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 .
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)(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 1 and 5-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Torvinen et al (2019/0098502).
Regarding claims 1 and 8, Torvinen discloses a user equipment (UE) and a method of the UE, the method comprising: receiving at least one parameter specifically applicable to 5G for providing 5G service to the UE equipped with a Subscriber Identity Module (SIM) which does not store the at least one parameter specifically applicable to 5G (see The AMF/SEAF 4 accepts the registration of the UE 1, and forwards the privacy key(s) (parameter) and the MAC-P to the UE, e.g., in a registration acceptance message (step 8) in paragraph 0124 and figure 13; Data send to the UE in figure 15 and paragraph 0137; Steps 3 and 4 in figure 10; When the home network updates the privacy key(s) or delivers one or more new ones to the 5G-USIM/UICC (step 3) in paragraph 0103), wherein the at least one parameter specifically applicable to 5G is used to control an access of the UE with a network (see a Subscription Permanent Identifier (SUPI) in step 4 of figure 10 and A SUPI is a clear-text, globally unique, 5G, permanent identifier allocated to each subscriber in a 5G system. The SUPI may be IMSI-based or non-IMSI based. Embodiments that include an IMSI-based SUPI may use the IMSI as described in 3GPP TS 23.003 V15.0.0, for example. Embodiments that include a non-IMSI based SUPI may be based on a Network Access Identifier (NAI) in paragraph 0080; The clear-text part may also include a public key identifier, an encryption scheme identifier, and/or scheme related parameters useful for decrypting the encrypted part of the SUCI according to an encryption scheme, such as an ephemeral public key of the UE or other parameters for use in Elliptic Curve Integrated Encryption Scheme (ECIES) or other encryption scheme in paragraph 0082); and sending, to the network, a message (see ACK in step 5 of figure 10) after receiving the at least one parameter (after receiving SUPI in step 4 of figure 10) (see SUPI in step 4 and Ack in step 5 of figure 10; step 9 in figure 13 and the UE 1 then detaches from the network (step 9), e.g., to start a new registration procedure using a provisioned privacy key to conceal its subscriber identity in paragraph 0125).
Regarding claim 5, Torvinen discloses the network includes an Access and Mobility management function (AMF) (see AMF in figure 13).
Regarding claim 6, Torvinen discloses the message is used to acknowledge reception of the at least one parameter (see Ack in step 5 of figure 10. Note that the update in step 3 is received from the network as described in paragraph 0103).
Regarding claim 7, Torvinen discloses the at least one parameter is stored in Mobile Equipment (ME) of the UE (see ME stores the privacy key in non-volatile memory in step 6 of figure 10).
Regarding claims 9, Torvinen discloses wherein the SIM is configured for 4G (see 4G/LTE in paragraphs 0003; Although this particular example uses the term 5G-USIM/UICC, this term should not be considered as limiting with respect to any version or vendor of USIM or UICC technology, nor should this term be considered as limiting with respect to any generation of mobile network, e.g., 2G/3G/4G/5G in paragraphs 0095).
Regarding claims 10, Torvinen discloses wherein the SIM is a 4G compliant Universal Subscriber Identifier Module (USIM) (see (see 4G/LTE in paragraphs 0003; Although this particular example uses the term 5G-USIM/UICC, this term should not be considered as limiting with respect to any version or vendor of USIM or UICC technology, nor should this term be considered as limiting with respect to any generation of mobile network, e.g., 2G/3G/4G/5G in paragraphs 0095).
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 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Torvinen in view of Kunz et al (2020/0344678).
Regarding claim 2, Torvinen doesn't specifically disclose the use of an International Mobile station Equipment Identity (IMEI). However, the use of IMEI during registration is well known in the art. Kunz discloses this feature (see the UE may send its device ID (e.g., IMEI, a unique string—such as a device manufacturer globally uniquely provisioned string) encrypted with the AMF encryption key to the AMF in paragraph 0056). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Regarding claim 3, Torvinen in view of Kunz discloses the IMEI is obtained by the network (see the UE sends IMEI to the AMF in paragraph 0056).
Regarding claim 4, Torvinen in view of Kunz discloses the at least one parameter is received in a case where the UE sends an International Mobile station Equipment Identity (IMEI) to the network (see the UE sends IMEI to the AMF in paragraph 0056).
Response to Arguments
Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive.
The applicant argues that in contrast to claim 1, the "Privacy Key" in Torvinen is used "to conceal the subscriber identity of UE1," as disclosed in Torvinen, Paragraph 0125 reproduced below: "In some embodiments the UE 1 then detaches from the network (step 9), e.g, .to start a new registration procedure using a provisioned privacy key to conceal its subscriber identity, according to one of the embodiments described above". This argument is irrelevant because claim 1 merely claimed at least one parameter specifically applicable to 5G. “Privacy Key” is considered a parameter as claimed. In addition, the term “parameter” is used in the following paragraphs: “The clear-text part may also include a public key identifier, an encryption scheme identifier, and/or scheme related parameters useful for decrypting the encrypted part of the SUCI according to an encryption scheme, such as an ephemeral public key of the UE or other parameters” in paragraphs 0082; “the privacy key also includes one or more public key scheme related parameters” in paragraphs 0085; “the MAC may be calculated over the various fields of the privacy key, including but not limited to the home network public key and its related parameters” in paragraphs 0109; “the privacy key and MAC-P are related to each other, and what parameters are used as input to the MAC calculation” in paragraphs 0137. See also (SUPI, privacy key) in figure 10 and “The SUPI may in an alternative embodiment be a Network Access Identifier” in paragraph 0015. Therefore, Torvinen clearly discloses all the features of claim 1.
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.
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/BRIAN D NGUYEN/Primary Examiner, Art Unit 2475