NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/808,813 (“the ‘813 application”) for U.S. Patent No. 10,555,158 (“the ‘158 Patent”).
Claims 1-9 are original and amended. Claims 10-18 are new. Claims 1-18 are pending.
Priority
The ‘813 application is a continuation reissue of application 17/665,081 (“the ‘081 application”), now RE50239, which is a reissue of the ‘158 Patent.
Missing Reissue Declaration
The instant reissue application is missing the reissue declaration. While Applicant discusses the reasons for reissue in the Remarks filed August 19, 2024, a proper reissue declaration with a proper error statement must be filed with the reissue application. The utility declaration filed August 19, 2024 is not a proper reissue declaration. See 37 CFR 1.175 and MPEP § 1414.
A reissue declaration is required.
35 USC 251 Rejection based on Missing Reissue Declaration
Because a reissue declaration has not been filed with this application, there is no proper error statement relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
Claims 1-18 are rejected as being based upon an improper reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Specification
The specification is objected to. It should be amended to add that the ‘081 application is now RE50239.
Application Data Sheet
The application data sheet is objected to. In addition to indicating that the ‘813 application is a continuation of the ‘081 application, it should also indicate that the ‘813 application is a reissue of the 16/069,746 application (“the ‘746 application”) (i.e., the ‘158 Patent).
Corrected Filing Receipt
Upon filing the corrected application data sheet, applicant must request a corrected filing receipt and ensure the domestic priority data indicates the ‘813 application is also a reissue of the ‘746 application (i.e., the ‘158 Patent). The current filing receipt only indicates the ‘813 application as a continuation of the ‘081 application under the domestic priority data. The corrected filing receipt should properly indicate that the ‘813 application is a continuation and a reissue.
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 1-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of RE50,239. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 10 of the ‘813 are missing limitations compared to claim 1 of RE50,239 as identified below in Tables 1 and 2.
Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 1 of the ‘813 application
Claim 1 of RE50,239
An apparatus comprising:
at least one processor; and
at least one memory storing instructions thereon that, when executed by the at least one processor, cause the apparatus to perform at least:
An apparatus comprising:
at least one processor; and
at least one memory storing instructions thereon that, when executed by the at least one processor, cause the apparatus to perform at least:
while said apparatus is located in a visited country, conducting a domain name system query of a domain name server using one or more mobile country codes of said visited country to obtain, via the domain name server, identities of public land mobile networks located in the visited country, referred to as local public land mobile networks;
while said apparatus is located in a visited country, conducting a domain name system query of a domain name server using one or more mobile country codes of said visited country to obtain, via the domain name server, a list of identities of public land mobile networks located in the visited country, referred to as local public land mobile networks;
determining one or more local public land mobile networks, from said identities of local public land mobile networks obtained from said domain name server in response to said domain name system query, the one or more local public land mobile networks having roaming agreements with a home public land mobile network of the apparatus for untrusted wireless local area network access; and
determining one or more local public land mobile networks, from said list of identities of local public land mobile networks obtained from said domain name server in response to said domain name system query, the identities of which are also on a list of identities of local public land mobile networks having roaming agreements with a home public land mobile network of the apparatus for untrusted wireless local area network access; and
selecting an evolved packet data gateway to establish an internet protocol security tunnel to the evolved packet data gateway from the apparatus, said selecting comprising determining said evolved packet data gateway is associated with said one or more local public land mobile networks.
selecting an evolved packet data gateway to establish an internet protocol security tunnel to the evolved packet data gateway from the apparatus, said selecting comprising determining said evolved packet data gateway is associated with said one or more local public land mobile networks, from said list of local public land mobile networks obtained from said domain name server in response to said domain name system query that are determined to also be on said list of public land mobile networks having roaming agreements with said home public land mobile network of the apparatus of untrusted wireless local are network access.
Table 1
Claim 10 of the ‘813 application
Claim 1 of RE50,239
An apparatus comprising:
at least one processor; and
at least one memory storing instructions thereon that, when executed by the at least one processor, cause the apparatus to perform at least:
An apparatus comprising:
at least one processor; and
at least one memory storing instructions thereon that, when executed by the at least one processor, cause the apparatus to perform at least:
while said apparatus is located in a visited country, conducting a domain name system query of a domain name server using one or more mobile country codes of said visited country to obtain, via the domain name server, a list of identities of public land mobile networks located in the visited country, referred to as local public land mobile networks;
while said apparatus is located in a visited country, conducting a domain name system query of a domain name server using one or more mobile country codes of said visited country to obtain, via the domain name server, a list of identities of public land mobile networks located in the visited country, referred to as local public land mobile networks;
determining one or more local public land mobile networks, from said list of identities of local public land mobile networks obtained from said domain name server in response to said domain name system query, the identities of which are also on a list of identities of local public land mobile networks having roaming agreements with a home public land mobile network of the apparatus for untrusted wireless local area network access; and
determining one or more local public land mobile networks, from said list of identities of local public land mobile networks obtained from said domain name server in response to said domain name system query, the identities of which are also on a list of identities of local public land mobile networks having roaming agreements with a home public land mobile network of the apparatus for untrusted wireless local area network access; and
selecting an evolved packet data gateway to establish an internet protocol security tunnel to the evolved packet data gateway from the apparatus, said selecting comprising determining said evolved packet data gateway is associated with said one or more local public land mobile networks.
selecting an evolved packet data gateway to establish an internet protocol security tunnel to the evolved packet data gateway from the apparatus, said selecting comprising determining said evolved packet data gateway is associated with said one or more local public land mobile networks, from said list of local public land mobile networks obtained from said domain name server in response to said domain name system query that are determined to also be on said list of public land mobile networks having roaming agreements with said home public land mobile network of the apparatus of untrusted wireless local are network access.
Table 2
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘012 Patent
1
1, 10
instructions that cause the processor to while said apparatus is located in a visited country, conducting a domain name system query of a domain name server using one or more mobile country codes of said visited country to obtain, via the domain name server, identities of public land mobile networks located in the visited country, referred to as local public land mobile networks
See at least 5:59-66
2
1, 10
instructions that cause the processor to determining one or more local public land mobile networks, from said identities of local public land mobile networks obtained from said domain name server in response to said domain name system query, the one or more local public land mobile networks having roaming agreements with a home public land mobile network of the apparatus for untrusted wireless local area network access
See at least 6:50-66
3
1, 10
instructions that cause the processor to selecting an evolved packet data gateway to establish an internet protocol security tunnel to the evolved packet data gateway from the apparatus, said selecting comprising determining said evolved packet data gateway is associated with said one or more local public land mobile networks
See at least 7:50-60
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
Information Disclosure Statement
Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
“Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO /SB /08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above.”
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘158 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
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Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/B. James Peikari/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
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