DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to the communication(s) filed on 09/24/2026. Claims 1-16 and 19-20, of which claims 1, 8, 9 and 16 are independent, were pending in this application and are considered below.
Applicant canceling claims 17 and 18 and amending claims 1, 8, 9 and 16 is acknowledged.
Rejection of claims 17 and 18 is rendered moot in view of their cancellation by the applicant’s amendment.
Response to Arguments---
Applicant’s arguments regarding the rejection of claims filed on 09/24/2026 have been fully considered. The Examiner thoroughly reviewed Applicant’s arguments and noted that the Applicant’s argument is based on the newly amended limitations, which are addressed in a new ground(s) of rejection presented in this Office action below.
A new ground(s) of rejection is presented in this Office action, which is necessitated by Applicant’s amendment. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112(a) or pre-AIA 35 USC § 112, first paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The test for enablement is whether Applicant's specification provides sufficient detail so one of ordinary skill in the art at the time of filing could make and use the full scope of the claimed invention without undue experimentation. In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP § 2164.01. To determine whether the amount of experimentation would be undue, or unreasonable, the Court of Appeals for the Federal Circuit has enumerated several non-exclusive factors, any of which may not apply in a given case. In re Wands at 1404; MPEP § 2164.01(a). The factors include (A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands at 1404; MPEP § 2614.01(a). The scope of enablement provided by a disclosure must be commensurate in scope with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); MPEP § 2164.08. Moreover, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Automotive Technologies International Inc. v. BMW of North America Inc., 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007)
Applicant's Specification must provide written description support for all that is claimed. See 35 USC § 112 ¶ 1; MPEP § 2163. Written description support requires a disclosure that would reasonably convey Applicant's possession of all claimed subject matter to one of ordinary skill in the art at the time of the invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc); MPEP § 2163. While written description support requires neither in haec verba description of the claim limitations nor any particular form of disclosure, all claim limitations must be equivalently described and not merely rendered obvious. Ariad at 1162. Accordingly, a patent claim cannot recite subject matter that is not expressly, implicitly or inherently disclosed by Applicant's written description. See Hyatt v. Boone, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); In re Wright, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989); MPEP § 2163.
Reasonable possession of a claimed invention is also not shown when the disclosure merely amounts to a hoped for result, instead of a specifically claimed invention. See University of California v. Eli Lilly, 43 USPQ2d 1398 (Fed Cir 1997). In Eli Lilly, the court held that where a specification merely includes generic statements that distinguish multiple genus by function alone, those statements are generally insufficient sources of written description support because they fail to define structures/identities of species within the genus. Patents must describe "an invention, not an indication of a result that one might achieve if one made that invention." Id.
Claims 16, 19, and 20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The subject matter not supported by the disclosure, as originally filed, includes the added material as follows: "performing, by using the second key, at least one of encryption or integrity protection on data or signaling communicated with the terminal in the second cell.” (line 15 of claim 16). Nowhere in the disclosure as originally filed, has such restriction been indicated.
Regarding claims 19 and 20, claims are rejected due to their dependency to the rejected claim 16.
Claim Rejections - 35 USC § 112(b) or pre-AIA 35 USC § 35 USC § 112, second paragraph
Examiner Note: The Leahy-Smith America Invents Act (AIA ) made technical changes to 35 U.S.C. § 112 that only apply to patent applications filed on or after on September 16, 2012.
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 pre-AIA 35 U.S.C. 112, 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 13 and 15 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention
Regarding claims 13 and 15, claims recite the limitation “the quantity of access times” (line 1 of claim 13; line 3 of claim 15). There is insufficient antecedent basis for this limitation in the claim. It is recommended to replace the limitation with phrase --the quantity of times-- (see line 9 of claim 9).
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.
There are four statutory classes of invention defined in 35 USC § 101: machine, process, article of manufacture and composition of matter. 35 USC § 101. The Supreme Court of the United States has further delineated several subject matter exceptions that are ineligible for patenting. Bilski v. Kappos, 95 USPQ2d 1001, 1005-06 (2010); MPEP § 2106. In particular, claims embracing abstract ideas, physical phenomena and laws of nature are patent ineligible. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, 134 S. Ct. 2347 (2014), slip op., at 5 (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S 576 (2013), slip op., at 11)); Bilski at 1005-06; MPEP § 2106. According to Alice, the two part analysis of Mayo Collaborative Services v. Prometheus Laboratories Inc., 566 U.S. 66 (2012) should be used for all types of judicial exceptions and all categories of claims. Alice Corp., slip op., at 7, 16, 17. The first part of the analysis is to "determine whether the claims at issue are directed to a patent- ineligible concept." Alice Corp., slip op., at 7. Upon determining that an abstract idea is present in the claim, the second part of the analysis is to determine whether the claim "contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice Corp., slip op., at 11 (citing Mayo, slip op., at 3, 11). Claims, therefore, must do more than merely add insignificant limitations, such as limiting the field of use, adding token extra solution activity that lacks a particular machine or transform and adding wholly conventional machines and acts. See Alice Corp., slip op., at 12-13 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention . “Stating an abstract idea while adding the words 'apply it with a computer' simply combines those two steps, with the same deficient result."); Bilski at 1009-10; MPEP § 2106.
Claims 16, 19, and 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.)
Regarding claim 16, Step 1: system/method/process claim
Step 2A, Prong 1: limitations “determining a second key …” is Mental Process (observation, evaluation, judgment, and/or opinion).
Step 2A, Prong 2: the additional elements individually or as a whole do not integrate the judicial exception into a practical application.
The additional element, “receiving …” is merely data gathering and insignificant extra-solution activity (pre-solution activity) (MPEP 2106.05 (g)).
The additional element, “when the terminal accesses the second cell for a first time, using the second candidate key as the second key”, “when the terminal accesses the second cell not for a first time, determining the second key based on a latest historical key in one or more historical keys corresponding to the second cell”, and “wherein the latest historical key is a historical key between the terminal and the second cell, and the second key is for communication with the terminal in the second cell” is generally linking the use of the judicial exception to a particular technological environment or field of use (terminal in a cell) (MPEP 2106.05(h)).
The limitation “performing, by using the second key, at least one of encryption or integrity protection on data or signaling communicated with the terminal in the second cell.” fall within the mathematical concepts grouping of abstract ideas.
When considered a whole, the claimed invention fails to recite any improvement in any technology or technical field (MPEP 2106.05(a)) or recite any meaningful limitations (MPEP 2106.05(e)). The limitations are no more than mere automation of a mental process to determine a terminal in a cell.
Step 2B: the claim does not recite additional elements that are sufficient to amount to significantly more than the abstract idea when considered both individually and as a whole.
Under Step 2B, limitation(s) that are insignificant extra-solution activity under step 2A, Prong 2, need to be re-evaluated to determine whether they are well-understood, routine, conventional activities.
Specifically, the limitation, “receiving …” is just receiving/transmitting data over a network, which is mere judicial-recognized well-understood, routine, conventional activity (MPEP 2106.05(d)(II).
Claim Rejections - 35 USC § 102
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 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.
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.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) (claim to a system for setting a computer clock to an offset time to address the Year 2000 (Y2K) problem, applicable to records with year date data in "at least one of two-digit, three-digit, or four-digit" representations, was held anticipated by a system that offsets year dates in only two-digit formats). See also MPEP § 2131.02. "The identical invention must be shown in as complete detail as is contained in the … claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01. ("(A) Prove a primary reference contains an "enabled disclosure;" (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent.").
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. US 2020/0022209 A1 to Peng et al.
Regarding claim 8, Peng et al. a disclose a communication method (Fig. 6), comprising:
communicating with a terminal in a first cell (Fig. 6 {which shows communication between MN comprising first cell and terminal}; ¶[0175]: "After dual connectivity is configured for the terminal, serving cell groups are divided into an MCG and an SCG. A cell in the MCG belongs to the MN," and paragraph 0072: "In dual connectivity. a data radio bearer (Data Radio Bearer, DRB) may be provided only by the MN or the SN, or may be provided by both the MN and the SN. When the ORB is provided only by the MN, the DRB is referred to as a master cell group (Master Cell Group, MCG)") by using a first key (¶[0173]: "an access stratum (access stratum, AS) root key (for example, KeNB) of the MN");
deriving a first key set, wherein the first key set comprises Q keys (¶[0179]: "the MN may send a key group (or a key list (key list)) to the SN for the SN to select a key from the key group when updating a key. Optionally, the key group may be carried in the request message in step S502 in FIG. 5, or the addition request message in step S610 in FIG. 6”; ¶[0180]: "the SN receives the key group and the count value group, and selects a new key, that is, a key different from an existing key, from the key group when a key needs to be updated." {i.e., said key group/list comprises several keys Q> 1 from which a new key is selected}; ¶[0030]: "the master node may send a group of count values, that is, a count value group, used to derive the keys in the key group to the terminal." {i.e., master node MN derives said key group based on said count values/value group}) corresponding to N cells in a first cell set (¶[0175]: "After dual connectivity is configured for the terminal, serving cell groups are divided into an MCG and an SCG. A cell in the MCG belongs to the MN, and a cell in the SCG belongs to the SN), wherein each of the Q keys is derived using cell information of a corresponding one of the N cells (¶[0174]: “when the MN is a base station in the LTE system, the AS root key and the derived key of the AS root key are represented as KeNB and SKeNB … in a 5G communications system, the AS root key and the derived key of the AS root key may be represented as KgNB and SKgNB, or Kcu and SKcu.” {KgNB is derived inherently using two specific pieces of cell information: cell identity (“Physical Cell ID (PCI)”) and frequency information (“Absolute Radio Frequency Channel Number (ARFCN-DL)”)}) wherein the N cells are cells of M network devices (Fig. 6: “RAN node 110” and “RAN node 120” {the network device MN is equivalent of RAN node 110 and the network device SN is equivalent of RAN node 120}) , the first cell set corresponds to the terminal (¶[0175]: "After dual connectivity is configured for the terminal. serving cell groups are divided into an MCG and an SCG. A cell in the MCG belongs to the MN, and a cell in the SCG belongs to the SN. Carrier aggregation (Carrier Aggregation, CA"), and Q, N, and M are integers greater than or equal to 1 (¶[0180]: "the SN receives the key group and the count value group, and selects a new key, that is, a key different from an existing key, from the key group when a key needs to be updated." {i.e., said key group/list comprises several keys Q> 1 from which a new key is selected, there are N cells equivalent of serving cell groups as well as two network devices, in which the network device MN is equivalent of RAN node 110 and the network device SN is equivalent of RAN node 120});
sending second key information (Fig. 6: “S610: Addition request message”; ¶[0179] "the MN may send a key group (or a key list (key list)) to the SN for the SN to select a key from the key group when updating a key. Optionally, the key group may be carried in the request message in step S502 in FIG. 5, or the addition request message in step S610 in FIG. 6”) to a network device corresponding to a second cell in the first cell set (Fig. 6: "RAN node 120” {in which the network device SN is equivalent of RAN node 120}; ¶[0175]: "After dual connectivity is configured for the terminal, serving cell groups are divided into an MCG and an SCG. A cell in the MCG belongs to the MN, and a cell in the SCG belongs to the SN.“), wherein the second key information comprises a second candidate key, the first key set comprises the second candidate key, and the second key information is used to configure a key corresponding to the second cell (¶[0180]: "the SN receives the key group and the count value group. and selects a new key. that is, a key different from an existing key. from the key group when a key needs to be updated .").
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
The foregoing obviousness inquiry requires an expansive and flexible approach, not a rigid approach demanding express teachings, suggestions and motivations to combine prior art teachings. KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395, 97 (US 2007). The rationale supporting a conclusion of obviousness should be made explicit for review, but the rationale does not require precise teachings directed to the specific subject matter of the claim. Id. at 1396. A rejection can rely on inferences and creative steps that a person of ordinary skill in the art would employ. Id. Obviousness rejections are not limited to showing the obviousness of solutions to the problems Applicant was trying to solve. Id. at 1397. Rather, one can show obviousness of a claim by establishing the obviousness of any solution to any known problem in the field of endeavor and addressed by a patent application's subject matter. Id. Moreover, one of ordinary skill in the art is not an automaton, but is possessed of ordinary creativity. Id. One of ordinary skill could find alternative uses for prior art elements beyond the elements' primary purposes and fit prior art teachings together like a puzzle. Id. A combination of prior art teachings does not require absolute predictability. Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals Inc., 81 USPQ2d 1324, 1329 (Fed. Cir. 2006). All that is required is a reasonable expectation of success. Id.
Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over Peng et al.
Regarding claim 14, Peng et al. disclose as stated above. Peng et al. also disclose wherein the Q keys are in one-to-one correspondence with the N cells (¶[0180]: "the SN receives the key group and the count value group, and selects a new key, that is, a key different from an existing key, from the key group when a key needs to be updated." {i.e., said key group/list comprises several keys Q> 1 from which a new key is selected, there are N cells equivalent of serving cell groups as well as two network devices, in which the network device MN is equivalent of RAN node 110 and the network device SN is equivalent of RAN node 120}), except for expressly disclose Q is equal to N. However, the additional feature merely define one of several straightforward possibilities which the skilled person would select, depending on the circumstances, in order to solve the problem posed. Under KSR the known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives and is considered obvious. Therefore, it would be obvious to one of the ordinary skill, before the effective filing date of the claimed invention, to try to choose from a finites number of ways to select number of Q keys, as suggested by KSR, to reach at the claimed invention with a reasonable expectation of success.
Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Peng et al. in view of “3GPP TS 33.401 V17.0.0 (2021-12) Technical Specification 3rd Generation Partnership Project; Technical Specification Group Services and System Aspects; 3GPP System Architecture Evolution (SAE); Security architecture (Release 17)”, ("3GPP", hereinafter - see IDS).
Regarding claim 10, Peng et al. disclose as stated above except for expressly teaching wherein the deriving a first key set comprises: deriving the first key set based on the first key, next hop information, and/or information about a cell in the first cell set, wherein the information about the cell comprises one or more of downlink frequency information and physical cell identifier information.
However, aforesaid features, which are standard implementation details, are well known in the art, as disclosed by 3GPP {which is the standard related to the field of invention of systems disclosed by Peng et al.} that disclose deriving the first key set based on the first key, next hop information (§3.1: “the cryptographic keys at AS level with their identifiers, the Next Hop parameter NH, the Next Hop Chaining Counter parameter NCC used for next hop access key derivation”; §7.2.8.1.1: “MME and the UE shall derive a KeNB and a Next Hop parameter (NH). The KeNB and the NH are derived from the KASME”), and/or information about a cell in the first cell set, wherein the information about the cell comprises one or more of downlink frequency information and physical cell identifier information (§A.5 KeNB* derivation function: “When deriving a KeNB* from current KeNB or from fresh NH and the target physical cell ID in the UE and eNB ... the following parameters shall be used ... P1 = EARFCN-DL (target physical cell downlink frequency)”). Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of the claimed invention, to use the well-known aforesaid implementation details , as suggested 3GPP, with the system of Peng et al. to reach at the claimed invention with a reasonable expectation of success, because such a combination would have represented the combination of well-known techniques through conventional manners to provide predictable and expected results.
Allowable Subject Matter
Claims 1-7 are allowed.
Claims 9, 11, and 12 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.
Claims 13 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
As applied to the claims above, the specific columns, line numbers, and figures in the references has been cited for the Applicant’s convenience. Although the specified citations are representative of the teachings of the art and are applied to the particular limitations within the individual claims, other passages and figures may apply as well. The Applicant is respectfully requested to fully consider the references, in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage taught by the prior art or disclosed by the Examiner, in preparing responses. Applicant(s) are reminded that MPEP 2123 I. states: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The attention of the applicant is drawn to the fact that the application may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed. In order to facilitate the examination of the conformity of the amended application, the applicant is respectfully requested to clearly identify the amendments carried out, irrespective of whether they concern amendments by addition, replacement or deletion, and to indicate the passages of the application as filed on which these amendments are based.
Reliance on the US Pre-Grant Publication (PG PUB) of this application, which is not part of the image file wrapper of the patent application, in the prosecution is improper. All references in the reply to the office action are to be made to the latest version on record of the patent application as filed not as published. The latest version on record of the patent application means the patent application as originally filed and modified by previously entered amendment(s).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. 3GPP, "Security architecture and procedures for 5G system," 3rd Generation Partnership Project (3GPP), Technical Specification (TS) 33.501, Version 15.14.1, Nov. 2021 – 3GPP hereinafter. 3GPP describes that KgNB is derived using two specific pieces of cell information: cell identity, i.e., Physical Cell ID (PCI)) and frequency information, i.e., Absolute Radio Frequency Channel Number (ARFCN-DL) (lines 17-19 of page 51: "Intermediate key KNG-RAN*, as well as non-initial KgNB, defined in clause 6.9.2.1.1 can be uniquely identified by ngKSI together with those parameters from the set {KgNB or NH, sequence of PCIs and ARFCN-DLs}, which are used to derive these keys from KgNB or NH.")
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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nader Bolourchi whose telephone number is (571) 272-8064. The examiner can normally be reached on M-F 8:30 to 4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hannah S. Wang, SPE can be reached on (571) 272-9018. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Interviews are available via telephone and video conferencing using a USPTO web-based Video Conferencing and Collaboration Tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Communications via Internet e-mail are at the discretion of the applicant. See MPEP § 502.03. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122 and will not initiate communications with applicants via Internet e-mail. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.
The following is a sample authorization form, which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.”
To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, filed via EFS-Web. The Form is available at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf.
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/Nader Bolourchi/
Primary Examiner, Art Unit 2631
