Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. EXAMINER’S NOTE: The claims have been reviewed and considered under the new guidance pursuant to the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG 2019) issued January 7, 2019.
3. This communication is in response to Applicant’s Amendment filed on 06 May 2026 has been reviewed and considered by the Examiner. Claim 8 has been amended. Claims 1-10 remain pending.
** On 13 August 2026, the Examiner performed compact prosecution, contacted the Attorney of Record and asked the Attorney of Record to amend independent claim 8 by providing a clear definition and clear scope of the claim with regards to the term "full data rate" which will help place the application in better condition for an allowance and overcome the 112, 2nd paragraph rejection and asked the Applicant to file an electronic Terminal Disclaimer to overcome the double patenting rejection. After conducting the interview, no response from the Applicant, no electronic Terminal Disclaimer was filed and no agreement was reached as of 17 August 2026. Therefore, the Examiner will issue a Final rejection.
Response to Arguments
4. Applicant’s arguments, see 5-7, filed 06 May 2026, with respect to claims 1-10 have been fully considered and are persuasive. The 103 rejection of claims 1-10 in view of Wifvesson et al. and Yoo et al. has been withdrawn.
5. In light of the previous claim objection, the Applicant has amended claim 8 and made the appropriate corrections, therefore, the claim objection has been withdrawn.
6. In light of the previous 112, 2nd paragraph rejection, the Applicant failed to amend claim 8 and make the appropriate corrections, therefore, the 112, 2nd paragraph rejection will be maintained.
7. In light of the previous non-statutory double patenting rejection, the Applicant failed to file an electronic Terminal Disclaimer, therefore, the non-statutory double patenting rejection will be maintained.
Double Patenting
8. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Instant Application 18/775,015
Issued Application 12,058,515
1. A communication system including a host computer comprising: a processing circuitry configured to provide user data; and a communication interface configured to forward the user data to a cellular network for transmission to a user equipment (UE), wherein the cellular network comprises a base station for enabling a user plane integrity protection mode in a radio access network packet data convergence protocol (PDCP), wherein the base station comprises a radio interface and a processing circuitry, and wherein the processing circuitry of the base station is configured to: receive a message from a network node that includes an indication of a user plane integrity protection (UP IP) mode supported by the UE; and send, to the UE, a message that includes an indication to activate the UP IP mode for a data radio bearer established between the UE and the base station.
2. The communication system of claim 1, further including the base station.
3. The communication system of claim 2, further including the UE, wherein the UE is configured to communicate with the base station.
4. The communication system of claim 3, wherein: the processing circuitry of the host computer is configured to execute a host application, thereby providing the user data; and the UE comprises processing circuitry configured to execute a client application associated with the host application.
5. A method implemented in a communication system including a host computer, a base station and a user equipment (UE), the method comprising: at the host computer, providing user data; and at the host computer, initiating a transmission carrying the user data to the UE via a cellular network comprising the base station, wherein the base station performs operations comprising: receiving a message from a network node that includes an indication of a user plane integrity protection (UP IP) mode supported by the UE; and sending, to the UE, a message that includes an indication to activate the UP IP mode for a data radio bearer established between the UE and the base station.
6. The method of claim 5, further comprising: at the base station, transmitting the user data.
7. The method of claim 6, wherein the user data is provided at the host computer by executing a host application, the method further comprising: at the UE, executing a client application associated with the host application.
8. A user equipment (UE) for enabling a user plane integrity protection (UP IP) mode in a radio access network packet data convergence protocol (PDCP), the UE comprising: a processor; and a memory coupled to the processor, wherein the memory stores instructions that when executed by the processor causes the processor to: provide an indication of a UP IP mode supported by the UE; send, to a core node, an attach request that includes the indication of the UP IP mode supported by the UE; and receive, from a receiving node, an activation message that includes an indication to the UE to activate the UP IP mode for a data radio bearer established with the receiving node, wherein the receiving node is a long-term evolution (LTE) eNodeB (eNB) and wherein the UP IP mode comprises one of: the UE supports UP IP in new radio PDCP with a New Radio (NR) NodeB (gNB) in a 4G network at a full data rate, and the UE supports UP ID at a defined rate that is less than the full data rate with a gNB in a 4G network.
9. The UE of claim 8, wherein the processor of the UE is configured to: receive a handover command from a source radio access node, wherein the handover command includes a command to the UE to activate the UP IP mode for a data radio bearer established with a target radio access node.
10. The UE of claim 8, wherein the processor of the UE is configured to: receive a reconfiguration request from a master radio access node, wherein the reconfiguration request includes an indication to the UE to activate the UP IP mode for a data radio bearer established with a secondary radio access node; and activate the UP IP mode for the data radio bearer established with the secondary radio access node.
1. A method performed by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment, UE, for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol (PDCP) the method comprising: providing an indication of a user plane integrity protection, UP IP, mode supported by the UE with respect to a 4G system; sending an attach request to a Mobility Management Entity (MME) that includes the indication of the UP IP mode supported by the UE; and receiving an activation message from an eNodeB that includes an indication to the UE to activate the UP IP mode for a data radio bearer established between the UE and the eNodeB.
2. The method of claim 1, wherein the sending the attach request further comprises sending the attach request that includes a default radio bearer setup; and wherein receiving the activation message further includes an indication to the UE to activate the UP IP mode for the data radio bearer established between the UE and the eNodeB.
3. The method of claim 1, wherein the sending the attach request does not include a default radio bearer setup; and further comprising: receiving a message from a receiving node to initiate a security mode procedure with the UE where no data radio bearer with the UE is established.
4. The method of claim 1, further comprising: receiving a handover command from a source radio access node, wherein the handover command includes a command to the UE to activate the UP IP mode for a data radio bearer established with a target radio access node.
5. The method of claim 1, further comprising: receiving a reconfiguration request from a master radio access node, wherein the reconfiguration request includes an indication to the UE to activate the UP IP mode for a data radio bearer established with a secondary radio access node; and activating the UP IP mode for the data radio bearer established with the secondary radio access node.
6. A method performed by a Mobility Management Entity (MME) for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol, PDCP, the method comprising: handling an indication of a user plane integrity protection mode supported by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment, UE, with respect to a 4G system; receiving an attach request from the UE that includes the indication of the UP IP mode supported by the UE; responsive to the attach request, establishing a secure connection between the UE and the radio access network; and sending a message to a long term evolution eNode B that includes the indication of the UP IP mode.
7. The method of claim 6, wherein the handling comprises: receiving an attach request that includes the indication of the UP IP mode and includes a default bearer setup; responsive to the attach request, establishing a secure connection between the UE and the radio access network; and sending a message to long term evolution eNode B that includes the indication of the UP IP mode.
8. The method of claim 7, further comprising: receiving a packet data network connection establishment request from the UE to establish a data bearer with the radio access network; creating a session with the gateway node to establish the default bearer with the UE; and responsive to establishing the default bearer, sending a message to the long term evolution eNodeB that includes the indication of the UP IP mode supported by the UE.
9. The method of claim 7, wherein receiving the attach request does not include a default radio bearer setup; and further comprising: sending a message to the long term evolution eNode B to initiate a context setup procedure with the long term evolution eNode B, wherein the message includes providing the UP IP mode of the UE to the long term evolution eNode B.
10. The method of claim 7, further comprising: establishing a secure packet data network connection with the UE to establish a data radio bearer with the radio access network; creating a session procedure with a gateway node to establish a default bearer with the UE; and initiating a context setup procedure with the receiving node that includes the indication of the UP IP mode supported by the UE.
11. The method of claim 6, further comprising: requesting a location update from a core network server; receiving from the core network server a location update response message that includes subscription data information for the UE as the user plane integrity protection policy; storing the user plane integrity protection policy in the MME; deciding that the user plane integrity protection policy takes precedence over the indication of the UP IP mode received in the attach request; creating a session procedure with the core network to establish a default bearer with the UE; and sending a message to long term evolution eNode B that includes the UP IP mode for the UE and the user plane integrity protection policy.
12. The method of claim 11, further comprising: sending a message to a source core node that includes the complete attach request; receiving a response to the message, wherein the response provides the UP IP mode of the UE to the target core node when the attach request is successfully authenticated; and if the attach request was not successfully integrity protected, sending a request to the UE to resend the attach request that includes the indication of the UP IP mode supported by the UE.
13. The method of claim 6, further comprising: receiving a handover request from a source node; forwarding (1) the handover request to a source core node and (2) the UP IP mode for the UE if the UP IP mode for the UE is stored in the target core node; sending a handover command request to a target node, wherein the handover command request includes the UP IP mode if it is stored in the target core node; and sending the UP IP mode to the source node.
14. A method performed by an eNodeB for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol, PDCP, the method comprising: receiving a message from a Mobility Management Entity (MME) that includes an indication of a user plane integrity protection, UP IP, mode supported by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment with respect to a 4G system, UE; and sending a message to the UE that includes an indication to the UE to activate the UP IP mode for a data radio bearer established between the UE and the eNodeB.
15. The method of claim 14 , wherein the receiving comprises: receiving the UP IP Mode during a security mode command procedure.
16. The method of claim 14, further comprising: if the UP IP mode is received from the MME, indicating to a new radio access node that the new radio access node should activate the UP IP mode for a data radio bearer established with the UE; sending a request to the new radio access node for the new radio access node to activate the UP IP mode for the data radio bearer established with the UE; receiving a response from the new radio access node that indicates that the UP IP mode for the data radio bearer established with the UE will be activated; and initiating a reconfiguration procedure with the UE that includes indicating to the UE to activate the UP IP mode for the data radio bearer established with the new radio access node.
17. The method of claim 14, further comprising: determining a UP IP mode based on if the radio access node receives a user plane integrity protection policy from the MME that indicates that UP IP mode for the data radio bearer should be activated; responsive to receipt of the policy indicating that UP IP mode should be activated, activating the UP IP mode for the data radio bearer.
18. An E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment (UE) for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol, PDCP, the user equipment comprising: a processor; and a memory coupled to the processor, wherein the memory stores instructions that when executed by the processor causes the processor to perform operations comprising: providing an indication of a user plane integrity protection, UP IP, mode supported by the UE with respect to a 4G system; sending an attach request to a Mobility Management Entity (MME) that includes the indication of the UP IP mode supported by the UE; and receiving an activation message from an eNodeB that includes an indication to the UE to activate the UP IP mode for a data radio bearer established between the UE and the eNodeB.
19. An eNodeB for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol, PDCP, the eNodeB comprising: a processor; and a memory coupled to the processor, wherein the memory stores instructions that when executed by the processor causes the processor to perform operations comprising: receiving a message from a Mobility Management Entity (MME) that includes an indication of a user plane integrity protection, UP IP, mode supported by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment with respect to a 4G system, UE; and sending a message to the UE that includes an indication to the UE to activate the UP IP mode for a data radio bearer established between the UE and the eNodeB.
20. A Mobility Management Entity (MME) for enabling a user plane integrity protection mode in a New Radio (NR) packet data convergence protocol, PDCP, the MME comprising: a processor; and a memory coupled to the processor, wherein the memory stores instructions that when executed by the processor causes the processor to perform operations comprising: handling an indication of a user plane integrity protection mode supported by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment, UE, with respect to a 4G system; receiving an attach request from the UE that includes the indication of the UP IP mode supported by the UE; responsive to the attach request, establishing a secure connection between the UE and the radio access network; and sending a message to a long term evolution eNode B that includes the indication of the UP IP mode.
21. The UE of claim 18, wherein the sending the attach request further comprises sending the attach request that includes a default radio bearer setup; and wherein receiving the activation message further includes an indication to the UE to activate the UP IP mode for the data radio bearer established between the UE and the eNodeB.
22. The UE of claim 18, wherein the sending the attach request does not include a default radio bearer setup; and further comprising: receiving a message from a receiving node to initiate a security mode procedure with the UE where no data radio bearer with the UE is established.
23. The UE of claim 18, wherein the operations further comprise: receiving a handover command from a source radio access node, wherein the handover command includes a command to the UE to activate the UP IP mode for a data radio bearer established with a target radio access node.
24. The UE of claim 18, wherein the operations further comprise: receiving a reconfiguration request from a master radio access node, wherein the reconfiguration request includes an indication to the UE to activate the UP IP mode for a data radio bearer established with a secondary radio access node; and activating the UP IP mode for the data radio bearer established with the secondary radio access node.
25. The eNodeB of claim 19, wherein the receiving comprises: receiving the UP IP Mode during a security mode command procedure.
26. The eNodeB of claim 19, wherein the operations further comprise: if the UP IP mode is received from the MME, indicating to a new radio access node that the new radio access node should activate the UP IP mode for a data radio bearer established with the UE; sending a request to the new radio access node for the new radio access node to activate the UP IP mode for the data radio bearer established with the UE; receiving a response from the new radio access node that indicates that the UP IP mode for the data radio bearer established with the UE will be activated; and initiating a reconfiguration procedure with the UE that includes indicating to the UE to activate the UP IP mode for the data radio bearer established with the new radio access node.
27. The eNodeB of claim 19, wherein the operations further comprise: determining a UP IP mode based on if the radio access node receives a user plane integrity protection policy from the MME that indicates that UP IP mode for the data radio bearer should be activated; responsive to receipt of the policy indicating that UP IP mode should be activated, activating the UP IP mode for the data radio bearer.
28. The MME of claim 20, wherein the handling comprises: receiving an attach request that includes the indication of the UP IP mode and includes a default bearer setup; responsive to the attach request, establishing a secure connection between the UE and the radio access network; and sending a message to long term evolution eNode B that includes the indication of the UP IP mode.
29. The MME of claim 28, wherein the operations further comprise: receiving a packet data network connection establishment request from the UE to establish a data bearer with the radio access network; creating a session with the gateway node to establish the default bearer with the UE; and responsive to establishing the default bearer, sending a message to the long term evolution eNodeB that includes the indication of the UP IP mode supported by the UE.
30. The MME of claim 28, wherein receiving the attach request does not include a default radio bearer setup; and the operations further comprising: sending a message to the long term evolution eNode B to initiate a context setup procedure with the long term evolution eNode B, wherein the message includes providing the UP IP mode of the UE to the long term evolution eNode B.
31. The MME of claim 28, the operations further comprising: establishing a secure packet data network connection with the UE to establish a data radio bearer with the radio access network; creating a session procedure with a gateway node to establish a default bearer with the UE; and initiating a context setup procedure with the receiving node that includes the indication of the UP IP mode supported by the UE.
9. Claims 1-10 is rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12,058,515. Although the claims at issue are not identical, they are not patentably distinct from each other because in both instances, the claims are drawn towards user plane integrity protection in 4G system. The omission of “sending an attach request to a Mobility Management Entity (MME) that includes the indication of the UP IP mode supported by the UE and handling an indication of a user plane integrity protection mode supported by an E-UTRA-NR Dual Connectivity (EN-DC) capable user equipment” does not change the scope of the claims for the instant application and the issued application. Similarly, in both instances, a similarity measure may be attained wherein a UE is enabled to use user plane integrity protection in PDCP with an eNB or gNB to protect user plane traffic sent in LTE PDCP between a UE and an eNB.
Claim Rejections - 35 USC § 112
10. 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.
11. Claim 8 is 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.
12. The specification does not provide any description or clear definition for the term “full data rate” and the scope of the claim is unclear. For examining purposes, the Examiner will reject the claims on the basis that “full data rate” can be interpretated as anything at capacity or above capacity is deemed at full rate.
Conclusion
13. THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY D FIELDS whose telephone number is (571)272-3871. The examiner can normally be reached IFP M-F 8am-4:30pm.
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/COURTNEY D FIELDS/Examiner, Art Unit 2436 August 17, 2026
/FATOUMATA TRAORE/Primary Examiner, Art Unit 2436
Prosecution Insights