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 .
Claims 1-3, 6, 8, 10, 11, 13, 15-17, 20-22, 24, 25, 27, 29, 30, 48 and 49 are presented for examination.
Examiner’s Remark
At the time of writing of the instant action, the Examiner is aware of potential avenues for advancing prosecution and encourages Applicant to contact the Examiner to advance prosecution.
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 48 is rejected under 35 U.S.C. 101 because the claims are directed to processor and a memory.
The broadest reasonable interpretation of the claimed memory includes transitory signals. The Specification does not describe the metes and bounds, but also does not exclude transitory signals. The broadest reasonable interpretation of the claimed processor includes software or software elements alone; such an interpretation is not expressly excluded. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007) and In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
Accordingly, the broadest reasonable interpretation of the claims is transitory signals and software. It has been noted that the ordinary and customary meaning of "computer readable storage medium" or a memory, to a person of ordinary skill in the art is broad enough to encompass both non-transitory and transitory media. See Ex parte Mewherter (Appeal 2012-007682) (Precedential). Transitory, propagating signals such as carrier waves are not within any of the four statutory categories (process, machine, manufacture or composition of matter). Therefore, a claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). The subject matter of the claims permitted within 35 U.S.C. 101 must be a machine, a manufacture, a process, or a composition of matter. "[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). “The MPEP instructs that when a claim covers ‘both statutory and non-statutory embodiments,’ it is not eligible for patenting. MPEP § 2106 (9th ed. Mar. 2014.).” quoting Mentor Graphics v. Synopsys (Fed. Cir. Mar. 16, 2017, Precedential).
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.
Claim Rejections - 35 USC § 102
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 filed before the effective filing date of the claimed invention.
Claims 1, 2, 15, 16, 20, 29, 48 and 49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yi, Qiang (WO 2019/051776 A1), hereinafter referred to as Yi [WIPO translation enclosed and relied upon infra].
Re claims 1, 15 and 29: Yi teaches a relay communication method performed by a first user equipment (UE), a relay communication method performed by a second user equipment (UE), a relay communication method performed by a first network node and comprising: sending/receiving a security information request message to a first network node, wherein the security information request message is configured to request security information for protecting a relay communication discovery between the first UE and a second UE; and receiving/sending a security information response message sent by the first network node, wherein the security information response message comprises the security information (Fig 1; ¶184-¶241; Fig 2; ¶242-¶270).
Re claims 2 and 16: Yi teaches the security information request message comprises a key request message; the security information response message comprises a key response message, and the security information comprises a discovery intermediate key (Fig 1; ¶184-¶241; Fig 2; ¶242-¶270).
Re claims 6 and 20: Yi teaches determining a discovery key based on the discovery intermediate key, wherein the discovery key comprises at least one of: an encryption key DUCK, configured to encrypt and decrypt a discovery message of a relay communication; or an integrity assurance key DUIK, configured to protect integrity of the discovery message of the relay communication; wherein the determining the discovery key based on the discovery intermediate key comprises one of: determining the discovery key based on the discovery intermediate key and an algorithm identification; or determining the discovery key based on the discovery intermediate key, the algorithm identification, and the RSC (¶187; ¶237; ¶312).
Re claim 48: Yi teaches a communication device, comprises: a processor; and a memory for storing instructions executable by the processor; wherein the processor is configured to perform the relay communication method according to claim 1 when executing the executable instructions (Fig 9; ¶356-¶358; Fig 10; ¶367; ¶379).
Re claim 49: Yi teaches a non-transitory computer storage medium, wherein the computer storage medium stores a computer-executable program that, when executed by a processor, causes the processor to perform the relay communication method according claim 1 (Fig 9; ¶356-¶358; Fig 10; ¶367; ¶379).
Claims 1, 2, 15, 16, 29, 48 and 49 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee et al (U.S. Pat App Pub 2022/0109996 A1), hereinafter referred to as Lee.
Re claims 1, 15 and 29: Lee teaches a relay communication method performed by a first user equipment (UE), a relay communication method performed by a second user equipment (UE), a relay communication method performed by a first network node and comprising: sending/receiving a security information request message to a first network node, wherein the security information request message is configured to request security information for protecting a relay communication discovery between the first UE and a second UE; and receiving/sending a security information response message sent by the first network node, wherein the security information response message comprises the security information (Fig 5; ¶85-¶91; Fig 7; ¶104-¶109; ¶111; Fig 9; ¶119-¶120; Fig 10; ¶125-¶128).
Re claims 2 and 16: Lee teaches the security information request message comprises a key request message; the security information response message comprises a key response message, and the security information comprises a discovery intermediate key (¶81).
Re claim 48: Lee teaches a communication device, comprises: a processor; and a memory for storing instructions executable by the processor; wherein the processor is configured to perform the relay communication method according to claim 1 when executing the executable instructions (Fig 6; ¶92-¶100; Fig 8; ¶125-¶126).
Re claim 49: Lee teaches a non-transitory computer storage medium, wherein the computer storage medium stores a computer-executable program that, when executed by a processor, causes the processor to perform the relay communication method according claim 1 (Fig 6; ¶92-¶100; Fig 8; ¶125-¶126).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 3, 17 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over either Yi, Qiang (WO 2019/051776 A1), hereinafter referred to as Yi [WIPO translation enclosed and relied upon infra], or Lee et al (U.S. Pat App Pub 2022/0109996 A1), hereinafter referred to as Lee, in view of “3GPP TS 33.503 v0.2.0 (2021-11), Release 17”, hereinafter referred to as 3GPP_TS_33.503_v0.2.0_Release_17.
Re claims 3, 17 and 30: Yi / Lee teaches all the limitations of claims 12, 16 and 29 as previously stated.
3GPP_TS_33.503_v0.2.0_Release_17 teaches the key request message comprises a relay service code (RSC) indicating a relay service; the key response message comprises the discovery intermediate key for the RSC, or the discovery intermediate key for the RSC and identification information of the discovery intermediate key, and/or the key request message further comprises at least one of: type indication information, configured to indicate a discovery message type of a relay communication; first security indication information, configured to indicate security capability of the first UE, and/or the key response message further comprises at least one of: an algorithm identification, wherein the algorithm identification comprises at least one of: a first algorithm identification, configured to indicate an algorithm for encrypting and decrypting a discovery message of a relay communication; or a second algorithm identification, configured to indicate an algorithm for performing integrity protection on the discovery message of the relay communication; time-related information, configured to determine whether the discovery message of the relay communication is subject to replay attacks (page 23; page 24, NOTE 4; page 24, section 3 & 4A; page 25, section 4c; page 25, section 4c; page 27: 2-5; page 29; the Examiner notes the numerous claim selection and the art teaches, at least, one of the recited selections).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Yi / Lee with the teachings of 3GPP_TS_33.503_v0.2.0_Release_17, for the purpose of providing predictable variations in the art of provisioning discovery security materials. In particular, the Release documents provide for identifying the RSCs and providing root-based keys for the purpose of deriving session / short-term keys; doing so has the known benefit of further securing communications between devices.
Claims 8, 10, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Yi, Qiang (WO 2019/051776 A1), hereinafter referred to as Yi [WIPO translation enclosed and relied upon infra], in view of “3GPP TS 33.303 v17.0.0 (2021-12), Release 17”, hereinafter referred to as 3GPP_TS_33.303_v17.0.0_Release_17.
Re claims 8 and 22: Yi teaches all the limitations of claims 6 and 20 as previously stated.
3GPP_TS_33.303_v17.0.0_Release_17 teaches sending a first announcement message, wherein the first announcement message comprises the discovery message encrypted based on the discovery key and subject to integrity protection, and the discovery message is configured to indicate that the first UE supports being discovered to provide a relay service; or receiving a second announcement message, wherein the second announcement message comprises a discovery solicitation message encrypted based on the discovery key and subject to integrity protection; and the discovery solicitation message is configured to request the second UE to discover a requested relay service; and decrypting and verifying the second announcement message based on the discovery key to obtain the discovery solicitation message (pages 16-23, starting from section 6.1.1; note in particular “restricted discovery”, page 53, section 6.6.3.1; page 57, section 6.6.7; page 66, A.2; page 89, Table 6.2-1, specifically the “Restricted Discovery” elements).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Yi with the teachings of 3GPP_TS_33.303_v17.0.0_Release_17, for the purpose of protecting against unauthorized UEs by providing Restricted discovery to allow a UE to discover only authorized UEs. Restricted discovery provides for security requirements between network entities whilst also preventing impersonation attacks and supporting integrity protection.
Re claims 10 and 24: The combination of Yi and 3GPP_TS_33.303_v17.0.0_Release_17 teaches sending a third announcement message, wherein the third announcement message comprises a discovery response message encrypted based on the discovery key and subject to integrity protection, wherein the discovery response message is determined based on the discovery solicitation message (pages 16-23, starting from section 6.1.1; note in particular “restricted discovery”, page 53, section 6.6.3.1; page 57, section 6.6.7; page 66, A.2; page 89, Table 6.2-1, specifically the “Restricted Discovery” elements).
Claims 11, 13, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Yi, Qiang (WO 2019/051776 A1), hereinafter referred to as Yi [WIPO translation enclosed and relied upon infra], in view of “3GPP TS 23.304 v17.2.1 (2022-03), Release 17”, hereinafter referred to as 3GPP_TS_23.304_v17.2.1_Release_17.
Re claims 11 and 25: Yi teaches all the limitations of claims 1 and 15 as previously stated.
3GPP_TS_23.304_v17.2.1_Release_17 teaches obtaining first address information of the first network node; the sending the security information request message to the first network node comprises: sending the security information request message to the first network node based on the first address information; wherein the obtaining the first address information of the first network node comprises: obtaining the first address information of the first network node from a policy control function (PCF) or a direct discovery name management function (DDNMF) (pages 23-24, sections 4.3.2-4.3.3; page 68-69, sections 6.3.1.4-6.3.1.6; page 97, section 7.1.2 – page 99, section 7.1.2.9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Yi with the teachings of 3GPP_TS_23.304_v17.2.1_Release_17, for the purpose of facilitating secure cross-network discovery by enabling authorization for a UE, exchanging necessary identifiers with the UE and validating timers to prevent replay attacks.
Re claims 13 and 27: Yi teaches all the limitations of claims 1 and 15 as previously stated.
3GPP_TS_23.304_v17.2.1_Release_17 teaches obtaining a first RSC set, wherein the first RSC set comprises: at least one first RSC, and the first RSC is an RSC of a relay service which is able to be provided by the first UE; wherein the obtaining the first RSC set comprises: obtaining the first RSC set from the PCF (pages 33-35, section 5.1.4; page 41, sections 5.4.1.1 – 5.4.1.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Yi with the teachings of 3GPP_TS_23.304_v17.2.1_Release_17, for the purpose of allowing the updating of service permissions dynamically where the PCF has the known benefit of revoking or changing authorized RSCs.
Conclusion
Examiner's Note:
The Examiner identified and designated “the particular part[s] [of the references] relied on” as provided in 37 C.F.R § 1.104(c)(2).
A reference is not limited to the disclosure of specific working examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A prior art reference’s disclosure is not limited to its examples.). Nor do disclosed examples teach away from a reference’s broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”).
“The prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
MPEP 2123 [R – 08.2012] states: "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
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A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. See: Ralston Purina Co. v. FarMar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985), In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010), Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000), Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991) and TurboCare Div. of Demag Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTOL-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN B SCHWARTZ whose telephone number is (571)270-3850. The examiner can normally be reached 9am-7pm EST, Monday-Thursday, 9am-5pm EST, Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph P Hirl can be reached at (571)272-3685. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN B SCHWARTZ/ Primary Examiner, Art Unit 2435