Prosecution Insights
Last updated: April 19, 2026
Application No. 18/572,822

METHOD TO PREVENT HIDDEN COMMUNICATION ON A CHANNEL DURING DEVICE AUTHENTICATION, CORRESPONDING VPLMN AND HPLMN

Non-Final OA §103§112
Filed
Dec 21, 2023
Examiner
TANG, KIET G
Art Unit
2469
Tech Center
2400 — Computer Networks
Assignee
Thales Dis France SAS
OA Round
1 (Non-Final)
90%
Grant Probability
Favorable
1-2
OA Rounds
2y 9m
To Grant
99%
With Interview

Examiner Intelligence

Grants 90% — above average
90%
Career Allow Rate
708 granted / 787 resolved
+32.0% vs TC avg
Moderate +13% lift
Without
With
+12.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
34 currently pending
Career history
821
Total Applications
across all art units

Statute-Specific Performance

§101
8.8%
-31.2% vs TC avg
§103
55.4%
+15.4% vs TC avg
§102
15.8%
-24.2% vs TC avg
§112
8.1%
-31.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 787 resolved cases

Office Action

§103 §112
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 . Claims 1-9 are pending. Claim Objections Claims 1-6 and 8-9 are objected to because of the following informalities: Claim 1 recites the limitation “a telecommunication terminal” in line 4. For clarity and consistency, it is suggested to revise as “the telecommunication terminal”. Claims 2 and 3 recite the limitation “Method according to claim 1” in line 1. For clarity and consistency, it is suggested to revise as “The method according to claim 1”. Claim 4 recites the acronym “MCC/MNC” without initially defining what it stands for. Claim 5 recites the limitation “A visited PLMN according to claim 4” in line 1. For clarity and consistency, it is suggested to revise as “The visited PLMN according to claim 4”. Claim 6 recites the limitation “A method according to claim 4” in line 1. For clarity and consistency, it is suggested to revise as “The visited PLMN according to claim 4”. Claim 8 recites the limitation “A home PLMN according to claim 7” in line 1. For clarity and consistency, it is suggested to revise as “The home PLMN according to claim 7”. Claim 9 recites the limitation “A home PLMN according to claim 7” in line 1. For clarity and consistency, it is suggested to revise as “The home PLMN according to claim 7”. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of the second paragraph of 35 U.S.C. 112: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “the long term key” in line 15. There is insufficient antecedent basis for this limitation in the claim. Claim 4 recites “said authentication vector” in line 8. There is insufficient antecedent basis for this limitation in the claim. Claim 4 recites “said telecommunication terminal” in line 13. There is insufficient antecedent basis for this limitation in the claim. Claim 4 recites “the authentication token” in line 14. There is insufficient antecedent basis for this limitation in the claim. Claim 7 recites “the long term key” in line 9. There is insufficient antecedent basis for this limitation in the claim. Claim 7 recites “said authentication vector” in line 10. There is insufficient antecedent basis for this limitation in the claim. Claims 2-3 are depending on claim 1 and therefore they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Claim 4 fails to recite the claim structure in the body of the claim. In particular, claim 4 recites, in the preamble, “A public land mobile network (PLMN) acting as a visited PLMN, said visited PLMN receiving a unique identifier from a telecommunication device cooperating with a secure element during an authentication phase, said visited PLMN being configured for generating a required information and sending said unique identifier and said required information to a home PLMN identified by a MCC/MNC comprised in said unique identifier, said visited PLMN:”, and thus claim is a machine claim. Yet, in the body of the claim recites steps/actions “If said home PLMN has sent said authentication vector and a random value, computing a cryptographic value from said required information and said random value, verifying that said cryptographic value received in said authentication vector corresponds to the cryptographic value computed at said visited PLMN and, if yes, transmitting from said visited PLMN to said telecommunication terminal said cryptographic value and the authentication token retrieved from said authentication vector; If said home PLMN has sent only said authentication vector containing said random value instead of said cryptographic value, computing another cryptographic value from said required information and said random value, and transmitting from said visited PLMN to said telecommunication terminal said other cryptographic value and the authentication token retrieved from said authentication vector” without any structure required by the machine claim, which create confusion when directed infringement occurs The claim is indefinite. See IPXL v. Amazon, 430 F.3d 1377, 1384 (Fed. Cir. 2005). Claim 7 fails to recite the claim structure in the body of the claim. In particular, claim 7 recites, in the preamble, “A public land mobile network (PLMN) acting as a home PLMN, said home PLMN being configured for:”, and thus claim is a machine claim. Yet, in the body of the claim recites steps/actions “receiving from a visited PLMN a required information and a unique identifier of a secure element cooperating with a telecommunication terminal; generating: a random value and computing a cryptographic value based on said random value and said required information, or an authentication vector based on said cryptographic value and the long term key of said secure element, said long term key being associated to said unique identifier, and sending said authentication vector and said random value or only said authentication vector containing said random value instead of said cryptographic value to said visited PLMN” without any structure required by the machine claim, which create confusion when directed infringement occurs. The claim is indefinite. See IPXL v. Amazon, 430 F.3d 1377, 1384 (Fed. Cir. 2005). Claims 5-6 are depending on claim 4 and therefore they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Claims 8-9 are depending on claim 7 and therefore they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jerichow et al. (Pub. No.: US 20190182654 A1), hereinafter Jerichow, in view of Thakare et al. (Pub. No.: US 20100064135 A1), hereinafter Thakare. With respect to claim 7, Jerichow teaches public land mobile network (PLMN) acting as a home PLMN (figures 4, 5, [0079], i.e., HN AUSF/UDM), said home PLMN being configured for: receiving from a visited PLMN a required information and a unique identifier of a secure element cooperating with a telecommunication terminal (figures 4, 5, [0076-0079], HN AUSF/UDM receives from SN AMF a Request for UE Authentication/Authorization, UE Authentication/Authorization includes (AU, SN_Id), where AU=H(SUCI, Rand_SN), and SN_Id is the identifier for the Serving Network (SN). Jerichow does not explicitly teach generating: a random value and computing a cryptographic value based on said random value and said required information. However, Thakare teaches generating: a random value and computing a cryptographic value based on said random value and said required information (figure 7, [0087], AAA server generates a random value and computing a cryptographic value, where cryptographic value is computed as XRES=F(K, RAND||AC)). Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to combine the teachings of Thakare, generating: a random value and computing a cryptographic value based on said random value and said required information, into the teachings of Jerichow, in order to protect the authentication capabilities of the telecommunication system(Thakare, [0029]). With respect to claim 8, the combination of Jerichow and Thakare teaches the home PLMN of claim 7. wherein said cryptographic value is a hash of a concatenation of said required information and said random value. Jerichow does not explicitly teach wherein said cryptographic value is a hash of a concatenation of said required information and said random value. However, Thakare teaches wherein said cryptographic value is a hash of a concatenation of said required information and said random value (figure 7, [0087], cryptographic value is computed as XRES=F(K, RAND||AC)). Therefore, it would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to combine the teachings of Thakare, wherein said cryptographic value is a hash of a concatenation of said required information and said random value, into the teachings of Jerichow, in order to protect the authentication capabilities of the telecommunication system(Thakare, [0029]). With respect to claim 9, the combination of Jerichow and Thakare teaches the home PLMN of claim 7. Jerichow teaches wherein said required information contains at least a random value (figures 4, 5, [0076-0079], UE Authentication/Authorization includes (AU, SN_Id), where AU=H(SUCI, Rand_SN), SN_Id is the identifier for the Serving Network (SN), and a random number is Rand_SN). Allowable Subject Matter Claims 1-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is an examiner’s statement of reasons for allowance: Claims 1-6 are allowed over prior arts of record because the arts of record fail to reasonably suggest, or render obvious the following italic limitations: In claims 1 and 4, computing a cryptographic value from said required information and said random value, verifying that said cryptographic value received in said authentication vector corresponds to the cryptographic value computed at said visited PLMN and, if yes, transmitting from said visited PLMN to said telecommunication terminal said cryptographic value and the authentication token retrieved from said authentication vector; and computing another cryptographic value from said required information and said random value, and transmitting from said visited PLMN to said telecommunication terminal said other cryptographic value and the authentication token retrieved from said authentication vector in combination with other limitations recited in claims 1 and 4. Note that the first closest prior art Jerichow, discloses Method for preventing transmission of hidden information in a communication channel during a telecommunication terminal authentication phase, said method comprising (figures 4, 5, [0076-0079]): Transmitting from a telecommunication terminal cooperating with a secure element to a visited public land mobile network (PLMN) a unique identifier of said secure element (figures 4, 5, [0076-0079]); Generating at said visited PLMN a required information and sending said unique identifier and said required information to a home PLMN identified by a Mobile Country Code/Mobile Network Code (MCC/MNC) comprised in said unique identifier (figures 4, 5, [0076-0079]); and At said visited PLMN (figures 4, 5, [0076-0079]). However, Jerichow fails to disclose or render obvious the above italic as claimed. Note that the second closest prior art Thakare, discloses At said home PLMN, generating a random value and computing a cryptographic value based on said random value and said required information (figure 7, [0087]). However, Thakare fails to disclose or render obvious the above italic as claimed. Note that the third closest prior art Ghader Ebrahimpour ET AL: "Introducing the GBA Covert Channel in IP Multimedia Subsystem (IMS)", hereinafter Ghader Ebrahimpour, discloses At said home PLMN, generating an authentication vector based on said cryptographic value and the long term key of said secure element (section 5.1 Bootstrapping Authentication Procedure (BAP)), said long term key being associated to said unique identifier (section 5.1 Bootstrapping Authentication Procedure (BAP)), and sending said authentication vector and said random value or only said authentication vector containing said random value instead of said cryptographic value to said visited PLMN (section 5.1 Bootstrapping Authentication Procedure (BAP)); If said home PLMN has sent said authentication vector and said random value (section 5.1 Bootstrapping Authentication Procedure (BAP)), If said home PLMN has sent only said authentication vector containing said random value instead of said cryptographic value (section 5.1 Bootstrapping Authentication Procedure (BAP)). However, Ghader Ebrahimpour fails to disclose or render obvious the above italic as claimed. "Introducing the GBA Covert Channel in IP Multimedia Subsystem (IMS)” is Applicant information disclosure statement (IDS) submitted on 12/21/2023. In view of the above, references Jerichow, Thakare, and Ghader Ebrahimpour individually or in-combination fails to reasonably suggest, or render obvious. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pub. No.: US 20110004762 A1; “Horn”, ([0005]) Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIET TANG whose telephone number is (571)270-7193. The examiner can normally be reached on M-F 8:00-5:00. 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, IAN MOORE can be reached on (571) 272-3085. 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. /KIET TANG/ Primary Examiner, Art Unit 2469
Read full office action

Prosecution Timeline

Dec 21, 2023
Application Filed
Mar 06, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
90%
Grant Probability
99%
With Interview (+12.6%)
2y 9m
Median Time to Grant
Low
PTA Risk
Based on 787 resolved cases by this examiner. Grant probability derived from career allow rate.

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