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
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed provisional application, US Provisional Application No. 63/515,049 filed on 07/21/2023, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Such claims and claim limitations are (see, emphasis):
“wherein the CAG data includes a CAG only bit that indicates if the UE is only allowed to access the network through CAG cell access, and wherein the CAG data includes a field to indicate to the SIM whether to ignore the CAG only bit based at least in part on whether the UE receives a CAG only indication from the network” recited in claims 52, 64 and 68.
Accordingly, claims 52, 64 and 68 are not entitled to the benefit of the prior-filed application, US Provisional Application No. 63/515,049.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 09/29/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/18/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments
Applicant’s Amendments and Arguments filed 09/29/2026 have been considered for examination.
The indicated allowability of claims 52-73 is withdrawn in view of the newly discovered reference, 3GPP TS 31.111 v17.5.0 (200-09), in combination with previously cited references of record to establish the 103 rejections set forth below. The 103 rejections based on the newly discovered reference follows.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 52-56, 61 and 64-72 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al (US Publication No. 2021/0377850 A1) in view of Huang-Fu et al (US Publication No. 2020/0351755 A1) and further in view of 3GPP TS 31.111 v17.5.0 (2022-09) (hereinafter, “3GPP1”).
Regarding claim 52, Shih discloses, a method, performed by a user equipment (UE) that is in communication with a network [FIGS. 1-2; their related descriptions; ¶0073, a method performed by UE that is in communication with a network], comprising:
receiving a closed access group (CAG) information list, comprising one or more CAG identifiers (IDs) and a first association between each of the one or more CAG IDs and one or more non-public network public land mobile network (NPN PLMN) IDs [¶0073, receiving broadcasted SIB 1 from a CAG cell, "The CAG cell may broadcast (e.g., via SIB1, SIB10, or other system information (SI)) an indication that is associated with a PLMN ID (namely the PLMN indication) in a PNI-NPN information element (IE} and/or associated with a list of CAG ID(s)"];
receiving a network name list comprising one or more network names and a second association between each of the one or more network names and the one or more CAG IDs in the CAG information list [¶0129, receiving human readable network name {HRNN) (i.e., network name list) list via SIB10, where the entry of the HRNN list may correspond to the NPN identity (an SNPN identity, a PNI-NPN identity, a combination of a PLMN identity and a CAG identity, or a combination of a PLMN identity and CAG identities that associate with the PLMN identity) broadcast in SIB1]; and
. . . CAG data based on the CAG information list [¶0073, information of a list
of CAG IDS and association with the PLMN IDs] and the one or more network names [¶0129, information of HRNN list of each CAG cell; further see, ¶0096, storing SIB10; also storing of SIB 1 is implicit].
Shih does not explicitly disclose (see, italicized and bold limitations), sending, to a subscriber identity module (SIM) of the UE, CAG data, wherein the CAG data includes a CAG only bit that indicates if the UE is only allowed to access the network through CAG cell access, and wherein the CAG data includes a field to indicate to the SIM whether to ignore the CAG only bit based at least in part on whether the UE receives a CAG only indication from the network.
However, Huang-Fu discloses, the CAG data includes a CAG only bit that indicates if the UE is only allowed to access the network through CAG cell access [¶0031, the CAG only bit 306 indicates whether a UE is only allowed to access SGS via CAG cells (CAG only)], and wherein the CAG data includes . . . indicate whether to ignore the CAG only bit [¶0042, at step S802, the UE 124 is provisioned a CAG information list, a CAG only (“indication that the UE is only allowed to access 5GS via CAG cells”) bit of which is “1,” which indicates that the UE 124 is only allowed to access CAG cells of which CAG identifiers are contained in the CAG information list. However, the CAG information list may contain no CAG identifier (i.e., indicate) originally, or become empty . . . In such a scenario, the method 800 can set the CAG only bit to a first value (e.g., “0”), at step 804. Therefore, the UE 124 can select any cell within a selected PLMN, without restricted by “indication that the UE is only allowed to access 5GS via CAG cells; note that the CAG information list having no CAG identifier or having empty CAG identifier indicates that the CAG only bit is turned into “0”, so that the originally set value “1” of CAG only bit can be ignored] based at least in part on whether the UE receives a CAG only indication from the network [see the citation of ¶0042 as above, note that the CAG only bit of “1” is provisioned by the network].
It is noted that the above-mentioned feature is a known technique in the field Applicant's endeavor, e.g., telecommunication art.
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the system of Shih with "the above-mentioned known feature(s)" taught by Huang-Fu to reach the claimed invention as set forth above. Since one having ordinary skill in the art could have recognized that applying the known technique taught by Huang-Fu into the system of Shih would have yield predictable results and/or resulted in the improved system, such as e.g., improving flexibility and compatibility with different network configurations, such a modification (or application) would have involved the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)).
Further, Shih in view of Huang-Fu does not explicitly disclose (see, italicized and bold limitations), sending, to a subscriber identity module (SIM) of the UE, CAG data, and wherein the CAG data includes a field to indicate whether to ignore the CAG only bit.
However, the feature is well known/established in the telecommunication art as recited in 3GPP standard, i.e., 3GPP1.
In particular, 3GPP1 discloses, sending, to a subscriber identity module (SIM) of the UE, CAG data [see section 7.5.26.1, the ME shall inform the UICC that it has occurred, using ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection) as defined below; further see section 7.5.26.2, Structure of ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection), Direction : ME to UICC/SIM], and wherein the CAG data includes a field to indicate whether to ignore . . . bit [see section 8.147, CAG cell selection status, this byte may contain additional information. If additional information is present, bit b1 shall be set to 1. If b1 is set to 0, this byte shall be ignored].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide well-established standard of providing the above-mentioned well-known feature, as taught by 3GPP1 in the system of Shih in view of Huang-Fu, so that it would provide interoperability and compatibility between telecommunication equipment vendors and service providers, thereby providing users with easier and faster seamless transition regardless where the users are located in the country/world.
Regarding claim 53, Shih in view of Huang-Fu and 3GPP1 discloses, the method of claim 52 as set forth above.
Shih in view of Huang-Fu does not explicitly disclose (see, italicized limitations), but 3GPP1 discloses, wherein sending the CAG data to the SIM of the UE is performed in response to a change to the CAG information list [see section 7.5.26.1, when the ME detects a change in its current CAG cell selection status or in its CAG information list or the corresponding human-readable network name per CAG ID (if available in the broadcasted information to the ME), the ME shall inform the UICC that it has occurred, using ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection)].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above-mentioned feature(s) as taught by 3GPP1 in the system of Shih in view of Huang-Fu for similar rationales set forth above in claim 52.
Regarding claim 54, Shih in view of Huang-Fu and 3GPP1 discloses, the method of claim 52 as set forth above.
Shih in view of Huang-Fu does not explicitly disclose (see, italicized limitations), but 3GPP1 discloses, wherein the SIM stores a SIM CAG list based on the CAG data, and wherein the UE uses the SIM CAG list for cell selection [see section 7.5.26.1, when the ME detects a change in its current CAG cell selection status or in its CAG information list or the corresponding human-readable network name per CAG ID (if available in the broadcasted information to the ME), the ME shall inform the UICC that it has occurred, using ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection)].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above-mentioned feature(s) as taught by 3GPP1 in the system of Shih in view of Huang-Fu for similar rationales set forth above in claim 52.
Regarding claim 55, Shih in view of Huang-Fu and 3GPP1 discloses, the method of claim 52 as set forth above.
Shih in view of Huang-Fu does not explicitly disclose (see, italicized limitations), but 3GPP1 discloses, wherein sending the CAG data to the SIM of the UE is performed through a terminal response [see section 6.4.15, the ME shall return the requested local information within a Terminal Response; further see section 6.8.7] receiving a provide local information (PLI) CAG information list request signaled from the SIM [see section 6.4.15, this command requests the ME to send current local information to the UICC . . . the CAG information list and the corresponding human-readable network name per CAG ID . . . of detected CAG cells . . . When the CAG information list and the corresponding human-readable network name per CAG ID (if available in the broadcasted information to the ME) is requested, the ME shall return the CAG information list and the corresponding human-readable network name per CAG ID] through an envelope command in response to an event CAG cell selection [see section 7.5.26.1, the ME shall inform the UICC that it has occurred, using ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection) as defined below; further see section 7.5.26.2, Structure of ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection)], when the UE is registered to a cell of the network [see section 7.5.26.2, if the UE is camping on a CAG cell, this data object shall be present; further see section 8.147, “01” = camped on a CAG cell].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above-mentioned feature(s) as taught by 3GPP1 in the system of Shih in view of Huang-Fu for similar rationales set forth above in claim 52.
Regarding claim 56, Shih in view of Huang-Fu and 3GPP1 discloses, the method of claim 52 as set forth above.
Shih in view of Huang-Fu does not explicitly disclose (see, italicized limitations), but 3GPP1 discloses, wherein sending the CAG data to the SIM of the UE is performed through an envelope command in response to an event CAG cell selection [see section 7.5.26.1, the ME shall inform the UICC that it has occurred, using ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection) as defined below; further see section 7.5.26.2, Structure of ENVELOPE (EVENT DOWNLOAD – CAG Cell Selection)], when the UE is not registered to a cell of the network [see section 8.147, “01” = camped on a CAG cell].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above-mentioned feature(s) as taught by 3GPP1 in the system of Shih in view of Huang-Fu for similar rationales set forth above in claim 52.
Regarding claim 61, Shih in view of Huang-Fu and 3GPP1 discloses, the method of claim 52 as set forth above. Shih does not explicitly disclose (see, italicized limitations), but Huang-Fu discloses, wherein the UE sets the CAG only bit according to the CAG only indication [¶0031, the CAG only bit 306 indicates whether a UE is only allowed to access SGS via CAG cells (CAG only)] received from the network in a registration accept message [¶0033, the registration accept message sent by the AMF 130 to the UE 124 in the registration procedure 500 can also include a CAG information list].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above-mentioned feature(s) as taught by Huang-Fu in the system of Shih for similar rationales set forth above in claim 52.
Regarding claim 64, Shih discloses, a baseband processor [¶0008, processor] of a user equipment (UE) device that is in communication with a network [FIGS. 1-2; their related descriptions; ¶0073, UE that is in communication with a network; note that every UE has at least one baseband processor], configured to cause the UE to perform operations [FIGS. 1-2; their related descriptions; ¶0073, UE that is in communication with a network; note that every UE has at least one baseband processor].
Since claim 64 recites similar features to claim 52 without additional features, claim 64 is rejected at least based on a similar rationale applied to claim 52.
Regarding claims 65 and 69, claims 65 and 69 are rejected at least based on a similar rationale applied to claim 53.
Regarding claims 66 and 70, claims 66 and 70 are rejected at least based on a similar rationale applied to claim 54.
Regarding claims 67 and 71, claims 67 and 71 are rejected at least based on a similar rationale applied to claim 55.
Regarding claim 68, Shih discloses, a non-transitory computer-readable storage medium storing instructions that when executed by a processing device [¶0008, memory coupled to the processor and configured to store the computer executable program, wherein the computer-executable program instructs the processor to perform the above-described method of performing actions] of a user equipment (UE) that is in communication with a network, causes the UE to perform operations [FIGS. 1-2; their related descriptions; ¶0073, UE that is in communication with a network; note that every UE has at least one memory].
Since claim 68 recites similar features to claim 52 without additional features, claim 68 is rejected at least based on a similar rationale applied to claim 52.
Regarding claim 72, claim 72 is rejected at least based on a similar rationale applied to claim 55.
Allowable Subject Matter
Claims 57-60 and 73 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon are considered pertinent to applicant's disclosure.
Lin et al (US Publication No. 2023/0362801 A1) [¶0081].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JONG KIM whose telephone number is (571)270-3216. The examiner can normally be reached on 7:30am-5:30pm (M-T).
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/SUN JONG KIM/Primary Examiner, Art Unit 2469
