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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/281,786, filed on February 21, 2019.
Information Disclosure Statement
The information disclosure statement filed September 20, 2024, fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statements (IDSs) submitted on December 23, 2025 and January 23, 2026 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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.
Claims 1-8 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, Claim 1 recites both “sending, to the communication apparatus, a second NAS message” and “sending, to the communication apparatus, a third NAS message.” Figs. 5-6 and the associated paragraphs (e.g., [0044] “Therefore, there could be two options, either steps 505 a to 506 a or steps 505 b to 506 b, to be taken when the UE resends the Registration Request message to the AMF due to T3 expiration.”) do not disclose sending an identity response and both a second and third NAS message that are sent while the timer is running. It is not clear where support for these elements is found in the original specification.
Regarding claim 2, Claim 2 recites “without reception of a message from the communication apparatus,” which is not found in the specification of the originally filed application.
Regarding claim 2, Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “identity response message” in claim 2 is used by the claim to mean “without reception of a message from the communication apparatus” while the accepted meaning of a “response” is a message that is sent responsive to another message (e.g., a request). The term is indefinite because the specification does not clearly redefine the term.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Non-patent Literature entitled, “Mechanism to limit frequency at which UE responds with SUCI in Identity Response message” (hereinafter “C1-183720”) in view of Non-patent Literature entitled, “ETSI TS 33.501” (hereinafter “33.501”).
Regarding claim 1, A method for a User Equipment (UE), the method comprising: sending, to a communication apparatus, an identity response message, wherein the identity response message includes a first subscription concealed identifier (SUCI), and wherein the first SUCI is based on a subscription permanent identifier (SUPI) (p. 1/18 “If the UE receives an Identity Request message with requested identity type = SUCI from the network and the timer is not running, the UE generates a fresh SUCI from its SUPI, responds with the fresh SUCI in an Identity Responds message and starts the timer.”); and starting a timer in a case where the identity response message is sent (p. 1/18 “starts the timer”), sending, to the communication apparatus, a second NAS message, wherein the second NAS message includes the first SUCI and is sent while the timer is running (p. 1/18 “If the UE receives subsequent Identity Request messages with requested identity type = SUCI from the network while the timer is running, the UE does not generate a fresh SUCI and responds with an Identity Response message containing the same SUCI as that sent in the previous Identity Response message.”), sending, to the communication apparatus, a third NAS message, wherein the third NAS message includes a second SUCI and is sent after the timer expires (p. 8/18, “If the REGISTRATION ACCEPT message contained a 5G-GUTI, the UE shall return a REGISTRATION COMPLETE message to the AMF to acknowledge the received 5G-GUTI, stop timer T35xx if running, and delete any stored SUCI.”; p. 8/18 “The 5G-GUTI reallocation may be part of the initial registration procedure. When the REGISTRATION REQUEST message includes the SUCI or PEI, or the AMF considers the 5G-GUTI provided by the UE is invalid, or the 5G-GUTI provided by the UE was assigned by another AMF, the AMF shall allocate a new 5G-GUTI to the UE. The AMF shall include in the REGISTRATION ACCEPT message the new assigned 5G-GUTI together with the assigned TAI list. In this case the AMF shall start timer T3550 and enter state 5GMM-COMMON-PROCEDURE-INITIATED as described in subclause 5.1.3.2.3.3.” See also, Figure 5.1.3.2.1.1.1: 5GMM main states in the UE, TS 24.501 v.15.0.0), wherein the second SUCI is different from the first SUCI (p. 8/18, When the REGISTRATION REQUEST message includes the SUCI; p. 2/18, Upon receipt of a 5GMM message containing a new 5G-GUTI the UE considers the new 5G-GUTI as valid, and the old 5G-GUTI as invalid, stops timer T35xx if running, and deletes any stored SUCI), wherein the second NAS message is a first registration request message or a first deregistration request message (p. 8/18 “When the REGISTRATION REQUEST message includes the SUCI”), and wherein the third NAS message is a second registration request message or a second deregistration request message (p. 8/18 “When the REGISTRATION REQUEST message includes the SUCI”).
C1-183720 does not explicitly teach: wherein the second SUCI is generated based on the SUPI.
However, in the same field of endeavor, 33.501 teaches: wherein the second SUCI is generated based on the SUPI (p. 16/150 “subscription concealed identifier: A one-time use subscription identifier, called The SUbscription Concealed Identifier (SUCI), which contains the concealed subscription identifier, e.g. the MSIN part of SUPI, and additional non concealed information needed for home network routing and protection scheme usage.”).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify C1-183720 to include the feature of a SUCI based on a SUPI and a combination of C1-183720 with 33.501 renders the claim prima facie obvious within the described scope of the prior art and any indicated differences within the level of one of ordinary skill in the art (e.g., telecommunications engineer) according to a combination of known prior art elements with known methods to yield predictable results. MPEP 2143(I)(A) (e.g., a SUCI based on a SUPI).
Regarding claim 3, C1-183720 teaches: wherein the communication apparatus is an Access and mobility Management Function (AMF) (Figure 5.4.1.3.7.1).
Regarding claim 4, C1-183720 does not teach: wherein the first SUCI is generated by concealing the SUPI, and wherein the second SUCI is generated by concealing the SUPI.
However, in the same field of endeavor, 33.501 teaches: wherein the first SUCI is generated by concealing the SUPI, and wherein the second SUCI is generated by concealing the SUPI (p. 16/150 “subscription concealed identifier: A one-time use subscription identifier, called The SUbscription Concealed Identifier (SUCI), which contains the concealed subscription identifier, e.g. the MSIN part of SUPI, and additional non concealed information needed for home network routing and protection scheme usage.”).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify C1-183720 to include the feature of a SUCI being generated by concealing a SUPI and a combination of C1-183720 with 33.501 renders the claim prima facie obvious within the described scope of the prior art and any indicated differences within the level of one of ordinary skill in the art (e.g., telecommunications engineer) according to a combination of known prior art elements with known methods to yield predictable results. MPEP 2143(I)(A) (e.g., a SUCI being generated by concealing a SUPI).
Regarding claim 6, C1-183720 teaches: wherein the identity response message is sent in a case of receiving an identity request message. (p. 1/18 It is proposed to introduce a timer to limit the frequency with which the UE responds with a fresh SUCI to an Identity Request:)
Regarding claim 8, C1-183720 teaches: A User Equipment (UE) comprising: at least one memory; and at least one hardware processor coupled to the at least one memory, wherein the at least one hardware processor is configured to (p. 1/18 UE): send, to a communication apparatus, an identity response message, wherein the identity response message includes a first subscription concealed identifier (SUCI), and wherein the first SUCI is based on a subscription permanent identifier (SUPI) (p. 1/18 “If the UE receives an Identity Request message with requested identity type = SUCI from the network and the timer is not running, the UE generates a fresh SUCI from its SUPI, responds with the fresh SUCI in an Identity Responds message and starts the timer.”); and start a timer in a case where the identity response message is sent (p. 1/18 “starts the timer”), send, to the communication apparatus, a second NAS message, wherein the second NAS message includes the first SUCI and is sent while the timer is running (p. 1/18 “If the UE receives subsequent Identity Request messages with requested identity type = SUCI from the network while the timer is running, the UE does not generate a fresh SUCI and responds with an Identity Response message containing the same SUCI as that sent in the previous Identity Response message.”), send, to the communication apparatus, a third NAS message, wherein the third NAS message includes a second SUCI and is sent after the timer expires (p. 8/18, “If the REGISTRATION ACCEPT message contained a 5G-GUTI, the UE shall return a REGISTRATION COMPLETE message to the AMF to acknowledge the received 5G-GUTI, stop timer T35xx if running, and delete any stored SUCI.”; p. 8/18 “The 5G-GUTI reallocation may be part of the initial registration procedure. When the REGISTRATION REQUEST message includes the SUCI or PEI, or the AMF considers the 5G-GUTI provided by the UE is invalid, or the 5G-GUTI provided by the UE was assigned by another AMF, the AMF shall allocate a new 5G-GUTI to the UE. The AMF shall include in the REGISTRATION ACCEPT message the new assigned 5G-GUTI together with the assigned TAI list. In this case the AMF shall start timer T3550 and enter state 5GMM-COMMON-PROCEDURE-INITIATED as described in subclause 5.1.3.2.3.3.” See also, Figure 5.1.3.2.1.1.1: 5GMM main states in the UE, TS 24.501 v.15.0.0), wherein the second SUCI is different from the first SUCI (p. 8/18, When the REGISTRATION REQUEST message includes the SUCI; p. 2/18, Upon receipt of a 5GMM message containing a new 5G-GUTI the UE considers the new 5G-GUTI as valid, and the old 5G-GUTI as invalid, stops timer T35xx if running, and deletes any stored SUCI), wherein the second NAS message is a first registration request message or a first deregistration request message (p. 8/18 “When the REGISTRATION REQUEST message includes the SUCI”), and wherein the third NAS message is a second registration request message or a second deregistration request message (p. 8/18 “When the REGISTRATION REQUEST message includes the SUCI”).
C1-183720 does not explicitly teach: wherein the second SUCI is generated based on the SUPI.
However, in the same field of endeavor, 33.501 teaches: wherein the second SUCI is generated based on the SUPI (p. 16/150 “subscription concealed identifier: A one-time use subscription identifier, called The SUbscription Concealed Identifier (SUCI), which contains the concealed subscription identifier, e.g. the MSIN part of SUPI, and additional non concealed information needed for home network routing and protection scheme usage.”).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify C1-183720 to include the feature of a SUCI based on a SUPI and a combination of C1-183720 with 33.501 renders the claim prima facie obvious within the described scope of the prior art and any indicated differences within the level of one of ordinary skill in the art (e.g., telecommunications engineer) according to a combination of known prior art elements with known methods to yield predictable results. MPEP 2143(I)(A) (e.g., a SUCI based on a SUPI).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over C1-183720 and 33.501 and further in view of U.S. Publication No. 2018/0376446 (hereinafter “Youn”)
Regarding claim 5, the combination of C1-183720 and 33.501 does not explicitly teach: wherein the first deregistration request message or the second deregistration request message is sent in a case where the UE is switched off.
However, in the same field of endeavor, Youn teaches: wherein the first deregistration request message or the second deregistration request message is sent in a case where the UE is switched off ([0558] 1. The UE may transmit to the AMF a NAS message deregistration request message (abbreviated as ‘deregistration request’) (including 5G-GUTI, a deregistration type (e.g., switch-off), and an access type). In the present specification, the deregistration type indicates a reason why the UE requests the deregistration and may correspond to the ‘switch-off indication’ or ‘detach reason’ described above in Method #1. In addition, the access type may indicate the target access type for which the UE requests the deregistration and correspond to the above-described ‘access information’ in Method #1 above. The access type indicates whether the deregistration is applied to either ‘3GPP access or non-3GPP access’ or ‘both accesses’ (3GPP access and non-3GPP access). The AMF may invoke the deregistration procedure over/for the target access indicated by the UE.).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of C1-183720 and 33.501 to include the feature of a switched off type deregistration message and a combination of C1-183720 and 33.501 with Youn renders the claim prima facie obvious within the described scope of the prior art and any indicated differences within the level of one of ordinary skill in the art (e.g., telecommunications engineer) according to a combination of known prior art elements with known methods to yield predictable results. MPEP 2143(I)(A) (e.g., a switched off type deregistration message).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over C1-183720 and 33.501 and further in view of U.S. Publication No. 2018/0227872 (hereinafter “Li”)
Regarding claim 7, C1-183720 teaches: wherein the timer is a first timer, starting a second timer (T3510) in a case where the third registration request message is sent; and starting a third timer in a case where the second timer expires (T3511), wherein the first registration request message or the second registration request message is sent after the third timer expires (Table 10.2.1 shown below).
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The combination of C1-183720 and 33.501 does not explicitly teach: sending a third registration request message before sending the identity response message.
However, in the same field of endeavor, Li teaches: sending a third registration request message before sending the identity response message (Registration Request 120).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of C1-183720 and 33.501 to include the feature of sending a third registration request message before sending the identity response message and a combination of C1-183720 and 33.501 with Youn renders the claim prima facie obvious within the described scope of the prior art and any indicated differences within the level of one of ordinary skill in the art (e.g., telecommunications engineer) according to a combination of known prior art elements with known methods to yield predictable results. MPEP 2143(I)(A) (e.g., sending a third registration request message before sending the identity response message).
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a)-(b), set forth in this Office action and 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 is considered pertinent to applicant's disclosure.
U.S. Publication No. 2019/0254094 (Babu) Apparatus, System, And Method For Performing GUTI Reallocation
Non-patent Literature entitled, “3GPP TS 24.501 version 15.0.0”
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/JAB/ Examiner, Art Unit 2643
/JINSONG HU/ Supervisory Patent Examiner, Art Unit 2643
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