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 .
Claims 1-20 as submitted via preliminary amended on 9/10/24 were examined.
Information Disclosure Statement
The IDS submitted on 8/12/24 was considered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
Claim(s) 1, 8, 10-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “3GPP TS 33.5.36,” herein after “3GPP”.
Note that 3GPP was a document submitted with the IDS submitted on 8/12/24 and was the third item listed in the NPL documents section of the IDS. It is noted that the second page of the reference indicates a copyright date of 2019 for the reference.
Claim 1:
3GPP discloses:
generating, at a User Equipment (UE) for a peer UE, a Direct Communication
Request for a connection to the peer UE, wherein the Direct Communication Request
indicates security capabilities of the UE and a signaling security policy of the UE (p14, step 1; As seen in the figure on the page and as discussed on the page); and
receiving, from the peer UE, an indication that the peer UE rejects the Direct
Communication Request, wherein the peer UE rejects the Direct Communication
Request based on a comparison of a security policy of the peer UE with at least one of
the signaling security policy of the UE or the security capabilities of the UE (p13, paragraphs 4-5 from the bottom of the page; Initiating UE can reject the Direct Security Mode command if the algorithm choice does not match its policy. In other words, security policies are compared).
Claim 8:
3GPP further discloses wherein the indication is received at the UE when the signaling security policy of the UE is NOT NEEDED and the security policy of the peer UE is REQUIRED (p13-14, Section 5.3.3.1.4.2.3; Section describes security policies being defined as REQUIRED/PREFERRED/OFF, NULL, or non-NULL and UE’s having to comply with the settings in order to form successful communication connections. If the UE and peer UE have conflicting security policies, either UE can reject a connection attempt).
Claim 10:
3GPP discloses:
receiving, at a User Equipment (UE) from a peer UE, a Direct Communication
Request, wherein the Direct Communication Request indicates security capabilities of
the peer UE and a signaling security policy of the peer UE (p13, paragraphs 4-5 from the bottom of the page; Direct Communication Request message, including the UE’s signaling security policy is sent to another UE);
determining, based on a comparison of the security capabilities of at least one of
the peer UE or the signaling security policy of the peer UE with a security policy of the
UE, whether to accept the Direct Communication Request (p13, 4th paragraph from bottom of page; Reject received Command if algorithm choice does not match initiating UE’s security policy); and
in response to a determination to reject the Direct Communication Request,
generating, for the peer UE, an indication that the UE rejects the Direct Communication
Request (p15, paragraphs 2-3 from top of page).
Claim 11:
3GPP further discloses wherein the operations further comprise: in response to a determination to accept the Direct Communication Request:
generating, for the peer UE, a Direct Security Mode Command, wherein
the Direct Security Mode Command indicates a set of algorithms for data
protection, the security capabilities of the peer UE, and the signaling security
policy of the peer UE (p15, first three paragraphs); and
receiving, from the peer UE, in response to the Direct Security Mode
Command, a Direct Security Mode Complete message based at least on the set
of algorithms (p15, second and third paragraph; Message is sent if all checks pass, including the checks for the chosen algorithms).
Claim 12:
3GPP further discloses wherein the operations further comprise: generating, for the peer UE, one or more of user plane data or control signaling, wherein the one or more of user plane data or control signaling are based at least on
the set of algorithms (p13, last sentence and p15, item 5).
Claim 13:
3GPP further discloses wherein the Direct Security Mode Command further indicates security capabilities of the UE and the security policy of the UE (p13-15, See especially items 3-5 found on p14-15 which discuss use of the Direct Security Mode Command by UE_1).
Claim 14:
3GPP further discloses wherein the determination to accept the Direct Communication Request is made unless the signaling security policy of the UE is REQUIRED and one or more of the security capabilities of the peer UE comprise a NULL for signaling integrity protection or the signaling security policy of the peer UE is NOT NEEDED (p13-15).
Claim 15:
3GPP further discloses wherein, when the security policy of the UE is REQUIRED, the determination to reject the Direct Communication Request is made when the security capabilities of the peer UE comprise a NULL for signaling
integrity protection (p13-15).
Claim 16:
3GPP further discloses wherein, when the security policy of the UE is REQUIRED, the determination to reject the Direct Communication Request is made when the signaling security policy of the peer UE is NOT NEEDED (p13-15).
Claim 17:
3GPP discloses:
transmitting, to a peer UE, a Direct Communication Request for a connection to
the peer UE, wherein the Direct Communication Request indicates security capabilities
of the UE and a signaling security policy of the UE (p14, step 1; As seen in the figure on the page and as discussed on the page. Direct Communication Request message, including the UE’s signaling security policy is sent to another UE); and
receiving, from the peer UE, an indication that the peer UE rejects the Direct Communication Request, wherein the peer UE rejects the Direct Communication
Request based on a comparison of a security policy of the peer UE with at least one of
the signaling security policy of the UE or the security capabilities of the UE (p13, paragraphs 4-5 from the bottom of the page; Reject received Command if algorithm choice does not match initiating UE’s security policy).
Claim 20:
3GPP further discloses wherein the indication is received at the UE when the signaling security policy of the UE is NOT NEEDED and the security policy of
the peer UE is REQUIRED (p13-14, Section 5.3.3.1.4.2.3; Section describes security policies being defined as REQUIRED/PREFERRED/OFF, NULL, or non-NULL and UE’s having to comply with the settings in order to form successful communication connections. If the UE and peer UE have conflicting security policies, either UE can reject a connection attempt).
Double Patenting
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.
Claims 1-9 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,063,505.
Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of the present application are anticipated by claims 1-8 of the ‘505 patent.
More particularly, claims 1-8 of the ‘505 patent are directed towards an apparatus which carries out the operations of the baseband processor of claims 1-9 and the method of claims 17-20:
US 12,063,505
Present application
Claim 1:
An apparatus configured to be employed in a User Equipment (UE), comprising: one or more processors configured to cause the UE to:
transmit, to a peer UE, a Direct Communication Request for a connection to the peer UE, wherein the Direct Communication Request indicates security capabilities of the UE and a signaling security policy of the UE;
receive, from the peer UE, a Direct Security Mode Reject message when the peer UE rejects the Direct Communication Request based on a comparison of a security policy of the peer UE with the signaling security policy of the UE or with the security capabilities of the UE;
receive, from the peer UE, a Direct Security Mode Command, wherein the Direct Security Mode Command indicates the security capabilities of the UE, the signaling security policy of the UE and a set of chosen algorithms for data protection;
determine whether to accept the connection, based at least on the signaling security policy of the UE; and in response to a determination to accept the connection, transmit, to the peer UE, a Direct Security Mode Complete message for the peer UE based at least on the set of chosen algorithms.
Claim 1:
A baseband processor configured to perform operations comprising:
generating, at a User Equipment (UE) for a peer UE, a Direct Communication Request for a connection to the peer UE, wherein the Direct Communication Request indicates security capabilities of the UE and a signaling security policy of the UE; and
receiving, from the peer UE, an indication that the peer UE rejects the Direct Communication Request, wherein the peer UE rejects the Direct Communication Request based on a comparison of a security policy of the peer UE with at least one of the signaling security policy of the UE or the security capabilities of the UE.
Claim 2:
The baseband processor of claim 1, wherein the operations further comprise: in response to the peer UE accepting the Direct Communication Request:
receiving, from the peer UE, a Direct Security Mode Command, wherein the Direct Security Mode Command indicates the security capabilities of the UE, the signaling security policy of the UE, and a set of algorithms for data protection;
determining whether to accept the connection, based at least on the signaling security policy of the UE; and in response to a determination to accept the connection, generating, for the peer UE, a Direct Security Mode Complete message based at least on the set of algorithms.
US 12,063,505
Present application
Claim 1:
An apparatus configured to be employed in a User Equipment (UE), comprising: one or more processors configured to cause the UE to:
transmit, to a peer UE, a Direct Communication Request for a connection to the peer UE, wherein the Direct Communication Request indicates security capabilities of the UE and a signaling security policy of the UE;
receive, from the peer UE, a Direct Security Mode Reject message when the peer UE rejects the Direct Communication Request based on a comparison of a security policy of the peer UE with the signaling security policy of the UE or with the security capabilities of the UE;
receive, from the peer UE, a Direct Security Mode Command, wherein the Direct Security Mode Command indicates the security capabilities of the UE, the signaling security policy of the UE and a set of chosen algorithms for data protection;
determine whether to accept the connection, based at least on the signaling security policy of the UE; and in response to a determination to accept the connection, transmit, to the peer UE, a Direct Security Mode Complete message for the peer UE based at least on the set of chosen algorithms.
Claim 3:
The apparatus of claim 1, wherein, when the set of chosen algorithms comprise a NULL integrity algorithm, the one or more processors are configured to cause the UE to determine to accept the connection only when the signaling security policy of the UE is OFF.
Claim 5:
The apparatus of claim 1, wherein, when the set of chosen algorithms comprise an integrity algorithm other than NULL, the one or more processors are configured to cause the UE to determine to accept the connection when the signaling security policy of the UE is REQUIRED or PREFERRED.
Claim 17:
A method for a User Equipment (UE), the method comprising:
transmitting, to a peer UE, a Direct Communication Request for a connection to the peer UE, wherein the Direct Communication Request indicates security capabilities of the UE and a signaling security policy of the UE; and
receiving, from the peer UE, an indication that the peer UE rejects the Direct Communication Request, wherein the peer UE rejects the Direct Communication Request based on a comparison of a security policy of the peer UE with at least one of the signaling security policy of the UE or the security capabilities of the UE.
Claim 18:
The method of claim 17, further comprising: in response to the peer UE accepting the Direct Communication Request:
receiving, from the peer UE, a Direct Security Mode Command, wherein the Direct Security Mode Command indicates the security capabilities of the UE, the signaling security policy of the UE, and a set of algorithms for data protection;
determining whether to accept the connection, based at least on the signaling security policy of the UE; and in response to a determination to accept the connection, transmitting, to the peer UE, a Direct Security Mode Complete message based at least on the set of algorithms.
Claim 19:
The method of claim 18, wherein: when the set of algorithms comprises a NULL integrity algorithm, the determination to accept the connection is made only when the signaling security policy of the UE is OFF; and
when the set of algorithms comprises an integrity algorithm other than the NULL integrity algorithm, the determination to accept the connection is made when the signaling security policy of the UE is REQUIRED or PREFERRED.
As shown above, claim 1 of the ‘505 patent anticipates claims 1-2 and 17-18 of the present application. Additional limitations from claims 3 and 5 of the ‘505 patent anticipate claim 19 of the present application. In addition, claims 2-8 and 7 of the ‘505 patent anticipate claims 3-9 and 20 respectively of the present application as the limitations further recited in each of these claim sets are nearly identical to each other. Despite some minor differences in wording, the only major difference is that what the claims of the present application refers to as an “indication”, the claims of the ‘505 patent recites a “Direct Security Mode Reject message”.
Conclusion
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/PONNOREAY PICH/Primary Examiner, Art Unit 2495