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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/20/2024 has been fully considered by examiner and made of record.
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.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
According to MPEP 608.01(p) The contents of an application, to be complete, must include a specification containing a written description of the invention using such description and details as to enable any person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date. An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The application does not meet these requirements.
The whole specification does not provide clarity to the terms recited in the claims, and raise further issues of ambiguity. According to the description, the invention consists in taking advantage of the SoR procedure to send the additional data. However, this represents a wish only, and there are not enough details disclosed in the description to implement this wish and a skilled person would not be in a position to know how to adapt the SoR procedure.
Consider, for example, Figure 2, “which represents a preferred solution,” and its description. The specification reads: “The first exchanges of step 20 are identical to step 1 of figure 1 (allocation of a t-IMSI to the eUICC comprised in the user equipment 10 by the server 11) . More precisely, the eUICC attaches to the network 13 with an ephemeral IMSI. The client 10 and server 11 exchange data thanks to specific values of RAND, AUTN, AUTS of the Milenage authentication algorithm. These steps are described in EP3358867A1 and EP3358868A1. The server 11 is here acting as an AUSF/UDM since the protocol is working in 5G (an AUSF/UDM corresponds to a HSS of a 4G network). This corresponds to steps 1 and 2 of figure 3 that represents the procedure for steering of UE in VPLMN during registration it corresponds to figure 6. 14.2.1-1 of this Technical Specification.” Pg. 4, lines 20-34.
In step 20, authentication: t-IMSI seems to be provided. However, the description is silent with regard to the fact, how and which procedure is performed. Attach request? how it is adapted to provide t-IMSI? Meaning of AUTS=EID? First, the application should be complete in itself. But even taking EP3358868 into account, it is still not obvious, how the signaling to HSS should be adapted to be a signaling to an AUSF/UDM, which are different elements in 5G network.
The steps 1-2 of figure 6.14.2.1-1 of TS 35.501 are not at all related to providing t-IMSI. Therefore it is confusing how step 20, which allocates a t-IMSI, is meant to be representative of the figures, as claimed.
The specification further reads “at step 20 of figure 2, the server 11 encodes additional data to be sent to the eUICC. This corresponds to steps 3 to 15 of figure 3. In this figure 3, a steering list is sent from the server 11 to the eUICC in a secured packet. But, in the scope of the invention, instead of sending a steering list, the server 11 sends in this secured packet other data to the eUICC.” Pg. 5, lines 1-4 and “Steps 21 and 22 are identical to steps 2 and 3 of figure 1. The invention takes profit of the 5G attachment procedure defined in the previous mentioned Technical Specification that includes an optional steering of roaming (SoR) phase right after authentication during which the home network AUSF/UDM can send a secured packet containing a PLMN list to the device, which in turn provides it to the eUICC transparently. The invention thus consists in taking advantage of the SoR procedure to send the additional data: The server 11, acting as the AUSF/UDM, can send a secured packet containing those data instead of a PLMN list to the client of the eUICC, which can interpret and process those particular data.” Pg. 5, lines 19-27.
It is ambiguous from the description provided how the steps 3-15 can be adapted. It is ambiguous how NAS SMC (security command) of step 3 can be adapted? in step 8, SUPI is used. How the claimed UE can provide such information? In steps 9, 10, 11 SoR-MAC-IAUSF is sent as integrity protection and verified by UE in step 12. Which key can the UE use to verify it? Is SoR info sent at all? Or is it replaced by the "data"? If yes, is this data sent secured? How?
According to 37 C.F.R. 1.57, “ "Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. "Essential material" is material that is necessary to:
(1) Provide a written description of the claimed 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 set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or
(3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).”
See MPEP 608.01(p)
The description should, regarding the essential features of the invention, be self-containing, that is capable of being understood without reference to any other document. The documents incorporated by reference in this application are not U.S. Patents or U.S. Patent Application publications. The subject matter attempted to be incorporated is essential to the performance of the claimed invention and ambiguous and counterintuitive to the rest of the disclosure, creating more confusion. Therefore the incorporation by reference of additional documents (see page 1 line 17, page 4 line 27) is not appropriate here.
For these reasons, the specification fails to meet both the written description and the enablement requirements under 35 U.S.C. 112(a).
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 1-5 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.
Regarding Claims 1 and 4, The claims recite: “exchanging in signaling messages information between said secure element and a server acting as an AUSF/UDM in order to transmit to said secure element a temporary IMSI.”
This statement is ambiguous. The language attempts to define the claimed subject matter in terms of the result to be achieved, which merely amounts to a statement of the underlying problem, without providing the technical features necessary for achieving this result. Which signaling messages are meant? Which information is sent in this signaling?
Authentication Server Function (AUSF) and User Data Management (UDM) are different elements in 5G network, which communicate according to the standard via the Nausf service-based NG13 interface. Is a claimed server acting as an AUSF/UDM single element? In any case (either collocated entities or not), further details are missing, how the signalling between these entities is performed.
A temporary IMSI is transmitted, but how is it used? What is it used for? What sort of telecommunication credentials does the device already have?
The claims recite: “wherein in consist in using the procedure for steering of user equipment in VPLMN during registration as defined by 3GPP TS 33.501 V17.5.0 (2022-03) entitled "3rd Generation Partnership Project, Technical Specification Group Services and System Aspects, Security architecture and procedures for 5G system (Release 17) in order to send from said server [[(11)]] to said secure element said data.”
This statement is unintelligible.
Furthermore, this expressions also attempts to define the subject-matter in terms of the result to be achieved, which merely amounts to a statement of the underlying problem, without providing the technical features necessary for achieving this result. It is not clear how the steps of the known procedure can be adapted, see also point 2 below. In which step of the procedure for steering of user equipment in VPLMN during registration is "said data" provided? How is it compatible with the existing standard?
For these reasons the recited limitations of Claims 1 and 4 are indefinite. Claims 2-3 and 5 are rejected for the same reasons by virtue of their dependency on Claims 1 and 4, respectively, and failure to cure the deficiencies in clarity.
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. The lack of art rejection at this stage of examination should not be construed as an indication of allowability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kawasaki et al (US 2024/0188183) teaches communication unit for implementing a function related to Enhancement for the 5G Control Plane Steering of Roaming for UE in CONNECTED mode (eCPSOR_CON). In the 5GS, provided is a method and a communication unit for a procedure for a network to notify a UE of information used for control for the network to control timing at which the UE transitions from a connected mode to an idle mode for SOR. Furthermore, provided is a method for controlling the timing at which the UE transitions from the connected mode to the idle mode. (Abstract);
Kim et al (US 11,395,133) teaches certain embodiments according the present disclosure, an electronic device is provided. The electronic device may include a wireless communication circuit configured to provide wireless communication of at least one cellular network, a secure element configured to store information associated with the wireless communication, the information including a first identifier indicating the secure element and at least one second identifier indicating a profile for a wireless communication service provided by the at least one cellular network, at least one processor configured to be operatively connected with the wireless communication circuit and the secure element, and a memory configured to be operatively connected with the at least one processor and store instructions. The instructions, when executed, may cause the at least one processor to transmit the first identifier to a first external server configured to store the first identifier to be associated with a user account, via the wireless communication circuit, receive a second identifier and a profile associated with the second identifier from the second external server via the wireless communication circuit and store the second identifier and the profile in the secure element, and receive a first request, including the second identifier, associated with management of the profile, from the first external server via the wireless communication circuit. (col. 2);
De Kievit et al (US 2021/0409952) teaches In order to be able to route the encrypted identifier to the correct network and subscriber database (known as UDM) inside the second network, the mobile device prepends or appends routing data to the SUCI, such as a mobile country code (MCC), mobile network code (MNC), and a routing identifier (RoutingID) and the home network public key identifier. The MCC and MNC together allow the visited network that received the SUCI to route the SUCI to a home network and the RoutingID is used by the home network to locate the UDM instance inside the home network. Finally, the home network public key identifier is used to lookup the corresponding private key which is used to decrypt the SUCI. The last action is commonly executed by the SUCI de-concealing function or SIDF. ([0003]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET G WEBB whose telephone number is (571)270-7803. The examiner can normally be reached M-F 9:00-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Appiah can be reached at (571) 272-7904. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARGARET G WEBB/Primary Examiner, Art Unit 2641
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