (Fig. 1 Unit 41 and Para 31, FIG. 1 shows a Multi-USIM UE 41, having two USIMs 42, 43. The UE 41 is configured such that USIM 42 is associated with network 21 and USIM 43 is as-sociated with network 31 i.e., supporting a multi-card capability), comprising:
receiving a paging message sent by a network device (Fig. 2 Step 4b and Para 45, Step 4b. Paging: the AMF 110 determines the page and its cause and encodes the cause in the message. <HEED> is a cause that forces the UE 41 to service the page. However, <not HEED> allows the UE 41 to ignore the page if there's a performance reason for that i.e., receiving a paging message sent by a network device) in a case of being in a communication state (Fig. 2 Step 4a, UE is up reactivation i.e., in a case of being in the communication state); and
sending a rejection response message corresponding to the paging message to the network device (Fig. 2 Step 5a and Para 49, Step 5a: hence two realizations of HEED are possible, namely with and without Step 5a. If <not HEED> has been received, the UE may proceed to drop the paging message and alert the network (via AMF 110) that it's doing nothing (i.e., not reading the mobile terminated data and processing it) with a NOTHING DOING message i.e., sending a rejection response message corresponding to the paging message to the network device) based on multi-card capability information and the paging message of the network device (para 58, the HEED cause may be provided to the MUSIM UE 41 by PLMN1 (of say SIM-1) when a highest priority service data or signaling (for example emergency or mission critical service) is pending to be delivered to the UE 41. The UE 41 will immediately respond with an initial NAS message unless the UE is also executing a similar highest priority service on PLMN2 (of say SIM-2) i.e. the same category of service. In such a collision case, where there is no obvious solution, the UE 41 may make a choice whether to respond to paging message with HEED cause indication),
wherein the multi-card capability information is configured to indicate whether the network device supports a multi-card capability (Para 58, the HEED cause may be provided to the MUSIM UE 41 by PLMN1 (of say SIM-1) when a highest priority service data or signaling (for example emergency or mission critical service) is pending to be delivered to the UE 41. The UE 41 will immediately respond with an initial NAS message unless the UE is also executing a similar highest priority service on PLMN2 (of say SIM-2) i.e. the same category of service. In such a collision case, where there is no obvious solution, the UE 41 may make a choice whether to respond to paging message with HEED cause indication i.e., the multi-card capability information is configured to indicate whether the network device supports a multi-card capability).
Regarding Claim 2, Guttman teaches further comprising: receiving the multi-card capability information sent by the network device (Para 58).
Regarding Claim 3, Guttman teaches wherein the network device is a base station, and receiving the multi-card capability information sent by the network device comprises: receiving a system broadcast message sent by the base station, wherein the system broadcast message comprises the multi-card capability information, or wherein the network device is a core network device, and receiving the multi- card capability information sent by the network device comprises: receiving a core network signaling sent by the core network device, wherein the core network signaling comprises the multi-card capability information (Para 20).
Regarding Claim 5, Guttman teaches wherein the multi-card capability information comprises at least one of: whether a cell supports the multi-card capability, whether a base station supports multi-card capability, and whether a core network device supports the multi-card capability (Fig. 2 Step 3a).
Regarding Claim 6, Guttman teaches wherein the multi-card capability information comprises a paging cause, configured to indicate that the network device supports the multi-card capability (Para 44-45).
Regarding Claim 7, Guttman teaches wherein the multi-card capability information further comprises at least one of busy indication information, filtering information, and multi-card capability leaving information; the busy indication information is configured to indicate that the terminal is in a busy state, the multi-card capability leaving information is configured to indicate leaving a current service, and the filtering information is configured to indicate filtering a corresponding paging service (Para 58).
Regarding Claim 8, Guttman teaches wherein the paging message comprises indication information, configured to indicate a paging cause for the paging message (Para 44).
Regarding Claim 9, Guttman teaches wherein sending the rejection response message corresponding to the paging message to the network device based on multi-card capability information and the paging message of the network device comprises one of:
determining that the multi-card capability information comprises that the network device supports the multi-card capability, and the paging message does not comprise the paging cause, and sending the rejection response message corresponding to the paging message to the network device; or
determining that the multi-card capability information comprises that the network device supports the multi-card capability, and the paging cause for the paging message being is a non-voice services and sending the rejection response message corresponding to the paging message to the network device; or
determining that the multi-card capability information comprises that the network device does not support the multi- card capability, and sending the rejection response message corresponding to the paging message to the network device (Para 28 and 51).
Regarding Claim 10, Guttman teaches wherein sending the rejection response message corresponding to the paging message to the network device based on multi-card capability information and the paging message of the network device comprises: sending the rejection response message corresponding to the paging message to the network device based on the multi-card capability information, the paging message, and service information currently processed (Para 45-46).
Regarding Claim 11, Guttman teaches wherein sending the rejection response message corresponding to the paging message to the network device based on the multi-card capability information, the paging message, and the service information currently processed comprises one of:
determining that the multi-card capability information comprising comprises that the network device supports the multi-card capability, and a priority level of the paging message being is lower than a priority level of the service information, and sending the rejection response message corresponding to the paging message to the network device; or
determining that the multi-card capability information comprising comprises that the network device does not support the multi-card capability, and the priority level of the paging message being is lower than the priority level of the service information, and sending the rejection response message corresponding to the paging message to the network device (Para 58).
Regarding Claim 12, Guttman teaches wherein the terminal supports a plurality of cards; the terminal is in the communication state in a case that a first card among the plurality of cards communicates with the network device; wherein in the case that the first card among the plurality of cards communicates with the network device, receiving the paging message sent by the network device comprises: receiving the paging message sent by the network device based on cards other than the first card among the plurality of cards (Para 58).
Regarding Claim 13, it has been rejected for the same reasons as claim 1.
Regarding Claim 14, it has been rejected for the same reasons as claim 2.
Regarding Claim 15, it has been rejected for the same reasons as claim 3.
Regarding Claim 16, Guttman teaches wherein the network device is a core network device and sending the multi-card capability information to the terminal comprises: sending, by the core network device, a core network signaling to the terminal, wherein the core network signaling comprises the multi-card capability information (Para 20 and Para 78, core network).
Regarding Claim 18, Guttman teaches wherein the multi-card capability information comprises a paging cause, configured to indicate that the network device supports the multi-card capability (Para 28).
Regarding Claim 20, Guttman teaches wherein the paging message comprises indication information, configured to indicate a paging cause for the paging message (Para 44).
Regarding Claim 21, it has been rejected for the same reasons as claim 12.
Regarding Claim 43, it has been rejected for the same reasons as claim 1 and further teaches a terminal (Fig. 8 and Para 70, UE 800), comprising: a processor (fig. 8 Unit 840); a transceiver coupled with the processor (Fig. 8 Unit 820 and Para 70); and a memory for storing program codes executable by the processor (Fig. 8 Unit 860 and Para 75).
Regarding Claim 44, it has been rejected for the same reasons as claim 13 and further teaches a network device (Fig. 7 Unit 700), comprising: a processor (Fig. 7 Unit 740 and Para 62); a transceiver coupled with the processor (Fig. 7 Unit 720 and Para 62); and a memory for storing program codes executable by the processor (Fig. 7 Unit 760 and Para 62).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shrivastava et al. Pub. No. US 20240406706 A1 - A METHOD AND APPARATUS FOR HANDLING BUSY INDICATION FOR MUSIM UE
Velev et al. Pub. No. US 20240196468 A1 - KEEPING A TERMINAL IN A CONNECTED STATE WHILE THE TERMINAL IS AWAY FROM A COMMUNICATION NETWORK
Shrivastava et al. Pub. No. US 20240089918 A1 - PAGING COLLISION AVOIDANCE BY UE COMPRISING PLURALITY OF RAT NETWORKS AND SIMS IN CELLULAR NETWORK
Sabouri-Sichani et al. Pub. No. US 20230232368 A1 - MULTI-PLMN MUSIM FOR TELECOMMUNICATION SYSTEMS
Shaheen Pub. No. US 20220361133 A1 - METHOD AND APPARATUS FOR REPORTING MULTI-USIM UE CAPABILITY SUPPORTING DIFFERENT OPERATORS
Kumar et al. Pub. No. US 20220346060 A1 - METHOD AND SYSTEM TO DETERMINE SERVICE IN INCOMING MESSAGE
Velev et al. Pub. No. US 20220053448 A1 - CONNECTION SUSPENSION FOR MULTIPLE SIMS
WO 2020222531 A1 - METHOD AND SYSTEMS FOR RECEIVING INCOMING SERVICE NOTIFICATION FOR SECOND SIM NETWORK USING FIRST SIM NETWORK
EP 4044706 A1 - COMMUNICATION METHOD AND APPARATUS
3GPP TSG-RAN WG3 Meeting #110-e R3-206924 E-meeting, 2 - 12 Nov 2020
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NIZAR N. SIVJI
Primary Examiner
Art Unit 2647
/NIZAR N SIVJI/Primary Examiner, Art Unit 2647
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