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 .
Response to Amendment
This office action has been changed in response to the amendment filed on 7/7/2026.
Claims 1 and 17 have been amended. Claim 2 has been cancelled.
Since the Examiner inadvertently omitted the rejection for claim 2 in the Office Action dated 4/8/2026, this Office Action will have Non-Final status.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 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.
Claims 1 and 3-20 are rejected under 35 U.S.C. 103 as being unpatentable over Islam et al. (EP-2,146,541-B1 hereinafter, Islam) in view of Ahluwalia (US-2018/0242229 hereinafter, Ahluwalia).
Regarding claim 1, Islam teaches an electronic wireless communication device (Fig. 3 [10]), comprising:
a memory region (Fig. 3 [21]), storing a priority ordering of network identifiers (Page 7 [0040-0041] “ Such a list of preferred networks may be configured as, for example, an operator- preferred RAN list (i.e., specified by an operator), enterprise- preferred RAN list (i.e., specified by an enterprise), operator- preferred CN list (i.e., specified by an operator), and enterprise-preferred CN list (i.e., specified by an enterprise). Additionally, the provisioning of various preferred and barred/forbidden network lists may be accompanied with appropriate device-based logic or RSM-based logic for specifying the order in which to use them in connection with scanning and network selection” and Page 8 [0048]), comprising at least a first wireless network identifier and a second wireless network identifier; (Page 7 [0039] “the database structure 300 defines a plurality of radio access technologies, e.g., EDGE technology 302A, cdma2000 technology 302B, and UMTS technology 302C, wherein a number of RAN IDs are provided for each technology”)
a network status indicator, having at least a first value and a second value; (Fig. 5A [Selection Control Code] with various values for different selection criteria)
wherein the electronic wireless communication device is arranged to carry out a network searching process (Fig. 3 [15] and Fig. 1 [1-1]), in which the electronic wireless communication device searches for available networks in an order defined by the priority ordering of network identifiers until an available network is identified and the electronic wireless communication device successfully connects to the available network; (Fig. 1 specifically the end state [1-5] and Page 7 [0041] “a list ordering scheme or associated logic may be provided with the device whereby a particular priority order is imposed on the various network lists”)
wherein the electronic wireless communication device is arranged to omit at least the first network identifier from the priority ordering of network identifiers used during the network searching process whenever the network status indicator has the first value. (Fig. 5A [0000] and Pages 8-9 [0051] “the database structures 400A/400B would be indicative of barred frequency block(s). The mobile device determines which entries in the database structures 400A/400B are relevant to its current location and determines from the database structures 400A/400B at least one frequency that is barred in the mobile device's current location. Accordingly, the mobile device refrains from scanning the at least one frequency that is barred”)
Islam differs from the claimed invention by not explicitly reciting wherein the network status indicator having the first value indicates that the first network identifier does not correspond to a physical network infrastructure and wherein the network status indicator having the second value indicates that the first network identifier does correspond to a physical network infrastructure.
In an analogous art, Ahluwalia teaches an method to optimize priority based network identifier scanning in a user equipment (Abstract) that includes utilizing a network status indicator (Fig. 5 [Entry Required in Scan Control Table]) having the first value indicates that the first network identifier does not correspond to a physical network infrastructure (Page 5 [0050] “In one aspect, the systems and methods disclosed herein can further be utilized in Mobile Virtual Network Operator (MVNO) carriers. As an example, the UE's of the MVNO can be provided with scan control tables (e.g., scan control table 106) to prevent the UE's from searching for non-existing and/or unavailable carriers (e.g., discontinued mobile network codes (MNCs)).”) and wherein the network status indicator having the second value indicates that the first network identifier does correspond to a physical network infrastructure. (Page 5 [0050] “For example, even though the MNC range for Carrier A is
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to be motivated to implement the invention of Islam after modifying it to incorporate the ability to utilize a network status indicator to determine whether the network identifier has a physical network infrastructure or not of Ahluwalia since it prevents a UE from searching for a non-existing carrier (Ahluwalia Page 5 [0050]) and battery life can be extended by limiting HPPLMN scans. (Ahluwalia Page 7 [0060])
Regarding claim 3, Islam in view of Ahluwalia teaches wherein the first network identifier is an identifier of a home network associated with a mobile operator of the electronic wireless communication network. (Islam Page 8 [0049] “the database structures set forth above may be provisioned and updated only by a network operator (e.g., a home network operator associated with the wireless device)” i.e. the home network operator will include its own network in the priority list)
Regarding claim 4, Islam in view of Ahluwalia teaches wherein the network status indicator has only either the first value or the second value. (Islam Fig. 5B [SCC] column allows only one code per network)
Regarding claim 5, Islam in view of Ahluwalia teaches wherein the network status indicator comprises a wireless network identifier. (Islam Fig. 5B [Network Identifier + SCC] and Page 8 [0047] “the network identifier [MCC2.MCNC2] is associated with the code [0000] to indicate that the core network identified by [MCNC2] is always forbidden for all access networks and technologies in the geographic region identified by [MCC2]”)
Regarding claim 6, Islam in view of Ahluwalia teaches wherein the network status indicator is one or more network identifiers of the priority ordering (Islam Page 8 [0047] “second database structure 400B is preferably populated with a list of networks identified by corresponding network identifiers 422, wherein each network identifier is mapped to or otherwise associated with a corresponding SCC 402”), or wherein the network status indicator is derived from one or more network identifiers of the priority ordering. (note: this limitation is merely a description of data and no active step is occurring nor does it change the structure of the “electronic wireless communication device”, accordingly this is view as non-functional descriptive material1
Regarding claim 7, Islam in view of Ahluwalia teaches wherein the value of the network status indicator is user configurable. (Islam Page 7 [0038] “ the database structure 300 may be configured as one or more user-defined network lists, with one list per user using the wireless UE device, for example, wherein the data entries relate to user-defined forbidden networks”)
Regarding claim 8, Islam in view of Ahluwalia teaches wherein the electronic device is arranged to determine whether to omit at least the first network identifier from the priority ordering of network identifiers used during the network searching process by comparing the value of the network status indicator to one or more pre-set values. (Islam Fig. 1 [1-4] and comparing the network identifier to the SCC found in Figs. 5A & B to determine whether to omit, see Page 8 [0046-0048])
Regarding claim 9, Islam in view of Ahluwalia teaches wherein the electronic wireless communication device comprises a second memory region, storing the one or more preset-values. (Islam the table of pre-set values Fig. 5A is stored separately from Fig. 5B selection criteria)
Regarding claim 10, Islam in view of Ahluwalia teaches wherein the priority ordering further comprises a list of one or more network identifiers associated with networks that are related to the network identified by the first wireless identifier. (Islam Page 7 [0040] “preferred RAN list” specified by an operator)
Regarding claim 11, Islam in view of Ahluwalia teaches wherein the electronic wireless communication device is arranged to omit at least one network identifier from the list of one or more network identifiers from the priority ordering used during the network searching process, whenever the network status indicator has the first value. (Islam Page 8 [0046] “an SCC of [0000] indicates that all networks that have been associated with the code [0000] should be always forbidden, which cannot be overridden by the user even during manual selection”)
Regarding claim 12, Islam in view of Ahluwalia teaches wherein the electronic wireless communication device further comprises a second memory region storing values of one or more pre-set values (Islam Fig. 5A), the first wireless network identifier is an identifier of a home network (Islam Page 8 [0049] “the database structures set forth above may be provisioned and updated only by a network operator (e.g., a home network operator associated with the wireless device)” i.e. the home network operator will include its own network in the priority list), and wherein the electronic wireless communication device is further arranged to determine whether to omit the second network identifier from the priority ordering of network identifiers used during the network searching process by comparing at least a part of the second network identifier to the one or more pre-set values. (Islam Fig. 5B and Page 8 [0046-0048] i.e. [0000] always omitted)
Regarding claim 13, Islam in view of Ahluwalia teaches wherein the priority ordering of network identifiers comprises a user-controlled list of network identifiers; (Islam Page 7 [0038] “the database structure 300 may be configured as one or more user-defined network lists, with one list per user using the wireless UE device, for example, wherein the data entries relate to user-defined forbidden networks” and Page 8 [0046]) and/or
wherein the priority ordering of network identifiers comprises an operator controlled list of network identifiers. (Islam Page 8 [0046] “operator-defined forbidden network lists” and [0048] “Those skilled in the art should recognize that database structures or logic similar to the databases 400A and 400B described above may be provisioned for other types of network lists as well, e.g., operator-defined preferred network lists”)
Regarding claim 14, Islam in view of Ahluwalia teaches wherein the electronic wireless communication device comprises a subscriber identity module which assigns an identification to the electronic wireless communication device. (Islam Page 9 [0056] “To control access and manage the device configuration, an RSM (SIM/RUIM/USIM) interface 634 is also provided in communication with the microprocessor 602. In one implementation, RSM interface 634 is operable with an RSM card having a number of key configurations 644 and other information 646 such as identification and subscriber-related data as well as one or more SSID/PLMN lists and database filters described in detail hereinabove”)
Regarding claim 15, Islam in view of Ahluwalia teaches wherein the subscriber identity module stores the value of the network status indicator. (Islam Page 9 [0056] “RSM card having a number of key configurations 644 and other information 646 such as identification and subscriber-related data as well as one or more SSID/PLMN lists and database filters described in detail hereinabove” i.e. databases represented visually in Figs. 5A & 5B)
Regarding claim 16, Islam in view of Ahluwalia teaches wherein the network status indicator is stored in the memory region (Islam Page 9 [0057] and Page 10 [0066]); or wherein the electronic wireless communication device comprises a second memory region, and wherein the network status indicator is stored in the second memory region. (Islam Fig. 7 [638 or 634])
Regarding claim 17, the limitations of claim 17 are rejected as being the same reasons set forth above in claim 1.
Regarding claim 18, Islam in view of Ahluwalia teaches wherein the value of the network status indicator is assigned by a mobile operator. (Islam Page 8 [0046] “operator-defined forbidden network lists, enterprise-defined forbidden network lists, etc. that have been described hereinabove). As illustrated, SCC 402 may be comprised of a binary code, allowing for a number of selection criteria. For instance, a 4-bit code can support up to 16 selection criteria, although SCCs of variable bit sizes can support any number of selection treatments. By way of example, an SCC of [0000] indicates that all networks that have been associated with the code [0000] should be always forbidden”)
Regarding claim 19, Islam in view of Ahluwalia teaches assigning and/or changing, by a user the value of the network status indicator. (Islam Page 8 [0046] “user-defined forbidden network lists” and [0048] “user-defined preferred network lists”)
Regarding claim 20, Islam in view of Ahluwalia teaches the electronic wireless communication device establishing a connection with a wireless network identified in the network searching process. (Islam Fig. 1 specifically the end state [1-5] of successfully connecting to a network)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW C SAMS whose telephone number is (571)272-8099. The examiner can normally be reached M-F 8:30-5 EST.
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/Matthew C Sams/Primary Examiner, Art Unit 2646
1 The Applicant is reminded that structure defines how an apparatus differs from prior art apparatuses and when no difference in structure is defined, the assumption is made that the prior art structure meets the limitations.
The Examiner will not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336,1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential), aff' d, 191 Fed. Appx. 959 (Fed. Cir. 2006). “Claim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied.” Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) (emphasis added). This printed matter doctrine is not strictly limited to “printed” materials. Mallinckrodt, 890 F.3d at 1032. More specifically, “a claim limitation is directed to printed matter ‘if it claims the content of information.' ” Mallinckrodt, 890 F.3d at 1032 (quoting In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015)).
In method cases, the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010).
Prosecution Insights