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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Instant Application
Patent No. 12,022,545
1. (Currently Amended) A method comprising: receiving, by a user plane function (UPF) a session initiation protocol (SIP) register message a user equipment (UE); appending, by the UPF, a policy charging function (PCF) node identifier to the SIP register message to obtain an appended SIP register message, the SIP register message excluding the PCF node identifier when received from the UE; and
sending, by the UPF, the appended SIP register message to a proxy-call session control function (P-CSCF) node without passing the appended SIP register message through the UE, wherein the appended SIP register message prompts the P-CSCF node to select a PCF node for the UE based on the PCF node identifier of the appended SIP register message
1. A method of initiating a network session for a user equipment (UE) on a network, the method comprising: receiving a session initiation protocol (SIP) register message at a first session management function (SMF) node; appending, by the SMF node, to the SIP register message, an identification of a policy charging function (PCF) node; passing, by the SMF node, the appended SIP register message from the SMF node to a proxy-call session control function (P-CSCF) node, without passing the appended SIP register message through the UE; extracting, by the P-CSCF node, the identification of the PCF node from the appended SIP register message; selecting, by the P-CSCF node, the identified PCF node in accordance with the extracted identification of the PCF node; and based at least upon selecting the identified PCF node, initiating the network session for the UE.
8. (Currently Amended) A comprising: a processor; and a computer-readable medium storing instructions that, are-operative upon execution by the processor, cause the processor to: receive, by a user plane function (UPF) a session initiation protocol (SIP) register message from a user equipment (UE); append, by the UPF a policy charging function (PCF) node identifier to the SIP register message to obtain an appended SIP register message; the SIP register message excluding the PCF node identifier when received from the UE
and send, by the UPF, the appended SIP register message to a proxy-call session control function (P-CSCF) node without passing the appended SIP register message through the VE, wherein the appended SIP register message prompts the P-CSCEF node to select. a PCF node for the UE based on the PCF node identifier of the appended SIP register message
9. A system for initiating a network session for a user equipment (UE) on a network, the system comprising: a processor; and a computer-readable medium storing instructions that are operative upon execution by the processor to: receive a session initiation protocol (SIP) register message at a session management function (SMF) node; append, by the SMF node, to the SIP register message, an identification of a policy charging function (PCF) node; pass, by the SMF node, the appended SIP register message from the SMF node to a proxy-call session control function (P-CSCF) node, without passing the appended SIP register message through the UE; extract, by the P-CSCF node, the identification of the PCF node from the appended SIP register message; select, by the P-CSCF node, the identified PCF node in accordance with the extracted identification of the PCF node; and based at least upon selecting the identified PCF node, initiate the network session for the UE.
15. (Currently Amended) One or more computer storage devices having computer-executable instructions stored thereon, which, upon execution by a processor, cause the processor to perform the following operations receiving by a user plane function (UPF) a Session initiation protocol (SIP) register message from a user equipment (UE); appending, by the UPF, a policy charging function (PCF) node identifier to the SIP register message to obtain an appended SIP register message; the SIP register message excluding the PCF node identifier when received from the UE and sending, by the UPF, the appended SIP register message to a proxy-call session control function (P-CSCF) node[[,]] without passing the appended SIP register message through the UE, wherein the appended SIP register message prompts the P-CSCF node to select a PCF node to initiate the network session for the UE based on the PCF node identifier of the appended SIP register message
17. One or more computer storage devices having computer-executable instructions stored thereon for initiating a network session for a user equipment (UE) on a network, which, on execution by a computer, cause the computer to perform operations comprising: receiving a session initiation protocol (SIP) register message at a session management function (SMF) node; appending, by the SMF node, to the SIP register message, and identification of a poly charging function (PCT) node; passing, by the SMF node, the appended SIP register message from the SMF node to a proxy-call session control function (P-CSCF) node, without passing the appended SIP register message through the UE; extracting, by the P-CSCF node, the identification of the PCF node from the appended SIP register message; selecting, by the P-CSCF node, the identified PCF node in accordance with the extracted identification of the PCF node; and based at least upon selecting the identified PCF node, initiating the network session for the UE.
Claims 1, 8, 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 17 of U.S. Patent No. 12,022,545, Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in each application shows the concept of receiving a register SIP message by a function, appending an identifier to the message by the function, and sending the modified message to a P-CSCF node to select a PCF node based upon the identifier in the SIP register message by the function. The instant application uses the user plane function as the function and the patent uses a session management function as a function. Therefore the applicant believes the each application is not patentably distinct.
Claim Objections
Claims 2-4, 6, 7, 9-11, 13, 14, 16, 17, 19, 20 are objected to as being dependent upon a rejected base claim,
Allowable Subject Matter
Claims 1-4, 6-11, 13-17, 19, 20 are allowed. The prior art Ahmadi discloses : receiving by a user plane function (UPF) a session initiation protocol (SIP) register message from a user equipment (UE) accessing a wireless network, and selecting a policy charging function (PCF) when the gateway ID discloses an 5G wireless communication that identifies an PCF. The prior art fail to show wherein the user plane UPF appends a the PCF identifier to a SIP register message.
Response to Arguments
Claims 1, 8, and 15 stand rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 9, and 17 of U.S. Patent No. 12,022,545. Applicant respectfully requests that the double-patenting rejection be held in abeyance until all other claim rejections have been withdrawn.
The examiner maintain the double patent rejection because the concept of the invention is nearly the same as each other. Each application shows the concept of receiving a register SIP message by a function, appending an identifier to the message by the function, and sending the modified message to a P-CSCF node to select a PCF node based upon the identifier in the SIP register message. The instant application uses the user plane function as the function and the patent uses a session management function as a function.
The Office Action maps the claimed step of "appending" a PCF node identifier to an SIP register message by a "UPF" to the session binding functions performed by Ahmadi's Call Session Control Function (CSCF). See Final OA, pp. 9-10 ("showing [Ahmadi's] CSCF' functioning as a UPF [to] perform session binding."). Applicant notes that Ahmadi's CSCF is not a UPF (i.e., a core-network component), but is instead an IMS network component:
The examiner agrees that UPF doesn’t show user plane UPF appends a the PCF identifier to a SIP register message.
As such, amended claim 1 is allowable over the cited prior art. Independent claims 8 and 15 recite limitations similar to those discussed above with respect to claim 1 and are therefore nonobvious over the cited prior art. The remaining claims depend from and further limit independent claims 1, 8, and 15 and are therefore allowable at least for depending from allowable base claims, as well as for including additional features. Accordingly, the Applicant respectfully requests the §§ 102/103 rejections be withdrawn.
The examiner agrees.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON A HARLEY whose telephone number is (571)270-5435. The examiner can normally be reached 7:30-300 6:30-8:30.
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/JASON A HARLEY/Examiner, Art Unit 2468
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