DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the amendment filed on 05/05/2026.
Claims 1-16 are currently pending in this application. Claims 1, 7, 12 and 14-16 have been amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/05/2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Regarding the previous 112(b) and 112(d) rejections, the applicants have amended the claims 1, 7, 12 and 14-16. However, the applicants’ amendments overcome some, but not all of (or not amending or making any argument for) the previous rejections or/and the current amendments cause the new rejections stated in the 112 rejections section below.
Regarding the 102 rejections, the currently amended limitations are in a condition of lack of clarity and/or capability for a prior-art examination. See the 112(b) rejections section below for detail.
Thus, the applicants’ arguments are not persuasive. Please see amended rejections below for the amended claims. This action is final.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claims 1-16 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirements (e.g., the new matter issue).
Applicants have amended the claims 1, 7, 12 and 14 to include subject matter “An apparatus comprising a communication device comprising an application (an authorization) function … (comprising one or more processors and memory comprising instructions) …”, however, these amended limitations/terms were 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, at the time the application was filed, had possession of the claimed invention.
Examiner noted that the specification describes that “… Fig. 1, the UE 10 may be comprised by a communication device 12 comprising an application function (AF) …” – see fig. 1 and par. 0036, “… Fig. 4 illustrates an example of an industrial communication device arrangement in which the device 12 is a PLC device comprising the AF…” – see fig. 4 and par. 0070. However, the information of the specification stated above does not provide to support or describe the amended limitations, “an apparatus (with the processors and memory) comprising a communication device 12”. The examiner understands the specification describing the communication device 12, but there is not any apparatus which comprises the communication device 12, note: assuming the claimed apparatus is not the same as the communication device 12.
Claims 2-6, 8-11, 13, 15 and 16 depend from the claim 1, 7, 12 or 14, and are analyzed and rejected accordingly.
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Note:
Applicants are suggested to review all claims for clarification, capability, compatibility issues of limitations (e.g., for the limitation, “a communication device (a hardware component) comprises an application function (AF)”, the AF is interpreted as a hardware component, NOT a software component, etc.);
Although the claims are interpreted in light of the specification, limitations for the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 1 (claim 12 includes similar limitations) recites:
“An apparatus comprising a communication device comprising an application function … the apparatus to perform … sending … an access token request for an access token to authorize, for the application function (AF) outside a mobile network, access to a network exposure function (NEF) of the mobile network …”, however, it is not clear (1) whether the access token request is to authorize the application function or not; (2) how to define the mobile network for the AF being outside the mobile network, wherein the AF is a part of the communication device – or it is not clear to define a boundary of the limitations; (3) how the access to the NEF of the mobile network is for the AF outside the mobile network - or omitting necessary steps/components which causes the claimed limitations unclear;
“… sending … an access token request for an access token to authorize, for the AF … access to a NEF … sending an access request to the NEF to access a service of the mobile network via the NEF … request comprises the received access token”, however, it is not clear (1) whether “the access token” is for access to the NEF provide access to the service of the mobile network or not (e.g., accessing the NEF is different from (or NOT the same as) accessing a service of the mobile network) – or it is not clear to define a boundary of the limitations.
Claims 2-6, 10, 11, 13 and 15 depend from the claim 1 or 12, and are analyzed and rejected accordingly.
Claim 7 (claim 14 includes similar limitations) recites:
“An apparatus comprising a communication device comprising an authorization function, and further comprising one or more processors … when executed by the one or more processors cause the apparatus to perform: receiving, by the authorization function, an access token request, wherein the access token request is for an access token to authorize, for an application function (AF) outside a mobile network, access to a network exposure function (NEF) of the mobile network …”, however, it is not clear (1) how receiving by (or a process of) the authorization function (a hardware component) is performed by the processors of the apparatus – note: the processor is not a part of the authorization function; (2) whether the access token request is to authorize the application function or not; (3) how to define the mobile network for the AF being outside the mobile network, wherein the AF has no relationship/communication with any component (e.g., the apparatus, a communication device, an authorization function, etc.) – or it is not clear to define a boundary of the limitations; (4) how the access to the NEF of the mobile network is for the AF outside the mobile network - or omitting necessary steps/components which causes the claimed limitations unclear;
“… authorizing the access for the application function and generating the access token in response to verification of the client credentials, and sending the access token to authorize the access to the NEF for the application function”, however, it is not clear (1) whether the apparatus is authorizing the access to the application function or not; (2) whether “the verification of the client credentials” is performed by the apparatus or not (note: the client credentials are received by the authorization function – see above); (3) whether the apparatus is sending the access token to the application function (wherein the AF has no relationship/communication with any component, such as, the apparatus, a communication device, an authorization function, etc.) for authorizing the access to the NEF or not - or it is not clear to define a boundary of the limitations.
Claims 8, 9 and 16 depend from the claim 7 or 14, and are analyzed and rejected accordingly.
Claim 8 recites “… receive the access token request from the application function, or from a user equipment (UE) or cellular module … behalf of the application function … send the access token … to the UE … in response to the verification of the client credentials”, however, it is not clear (1) whether the application function is a part of the UE or not; (2) whether the access token request from the application function is responded to the UE or not.
Claim 10 recites “… wherein the client credentials comprise … a client assertion, such as a javascript object notation web token, computed based on a client secret”, however, it is not clear (1) whether the client credentials include “the javascript object notation web token” or not; (2) whether computing based on a client secret is performed by the apparatus or the user equipment.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS. — Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15 and 16 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The claims recite “A non-transitory computer readable medium, comprising instructions that, when executed, cause a data processing apparatus to perform the method of claim 12 or 14”, however, the claimed medium merely instructions to perform the steps by the data processing apparatus, but the medium does NOT perform all steps/processes of the method of the apparatus of claim 12 or 14 – note: the data processing apparatus is NOT the same as the apparatus.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. See also par. 24 of the previous office action.
The claims do not fall within at least one of the four categories of patent eligible subject matter. The claims recite “A non-transitory machine-readable medium, comprising instructions that …”. The claimed non-transitory machine-readable medium merely includes the instructions. Because the claims are to the instructions/program, therefore, covers only software embodiments, not a process, machine, manufacture or composition of matter. A claim to software per se is ineligible subject matter under 35 U.S.C. 101, because it doesn’t fall within one of the statutory categories.
Examiner’s Note Regarding Prior-art Rejections
As explained in the 112 rejections stated above, the current limitations are in a condition of lack of clarity and/or capability (e.g., omitting necessary component/step) for a prior-art examination. However, a potential concept of the application can be found in:
EP 3713274 A1 by Schnieders et al. (e.g., a system comprising a user equipment, UE, a subscriber identity module, SIM, storing UE ID, IMSI, an authentication key, Ki for authenticating the UE owner by a first authentication server and a second authentication server, which is configured to grant the UE owner rights, etc.);
US 8,495,720 B2 by Counterman (e.g., making a determination that a user equipment has been authenticated for an access network using received an identifier corresponding to the user equipment and generating an alias identifier based on the received user equipment identifier for use in combination with a universal user identifier to authenticate a user corresponding to the user equipment for accessing a plurality of services via the access network, etc.);
WO 2021/201558 A1 by Rajadurai et al. (e.g., receiving, from an application function (AF), a message for requesting authentication and key management for applications (AKMA) application key for a user equipment (UE); checking whether the AAnF provides AKMA service to the AF based on a local policy; and based on a result of the checking, determining whether to derive the requested AKMA application key for the UE, etc.).
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 MAUNG T LWIN whose telephone number is (571)270-7845. The examiner can normally be reached on Monday - Friday 10:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAUNG T LWIN/Primary Examiner, Art Unit 2495
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