DETAILED ACTION
Status of Application: Claims 1-20 are present for examination at this time.
Claims 1, 4-6, 9-14, 16-20 are present for examination.
Claims 1, 4-6, 9-14, 16-20 are rejected.
Please refer to the attached PTO Form 892 and/or submitted IDSes to resolve any possible discrepancies in the listed reference numbers.
Applicant is reminded that claim mapping is provided as a courtesy to the applicant, but applicant should consider a reference as a whole, as the entire reference gives context to mapped sections.
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 .
Priority
Applicant’s claim for foreign priority under 35 U.S.C. 119 is acknowledged.
Failure to Comply with 37 C.F.R. 1.111 (Responsiveness)
Applicant is reminded that when filing a reply to an Office action on the merits, applicant is required to:
(1) "distinctly and specifically point[] out the supposed errors in the examiner's action," per 37 C.F.R. 1.111(b);
(2) "reply to every ground of objection . . . in the prior Office action," per 37 C.F.R. 1.111(b);
(3) "reply to every ground of . . . rejection in the prior Office action," per 37 C.F.R. 1.111(b);
(4) "present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references," per 37 C.F.R. 1.111(b);
(5) “clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited,” per 37 C.F.R. 1.111(c); and
(6) “also show how the amendments avoid such references,” 37 C.F.R. 1.111(c).
(emphasis added)
In Applicant’s response filed one day prior to the 3-month shortened statutory time period for reply, applicant listed all of the rejections presented in the non-final Office action mailed March 30, 2023 (see Remarks pp. 6-8).
Applicant failed to reply to the aspects of the rejection that involved claim interpretation invoking MPEP sections 2112.01 and 2114 (See section of Non-Final rejection, repeated in this action as well, titled “Claim Interpretation 35 U.S.C. § 112”, specifically the legal premise that an apparatus claim is interpreted in terms of its structure not in terms of the manner in which it is used or configured/programmed. Applicant did not argue why their manner of using would have any patentable weight.
Applicant’s written remarks have not meaningfully explained how the claims are either novel or nonobvious from the structure (Claim 1) of the processor in the prior art reference “Method and Apparatus for Providing Policy of User Equipment In Wireless Communication System” US2022/0386100A/ To the contrary, Applicant argued (not persuasively) that the reference did not disclose the non-structural manner of using in Claim 1. However, at no point did Applicant argue that the reference lacked the claimed structure of a processor, nor rebut the presumption under MPEP 2112.01(I), that the processor in the ‘100 reference has the capability to perform the claimed functions in Claim 1, specifically:
“This presumption is rebuttable by applicant either (1) showing the prior art device and claimed device are not the same or (2) proving prior art device is incapable of performing the claimed functions. In re Ludtke, 441 F.2d 660, 664 (CCPA 1971); see MPEP 2112.01(I)(quoting In re Spada, 911 F.2d 705, 709 for “When the PTO shows a sound basis for believing that the products of the application and the prior art are the same, the applicant has the burden of showing that they are not.”). Applicant is reminded that argument of counsel is not evidence. MPEP 2145(I). Applicant is also reminded that claim limitations directed to the manner of operating do not distinguish an apparatus claim from the prior art apparatus. MPEP 2114(II) (“Manner of Operating the Device Does Not Differentiate Apparatus Claim from the Prior Art”).” (Non-Final Rejection of 3/30/23 at page 8).
Applicant did not attempt to make any significant or constructive efforts to respond to the rejection regarding structural limitations or the 35 U.S.C. § 112 rejection.
MPEP 714.03 instructs examiners as follows:
An examiner may treat an amendment not fully responsive to a non-final Office action by:
(A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135;
(B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a) ) to avoid abandonment; or
(C) setting a new time period for applicant to complete the reply pursuant to 37 CFR 1.135(c).
The treatment to be given to the amendment depends upon:
(A) whether the amendment is bona fide;
(B) whether there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action; and
(C) the nature of the deficiency.
37 C.F.R. 1.135(c) permits an examiner to exercise discretion to give applicant a new time period for reply under section 134 to file a complete and responsive reply, when (1) the applicant’s prior reply filed by applicant is a bona fide attempt to advance the application to final action, (2) the prior reply is substantially complete, and (3) the omission appears to be inadvertent. MPEP 714.03 further explains, “The practice set forth in 37 CFR 1.135(c) does not apply where there has been a deliberate omission of some necessary part of a complete reply; rather, 37 CFR 1.135(c) is applicable only when the missing matter or lack of compliance is considered by the examiner as being ‘inadvertently omitted.’”
Although applicant has not complied with these requirements, the examiner exercises discretion to simply act on this reply, instead of holding it non-responsive, as Applicant’s other prior art arguments seem to represent a bonafide attempt to respond . See MPEP 714.03.
Claim Interpretation 35 U.S.C. § 112
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 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) 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):
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;
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
the term “means” or “step” or the generic placeholder is not modified bysufficient 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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
The terms “processor … to cause” (Claims 1, 6, 10) and “controller configured to cause” (Claim 16) do not invoke 35 U.S.C. 112(f). Because this claim limitation(s) is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof. If applicant intends to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Note that Samsung’s devices are substantially identical in structure to a “processor” and “controller” in the claims herein (essentially a computer chip). The chips in the claims are “configured to” which is another way of saying “programmed” or “implements software “ for given functions. The MPEP explains that examiners are to presume claimed functions are inherent when the prior art apparatus is substantially identical to the claimed apparatus. See esp. MPEP 2112.01(I) (Product and Apparatus Claims – When the Structure Recited in the Reference is Substantially Identically to that of the Claims, Claimed Properties or Functions Are Presumed to be Inherent). In this case any server that can process location information will do. Ergo, Samsung’s processors and controllers (see Samsung at ¶¶ 36, 36, 42, 44, and 46 inter alia) are identical to Applicant’s processors, and thus the prior art apparatus is substantially identical to claimed apparatus, for which the claimed functions are presumed inherent. See MPEP 2112.01(I).
This presumption is rebuttable by applicant either (1) showing the prior art device and claimed device are not the same or (2) proving prior art device is incapable of performing the claimed functions. In re Ludtke, 441 F.2d 660, 664 (CCPA 1971); see MPEP 2112.01(I)(quoting In re Spada, 911 F.2d 705, 709 for “When the PTO shows a sound basis for believing that the products of the application and the prior art are the same, the applicant has the burden of showing that they are not.”). Applicant is reminded that argument of counsel is not evidence. MPEP 2145(I). Applicant is also reminded that claim limitations directed to the manner of operating do not distinguish an apparatus claim from the prior art apparatus. MPEP 2114(II) (“Manner of Operating the Device Does Not Differentiate Apparatus Claim from the Prior Art”).
Applicant is also reminded that claim limitations directed to the manner of operating do not distinguish an apparatus claim from the prior art apparatus. MPEP 2114(II) (“Manner of Operating the Device Does Not Differentiate Apparatus Claim from the Prior Art”).
It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” MPEP 2114. In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different” (emphases in original).
It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
MPEP 707.07(f) states:
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable performing the intended use, then it meets the claim.
Claim Rejections 35 U.S.C. 102
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.
Claims 1-12. 16, and 18-20 are rejected under 35 U.S.C. 102(a) (1) AND (a)(2) as being anticipated by “Method and Apparatus for Providing Policy of User Equipment in Wireless Communication System” by Lee, Jeong, and Baek US2022/0386100A1 (“Lee”)
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively
With respect to claims 1, 5, 6, and 16 Lee discloses: a network node in a first wireless communication network (and related method, user equipment, processor , the network node comprising: at least one memory; and at least one processor coupled with the at least one memory and configured to cause the network node to: determine that a user equipment (UE) requires route selection policy rules, wherein the UE is a subscriber to the first wireless communication network (Lee at ¶¶32-35 where the system provides Visiting UserEquipment Route Selection Policy, aka V-USRP, to a visiting UE that needs said policy. Applicant is reminded that claim mapping is provided as a courtesy to the applicant, but applicant should consider a reference as a whole, as the entire reference gives context to mapped sections. Applicant should also take note of ¶56 “According to the disclosure, the visited network operator may transmit the policy of UE to the UE via an access and mobility management function (AMF) from the V-PCF while the UE is roaming. According to the disclosure, the visited network operator may transmit, to the UE, the URSP rule of the visited network operator, which dynamically changes.”);
determine a list of network identities, each network identity identifying a wireless communication network to set route selection policy rules for UE to apply when connected to the wireless communication network; and send at least one route selection policy rule to the UE together with a policy delivery request, wherein the policy delivery request includes the list of network identities for which route selection policy rules are to be applied (Lee at ¶¶54-55 where Data Network Names, aka DNNs are provided as well as Tables 1 and 2).
With respect to claims 4, 9, and 17 Lee discloses the network node of claim (and related user equipment and processor) 1,wherein the at least one route selection policy rule is received from a Policy Control Function (PCF) (Lee at ¶¶33-34, where a Visited Policy Control Function is used/ Also see Lee at ¶56.).
With respect to claims 10, and 18 Lee discloses the UE of claim 6, (and related processor) wherein the at least one processor is further configured to cause the UE to transmit a subsequent registration to a second wireless communication network, the second wireless communication network having a network identity not listed in the list of network identities for which route selection policy rules provisioned from the first wireless communication network are to be applied;
and not apply route selection policy rules provisioned from the first wireless communication network when UE is registered to the second wireless communication network. (Lee at ¶56. This process occurs whenever the UE is roaming, thus if it roams to a second or third network the process would repeat on that subsequent network).
With respect to claim 11 Lee discloses the UE of claim 10, wherein at least one processor is further configured to cause the UE request route selection policy rules from the second wireless communication network . (Lee at ¶56. This process occurs whenever the UE is roaming, thus if it roams to a second or third network the process would repeat on that subsequent network)..
With respect to claim 11 Lee discloses the UE of claim 11, wherein the at least one processor is further configured to cause the UE to: apply any route selection policy rules received from the second wireless communication network when the UE is registered to the second wireless communication network . (Lee at ¶56. This process occurs whenever the UE is roaming, thus if it roams to a second or third network the process would repeat on that subsequent network).
With respect to claims 13 and 19, Lee discloses the UE of Claim 6 (and related processor), wherein the at least one processor is further configured to cause the UE to transmit a subsequent registration to a third wireless communication network, the third wireless communication network having a network identity listed in the list of network identities for which route selection policy rules provisioned from the first wireless communication network are to be applied; and apply route selection policy rules provisioned from the first wireless communication network when the UE is registered to the third wireless communication network . (Lee at ¶56. This process occurs whenever the UE is roaming, thus if it roams to a second or third network the process would repeat on that subsequent network)..
With respect to claims 14 and 20, Lee discloses the UE of Claim 13 (and related processor), wherein the at least one processor is further configured to cause the UE to: to ignore any route selection policy rules received from the third wireless communication network when the UE is registered to the third wireless communication network (See at ¶127 where the UE can select not applying the V-URSP from the network over its own H-URSP).
Response to Arguments
Examiner has read and considered Applicants’ arguments, and finds them to be unpersuasive. Applicants' first arguments at pages 6-7 are that Lee does not disclose the limitations of Claim 1 and its mirrored claims. Applicant does not specifically point out an exact limitation, but implies the last limitation of claim 1 when arguing “Lee’s H-PCF does not send, in the UE-facing delivery a list of networks in which first-network-provisioned ruyles are to be applied when the UE is connected there.”
“”arguments involve discussing why the previously cited prior art documents fail to disclose the amended limitations. Examiner finds this argument persuasive and has brought in an additional reference to address the amended claim limitations. The applicability of the reference to the amended elements is discussed in the claim rejections above.
Claim 1 as written requires that one route selection policy rule (not a set as argued by Applicant) be sent along with a list of networks identities for networks for which the rules are to be applied (INTENDED USE). The claim does not require that the rule is actually applied. Thus the underlined part of the limitation has no patentable weight, and Applicant’s arguments are not commensurate in scope with the claim (one rule in the claim versus the argued set). ¶¶54-55 of Lee disclose that the system can send DNNs which are network names for which the route selection policies are in effect.
Applicant is reminded that claim mapping is provided as a courtesy to the applicant, but applicant should consider a reference as a whole, as the entire reference gives context to mapped sections. For example, ¶56 which follows the mapped sections of Lee in the rejection, says that the V-CF may handle this transmission to the UE : According to the disclosure, the visited network operator may transmit the policy of UE to the UE via an access and mobility management function (AMF) from the V-PCF while the UE is roaming. According to the disclosure, the visited network operator may transmit, to the UE, the URSP rule of the visited network operator, which dynamically changes.”
Examiner also notes that the rejection mapped Tables 1 and 2 to the contested limitation. Tables 1 and 2 contain information tied to the USRP rule sent to the UE which has network identifiers.
Applicant’s arguments at page 7 regarding that the list must be for networks in which the sent is rule is to be applied is spurious. As noted above the claim requires that the rule be sent along with a list. What is done with the list afterward is a manner of operating the processor not the processor itself. Also, nothing in the claim requires that any indication of what is to be done with the list is included with the list.
Table 1 and Table 2 clearly show that a route selection policy is sent along with which networks to use the policy with. Again, Applicant should look at the paragraphs describing the tables, e.g. ¶72 “Referring to Table 2, an information name indicates a name of information included in a route selection descriptor and a description indicates description of each piece of information. For example, the route selection descriptor may include a route selection descriptor precedence and route selection components. Also, the route selection components may include SSC mode selection, network slice selection, DNN selection, a non-seamless offloading indicator, and an access type preference indicator.”
Applicant makes assertions about their interpretation of claims 10, 13-14, and 18-20 but not why the mapped rational provided in the Non-Final rejection doesn’t provide an argument, and again calls into question whether this was responsive enough under the requirements of 37 C.F.R. 1.111.
Documents Considered but not Relied Upon
The documents below were considered.
“Method And Device For Managing URSP Of VPLMN In Wireless Communication System Supporting Roaming” by Lee US2023/0362623A1
Conclusion
Applicant's amendment necessitated the 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA SCHWARTZ whose telephone number is (571)270-7494. The examiner can normally be reached on M-F 8:30-5. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yuwen “Kevin” Pan can be reached at 571-272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
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/JOSHUA L SCHWARTZ/Primary Patent Examiner, Art Unit 2649
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