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 .
Claim Interpretation
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) 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;
(B) 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
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a controller… configured to” in claims 8 and 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 4 and 8-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4, 11, and 15 recite the limitation "the initial registration associated with a response". There is insufficient antecedent basis for this limitation in the claim. Claims 1, 8, and 12 define a point in time “after successful initial registration” but they do not define any specific “initial registration” or any “initial registration” that is “associated with a response”. The applicant needs to amendment the independent claims to explicitly claim a step of initial registration, if they want to further limit a response that is part of such a registration.
Claim limitation “a controller… configured to” in claims 8 and 12 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Figures 3 and 4 depict the controller as a separate entity from the processor and communication hardware. Paragraphs 93-95 and 98-100 reference generic techniques that could be used to implement hardware for a “controller” but they do not provide any clear description of the structure that the controllers comprise or how they are “configured” to perform the limitations of the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1-3, 5-11, and 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 3GPP TR 23.700-87 v0.2.0 published April 2022 (Part of IDS filed on 11/1/2024).
As to claim 1, 3GPP TR 23.700-87 teaches a method performed by a user equipment (UE) (Section 6.4.1 on page 26, the UE discovers the data channel capability of the remote network) in a wireless communication system, the method comprising:
after successful initial registration (Section 6.4.1.3, the second bullet point reads on the initial registration described on page 11 of the applicant’s disclosure and performs a retry in the same manner as disclosed by the applicant) with a network function (Section 6.4.1, the network reads on the claimed network function), transmitting, to the network function, a first request (Section 6.4.2.1, the UE discovery procedure is a “first request”) with a subsequent registration (the UE discovery procedure referenced in section 6.4.2.1 can be performed after the retry referenced in 6.4.1.3); and in case that an internet protocol (IP) multimedia subsystem (IMS) network supports an IMS data channel, receiving, from the network function, a 200 OK response as a response to the first request, the 200 OK response including a Feature-Caps header field indicating the IMS data channel capability (Section 6.4.1.2.1).
As to claim 2, 3GPP TR 23.700-87 teaches wherein the network function includes a serving - call session control function (S-CSCF) (See section 6.4.3, the S-CSCF returns the response referenced in section 6.4.1.2.1).
As to claim 3, 3GPP TR 23.700-87 teaches transmitting, to the network function, a second request including an IMS data channel media description in a second description protocol (SDP) offer as a response to the 200 OK response (See section 6.3.2.4.1, first step).
As to claims 5-7, the mapping of the rejection of claims 1-3 shows the that the network function performs the claimed limitations in response to the UE mapped in the rejection of claims 1-3.
As to claims 8-10 and 12-14, they cover devices which implement the claimed methods of 1-3 and 5-7 are rejected according to the mapping provided.
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, 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.
Claim(s) 4, 11, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over 3GPP TR 23.700-87 v0.2.0 published April 2022 (Part of IDS filed on 11/1/2024).
Regarding claim 4, 3GPP TR 23.700-87 teaches as situation where a response to an initial registration does not indicate IMS data channel capability (Section 6.4.1.3); however, it does not explicitly state that the Feature-Cap header is returned when IMS data channel is not supported.
In 3GPP TR 23.700-87, the base station is clearly capable of returning a Feature-Caps header in a response (Section 6.4.1.2.1).
It would have been obvious to one of ordinary skill in the art at the time of the applicant’s filing to combine the teachings of 3GPP regarding responding to a registration when an IMS channel is not supported with the teachings of 3GPP regarding including a Feature-Gap header with a response because 3GPP section 6.4.1.3 does not detail the format of the response when IMS channel is not supported the technique described in 6.4.1.2.1 could be used without any alteration of the 3GPP document. If 3GPP TR 23.700-87 can return a Feature-Cap header in one situation then of course it is capable of doing it in any situation, even if the document does not explicitly describe this.
As to claims 11 and 15 they are rejected for the same reasoning as claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454