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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/15/26 has been entered.
Response to Arguments
Applicant's arguments filed 07/15/26 have been fully considered but they are not persuasive. As applicant has presented no new arguments with the filing of the RCE on 8/15/26, the response to arguments indicated within the Advisory action mailed 07/24/26 still apply.
In response to applicant's arguments, on pages 5-6 of applicant's response, regarding the rejections under 35 USC 101, the same reasoning as indicated within the rejections mailed 05/15/26 continue to apply. The requirement for the "first functional component" is merely software operating on a general purpose processor/computer and does not integrate the abstract idea into a practical application beyond general purpose computers transmitting/receiving messages.
Applicant further argues that the claims "provide an improvement to wireless communication technology. For example, the present claims optimize the EAS discovery and selection procedure of battery-powered constraint devices, to reduce power consumption in such devices (e.g., move computing task to network side). (See e.g., WO 2023/142997, p. 7, 11. 17-21). For example, monitoring to trigger the start of ACR (e.g., location change) may be offloaded by having the EEC announce its support for EDN side decided ACR scenarios so that the EEC only need to passively receive ACR information notifications. (See Id. at p. 11, 11. 3-7). In other words, the EEC may skip registration and/or the EAS discovery procedure is enhanced to delegate the EAS selection to the EES for ACR. (See Id. p. 17, 11. 8- 14)."
In response, it is noted that this language and these improvements are not contained within or required by the claims, as applicant suggests. Nothing within the claim indicates or requires that "monitoring to trigger the start of ACR (e.g., location change) may be offloaded by having the EEC announce its support for EDN side decided ACR scenarios so that the EEC only need to passively receive ACR information notifications".
As indicated within the prior Advisory Action, while more specific language capturing and requiring these concepts within the claims would potentially overcome the outstanding rejections, applicant’s arguments are not persuasive as they are not required within the current claim language.
This is further demonstrated below in response to applicant's arguments regarding 3GPP TS 23.558 and how the disclosure of 3GPP TS 23.558 meets the claim limitations, as nothing within the claims requires or indicates "monitoring to trigger the start of ACR (e.g., location change) may be offloaded", "having the EEC announce its support for EDN side decided ACR scenarios", or "the EEC only need to passively receive ACR information notifications".
On page 6, of applicant's response, applicant argues that "While discovery filters narrow or define the scope of the discovery request, they do not themselves disclose a parameter that enables the selected EES to perform the selection of an EAS. The cited standard describes the EES providing discovered EAS information, such as a list of EASs, rather than performing EAS selection in response to a parameter as claimed."
In response, it is first noted that the claim language recites "a first parameter enabling the selected first network function to perform EAS selection " and not "performing EAS selection in response to a parameter".
As the EEC will return a list of one or more EAS which match the inputs in the discovery request, the EES was enabled to perform EAS selection, as the EAS discovery response transmitted back to the EEC identifies any EAS matching the required parameters, or returns a result indicating that it was unable to find a match. This clearly meets the current broad claim language. The discovery filter inputs, such as "a Geographical or Topological service area" is a parameter that enables the selected EES to perform the selection of an EAS (selecting and outputting a listing of matching EAS). The selection of two or more matching EASs would still meet the claim language. The current claim language is not as limited as applicant argues.
Finally, it is noted that this argument does not apply to independent claim 6 which does not include any of this language. Claim 6 instead recites "a first message for discovering a second network function" which is clearly met by the disclosure of 3GPP TS 23.558 providing a first message with filter inputs to "discover" EASs matching the inputs.
On page 8, of applicant's response, applicant argues that "At most, 3GPP TS 23.558 discloses that an EES profile may include information indicating whether EEC registration is required, and that, in certain procedures, if the EEC registration configuration for a selected EES indicates that registration is required, the EEC performs EEC registration with that selected EES. This, however, does not disclose the limitation of claim 6, which requires selecting a first network function from the one or more first network functions, wherein registration of the first functional component on the selected first network function is not required. It is respectfully submitted that the mere existence of a configuration field indicating whether registration is required does not disclose the claimed selected first network function for which registration of the first functional component is not required."
In response, it is first noted that the claim language recites "wherein a registration of the first functional component on the selected first network function is not required". The claim does not require the selection of the first network function based upon or because registration is not required, as nothing within the claim limits or describes why a first network function is selected. There is no determination of which network functions require "registration" and selecting one over another. 3GPP TS 23.558 clearly describes that some EECs may require registration and some may not.
It appears applicant is instead arguing that the EEC was selected based upon it not requiring registration, however, this is not recited within or required by the current claims. The current claim language merely indicates that the EES not require registration (which 3GPP TS 23.55 describes).
On pages 8-9, applicant argues that "In other words, the UE does not need to perform monitoring and the EEC may skip reregistration during an ACR. Rather, the EEC may passively receive a second message that allows another first network function to be selected." and "In contrast, the present claims specify that the second message does not include information regarding a second network function. This triggers the first functional component of the UE to simply select another first network function obtained in the initial service provisioning step. No additional discovery is required."
In response, it is again noted that applicant appears to be arguing limitations which are not within the claim. The claim merely recites that the second message does not include information regarding a second network function implementing EAS and selecting "another first network function".
The claim does not recite or require that "No additional discovery is required" or "The UE does not need to perform monitoring and the EEC may skip reregistration during an ACR" as applicant suggests.
The current language does not preclude triggering a new discovery request to access a different EES from the available EESs, as described by 3GPP TS 23.558. The result of launching a service provisioning request to identify a new EES from the possible EESs meets the current claim limitations, which do not preclude the action.
As indicated above, and in the prior Advisory action, more specific language capturing and requiring these concepts within the claims would potentially overcome the outstanding rejections. The current claim language, however, does not specifically include or require these limitations.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 6-7, 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) steps which are considered a mental process.
This judicial exception is not integrated into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception – See analysis below.
Step 2A prong One: Does the claim recite a judicial exception (i.e. an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon)? --- Yes
The claimed “selecting a first network function from one or more first network functions” and “selecting another network function from the one or more first network functions” is data gathering and analysis which is considered a mental processes (MPEP 2106.04 (a)(2)III).
For example, a person on a computer can compare information and make a determination that one value should be chosen over another based upon measured values. It is noted that even mental processes which may need the use of a computer does not prevent the function from being a mental process (see MPEP 2106.04(a)(2)(III)(C)). As result, the limitation recites a mental process.
Step 2A, prong Two: Does the claim recite additional elements that integrate the exception into a practical application – NO
The additional elements are:
performing a service provisioning to obtain information…
transmitting and receiving a first, second, third and further message.
A first functional component and user equipment.
The “first functional component” and “user equipment” can be considered to be generic components to implement the abstract idea and do not integrate the abstract idea into the practical application. See MPEP §2106.05(f).
The transmitting and receiving of a first, second, third and further message and service provisioning to obtain information are well‐understood, routine, and conventional functions claimed in a merely generic manner (e.g., at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
Step 2B - Does the claim recite additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. -- NO
The additional elements when reconsidered individually and as an ordered combination do not amount to significantly more than the abstract idea user equipment and first functional component are generic computer components and software recited at a high level of generality and are used to perform known functions of transmitting and receiving data messages, , which does not do more than merely invoke computers or machinery as a tool to perform an existing process which are well‐understood, routine, and conventional functions claimed in a merely generic manner (e.g., at a high level of generality) as insignificant extra-solution activity.
Insignificant Extra-Solution Activity as data gathering and manipulation, Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754; and selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
Claim 2 – recites selecting a first network function which a registration of the first functional component is not required, is directed to data collection and analysis and a commonplace business method or mathematical algorithm being applied on a general purpose computer and does not integrate the abstract idea into the practical application.
Insignificant Extra-Solution Activity as data gathering and manipulation, Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754;
Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016);
Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;
Claim 7 -- recites the data message including a particular parameter for enabling selection, which is simply describing transmitted data which is a well‐understood, routine, and conventional functions claimed in a merely generic manner (e.g., at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 6-7, 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “the second parameter” in lines 19-20. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation “the step of selecting” in line 1 which renders the claim indefinite, as claim 1 includes two separate “selecting” steps, and it is unclear if this limitation is meant to reference the first selecting step, the second selecting step, or both.
Claim 6 recites the limitation “the first parameter” in lines 17-18. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the second parameter” in lines 19-20. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “a first parameter” in line 2 which renders the claim indefinite, as it is unclear if this is meant to reference the “first parameter” of claim 6 or a different parameter.
Claim 13 recites the limitation “whereby the at least one processor is configured to perform the method according to claim 1” which renders the claim indefinite.
As claim 1 already recites “A method performed by a first functional component”, it is unclear as to which element is performing the method and what the specific relationship (if any) is between the first functional component and the processor, which are both separately recited as performing the same method.
Claim Rejections - 35 USC § 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.
Claims 1-2, 6-7, 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 3GPP TS 23.558 v17.2.0 (2021-12), 3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; Architecture for enabling Edge Applications (Release 17), 163 pages. (hereafter referenced as 3GPP TS 23.558) (of record).
As to claim 1, 3GPP TS 23.558 discloses a method performed by a first functional component implementing an enabler function in a User Equipment (UE) (EEC, 6.3.3), comprising:
performing, by the first functional component of the UE, a service provisioning, to obtain information regarding one or more first network functions implementing Edge Enabler Servers (EESs) (EEC service provisioning request to ECS; 8.3.3.2.2);
selecting, by the first functional component of the UE, a first network function from the one or more first network functions (EEC receiving identified EES; 8.3.3.2.2);
transmitting, to the selected first network function, a first message (EAS discovery request from EEC to EES; 8.5.2.2) including a first parameter (EAS discovery filters, locations; 8.5.2.2) enabling the selected first network function to perform Edge Application Server (EAS) selection (identifying EAS(s) matching the EAS filters and location; 8.5.2.2) and
receiving, from the selected first network function, a second message (EAS discovery response including matching EASs; 8.5.2.2),
wherein the second message does not include information regarding a second network function implementing EAS (message triggering EEC to perform ACR to select T-SEE, 8.8.2.2, or message triggering EEC resume and repeat with different T-SEE, 8.8.2.6), the method further comprising:
selecting, by the first functional component of the UE, another first network function from the one or more first network function (selecting T-EES from to replace S-EES; 8.8.2.2);
transmitting, to said another first network function, a third message including the first parameter enabling the another first network function to perform EAS selection (EEC performs EAS discovery query with T-EES for desired T-EASs; 8.8.2.2);
receiving, from said another first network function, a further message including the second parameter indicating information regarding a second network function implementing EAS (message from T-EES indicating new T-EAS being utilized; 8.5.2.2).
As to claim 2, 3GPP TS 23.558 discloses wherein the step of selecting further comprises selecting the first network function which a registration of the first functional component on the first network function is not required (8.2.6, EES profile indicates whether or not the EEC is required to register).
As to claim 6, 3GPP TS 23.558 discloses a method performed by a first functional component implementing an enabler function in a User Equipment (UE) (EEC, 6.3.3), comprising:
performing, by the first functional component of the UE, a service provisioning, to obtain information regarding one or more first network functions implementing Edge Enabler Servers (EESs) (EEC service provisioning request to ECS; 8.3.3.2.2);
selecting, by the first functional component of the UE, a first network function from the one or more first network functions (EEC receiving identified EES; 8.3.3.2.2), wherein a registration of the first functional component on the first network function is not required (8.2.6, EES profile indicates whether or not the EEC is required to register);
transmitting, to the selected first network function, a first message (EAS discovery request from EEC to EES; 8.5.2.2) for discovering a second network function implementing Edge Application Server (EAS) (identifying EAS(s) matching the EAS filters and location; 8.5.2.2) and
receiving, from the selected first network function, a second message (EAS discovery response including matching EASs; 8.5.2.2),
wherein the second message does not include information regarding a second network function implementing EAS (message triggering EEC to perform ACR to select T-SEE, 8.8.2.2, or message triggering EEC resume and repeat with different T-SEE, 8.8.2.6), the method further comprising:
selecting, by the first functional component of the UE, another first network function from the one or more first network function (selecting T-EES from to replace S-EES; 8.8.2.2);
transmitting, to said another first network function, a third message including the first parameter enabling the another first network function to perform EAS selection (EEC performs EAS discovery query with T-EES for desired T-EASs; 8.8.2.2);
receiving, from said another first network function, a further message including the second parameter indicating information regarding a second network function implementing EAS (message from T-EES indicating new T-EAS being utilized; 8.5.2.2).
As to claim 7, 3GPP TS 23.558 discloses wherein the first message for discovering a second network function implementing Edge Application Server (EAS) (EAS discovery request from EEC to EES; 8.5.2.2), wherein the first message includes a first parameter enabling the selected first network function to perform EAS selection (EAS discovery filters, locations; 8.5.2.2).
As to claim 13, 3GPP TS 23.558 discloses a User Equipment (UE) (6.2, A.3.2-A.3.3) comprising:
at least one processor (inherent within a smartphone device; 6.2, A.3.2-A.3.3); and
a non-transitory computer readable medium (inherent within a smartphone device running applications; A.3.2-A.3.3) coupled to the at least one processor, the non-transitory computer readable medium stores instructions executable by the at least one processor (smartphone with applications; 6.2, A.3.2-A.3.3) whereby the at least one processor is configured to perform the method according to claim 1 (see the rejection of claim 1 above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James R Sheleheda whose telephone number is (571)272-7357. The examiner can normally be reached M-F 8 am-5 pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached at (571) 272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James R Sheleheda/ Primary Examiner, Art Unit 2424
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