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 09/05/2024. Claims 1-20 are still pending in the present application. This Action is made FINAL.
For purpose of compact prosecution of the Application, on September 29, Examiner called Applicant’s representative, Chris C. Kim Registration No.: 83,530, and left a voice message that Application number of the filed Terminal Disclaimer (TD) was wrong, and a new TD was needed to place the Application in allowance condition. However, as of October 8, 2026, no call has been received from Applicant’s representative.
Terminal Disclaimer
The terminal disclaimer filed on 09/14/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12114223 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The Application No. of the Terminal Disclaimed (filed on 09/14/2026), 17/680,127 is incorrect and a new Terminal Disclaimer should be resubmitted with a correct Application number: 18/826,035.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12114223. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, claim 1 is generic to all limitations that are recited in claim 1 of U.S. Patent No. 12114223 (independent claims 10 and 16 are comparable to claims 10 and 18 similarly). That is, claims 1-20 are anticipated by claims 1-20 of U.S. Patent No. 12114223.
Claim 1 of instant Application
Claim 1 of U.S. Patent No. 12114223
A computer-readable storage medium, excluding transitory signals and carrying instructions, which, when executed by at least one data processor of a system, cause the system to:
1. A non-transitory computer-readable storage medium carrying instructions, which, when executed by at least one data processor of a system, cause the system to:
receive a communication indicating a request by user equipment (UE) to transfer from:
receive a communication indicating a request by user equipment (UE) to transfer from:
(i) a first communication session within a first telecommunications network, wherein the UE is assigned a first IP address in the first communication session, to
(i) a communication session with a gNodeB (gNB) associated with a 5th Generation New Radio (5G NR) telecommunications network in which the UE is assigned an Internet protocol version 6 (IPv6) address to enable communications by the UE in a packet data unit (PDU) session, to
(ii) a second communication session within a second telecommunications network, wherein the first IP address is invalid for use in the second telecommunications network;
ii) a communication session with an eNodeB (eNB) associated with a 4th Generation Long-Term Evolution (4G LTE) telecommunications network, in which the UE is assigned an Internet protocol version 4 (IPv4) address;
transfer a context of the UE from the first telecommunications network to the second telecommunications network;
wherein the context does not include the first IP address,
transfer a context of the UE to a mobility management entity (MME) associated with the 4G LTE telecommunications network that does not include the IPv6 address assigned to the UE,
wherein the context causes the second telecommunications network to notify the UE that the first communication session is inactive and to facilitate assignment of a second IP address to the UE in the second communication session; and
wherein the context causes the MME to notify the UE that the IPv6 PDU session is inactive and to facilitate initiation of an IPv4 packet data network (PDN) session with a core network of the 4G LTE network; and
release the first IP address.
release the IPv6 address assigned to the UE.
As disclosed above, claim 1 of U.S. Patent No. 12114223 includes more specific limitations than claim 1 of the instant application.
Therefore, claim 1 of the current application made claim 1 of U.S. Patent No. 12114223 a broader version of claim. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 1 is not patentably distinct from claim 1 of U.S. Patent No. 12114223 (similar comparison would be applied for intendent claims 10 and 16 by comparing to claims 10 and 18 of U.S. Patent No. 12114223).
The limitations of claims 2-9, 11-15 and 17-20 are included in claims 2-9, 11-17 and 19-20 of U.S. Patent No. 12114223 (with obvious wording or phrase variations, or combination of the claims).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11877202. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, claim 1 is generic to all limitations that are recited in claim 5 of U.S. Patent No. 11877202 (independent claims 10 and 16 are comparable to claims 1, 5 and 11). That is, claims 1-20 are anticipated by claims 1-20 of U.S. Patent No. 11877202.
Similar comparison can be applied between claim 1 of the instant application and claim 5 of U.S. Patent No. 11877202.
The limitations of claims 2-9, 11-15 and 17-20 are included in claims 2-4, 6-10 and 12-20 of U.S. Patent No. 11877202 (with obvious wording or phrase variations, or combination of the claims).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLAHYAR KASRAIA N whose telephone number is (571)270-1772. The examiner can normally be reached Monday - Friday, 8:00 am - 5: 00 pm.
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 at (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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/ALLAHYAR KASRAIA N/Primary Examiner, Art Unit 2642
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