Prosecution Insights
Last updated: July 17, 2026
Application No. 18/789,324

PROVIDE DISCOVERY SECURITY MATERIALS FOR DISCOVERY

Non-Final OA §102§103§112
Filed
Jul 30, 2024
Priority
Oct 20, 2023 — provisional 63/592,150
Examiner
SHARMA, POONAM
Art Unit
Tech Center
Assignee
Qualcomm Incorporated
OA Round
1 (Non-Final)
90%
Grant Probability
Favorable
1-2
OA Rounds
11m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 90% — above average
90%
Career Allowance Rate
19 granted / 21 resolved
+30.5% vs TC avg
Moderate +13% lift
Without
With
+13.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
17 currently pending
Career history
46
Total Applications
across all art units

Statute-Specific Performance

§103
86.2%
+46.2% vs TC avg
§102
5.3%
-34.7% vs TC avg
§112
8.5%
-31.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 21 resolved cases

Office Action

§102 §103 §112
DETAILED ACTION This office action in response to an application filing received July 30, 2024. The Application Data Sheet received on July 30, 2024 has been considered. Claims 1-30 are pending. 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 . Information Disclosure Statement The information disclosure statement received July 30, 2024 has been considered. 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. Claim 6, 15, 21 and 30 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 6 and 21 recites the limitation "wherein the first network entity is a direct discovery name management function (DDNMF) or a proximity services (ProSe) key management function (PKMF) associated with the HPLMN" in lines 2-4. The claim is directed towards a process performed by a user equipment (UE) and these limitations further describe the functions of a first network entity but fails to indicate how those functions further limit the process that the user equipment (UE) performs, as result, they are outside the scope of the method performed by the user equipment (UE). Claim 15 and 30 recites the limitation "wherein the UE is a relay UE”. The claim is directed towards a process performed by a first network entity and these limitations further describe the functions of a user equipment (UE) but fails to indicate how those functions further limit the process that the first network entity performs, as result, they are outside the scope of the method performed by the first network entity. 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 (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. 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. Claim(s) 1-2, 4-13, 15-17, 19-28 and 30 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by PING et al., WO 2024239213 A1, (hereinafter PING). Regarding claim 1, and 16, PING teaches an apparatus for wireless communication at a user equipment (UE), comprising: at least one memory; and at least one processor coupled to the at least one memory and, based at least in part on stored information that is stored in the at least one memory, the at least one processor, individually or in any combination, is configured to cause the UE to (see ¶ [0191], e.g., Fig. 7 is a simplified block diagram of a device 700 that is suitable for implementing embodiments of the present disclosure. The device 700 may be provided to implement the communication device, for example, the first network device 120 or the second network device 130 as shown in any of Figs. 1A to 1D. As shown, the device 700 includes one or more processors 710, one or more memories 720 coupled to the processor 710, and one or more communication modules 740 coupled to the processor 710.): transmit, to a first network entity from a first public land mobile network (PLMN) associated with the UE, a discovery request (see ¶ [0114], e.g., At 414, The remote/end UE 401 transmits a discovery key request to the PKMF 403 in its SPLMN 102. The discovery key request includes the identifier of the remote/end UE 401, an RSC, and security capability of the remote/end UE 401.); receive, from the first network entity from the first PLMN, a discovery response comprising security information generated by a second network entity from a second PLMN associated with the UE (see ¶ [0122], e.g., At 426, the PKMF 403 of the remote/end UE 401 transmits a discovery key response to the remote/end UE 401. The response includes the RSC, optional PC5security policies, CURRENT_TIME, MAX_OFFSET, Code-SecParams, and the ChosenPC5 ciphering algorithm. The Code-SecParams may be assoicated with the authorized PLMN (s). The security related information (such as Code-SecParams and the ChosenPC5 ciphering algorithm) is constructed from the security parameters received from the PKMF (s) of potential relay (s) at actions 422 and 424.); and communicate a sidelink message based on the security information generated by the second PLMN (see ¶ [0123], e.g., At 428, the remote end/UE 401 and the U2N/U2U relay 407 perform discovery over PC5. The discovery messages are protected with specific security parameters and the chosen PC5 ciphering algorithm.). Regarding claim 2, and 17, PING teaches the limitations of Claim 1 and 16. PING further teaches wherein the discovery response further comprises one or more PLMN IDs, each of the one or more PLMN IDs being associated with the second PLMN, and wherein the at least one processor is further configured to cause the UE to: store the security information as associated with the one or more PLMN IDs in the at least one memory (see ¶ [0136] - ¶ [0136], e.g., the response may further comprise the identifier of the terminal device 110. In some example embodiments, the information may comprise a first list of PLMNs associated with a relay service code (RSC). Alternatively, or additionally, the information may comprise a first set of PLMN lists, each of the PLMN lists being associated with a relay indicator. see ¶ [0123], wherein the response information is used at step 428 for discovery over PC5, implicitly implying the response information is stored for later use.). Regarding claim 4, and 19, PING teaches the limitations of Claim 2 and 17. PING further teaches wherein the UE is a discoveree UE, and wherein the sidelink message is a discovery solicitation message including the one or more PLMN IDs, and wherein to communicate the sidelink message, the at least one processor is configured to cause the UE to: receive and decrypt the discovery solicitation message including the one or more PLMN IDs based on the security information associated with the second PLMN; and transmit a discovery response message in response to the discovery solicitation message, the discovery response message being protected based on the security information associated with the second PLMN (see ¶ [0131], e.g., A process similar to the process 400 may be applied for model B relay discovery procedure. In the model B relay discovery procedure, a remote UE (such as the remote/end UE 401) sends a relay solicitation message and a relay UE (such as the U2N/U2U relay 407) sends a relay response message, and the remoteUE may send multiple relay solicitation messages and each relay solicitation message is protected using the security information corresponding to a PLMN of the potential relay UE. Alternatively, in another solution, the PKMF of the relay UE may apply a process similar to the process 400 to obtain and construct the security information of the potential remote/end UEs. In this solution, the remote UE only needs to send one relay solicitation message and the relay UE uses the corresponding security information for handling the received solicitation message from the remote UE.). Regarding claim 5, and 20, PING teaches the limitations of Claim 1 and 16. PING further teaches wherein the UE is a relay UE, wherein the discovery request is a relay discovery key request message (see Fig. 4, element 410, 412, ¶ [0112], e.g., As shown in Fig. 4, at 410, the U2N/U2U relay 407 transmits a discovery keyrequest to the PKMF 409 in its SPLMN 106 to get a discovery key to protect a PC5discovery message.), and wherein the discovery response associated with the discovery request is a relay discovery key response message (see ¶ [0113], The PKMF 409 of the U2N/U2U relay 407 generates security parameters and selects a PC5 ciphering algorithm, and then transmits, at 412, the discovery key response to the U2N/U2U relay 407). Regarding claim 6, and 21, PING teaches the limitations of Claim 1 and 16. PING further teaches wherein the first PLMN is a home PLMN (HPLMN) associated with the UE, wherein the first network entity is a direct discovery name management function (DDNMF) or a proximity services (ProSe) key management function (PKMF) associated with the HPLMN (Fig. 2, e.g., element 200 - HPLMN of Remote UE (PLMNId-1), 205 -DDNMF/PKMF of Remote UE; Fig. 4, e.g., element 400 – H/SPLMN of Remote UE (PLMNId-1), 205 -PKMF of Remote UE), and wherein the second PLMN is a visited PLMN (VPLMN) associated with the UE (Fig. 4, e.g., element 400 - SPLMN 106 of Relay UE (PLMNId-2)). Regarding claim 7, and 22, PING teaches the limitations of Claim 1 and 16. PING further teaches wherein the security information is associated with a relay service code (RSC) and comprises at least one of: a discovery user integrity key, a discovery user scrambling key, a discovery user confidentiality key, or a ciphering algorithm (see ¶ [0122], e.g., At 426, the PKMF 403 of the remote/end UE 401 transmits a discovery key response to the remote/end UE 401. The response includes the RSC, optional PC5 security policies, CURRENT_TIME, MAX_OFFSET, Code-SecParams, and the ChosenPC5 ciphering algorithm. The Code-SecParams may be associated with the authorized PLMN (s). The security related information (such as Code-SecParams and the Chosen PC5 ciphering algorithm) is constructed from the security parameters received from the PKMF (s) of potential relay (s) at actions 422 and 424.). Regarding claim 8, and 23, PING teaches the limitations of Claim 1 and 16. PING further teaches wherein the security information is associated with an expiration timer (¶ [0068], e.g., At 230, the DDNMF/PKMF 205 of the remote UE 201 transmits a Discovery Key Response to the remote UE 201. The response may include the RSC, optional PC5security policies, CURRENT_TIME, MAX_OFFSET, a list of (relay restricted ID, valid timer, Code-Rcv-SecParams (i.e., the security parameters), Chosen PC5 ciphering algorithm)). Regarding claim 9, and 24, PING teaches an apparatus for wireless communication at a first network entity associated with a first public land mobile network (PLMN) associated with a user equipment (UE) (see Fig. 4, e.g., element 400, 403 – PKMF of Remote/End UE), comprising: at least one memory; and at least one processor coupled to the at least one memory and, based at least in part on stored information that is stored in the at least one memory, the at least one processor, individually or in any combination, is configured to cause the first network entity to (see ¶ [0191], e.g., Fig. 7 is a simplified block diagram of a device 700 that is suitable for implementing embodiments of the present disclosure. The device 700 may be provided to implement the communication device, for example, the first network device 120 or the second network device 130 as shown in any of Figs. 1A to 1D. As shown, the device 700 includes one or more processors 710, one or more memories 720 coupled to the processor 710, and one or more communication modules 740 coupled to the processor 710.): receive a discovery request associated with the UE, (see ¶ [0114], e.g., At 414, The remote/end UE 401 transmits a discovery key request to the PKMF 403 in its SPLMN 102. The discovery key request includes the identifier of the remote/end UE 401, an RSC, and security capability of the remote/end UE 401.); transmit a request to a second network entity associated with a second PLMN associated with the UE to obtain security information from the second network entity (see ¶ [0115] - ¶ [0120], e.g., At 416, the PKMF 403 of the remote/end UE 401 transmits a request to the PCF405 in its SPLMN 102 to get information about at least one PLMN where the remote/end UE 401 is authorized to access 5G ProSe U2N relay and/or U2U relay… [0120] At 422, the PKMF 403 of the remote/end UE 401 transmits a discovery keyrequest to the PKMF 409 of the U2N/U2U relay 407 (for example, together with otherPKMF (s) of the potential relay (s) ) . The request may include security capability of theremote/end UE 401 and the RSC. The PKMF 403 of the remote/end UE 401determines or locates the PKMF 409 of the U2N/U2U relay 407 and the other PKMF (s)of the potential relay (s) based on the list of PLMNs received from the PCF 405 at action 420.); receive, from the second network entity, a response responsive to the request, the response comprising the security information from the second network entity (see ¶ [0121], e.g., At 424, the PKMF 403 of the remote/end UE 401 receives a discovery key response from the PKMF 409 of the U2N/U2U relay 407 (for example, together with other PKMF (s) of the potential relay (s)). The response includes security parameters and a Chosen PC5 ciphering algorithm. For example, the security parameters comprise code security parameters (Code-SecParams) and Discovery User Integrity Key (DUIK). Actions 422 and 424 may be repeated for each PLMN in the PLMN list received at action 420.); and transmit, for the UE, a discovery response comprising the security information from the second PLMN (see ¶ [0122], e.g., At 426, the PKMF 403 of the remote/end UE 401 transmits a discovery key response to the remote/end UE 401. The response includes the RSC, optional PC5security policies, CURRENT_TIME, MAX_OFFSET, Code-SecParams, and the ChosenPC5 ciphering algorithm. The Code-SecParams may be assoicated with the authorized PLMN (s). The security related information (such as Code-SecParams and the ChosenPC5 ciphering algorithm) is constructed from the security parameters received from the PKMF (s) of potential relay (s) at actions 422 and 424.). Regarding claim 10, and 25, PING teaches the limitations of Claim 9 and 24. PING further teaches wherein the discovery response further comprises one or more PLMN IDs, each of the one or more PLMN IDs being associated with the second PLMN (see ¶ [0136] - ¶ [0136], e.g., the response may further comprise the identifier of the terminal device 110. In some example embodiments, the information may comprise a first list of PLMNs associated with a relay service code (RSC). Alternatively, or additionally, the information may comprise a first set of PLMN lists, each of the PLMN lists being associated with a relay indicator.). Regarding claim 11, and 26, PING teaches the limitations of Claim 9 and 24. PING further teaches wherein the first PLMN is a home PLMN (HPLMN) associated with the UE, wherein the first network entity is a direct discovery name management function (DDNMF) or a proximity services (ProSe) key management function (PKMF) associated with the HPLMN (Fig. 2, e.g., element 200 - HPLMN of Remote UE (PLMNId-1), 205 -DDNMF/PKMF of Remote UE; Fig. 4, e.g., element 400 – H/SPLMN of Remote UE (PLMNId-1), 205 -PKMF of Remote UE), and wherein the second PLMN is a visited PLMN (VPLMN) associated with the UE (Fig. 4, e.g., element 400 - SPLMN 106 of Relay UE (PLMNId-2)). Regarding claim 12, and 27, PING teaches the limitations of Claim 9 and 24. PING further teaches wherein the security information is associated with a relay service code (RSC) and comprises at least one of: a discovery user integrity key, a discovery user scrambling key, a discovery user confidentiality key, or a ciphering algorithm (see ¶ [0122], e.g., At 426, the PKMF 403 of the remote/end UE 401 transmits a discovery key response to the remote/end UE 401. The response includes the RSC, optional PC5 security policies, CURRENT_TIME, MAX_OFFSET, Code-SecParams, and the ChosenPC5 ciphering algorithm. The Code-SecParams may be associated with the authorized PLMN (s). The security related information (such as Code-SecParams and the Chosen PC5 ciphering algorithm) is constructed from the security parameters received from the PKMF (s) of potential relay (s) at actions 422 and 424.). Regarding claim 13, and 28, PING teaches the limitations of Claim 9 and 24. PING further teaches wherein the security information is associated with an expiration timer (¶ [0068], e.g., At 230, the DDNMF/PKMF 205 of the remote UE 201 transmits a Discovery Key Response to the remote UE 201. The response may include the RSC, optional PC5security policies, CURRENT_TIME, MAX_OFFSET, a list of (relay restricted ID, valid timer, Code-Rcv-SecParams (i.e., the security parameters), Chosen PC5 ciphering algorithm)). Regarding claim 15, and 30, PING teaches the limitations of Claim 9 and 24. PING further teaches wherein the UE is a relay UE, (see Fig. 4, element 410, 412, ¶ [0112], e.g., As shown in Fig. 4, at 410, the U2N/U2U relay 407 transmits a discovery key request to the PKMF 409 in its SPLMN 106 to get a discovery key to protect a PC5discovery message; see ¶ [0113], The PKMF 409 of the U2N/U2U relay 407 generates security parameters and selects a PC5 ciphering algorithm, and then transmits, at 412, the discovery key response to the U2N/U2U relay 407). 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or non-obviousness. Claim(s) 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over PING in view of Ahmad et al., US 20200107381 A1, (hereinafter Ahmad). Regarding claim 3, and 18, PING teaches the limitations of Claim 2 and 17. PING further teaches wherein the UE is an announcing UE, and wherein the sidelink message is an announcement message, and wherein to communicate the sidelink message, the at least one processor is configured to cause the UE to (see ¶ [0131], e.g., wherein the process 400 may be applied for model A relay discovery procedure. Note that, model A is generally defined as to one of ordinary skilled in the art as - An "announcing" device broadcasts a discovery message (e.g., "I am here"), and listening devices monitor for it.): transmit the announcement message associated with the second PLMN, the announcement message being protected based on the security information associated with the second PLMN (see ¶ [0123], At 428, the remote end/UE 401 and the U2N/U2U relay 407 perform discovery over PC5. The discovery messages are protected with specific security parameters and the chosen PC5 ciphering algorithm.), however, it does not explicitly teach announcement message including the one or more PLMN IDs. Ahmad teaches announcement message including the one or more PLMN IDs (see ¶ [0103] - ¶ [0104], e.g., The remote UE 313′, through this discovery process, may generate a list of the identities of all the available relay UEs (or a subset of the surrounding relay UEs). … The PLMN information may be broadcasted by the relay UE as part of the PC5 discovery message or may be part of the broadcasted relay UE ID.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified discovery announcement message of PING to incorporate the teachings of Ahmad to include the one or more PLMN IDs. Doing so would facilitate in achieving UE becoming cognizant of the available relay UEs as suggested by Ahmad (see ¶ [0103] - ¶ [0104], e.g., By performing PC5 discovery 321, 322, the remote UE 313′ becomes cognizant of the available relay UE(s) 311′ in its vicinity. The remote UE 313′, through this discovery process, may generate a list of the identities of all the available relay UEs (or a subset of the surrounding relay UEs). The subset may, for instance, be determined based on one or more predefined criteria such as the Public Land Mobile Network (PLMN) to which the potential relay UE belongs. For instance, only the relay UEs belonging to specific PLMNs may be stored by the remote UE.). Claim(s) 14 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over PING in view of SHANG et al., US 20260082437 A1, (hereinafter SHANG). Regarding claim 14, and 29, PING teaches the limitations of Claim 9 and 24. PING does not teach but SHANG teaches, wherein the request is an announce authorization message and the response is an announce authorization acknowledgment message (see FIG. 9, Steps 1-9, element 2. Authorization request/response, 7. Authorization request/response; ¶ [0187]- ¶ [0188], e.g., 2. The 5G DDNMF/PKMF may check for authorization with the ProSe application server /CF/UDM. It is worth noting that: if the U2U relay is in a roaming state, the DDNMFs in the Home Public Land Mobile Network (HPLMN) and the Visited Public Land Mobile Network (VPLMN) of the U2U relay exchange authorization of the U2U relay; ¶ [0195], e.g., 5. The 5G DDNMF/PKMF of the source/target UE sends an authorization request to the ProSe application server/PCF/UDM. If the source UE/target UE is allowed to use the specific U2U relay service, the ProSe application server/PCF/UDM returns an authorization response. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified relay discovery procedure of PING to incorporate the teachings of SHANG to include wherein the request is an announce authorization message and the response is an announce authorization acknowledgment message. Doing so would facilitate in achieving determining whether the UE is authorized for the UE-to-UE relay communication or capable of using the relay service as suggested by SHANG (see ¶ [0181], e.g., determining, according to the ID of the UE, whether the UE is authorized for the UE-to-UE relay communication may include: [0182] if the UE is a source UE or a target UE, determining, according to the ID of the source UE or the ID of the target UE, whether the source UE or the target UE is capable of using the relay service indicated by the RSC in the first request message.). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20260129437 A1 issued to Lei et al. WO 2023014602 A1 issued to ABBAS et al. Any inquiry concerning this communication or earlier communications from the examiner should be directed to POONAM SHARMA whose telephone number is (571)272-6579. The examiner can normally be reached Monday thru 8:30-5:30 pm, ET. 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, Kevin Bates can be reached at (571) 272-3980. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /POONAM SHARMA/Examiner, Art Unit 2472 /KEVIN T BATES/Supervisory Patent Examiner, Art Unit 2472
Read full office action

Prosecution Timeline

Jul 30, 2024
Application Filed
Jun 23, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
90%
Grant Probability
99%
With Interview (+13.3%)
2y 10m (~11m remaining)
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