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 .
Remarks
The present Office Action is in response to Applicant’s amendment filed on 7/8/2026. Claims 1-20 remain pending in the present application. This Action is made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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:
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 11 recite “a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE”. Applicant’s specification does not disclose the “first set of uplink signaling messages” or the “second set of downlink signaling messages,” but rather only discloses one specific example of uplink and downlink messages, EAP messages. The disclosure of EAP message in uplink and downlink directions is not a disclosure of all uplink and downlink signaling messages included in the broad wording of the “first set of uplink signaling messages” and the “second set of downlink signaling messages”.
Claims 2-10 and 12-20 are also rejected by virtue of their dependency on claims 1 and 11.
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, 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 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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 9, 11, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (U.S. Patent Application Publication No. 2014/0146783 A1 (hereinafter Kim) in view of Zhou et al. (U.S. Patent Application Publication No. 2014/0256291 A1) (hereinafter Zhou).
Regarding claim 1, Kim discloses a network entity in a first mobile communication network (Figure 14 and paragraph 0298 disclose the PDN connection request message is applied to MME 30 through H(e)NB2 20 connected to the UE 10), the network entity comprising:
at least one memory; and at least one processor coupled with the at least one memory (Paragraph 0336 discloses in a firmware or software configuration, the embodiments of the present invention may be implemented in the form of a module, a procedure, a function, etc. For example, software code may be stored in a memory unit and executed by a processor. The memory unit is located at the interior or exterior of the processor and may transmit and receive data to and from the processor via various known means) and configured to cause the network entity to:
receive a first request message for establishing a data connection with the first mobile communication network, the first request message including an indication that the data connection is to facilitate a user equipment (UE) to register with a second mobile communication network (Figure 14 and paragraphs 0298, 0299, 0316, and 0317 disclose in step S1401, UE 10 transmits the PDN connection request message, so that the PDN connection process requested by the UE 10 may start operation. In this case, the PDN connection request message may include APN (i.e., APN#1) of the home based network desired to be connected by the UE. The PDN connection request message is applied to MME 30 through H(e)NB2 20 connected to the UE 10. In step S1401a, MME 30 having received the PDN connection request message may perform P-GW selection);
select a gateway function in the second mobile communication network (Figure 14 and paragraphs 0299, 0302, 0317, and 0319 disclose in step S1401a, MME 30 having received the PDN connection request message may perform P-GW selection. If CSG ID (i.e., CSG#1) through which APN (i.e., APN#1) requested by the UE 10 is permitted (or included) is different from CSG ID (i.e., CSG ID#2) received from HeNB 20 connected to the UE 10, MME 30 may select P-GW for providing appropriate PDN connection for APN#1 but not L-GW (i.e., L-GW#2) that is co-located with HeNB2 20 connected to the UE 10. That is, on the basis of `P-GW needed when MME creates MRA PDN connection`, MME 30 may select L-GW (i.e., L-GW#1) for enabling the UE 10 to access the home based network connected to HeNB1, and may use the selected L-GW as P-GW 50).
Kim does not explicitly disclose initiate an access procedure with the gateway function; relay a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE; and transmit an accept message indicating that the data connection with the first mobile communication network is successfully established in response to a successful completion of the access procedure, wherein the registration of the UE with the second mobile communication network is completed via the established data connection.
In analogous art, Zhou discloses initiate an access procedure with the gateway function (Figure 2 and paragraph 0074 and 0078 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message. In steps 203-204, the mobile management unit carries the PCO or newly defined IE including the EAP authentication information in a session establishment request message to transmit to a packet data network gateway via a serving gateway);
relay a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE (Figure 2 and paragraphs 0074 and 0078-0081 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message. In steps 203-204, the mobile management unit carries the PCO or newly defined IE including the EAP authentication information in a session establishment request message to transmit to a packet data network gateway via a serving gateway. In steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway. In steps 207-208, the packet data network gateway includes the EAP request in the access challenge message in the PCO or newly defined IE to transmit to the mobile management unit through a session establishment response message via the serving gateway. In step 209, the mobile management unit includes the PCO or newly defined IE in an attachment acceptance message to transmit to the UE, thus, the UE implements the initial attachment of the connection to the EPS and establishes a default bearer. Paragraph 0017 discloses the packet data network gateway transmitting the information element including the EAP request to the mobile management unit through a session establishment response message via a serving gateway, and the mobile management unit including the information element in an attachment acceptance message and transmitting the attachment acceptance message to the UE); and
transmit an accept message indicating that the data connection with the first mobile communication network is successfully established in response to a successful completion of the access procedure, wherein the registration of the UE with the second mobile communication network is completed via the established data connection (Figure 2 and paragraph 0081 disclose in step 209, the mobile management unit includes the PCO or newly defined IE in an attachment acceptance message to transmit to the UE, thus, the UE implements the initial attachment of the connection to the EPS and establishes a default bearer).
It 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 to incorporate a mobility management unit communicating with a gateway and a UE to authorize the UE and send an acceptance message to the UE, as described in Zhou, with an MME selecting a gateway for a UE, as described in Kim, because doing so is combining prior art elements according to known methods to yield predictable results. Combining a mobility management unit communicating with a gateway and a UE to authorize the UE and send an acceptance message to the UE of Zhou with an MME selecting a gateway for a UE of Kim was within the ordinary ability of one of ordinary skill in the art based on the teachings of Zhou.
Therefore, it 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 to combine the teachings of Kim and Zhou to obtain the invention as specified in claim 1.
Regarding claim 9, as applied to claim 1 above, Kim discloses the claimed invention except explicitly disclosing receive, from the UE, at least one extensible authentication protocol (EAP) message in an uplink direction; encapsulate the at least one EAP message into an authentication, authorization, and accounting (AAA) message; and transmit the AAA message to the gateway function.
Zhou further discloses receive, from the UE, at least one extensible authentication protocol (EAP) message in an uplink direction (Figure 2 and paragraph 0074 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message);
encapsulate the at least one EAP message into an authentication, authorization and accounting (AAA) message (Figure 2 and paragraph 0079 disclose in steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway); and
transmit the AAA message to the gateway function (Figure 2 and paragraph 0079 disclose in steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway).
It 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 to incorporate a mobility management unit receiving EAP authentication information from a UE and including the information in a message to an gateway for an AAA server, as described in Zhou, with an MME selecting a gateway for a UE, as described in Kim, because doing so is combining prior art elements according to known methods to yield predictable results. Combining a mobility management unit receiving EAP authentication information from a UE and including the information in a message to an gateway for an AAA server of Zhou with an MME selecting a gateway for a UE of Kim was within the ordinary ability of one of ordinary skill in the art based on the teachings of Zhou.
Therefore, it 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 to combine the teachings of Kim and Zhou to obtain the invention as specified in claim 9.
Regarding claim 11, Kim discloses a method performed by a network entity in a first mobile communication network (Figure 14 and paragraphs 0298 and 0299 disclose the PDN connection request message is applied to MME 30 through H(e)NB2 20 connected to the UE 10. In step S1401a, MME 30 having received the PDN connection request message may perform P-GW selection), the method comprising:
receiving a first request message for establishing a data connection with the first mobile communication network, the first request message including an indication that the data connection is to facilitate a user equipment (UE) to register with a second mobile communication network (Figure 14 and paragraphs 0298, 0299, 0316, and 0317 disclose in step S1401, UE 10 transmits the PDN connection request message, so that the PDN connection process requested by the UE 10 may start operation. In this case, the PDN connection request message may include APN (i.e., APN#1) of the home based network desired to be connected by the UE. The PDN connection request message is applied to MME 30 through H(e)NB2 20 connected to the UE 10. In step S1401a, MME 30 having received the PDN connection request message may perform P-GW selection);
selecting a gateway function in the second mobile communication network (Figure 14 and paragraphs 0299, 0302, 0317, and 0319 disclose in step S1401a, MME 30 having received the PDN connection request message may perform P-GW selection. If CSG ID (i.e., CSG#1) through which APN (i.e., APN#1) requested by the UE 10 is permitted (or included) is different from CSG ID (i.e., CSG ID#2) received from HeNB 20 connected to the UE 10, MME 30 may select P-GW for providing appropriate PDN connection for APN#1 but not L-GW (i.e., L-GW#2) that is co-located with HeNB2 20 connected to the UE 10. That is, on the basis of `P-GW needed when MME creates MRA PDN connection`, MME 30 may select L-GW (i.e., L-GW#1) for enabling the UE 10 to access the home based network connected to HeNB1, and may use the selected L-GW as P-GW 50).
Kim does not explicitly disclose initiating an access procedure with the gateway function; relaying a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE; and transmitting an accept message indicating that the data connection with the first mobile communication network is successfully established in response to a successful completion of the access procedure, wherein the registration of the UE with the second mobile communication network is completed via the established data connection.
In analogous art, Zhou discloses initiating an access procedure with the gateway function (Figure 2 and paragraph 0074 and 0078 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message. In steps 203-204, the mobile management unit carries the PCO or newly defined IE including the EAP authentication information in a session establishment request message to transmit to a packet data network gateway via a serving gateway);
relaying a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE (Figure 2 and paragraphs 0074 and 0078-0081 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message. In steps 203-204, the mobile management unit carries the PCO or newly defined IE including the EAP authentication information in a session establishment request message to transmit to a packet data network gateway via a serving gateway. In steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway. In steps 207-208, the packet data network gateway includes the EAP request in the access challenge message in the PCO or newly defined IE to transmit to the mobile management unit through a session establishment response message via the serving gateway. In step 209, the mobile management unit includes the PCO or newly defined IE in an attachment acceptance message to transmit to the UE, thus, the UE implements the initial attachment of the connection to the EPS and establishes a default bearer. Paragraph 0017 discloses the packet data network gateway transmitting the information element including the EAP request to the mobile management unit through a session establishment response message via a serving gateway, and the mobile management unit including the information element in an attachment acceptance message and transmitting the attachment acceptance message to the UE); and
transmitting an accept message indicating that the data connection with the first mobile communication network is successfully established in response to a successful completion of the access procedure, wherein the registration of the UE with the second mobile communication network is completed via the established data connection (Figure 2 and paragraph 0081 disclose in step 209, the mobile management unit includes the PCO or newly defined IE in an attachment acceptance message to transmit to the UE, thus, the UE implements the initial attachment of the connection to the EPS and establishes a default bearer).
It 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 to incorporate a mobility management unit communicating with a gateway and a UE to authorize the UE and send an acceptance message to the UE, as described in Zhou, with an MME selecting a gateway for a UE, as described in Kim, because doing so is combining prior art elements according to known methods to yield predictable results. Combining a mobility management unit communicating with a gateway and a UE to authorize the UE and send an acceptance message to the UE of Zhou with an MME selecting a gateway for a UE of Kim was within the ordinary ability of one of ordinary skill in the art based on the teachings of Zhou.
Therefore, it 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 to combine the teachings of Kim and Zhou to obtain the invention as specified in claim 11.
Regarding claim 19, as applied to claim 11 above, Kim discloses the claimed invention except explicitly disclosing wherein relaying the plurality of authentication messages comprises:
receiving, from the UE, at least one extensible authentication protocol (EAP) message in an uplink direction; encapsulating the at least one EAP message into an authentication, authorization, and accounting (AAA) message; and transmitting the AAA message to the gateway function.
Zhou further discloses wherein relaying the plurality of authentication messages comprises:
receiving, from the UE, at least one extensible authentication protocol (EAP) message in an uplink direction (Figure 2 and paragraph 0074 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message);
encapsulating the at least one EAP message into an authentication, authorization and accounting (AAA) message (Figure 2 and paragraph 0079 disclose in steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway); and
transmitting the AAA message to the gateway function (Figure 2 and paragraph 0079 disclose in steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway).
It 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 to incorporate a mobility management unit receiving EAP authentication information from a UE and including the information in a message to an gateway for an AAA server, as described in Zhou, with an MME selecting a gateway for a UE, as described in Kim, because doing so is combining prior art elements according to known methods to yield predictable results. Combining a mobility management unit receiving EAP authentication information from a UE and including the information in a message to an gateway for an AAA server of Zhou with an MME selecting a gateway for a UE of Kim was within the ordinary ability of one of ordinary skill in the art based on the teachings of Zhou.
Therefore, it 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 to combine the teachings of Kim and Zhou to obtain the invention as specified in claim 19.
Response to Arguments
Applicant's arguments filed 7/8/2026 have been fully considered but they are not persuasive.
On page 10 in the Remarks, Applicant argues that Zhou does not describe actual discourse between the UE and the gateway function through the network entity and only teaches the UE sending a single message to an EPS network. Accordingly, Zhou does not disclose relaying a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE, as recited in amended claims 1 ad 11.
Figure 2 of Zhou shows a UE and a gateway exchanging messages relayed by a mobility management unit. Zhou specifically discloses that the information relates to EAP authentication. Specifically, Zhou discloses relaying a plurality of authentication messages between the gateway function and the UE, wherein the plurality of authentication messages comprises signaling messages for a registration of the UE with the second mobile communication network, including: a first set of uplink signaling messages received from the UE and forwarded to the gateway function, and a second set of downlink signaling messages received from the gateway function and forwarded to the UE (Figure 2 and paragraphs 0074 and 0078-0081 disclose in step 201, the UE transmits EAP authentication information required for external authentication using the EAP to a mobile management unit through an attachment request message. In steps 203-204, the mobile management unit carries the PCO or newly defined IE including the EAP authentication information in a session establishment request message to transmit to a packet data network gateway via a serving gateway. In steps 205-206, after receiving the session establishment request message, the packet data network gateway extracts EAP authentication information from the PCO or newly defined IE of the message, and includes the extracted authentication information in an access request message to transmit to an external AAA server, and after receiving the access request message, the AAA server returns an access challenge message including EAP request to the packet data network gateway. In steps 207-208, the packet data network gateway includes the EAP request in the access challenge message in the PCO or newly defined IE to transmit to the mobile management unit through a session establishment response message via the serving gateway. In step 209, the mobile management unit includes the PCO or newly defined IE in an attachment acceptance message to transmit to the UE, thus, the UE implements the initial attachment of the connection to the EPS and establishes a default bearer. Paragraph 0017 discloses the packet data network gateway transmitting the information element including the EAP request to the mobile management unit through a session establishment response message via a serving gateway, and the mobile management unit including the information element in an attachment acceptance message and transmitting the attachment acceptance message to the UE).
Consequently, in view of the above reasons and having addressed each of Applicant’s arguments, the previous rejection is maintained and made FINAL by the Examiner.
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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to MARK G. PANNELL whose telephone number is (303) 297-4245. The Examiner can normally be reached Monday through Friday 8:00 am to 3:00 pm (Mountain Time).
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, Rafael Perez-Gutierrez can be reached on (571) 272-7915. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Mark G. Pannell/Primary Examiner, Art Unit 2642
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