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 1-20 are pending for examination.
Claim Objections
In Claims 5, 12 and 19, the Examiner has noted the use of the clauses “to be” and “adapted to” and “adaptable to.”
Examples of such claim language raise a question as to the limiting effect of the language in a claim. The claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Notably, limitations recited after the phrases will be considered optional to the functionality of the claimed system.
It is suggested to positively and concretely define the functionality of the claimed invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “for determining” and “for receiving” in claims 1, 8 and 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 nonstatutory 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 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 1-22 of U.S. Patent No. 12082288 B2.
Although the claims at issue are not identical, but they are not patentably distinct from each other because they are both exhibiting similar first core network entity, a signaling connection to the UE; receiving, by the first core network entity and from the UE via the signaling connection, network slice information and a non-access stratum NAS message; determining, by the first core network entity and based on the network slice information, a target network slice from the at least one network slice, where the target network slice includes a second core network entity, and the UE performs NAS communication with the second core network entity.
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 1-20 of US Patent Application No. 18/601556 and Claims 1-22 of US Patent No. 12082288 B2, since they are utilized the similar first core network entity, a signaling connection to the UE; receiving, by the first core network entity and from the UE via the signaling connection, network slice information and a non-access stratum NAS message; determining, by the first core network entity and based on the network slice information, a target network slice from the at least one network slice, where the target network slice includes a second core network entity, and the UE performs NAS communication with the second core network entity. 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 Huawei Technologies Co, LTD at the time of invention.
This is an obviousness-type double patenting rejection. Further claim tables are provided below.
The Claims 1-20, of current application and U.S. Patent No. 12082288 B2 are compared as follows, showing the obviousness of the teachings of the patent to the claimed invention:
Current Application
US Patent No. 12082288
Claims 1 (for example):
Claim 1 (for example):
a transceiver; and a processor coupled to the transceiver and configured to cause the apparatus to:
establish a signaling connection to a first core network entity; send, to the first core network entity, via the signaling connection, and using the transceiver, network slice information and a first non-access stratum (NAS) container, wherein the network slice information is for determining at least one network slice, wherein the at least one network slice comprises a first network slice, wherein the first network slice comprises a second core network entity, wherein the second core network entity is for receiving the first NAS container from the first core network entity, and wherein the first NAS container comprise a first NAS message; and perform, through a radio access network (RAN), through the first core network entity, and using the transceiver, NAS communication with the second core network entity
A wireless communication method is applied to a communications system including a UE, a RAN, a first core network entity, and at least one network slice. The wireless communication method includes: establishing, by the first core network entity, a signaling connection to the UE; receiving, by the first core network entity and from the UE via the signaling connection, network slice information and a non-access stratum NAS message; determining, by the first core network entity and based on the network slice information, a target network slice from the at least one network slice, where the target network slice includes a second core network entity, and the UE performs NAS communication with the second core network entity using the RAN and the first core network entity; and sending, by the first core network entity, the NAS message to the second core network entity
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. 12082288, as indicated in the above claim diagram (see above for details).
Also, it is noted, claims 1-20 of current application and claims 1-22 of U.S. Patent No. 12082288 are exhibiting first core network entity, a signaling connection to the UE; receiving, by the first core network entity and from the UE via the signaling connection, network slice information and a non-access stratum NAS message; determining, by the first core network entity and based on the network slice information, a target network slice from the at least one network slice, where the target network slice includes a second core network entity, and the UE performs NAS communication with the second core network entity, similarly.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten and/or amending to remedy the 101 rejections and double patenting presented in this office action.
In regards to Independent Claims 1, 8 and 15, 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:
Jin et al., (US Patent No. 12082288 B2), the closes prior made of record, relates to wireless communication for establishing, by the first core network entity, a signaling connection to the user equipment , network slice information and a non-access stratum message, determining, by the first core network entity a target network slice from network slice, where the target network slice includes a second core network entity, and the user equipment performs non-access stratum communication with the second core network entity using the radio access network and the first core network entity; and sending, by the first core network entity, the non-access stratum message to the second core network entity.
However, Jin et al., fails to show “establish a signaling connection to a first core network entity, send network slice information and a first non-access stratum container, network slice information for determining network slice, network slice comprises a first network slice, first network slice comprises a second core network entity, the second core network entity receiving the first non-access stratum container from the first core network entity, and a first non-access stratum message and performs, through a radio access network (RAN), through the first core network entity, and using the transceiver, NAS communication with the second core network entity.” … As claimed (supports in Para [0351-0352]; [0399]; [0400]; for example).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jin et al., (US Patent No. 12082288 B2), “Wireless communication method and device” (September 3, 2024, 2020) discloses wireless communication for establishing, by the first core network entity, a signaling connection to the UE; receiving, by the first core network entity and from the UE via the signaling connection, network slice information and a non-access stratum NAS message; determining, by the first core network entity and based on the network slice information, a target network slice from the at least one network slice, where the target network slice includes a second core network entity, and the UE performs NAS communication with the second core network entity using the RAN and the first core network entity; and sending, by the first core network entity, the NAS message to the second core network entity.
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
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