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 .
Response to Amendment and Argument
1. This communication is in response to applicant's 07/06/2026 communications in the application of Suh et al. for the "METHOD AND DEVICE FOR NETWORK SLICE REPLACEMENT BASED ON TERMINAL IN WIRELESS COMMUNICATION SYSTEM" filed 04/05/2024. This application claims foreign priority to 10-2023-0046341, filed 04/07/2023 in Korea. The amendment and response have been entered and made of record. Claims 1-20 have been canceled and new claims 21-40 have been added. Claims 21-40 are pending in the present application.
2. Applicant’s remarks and argument to the rejected claims are insufficient to distinguish the claimed invention from the cited prior arts or overcome the rejection of said claims under 35 U.S.C. 103 as discussed below. Applicant’s argument with respect to the pending claims have been fully considered, but they are not persuasive for at least the following reasons.
3. In response to applicant's argument that the combination of cited references fails to present a prima facie case of obviousness. In response, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications. As to the importance of the difference between “a substantial new question of patentability” and a “prima facie” case of unpatentability see generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985). Also, See MPEP § 2141.01(a) for a discussion of analogous and nonanalogous art in the context of establishing a prima facie case of obviousness under 35 U.S.C. 103. See MPEP § 2131.05 for a discussion of analogous and nonanalogous art in the context of 35 U.S.C. 102. 904.02. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06 and In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
4. In response to Applicant’s argument that the reference does not teach or reasonably suggest the functionality upon which the Examiner relies for the rejection. The Examiner first emphasizes for the record that the claims employ a broader in scope than the Applicant’s disclosure in all aspects. In addition, the Applicant has not argued any narrower interpretation of the claim limitations, nor amended the claims significantly enough to construe a narrower meaning to the limitations. Since the claims breadth allows multiple interpretations and meanings, which are broader than Applicant’s disclosure, the Examiner is required to interpret the claim limitations in terms of their broadest reasonable interpretations while determining patentability of the disclosed invention. See MPEP 2111. In other words, the claims must be given their broadest reasonable interpretation consistent with the specification and the interpretation that those skilled in the art would reach. See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000), In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999), and In re American Academy of Science Tech Center, 2004 WL 1067528 (Fed. Cir. May 13, 2004). Any term that is not clearly defined in the specification must be given its plain meaning as understood by one of ordinary skill in the art. See MPEP 2111.01. See also In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003), Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003). The interpretation of the claims by their broadest reasonable interpretation reduces the possibility that, once the claims are issued, the claims are interpreted more broadly than justified. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). Also, limitations appearing in the specification but not recited in the claim are not read into the claim. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the failure to significantly narrow definition or scope of the claims and supply arguments commensurate in scope with the claims implies the Applicant intends broad interpretation be given to the claims. The Examiner has interpreted the claims in parallel to the Applicant in the response and reiterates the need for the Applicant to distinctly define the claimed invention.
Claim Rejections - 35 USC § 103
5. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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.
6. This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103 and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
7. Claims 21-23, 25-28, 30-33, 35-38, 40 are rejected under 35 U.S.C. 103 as being unpatentable over Soliman et al. (US#2022/0361080) in view of Starsinic et al. (US#2025/0203500).
Regarding claims 31, 36, the references disclose a system and apparatus for providing interworking of network slices in wireless communications, according to the essential features of the claims. Soliman et al. (US#2022/0361080) discloses a user equipment (UE)/AMF in a wireless communication system, the UE/AMF comprising: at least one transceiver; at least one processor communicatively coupled to the at least one transceiver, and at least one memory, communicatively coupled to the at least one processor, storing instructions executable by the at least one processor individually or in any combination to cause the UE/AMF (see Figs. 3-5 for the structures of UE/BS includes processors 302/404, transceivers 530/540, memory 306/460) to: transmit/receive, to/from an AMF/UE entity, a registration request message including a S-NSSAI in a RSD of a URSP rule (Fig. 7, 11; para [0120]-[0123]: a single UE can be served by more than one Network Slice simultaneously e.g., Slice 1 and Slice 2 in Fig. 7. In this example, the AMF serving the UE in this case is common to all Network Slices. Fig. 7 also illustrates that multiple PDU sessions can share the same slice), wherein the S-NSSAI is not included in a first allowed NSSAI (Figs. 9-10, para [0131]-[0132] & para [0138]: while camping on a 4G network, if the UE has a URSP (UE Route Selection Policy), which may have been stored from previous camping on a 5G network, the UE may follow the URSP to determine the S-NSSAI corresponding to the PDP context to be established. If the URSP contains a non-default rule for the PDP context to be established (a rule other than the default rule) as determined in 824); and receive/transmit, from/to the AMF/UE entity, a registration accept message including a second allowed NSSAI, wherein the second allowed NSSAI includes the S-NSSAI in the RSD (Fig. 13, para [0149]-[0151]: the UE may include the S-NSSAI received in the 4G Network in the configured NSSAI list which the UE used to create the requested NSSAI to inform the 5G Network regarding the network slices which the UE desires to later use).
However, Soliman does not explicitly disclose the route selection descriptor (RSD) of a UE route selection policy (URSP) rule. In the same field of endeavor, Starsinic et al. (US#2025/0203500) discloses in Figs. 2-4 block diagrams illustrated of a WTRU/AMF process of receiving a network indicated replacement slice and managing related PDU session(s): At 202a, the WTRU sends a Registration Request to the AMF. The AMF may detect that the S-NSSAI that was identified at 1 has been underutilized by the WTRU in the WTRU's Requested NSSAI. At 203a, the AMF may send a Registration Accept message to the WTRU. The Registration Accept message includes the Replacement S-NSSAI in the Allowed NSSAI. The Registration Accept Message also indicates to the WTRU that the S-NSSAI has been replaced with the Replacement S-NSSAI. The WTRU may consider all Route Selection Descriptors (RSD) that include the S-NSSAI to be invalid until the back-off timer expires or the restriction has been removed (para [0122]-[0129] & [0168]: An RSD of a URSP rule may include an S-NSSAI replacement trigger flag and indicates network added the replacement slice to the Allowed NSSAI. The WTRU may consider all Route Selection Descriptors (RSD) that include the S-NSSAI to be invalid until the back-off timer expires or the restriction has been removed).
Thus, It would have been obvious to a person of ordinary skill in the art before the effective filing d terminal ate of the claimed invention to apply Starsinic’s RSD indicates network added the replacement slice to the Allowed NSSAI into Soliman’s network slice information to a cellular network for improved operation during inter RAT transfers with the motivation being to provide a method and system for network slice replacement based on a mobile device in a wireless communication system.
Regarding claims 32, 37, Soliman in view of Starsinic discloses apparatus of claims 31, 36 as set forth above, Starsinic et al. (US2025/0203500) further teaches wherein identifying that the S-NSSAI is not included in the first allowed NSSAI based on the URSP rule, in case that the UE moves from an evolved packet core (EPC) to a 5th generation core (5GC)(para [0084]: If an S- NSSAI is not included in the PDU Session Establishment Request, then the network may determine an S-NSSAI for the PDU Session).
Regarding claims 33, 38, Soliman in view of Starsinic discloses apparatus of claims 31, 36 as set forth above, Starsinic et al. (US2025/0203500) further teaches wherein the registration request message is for adding the S-NSSAI to the second allowed NSSAI (Fig. 4; para [0168]: network added the replacement slice to the Allowed NSSAI, then means WTRU has been registered to the slice without the WTRU requesting registration).
Regarding claims 35, 40, Soliman in view of Starsinic discloses apparatus of claims 31, 36 as set forth above, Starsinic et al. (US2025/0203500) further teaches wherein the S-NSSAI in the RSD of the URSP rule is stored in the UE (para [0087], [0129]: An RSD of a URSP rule may include an S-NSSAI replacement trigger flag. The S-NSSAI replacement trigger flag may indicate to the WTRU that under certain conditions, the WTRU may replace the S-NSSAI that is in the RSD with a Replacement S-NSSAI).
Regarding claims 21-23, 25-28, 30, they are method claims corresponding to the apparatus claims 31-33, 35-38, 40 examined above. Therefore, claims 21-23, 25-28, 30 are analyzed and rejected as previously discussed in paragraph above with respect to claims 31-33, 35-38, 40.
Allowable Subject Matter
8. Claims 24, 29, 34, 39 are objected to as being dependent upon a rejected base claims, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
9. The following is an examiner's statement of reasons for the indication of allowable subject matter: The closest prior art of record fails to disclose or suggest wherein transmitting, to the AMF entity, a protocol data unit (PDU) session modification request message for replacing the S-NSSAI associated with a packet data network (PDN) connection, as specifically recited in the claims.
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is indicated in PTO form 892.
11. Applicant's future amendments need to comply with the requirements of MPEP § 714.02, MPEP § 2163.04 and MPEP § 2163.06.
"with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims." See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). See In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) In re Wertheim, 541 F.2d at 262,191 USPQ at 96 (emphasis added). "The use of a confusing variety of terms for the same thing should not be permitted.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification." Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01 (i) and § 1302.01.
Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) 07find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1,75(d)(1 ). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced."
"USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure." In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,1027-28 (Fed. Cir. 1997). MPEP § 2106. "
12. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION THIS ACTION IS MADE FINAL. See MPEP ' 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. Phan whose telephone number is (571) 272-3149. The examiner can normally be reached on Mon - Fri from 6:00 to 3:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Chirag Shah, can be reached on (571) 272-3144. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-2600.
14. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have any questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at toll free 1-866-217-9197.
Mphan
Aug. 14, 2026
/MAN U PHAN/Primary Examiner, Art Unit 2477
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