DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
Response and Claim Status
The instant Office action is responsive to the response received July 7, 2026 (the Response) and the interview conducted August 5, 2026 (the Interview).
In response to the Response and Interview, the previous (A) objection to the drawings under 37 C.F.R. § 1.84; (B) objection to claims 25–31 under 37 C.F.R. § 1.71(a); and (C) rejection of claims 20–36 under 35 U.S.C. § 112(b)
are WITHDRAWN.
Claims 20–36 are currently pending.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20, 24–26, 30–32, and 36 are rejected under 35 U.S.C. § 102 as being anticipated by Ferdi et al. (WO 2021/202960 A1; filed Apr. 2, 2021; published Oct. 7, 2021).
Response to Arguments
Applicants argue
Ferdi is not prior art under the 35 U.S.C. 102(b)(1)(A) exception to prior art. MPEP section 2153.01 explains that “AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor.”
Ferdi was published on October 7, 2021, and would therefore qualify as prior art under AIA 35 U.S.C. 102(a)(1). However, the present application claims priority to U.S. Provisional Application 63/276,264, filed November 5, 2021. Ferdi was filed on April 2, 2021, and names at least one overlapping inventor with the present application. Accordingly, Ferdi is not prior art under 35 U.S.C. 102(b)(1)(A).
Response 8.
The Examiner is unpersuaded of error.
35 U.S.C. § 102(a)(1)
Ferdi is prior art under 35 U.S.C. § 102(a)(1) because the claimed invention was described in Ferdi—a printed publication as of October 7, 2021—before the effective filing date of Applicants’ claimed invention on November 5, 2021.
“AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or a joint inventor.” MPEP § 2155.01. According to the MPEP,
[a]n applicant may show that a disclosure was made by the inventor or a joint inventor by way of an affidavit or declaration under 37 CFR 1.130(a)(an affidavit or declaration of attribution). See In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) and MPEP § 717.01(a)(1). Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). When any claim of an application . . . is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to except a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
Id.
Applicants’ claimed invention and Ferdi both share two common inventors—Samier Ferdi (“SF”) and Guanzhou Wang (“GW”). Thus, affidavits or declarations under 37 C.F.R. § 1.130(a) to except Ferdi under 35 U.S.C. § 102(b)(1)(A) should include
(a) statements from SF and GW that SF and GW invented Ferdi’s disclosure that was relied upon by the Examiner to reject Applicants’ claimed invention under 35 U.S.C. § 102 (i.e., Ferdi’s Figure 3C and ¶¶ 118, 138–147)1,2; and
(b) a reasonable explanation why Ferdi’s remaining inventors Atle Monrad (“AM”) and Michelle Perras (“MP”) are not joint inventors of Ferdi’s disclosure that was relied upon by the Examiner to reject Applicants’ claimed invention under 35 U.S.C. § 102 (i.e., Ferdi’s Figure 3C and ¶¶ 118, 138–147)3.
35 U.S.C. § 102(a)(2)
Ferdi is also prior art under 35 U.S.C. § 102(a)(2) because the claimed invention was described in Ferdi in which Ferdi names another inventor and was effectively filed on April 2, 2021 before the effective filing date of the claimed invention on November 5, 2021.4
The Examiner believes the affidavits or declarations discussed above to except Ferdi under 35 U.S.C. § 102(b)(1)(A) also applies to except Ferdi under 35 U.S.C. § 102(b)(2). See MPEP § 2155.01.
Conclusion
Thus, for the reasons provided above, the Examiner finds Applicants’ assertions and arguments (see Response 8) insufficient. The Examiner finds Applicants’ assertion is only a naked assertion of inventorship that (1) is not in an affidavit or declaration under 37 C.F.R. § 1.130(a); and (2) fails to provide any context, explanation or evidence to support that assertion. See MPEP § 2155.01 (reciting
an affidavit or declaration under 37 CFR 1.130(a) that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982)
).
The Rejection
Regarding claim 20, Ferdi discloses a first wireless transmit/receive unit (WTRU) (fig. 3C, item 212), the first WTRU comprising:
a processor (“Systems and methods for processing data according to representative embodiments may be performed by one or more processors” at ¶ 287) configured to:
send a first message (fig. 3C, items 3C-2, 3C-7b; ¶¶ 138, 143) to a network node (fig. 3C, item 301b)5, wherein the first message indicates a command and control (C2) authorization request (“the UAV-C 212 may send to the UTM 220, a request message for association with a UAV, for example to establish C2 communications” at ¶ 138), indicates a request for a packet data unit (PDU) session (“the UAV- C 212 may perform the same or a similar procedure with its PLMN 301 b (if any)” at ¶ 143), and indicates a request to use direct C2 communication (“the UAV-C 212 may send to the UTM 220, a request message for association with a UAV, for example to establish C2 communications” at ¶ 138)6;
receive a second message (fig. 3C, items 3C-7b, 3C-11b; ¶¶ 143, 146, 147) from the network node, wherein the second message indicates that the PDU session request is accepted (“The WTRU may receive an indication . . . from the serving PLMN 301a . . . during the procedure . . . . At operation 3C-7b, the UAV- C 212 may perform the same or a similar procedure with its PLMN 301 b (if any).” at ¶ 143), indicates a C2 authorization (“At operation 3C-13b, the UTM 220 may send the same or a similar notification message to the UAV-C 212” at ¶ 147; ¶ 146), and indicates C2 authorization information (“At operation 3C-13b, the UTM 220 may send the same or a similar notification message to the UAV-C 212” at ¶ 147; ¶ 146)7;
determine that the first WTRU is authorized to communicate with a second WTRU (“UAV (WTRU) 211” at fig. 3C) based on the C2 authorization and the C2 authorization information, wherein the C2 authorization information comprises an identity of the second WTRU (“(2) a UAV IP/MAC address” at ¶ 147; “UAV (WTRU) 211” at fig. 3C); and
send a third message (“The UAV 211 and the UAV-C 212 may inform each other over the direct link” at ¶ 118)8 to the second WTRU using PC5 (“The UAV 211 may use the received parameters (e.g., the UAS id, and/or the UAV-C WTRU id, among others), for example to discover and/or to establish a direct link (e.g., over the PC5” at ¶ 118) if the first WTRU is authorized to communicate with the second WTRU, wherein the third message indicates a request (¶ 118) to perform a link establishment procedure (“During or after the direct link establishment, the UAV 211 and UAV-C 212 may exchange and/or may negotiate one or more QoS parameters including C2 communications threshold values (e.g., a range and/or distance limit, delay, a packet loss, signal strength) associated with the quality of the direct link, among others).” at ¶ 118).
Regarding claim 24, Ferdi discloses wherein the C2 authorization information (¶¶ 146, 147) further comprises an unmanned aerial vehicle controller (UAV-C) application identifier (“the UAV-C IP address” and “a UAV-C id” at ¶ 149).
Regarding claim 25, Ferdi discloses a first network node (fig. 3C, item 212), the network node comprising:
a processor (“Systems and methods for processing data according to representative embodiments may be performed by one or more processors” at ¶ 287) configured to:
send a first message (fig. 3C, items 3C-2, 3C-7b; ¶¶ 138, 143) to a second network node (fig. 3C, item 301b)9, wherein the first message indicates a request for authorization (“the UAV-C 212 may send to the UTM 220, a request message for association with a UAV, for example to establish C2 communications” at ¶ 138), wherein the authorization is associated with a wireless transmit/receive unit (WTRU) (fig. 3C, item 211), and wherein the authorization is associated with direct command and control (C2) communication (¶ 138);
receive a second message (fig. 3C, items 3C-7b, 3C-11b; ¶¶ 143, 146, 147) from the second network node;
determine that the WTRU is authorized to establish C2 (¶¶ 146, 147) over PC5 (¶ 118) based on the second message;
determine a discovery authorization parameter (“At operation 3C-13b, the UTM 220 may send the same or a similar notification message to the UAV-C 212 that may include any of: (1) a UAS id; and/or (2) a UAV IP/MAC address, among others.” at ¶ 147) based on the second message; and
send a third message (“At operation 3C-13b, the UTM 220 may send the same or a similar notification message to the UAV-C 212 that may include any of: (1) a UAS id; and/or (2) a UAV IP/MAC address, among others.” at ¶ 147) to the WTRU, wherein the third message indicates the discovery authorization parameter.
Regarding claim 26, Ferdi discloses wherein the second message indicates a response (fig. 3C, items 3C-7b, 3C-11b; ¶¶ 143, 146, 147) to the request and indicates policy configuration information (fig. 3C, items 3C-7b, 3C-11b; ¶¶ 143, 146, 147).
Regarding claim 30, Ferdi discloses wherein the request for authorization is a request for permission (“the UAV-C 212 may send to the UTM 220, a request message for association with a UAV, for example to establish C2 communications” at ¶ 138) to establish command and control (C2) over PC5 (intended use in italics).
Regarding claim 31, Ferdi discloses wherein the third message further indicates an unmanned aerial vehicle controller (UAV-C) application identifier (“(1) a UAS id; and/or (2) a UAV IP/MAC address” at ¶ 147).
Regarding claim 32, Ferdi discloses method to perform operations according to claim 20. Thus, references/arguments equivalent to those present for claim 20 are equally applicable to claim 32.
Regarding claim 36, claim 24 recites substantially similar features. Thus, references/arguments equivalent to those present for claim 24 are equally applicable to claim 36.
Claim Rejections – 35 U.S.C. § 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 22 and 34 are rejected under 35 U.S.C. § 103 as being obvious over Ferdi in view of Chor et al. (US 2021/0241926 A1; filed Jan. 28, 2021).
Regarding claim 22, while Ferdi teaches wherein the C2 authorization information comprises data (“At operation 3C-13b, the UTM 220 may send the same or a similar notification message to the UAV-C 212” at ¶ 147; ¶ 146),
Ferdi does not teach the data including a security credential, wherein the security credential is an authorization token.
Li teaches a security credential is an authorization token (“security credentials (e.g., an authorization token, digital certificate, etc.)” at ¶ 325).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Ferdi’s data to include a security credential, wherein the security credential is an authorization token as taught by Li for “improving the performance of components in the IT environment.” Li ¶ 66.
Regarding claim 34, claim 22 recites substantially similar features. Thus, references/arguments equivalent to those present for claim 22 are equally applicable to claim 34.
Allowable Subject Matter
Claims 21, 23, 27–29, 33, and 35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are reminded of the extension of time policy as set forth in 37 C.F.R. § 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 § 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 DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner does not find the oaths or declarations filed May 3, 2024 on the record under 37 C.F.R. § 1.63 satisfactory. The oaths or declarations filed on the record under 37 C.F.R. § 1.63 recite SF and GW each “believ[ing] I am the original inventor or an original joint inventor of a claimed invention in the application,” but does not indicate whether “a claimed invention in the application” corresponds to the claimed invention rejected by Ferdi’s disclosure under 35 U.S.C. § 102. SF and GW may be joint inventors of the claimed subject matter that is not directed to Ferdi (i.e., Applicants’ claims 21–23, 27–29, and 33–35), whereas the remaining inventors Aneeqa Ijaz (“AI”) and Taimoor Abbas (“TA”) of the instant application may be solely joint inventors of the claimed subject matter that is directed to Ferdi (i.e., Applicants’ claims 20, 24–26, 30–32, and 36).
2 See MPEP § 2155.01 (reciting “an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure”); see also id. (reciting
Example 1 reciting “a declaration under 37 CFR 1.130(a) signed by Anwesha averring that she is the sole inventor of the subject matter X disclosed in the article”;
Example 2 reciting “a 37 CFR 1.130(a) declaration signed by Alexis averring that she invented subject matter Y as disclosed and claimed in the PGPub.”; and
Example 4 reciting “submitting either a new declaration under 37 CFR 1.130(a) which states that Ali invented X or an inventor’s oath or declaration under 37 CFR 1.63 signed by Ali”
).
3 See MPEP § 2155.01 (reciting “a reasonable explanation of the presence of additional authors”); see also id. (reciting
Example 1 reciting “Anwesha also explains in the declaration that Bob was a graduate student working under her direction and supervision and did not contribute to the conception of the claimed invention. In other words, Anwesha’s declaration establishes that Bob was not a joint inventor of subject matter X.”;
Example 2 reciting “the declaration fails to establish that Mehdi is not a joint inventor of Y” and “Alexis’ declaration is ineffective because it lacks a reasonable explanation of Mehdi’s role in the PGPub. If Alexis’ declaration had stated that Mehdi was named as an inventor of the PGPub because Mehdi invented Z, the declaration would have been sufficient”;
Example 3 reciting “a declaration under 37 CFR 1.130(a) signed by Ali to show that Ming’s disclosure of X is not prior art because Ming learned about X from Ali. The declaration from Ali explains the circumstances under which Ali privately told Ming about X. Ali’s declaration does not state that Ali is the inventor of X.”; and
Example 4 reciting “a 37 CFR 1.130(a) declaration signed by Gopal averring that Ali told him about subject matter X as disclosed in Gopal’s patent.”
).
4 Ferdi is a WIPO (WO) publication of an international Patent Cooperation Treaty (PCT) application that designates the U.S. Thus, Ferdi is treated as an application for patent deemed published under 35 U.S.C. § 122(b) for purposes of 35 U.S.C. § 102(a)(2). See 35 U.S.C. § 374.
5 The Examiner notes Figure 3C illustrates item 301b between items 212 and 220. “UAV-C 212 which may communicate . . . via different Public Land Mobile Networks (PLMNs).” Ferdi ¶ 70. The Examiner, then, finds Ferdi teaches communications from item 212 to 220 are communicated via item 301b.
6 The Examiner finds Ferdi’s request message to establish C2 communications reads on both the claimed “command and control (C2) authorization request” and “request to use direct C2 communication.” The Examiner does not find a teaching from the Specification or the claims that these claim elements are distinct, separate elements.
7 The Examiner finds Ferdi’s notification message to item 212 reads on both the claimed “C2 authorization” and “C2 authorization information.” The Examiner does not find a teaching from the Specification or the claims that these claim elements are distinct, separate elements.
8 The Examiner finds paragraph 118 of Ferdi discloses a way to establish direct C2 communications at step 3C-14 of Figure 3C. Once (1) UAV 211 receives UAS id and UAV-C IP at step 3C-13a and (2) UAV-C 212 receives UAS id and UAV IP at step 3C-13b, UAV 211 and UAV-C 212 establish the direct link for direct C2 communications using the technique in paragraph 118 of Ferdi. Both paragraph 118 and step 3C-14 are directed to “Representative Procedures for C2 Communication Link with UAV-C Setup.” Ferdi ¶¶ 114, 137.
9 See n. 2, supra.
Prosecution Insights