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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1–6, 10-11, 16-20, 25-26 and 55– 59 are rejected under 35 U.S.C. § 112(a) and (b) as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention, and for lack of enablement and written description. Specifically, these claims are drawn to a single means or single step for achieving a stated result, without reciting the acts, steps, or structure necessary to accomplish the recited function.
Regarding claim 1, recites, in relevant part: “A method for accessing a hosting network, performed by a terminal device, comprising: in response to determining that a first hosting network is accessed, controlling a network selection process.” The claim does not specify any particular acts or steps for how the network selection process is controlled, what actions are performed by the terminal device, or how the process is implemented. The phrase “controlling a network selection process” is purely functional and does not describe any concrete steps for carrying out the network selection. The claim only states a result to be achieved, i.e., “controlling a network selection process,” without reciting the specific means or steps for achieving that result.
Regarding dependent claims 2–6, 10, and 11 recite additional conditions or limitations, such as “the terminal device is within a coverage area,” “the first hosting network has a valid time,” “the terminal device stores a hosting network list,” “a network selection priority of the hosting network list is higher than network selection priorities of other network lists” or “the hosting network list is pre-configured” but ultimately still recite the functional result of “controlling the network selection process” without specifying the underlying acts or steps for actually performing network selection. These claims do not provide further detail as to how the network selection process is controlled or what is done in response to the recited conditions.
Regarding claim 16 recites: “A method for accessing a hosting network, performed by a first hosting network device, comprising: providing an access service based on indication information to a terminal device, wherein the indication information is configured to control a network selection process of the terminal device in response to determining that the terminal device accesses a first hosting network corresponding to the first hosting network device.” This claim similarly only recites the result (“providing an access service based on indication information...configured to control a network selection process”) without specifying the steps, actions, or structure that constitute “providing an access service” or how the “indication information” actually controls the network selection process.
Dependent claims 17-20 and 25- 26 are rejected for similar reasons to dependent claims 2-6, 10 and 11 above.
Regarding claims 55–59, are apparatus and computer-readable medium claims that are defined in terms of their functionality, i.e., processors “configured to...control a network selection process” or “implement the method,” or storage media storing instructions to “implement the method.” Because the underlying method claims (e.g., claim 1) do not recite specific steps or acts, the corresponding apparatus and program product claims are also indefinite and non-enabling. Merely reciting a processor “configured to” achieve a result or a medium storing instructions to achieve a result, without specifying the steps or structure for doing so, does not satisfy the requirements of 35 U.S.C. § 112.
A proper method claim must recite the specific steps or actions constituting the claimed method, rather than merely stating a desired outcome or function. Apparatus and program product claims must likewise recite structure or acts sufficient to perform the recited function, not just the result. Claims that merely recite a result to be achieved or a function to be performed, without reciting the acts or means for achieving that result, are considered “single means” or “single step” claims and are indefinite and non-enabling under 35 U.S.C. § 112.
Accordingly, claims 1–6, 10-11, 16-20, 25-26 and 55– 59 are rejected under 35 U.S.C. § 112(a) and (b) as single means or single step claims. The claims fail to recite with particularity the specific steps, actions, or structure that constitute controlling the network selection process, providing the access service, or implementing the method, and therefore do not satisfy the requirements of 35 U.S.C. § 112.
To overcome this rejection, applicant must amend the claims to recite with particularity the specific steps, actions, or structure that constitute controlling the network selection process, providing the access service, and other claimed functions, so that the claims are definite and enabled as required by 35 U.S.C. § 112.
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.
Claim 57 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In particular, claim 57 is to “A computer-readable storage medium…” The broadest reasonable interpretation of the claim in light of the specification concludes that the claim as a whole covers a transitory signal since the definition of “medium” leaves open the possibility that the medium could be transitory. The examiner further notes that medium is discussed in paragraphs 195, and 198 of applicant’s publication (US PGPUB 2025/0374173 A1), where neither recitation explicitly defines “medium.” In these paragraphs, applicant leaves open the possibility that the medium could be transitory since the applicant only give examples in these paragraphs and since the specification actually discusses “computer-readable storage medium”. In other words, in these paragraphs, it does not define “A non-transitory computer-readable storage medium” only “A computer-readable storage medium”. Therefore, the claim can reasonably be read to include a transitory signal as one is able to store instructions onto a signal. The examiner suggests amending the claims to recite, “A non-transitory computer-readable storage medium…” (emphasis added).
Claim 59 is rejected under 35 U.S.C 101 because the claims appear to be directed to a software embodiment and not to hardware embodiment, where a machine claim is directed towards a system, apparatus, or arrangement. Claim 59 recites a "computer program" and therefore claim appears to be directed towards a software embodiment. The claimed limitations are capable of being performed as software alone since no hardware component is being claimed. Software, alone, are not physical components and thus are not statutory since software do not define any structural and functional interrelationships between the computer programs and other claimed elements of a computer, which permit the computer' s program functionality to be realized. Hence, the stated functions comprise software and is thus not directed to a hardware embodiment. Data structures not claimed as embodied in computer readable media are descriptive material per se and are not statutory because they are not capable of causing functional change in the computer. See e.g., Warmerdam, 33 F.3d at 1361, 31, USPQ2d at 1760 (claim to a data structure per se held non-statutory). Such claimed data structures do not define any structural and functional interrelationships between data and other claimed aspects of the invention, which permit the data structure' s functionality to be realized. In contrast, a claimed non-transitory computer readable medium encoded with a data structure defines structural and functional interrelationships between the data structure and the computer software and hardware components which permit the data structure' s functionality to be realized, and is thus statutory.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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)(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 filed before the effective filing date of the claimed invention.
Claims 1-6, 11, 16, 18-20, 26 and 55-59 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (US PGPUB 20230413049 A1).
Regarding claim 1, Wang teaches a method for accessing a hosting network (see sections [0080], [0096] read as “hosting networks are usually Non-Public Networks or temporary networks and the hosting network is a Standalone NPN (S-NPN), the PLMN ID and Network ID of the S-NPN may be provided performed by a terminal device (see section [0057] Although the WTRU is described in FIGS. 1A-1D as a wireless terminal, terminal may use (e.g., temporarily or permanently) wired communication interfaces with the communication network”), in response to determining that a first hosting network is accessed, controlling a network selection process (see sections [0153], [0154] and FIG. 9 “If the hosting network or the CAG cell that matches the network identifier or the CAG identifier can be found, the UE may present the discovered network or CAG cell to the user. If the user instructs it to switch to the hosting network or the CAG cell, the UE may start registration with the hosting network using stored temporary credentials or reselects the CAG cell” (read as The UE discovers and switches to an LTS hosting networking either through user-initiated scanning or through a location-based notification that triggers the UE to search for and access the hosting network so UE stop monitoring of other networks)”).
Regarding claim 2, Wang teaches all the limitations of claim 1, In addition, Wang teaches in response to determining that the first hosting network is accessed, controlling the network selection process comprises in response to determining that the first hosting network is accessed and the terminal device is within a coverage area of the first hosting network, controlling the network selection process (see sections [0153], [0154] and FIG. 9 “the hosting network or the CAG cell, the UE may start a periodic network scanning process, during the time period and in the area that the LTS service is available (The UE discovers and switches to an LTS hosting networking either through user-initiated scanning or through a location based notification that triggers the UE to search for and access the hosting network)”).
Regarding claim 3, Wang teaches all the limitations of claim 1, In addition, Wang teaches the first hosting network has a valid time (see sections [0152]- [0153] “read as the UE scans for the hosting network only during the specified LTS service availability period, with scanning triggered periodically by a timer or by user request”),
in response to determining that the first hosting network is accessed, controlling the network selection process comprises in response to determining that the first hosting network is accessed, (see sections [0153], [0154] and FIG. 9 “the hosting network or the CAG cell, the UE may start a periodic network scanning process, during the time period and in the area that the LTS service is available”) and within the valid time of the first hosting network, controlling the network selection process (see sections [0110], [0152]- [0153] “read as the UE scans for the hosting network only during the specified LTS service availability period, with scanning triggered periodically by a timer or by user request”).
Regarding claim 4, Wang teaches all the limitations of claim 1, In addition, Wang teaches the terminal device stores a hosting network list (see sections [0145], [0157] and FIG. 8 “the UE may use the established PDU Session and the received configuration (e.g., PVS address) to access the provisioning server of the target LTS network for retrieving LTS network credentials, and other information (Network list) for selecting and accessing the target LTS network.”),
the hosting network list comprises the first hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”)
the hosting network list is configured to control the network selection process in response to determining that a hosting network in the hosting network list is accessed (see section [0135], [0157] and FIGs.7 & 8 “the UE sends an LTS request containing LTS service information (service name, hosting network identifier). SMF use this information to identify the appropriate provisioning server in the hosting network and retrieves temporary credentials from accessing the hosting network only.”).
Regarding claim 5, Wang teaches all the limitations of claim 4, In addition, Wang teaches the hosting network list comprises a network identifier of each of at least one hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”),
the at least one hosting network comprises the first hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”).
Regarding claim 6, Wang teaches all the limitations of claim 5, In addition, Wang teaches in response to determining that the first hosting network is accessed, controlling the network selection process (see sections [0153], [0154] and FIG. 9 “the hosting network or the CAG cell, the UE may start a periodic network scanning process, during the time period and in the area that the LTS service is available (The UE discovers and switches to an LTS hosting networking either through user-initiated scanning or through a location based notification that triggers the UE to search for and access the hosting network)”).
in response to determining that the first hosting network is accessed and the hosting network list comprises a network identifier of the first hosting network, controlling the network selection process (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”).
Regarding claim 11, Wang teaches all the limitations of claim 4, In addition, Wang teaches the hosting network list is pre-configured; or the hosting network list is configured by a home network of the terminal device (see sections [0158]- [0159] “read as UE send a list of supported LTS services and corresponding configuration information required for provisioning and first access to the LTS hosting networking “).
Regarding claim 16, Wang teaches a method for accessing a hosting network, performed by a first hosting network device (see sections [0080], [0096] read as “hosting networks are usually Non-Public Networks or temporary networks and the hosting network is a Standalone NPN (S-NPN), the PLMN ID and Network ID of the S-NPN may be provided”),
providing an access service based on indication information to a terminal device (see section [0153] “read as the UE uses stored network/CAG identifiers as indications to discover and identity the appropriate LTS hosting network only for access”),
the indication information is configured to control a network selection process of the terminal device in response to determining that the terminal device accesses a first hosting network corresponding to the first hosting network device (see section [0153] “read as the network identifier / CAG identifier serves as indication information used by the UE during network scanning to identify and select a corresponding LTS hosting network only or CAG cell for registration and services access without looking other networks”).
Regarding claim 18, Wang teaches all the limitations of claim 16, In addition, Wang teaches the first hosting network has a valid time (see sections [0152]- [0153] “read as the UE scans for the hosting network only during the specified LTS service availability period, with scanning triggered periodically by a timer or by user request”),
the indication information is configured to: in response to determining that the terminal device accesses the first hosting network (see sections [0153], [0154] and FIG. 9 “the hosting network or the CAG cell, the UE may start a periodic network scanning process, during the time period and in the area that the LTS service is available”) and within the valid time of the first hosting network, control the network selection process (see sections [0110], [0152]- [0153] “read as the UE scans for the hosting network only during the specified LTS service availability period, with scanning triggered periodically by a timer or by user request”).
Regarding claim 19, Wang teaches all the limitations of claim 16, In addition, Wang teaches the indication information comprises a hosting network list (see sections [0145], [0157] “read as network provides the UE with a list of LTS services, where the included identifiers and configuration details serves as indication information for selection and accessing supported hosting networks”),
the hosting network list comprises the first hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”),
the hosting network list is configured to control the network selection process in response to determining that the terminal device accesses a hosting network in the hosting network list (see section [0135], [0145] and FIG.7 “the UE sends an LTS request containing LTS service information (service name, hosting network identifier). SMF use this information to identify the appropriate provisioning server in the hosting network and retrieves temporary credentials from accessing the hosting network only.”).
Regarding claim 20, Wang teaches all the limitations of claim 19, In addition, Wang teaches the hosting network list comprises a network identifier of each of at least one hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”),
the at least one hosting network comprises the first hosting network (see sections [0145], [0158] “read as network provides the UW with a list containing hosting network identifiers so the UE can identify and access supported only LTS services”).
Regarding claim 26, Wang teaches all the limitations of claim 19, In addition, Wang teaches the hosting network list is pre-configured; or the hosting network list is configured by a home network of the terminal device (see sections [0158]- [0159] “read as UE send a list of supported LTS services and corresponding configuration information required for provisioning and first access to the LTS hosting networking “).
Regarding claim 55, Wang teaches the one or more processors are configured (see section [0040] “The processor 118 may be a general purpose processor, a special purpose processor, a conventional processor, a digital signal processor (DSP), a plurality of microprocessors”),
in response to determining that a first hosting network is accessed, control a network selection process (see sections [0153], [0154] and FIG. 9 “If the hosting network or the CAG cell that matches the network identifier or the CAG identifier can be found, the UE may present the discovered network or CAG cell to the user. If the user instructs it to switch to the hosting network or the CAG cell, the UE may start registration with the hosting network using stored temporary credentials or reselects the CAG cell” (read as The UE discovers and switches to an LTS hosting networking either through user-initiated scanning or through a location based notification that triggers the UE to search for and access the hosting network so UE stop monitoring of other networks)”).
Regarding claim 56, Wang teaches all the limitations of claim 16, In addition, Wang teaches a network device, comprising: one or more processors; wherein the one or more processors are configured to implement the method according to claim 16 (see section [0040] “The processor 118 may be a general purpose processor, a special purpose processor, a conventional processor, a digital signal processor (DSP), a plurality of microprocessors”).
Regarding claim 57, Wang teaches all the limitations of claim 1, In addition, Wang teaches a computer-readable storage medium (see section [0168] “ a computer-readable medium for execution by a computer or processor”),
the computer- readable storage medium stores executable instructions (see section [0173] “computer-readable instructions stored on a computer-readable medium.”),
the executable instructions are loaded and executed by one or more processors to implement the method for accessing a hosting network according to claim 1 (see section [0173] “computer-readable instructions stored on a computer-readable medium. The computer-readable instructions may be executed by a processor of a mobile unit, a network element, and/or any other computing device”).
Regarding claim 58, Wang teaches all the limitations of claim 1, In addition, Wang teaches A chip, comprising a programmable logic circuit or a program, wherein the chip is configured to implement the method for accessing a hosting network according to claim 1 (see section [0175] “read as functions may be implemented either in hardware circuits or as software programs running or processors or a combination of both”).
Regarding claim 59, Wang teaches all the limitations of claim 1, In addition, Wang teaches a computer program product or a computer program, comprising computer instructions stored in one or more computer-readable storage media, and one or more processors read the computer instructions from the one or more computer-readable storage media and execute the computer instructions to implement the method for accessing a hosting network according to claim 1 (see section [0168] “read as implemented as software stored on computer readable storage media or transmitted over communication signals and executed by a processor”).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10,17 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US PGPUB 20230413049 A1) as applied to claims 4, 16 and 19 above in view of LAI et al. (US PGPUB 20220046530 A1).
Regarding claim 10, Wang teaches all the limitations of claim 4, However, Wang fails to teaches a network selection priority of the hosting network list is higher than network selection priorities of other network lists
LAI teaches a network selection priority of the hosting network list is higher than network selection priorities of other network lists (see section [0051] and FIG. 7 “read as the UE uses a configured list of SPNS with assigned priorities and selects the highest priority matching network from broadcast list for access”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to modify Wang with LAI to include a network selection priority of the hosting network list is higher than network selection priorities of other network lists thereby, UE to use a single home subscription (HSP) to access multiple partner networks (SPNs/ SNPNs) in a controlled and prioritized way as taught by LAI (see section [0051]).
Regarding claim 17, Wang teaches all the limitations of claim 16, In addition, Wang teaches the indication information is configured to: in response to determining that the terminal device accesses the first hosting network and the terminal device is within a coverage area of the first hosting network, control the network selection process
LAI teaches the indication information is configured to in response to determining that the terminal device accesses the first hosting network (see section [0066] and FIG. 9 “read as the UE receives configuration information from its home network, including a prioritized network list, and uses an indication from broadcast system information to determine whether it can access a selected SPN using its home-network subscription”).
the terminal device is within a coverage area of the first hosting network, control the network selection process (see section [0049] “the SNPN 130 can have a service level agreement with the SNPN 110 and allow the UE 114, which moves from the SNPN 110 coverage into the SNPN 130 coverage, to access thereto using the HSP subscription of the SNPN 110”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to modify Wang with LAI to include the indication information is configured to: in response to determining that the terminal device accesses the first hosting network and the terminal device is within a coverage area of the first hosting network, control the network selection process thereby, UE to use a single home subscription (HSP) to access multiple partner networks (SPNs/ SNPNs) in a controlled and prioritized way as taught by LAI (see section [0051]).
Regarding claim 25, Wang teaches all the limitations of claim 19, However, Wang fails to teaches a network selection priority of the hosting network list is higher than network selection priorities of other network lists
LAI teaches a network selection priority of the hosting network list is higher than network selection priorities of other network lists (see section [0051] and FIG. 7 “read as the UE uses a configured list of SPNS with assigned priorities and selects the highest priority matching network from broadcast list for access”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to modify Wang with LAI to include a network selection priority of the hosting network list is higher than network selection priorities of other network lists thereby, UE to use a single home subscription (HSP) to access multiple partner networks (SPNs/ SNPNs) in a controlled and prioritized way as taught by LAI (see section [0051]).
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Addy Anthony can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARTIBEN JAIMIN PATEL/Examiner, Art Unit 2645
/ANTHONY S ADDY/Supervisory Patent Examiner, Art Unit 2645
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