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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the performing an access control check for the access category to determine whether accessing the network for the PDU session establishment is allowed must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms BLUETOOTH and ZIGBEE, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. See MPEP § 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification—the greatest
clarity is obtained when the specification serves as a glossary for the
claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. When the specification sets a clear path to the claim language, the scope of the claims is more easily determined and the public notice function of the claims is best served. During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
The term “attempting” means make an effort to achieve or complete and does not mean actually achieving or completing anything.
A statement of intended use, as the name suggests, describes a manner in which a claimed invention may be used, but does not limit the claim and need not be practiced. If the applicant wishes to limit the claims to an intended use, the claims should positively recite those features and make clear that they are limiting. Claims that use this sort of language do not clearly indicate which meaning is intended. C.R. Bard, Inc. v. M3 Systems, Inc. 157 F.3d 1340, 1348-49 (Fed. Cir. 1998), Ex parte Kearney, 2012 Pat. App. LEXIS 2675 at 1 (BPAI 2012), Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
The term “need” means expressing necessity or obligation, does not mean any accessing anything.
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.
Claim 2, 11, 20 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.
The claim language “IMS signaling or voice calls” is ambiguous. It is unclear whether IMS signaling or voice calls is established for each PDFU session since the parent claim states as an alternative only. The use of “or” does not specify whether these alternatives are mutually exclusive or may coexist. As a result, a person of ordinary skill in the art would not be able to determine, with reasonable certainty, the scope of the claimed invention, as required by 35 U.S.C. § 112(b) and as interpreted by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This ambiguity is further reflected in dependent claims 2, 11, 20, which rely on the unclear antecedent basis, compounding the indefiniteness. Applicant is advised to amend the claims to clarify the relationship between the alternatives, specify whether both types of addresses can be present, and provide clear antecedent basis to resolve the ambiguity.
Claim Rejections - 35 USC § 101
Claims 1-5, 7-14, 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) determining a “need” to access a network, determining an access category for accessing the network and “attempting” to access the network using the access category. This judicial exception is not integrated into a practical application because . The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because this claim is nothing but abstract idea. A limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48. The recitation of such generic component is insufficient to transform the nature of the claim into a patent-eligible application. These are mental process steps which can be performed in the human mind, or by a human using a pen and paper, or general purpose computer and the recitation of performing by execution of a computer program does not transform the recited abstract idea into a patentable invention. See Alice Corp. Pty, Ltd.v. CLS Bank lnt 'l, 134 S.Ct. 2347, 2355 (2014), Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372(Fed. Cir. 2011), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1304 (2012), Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (2015), As the Court stated in Alice, "if a patent's recitation of a computer amounts to a mere instruction to 'implemen[t]' an abstract idea 'on a computer,' that addition cannot impart patent eligibility." 134 S. Ct. 2358. Also in Vehicle Intelligence v. Mercedes-Benz (Fed. Cir. 2015), the court also notes that being “tied to particular machines” is not “sufficient to confer eligibility.” Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 79 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015). The dependent claims are nothing more than description of data or information, note paragraphs 11 and 12 above.
Regarding claims 19 and 20, The subject matter of the claim MUST be directed to one of the four subject matter categories. If it is not, the claim is not eligible for patent protection and should be rejected under § 101, for at least this reason.
A summary of the four categories of invention, as they have been defined by the courts, are:
i. Process – an act, or a series of acts or steps that are tied to a particular machine or apparatus or transform a particular article into a different state or thing.
ii. Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.
iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.
iv. Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example.
Non-limiting examples of claims that are not directed to one of the statutory categories:
i. Transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se).
ii. A naturally occurring organism
iii. A human per se.
iv. A legal contractual agreement between two parties
v. A game defined as a set of rules.
vi. A computer program per se.
vii. A company.
A claim that covers BOTH statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step and should be rejected under § 101, for at least this reason. For example, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore must be rejected under § 101 as being directed to non-statutory subject matter.
Also claiming something “physical” or “tangible” does not make statutory since ineligible signals were physical and tangible (See In re Nuijten, 500 F.3d 1346,1356-57 (Fed. Cir. 2007).
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz 893 F.2d 319 (Fed. Cir.1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter See in re Nuijtn.. 500 F.3d 1346, 1356.57 (Fed. Cir 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.c. , 101. Aug. 24. 2009. p. 2.
The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the Examiner must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim draw to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory” to the claim. Cf. Animal — Patentability, 1077 Off Ga. Pat. Office 24 (April 21, 1987) suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relics on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See. cg.. Gentry Gaqllery Inc. v Berkline Corp.. 134 F.3d 1473 (Fed. Cir. 1998).
Claim Rejections - 35 USC § 102
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 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) 1-5, 7-14, 16-20 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by United States Patent Application Publication 2018/0199273 (Chun).
Chun discloses a method of wireless communication for a User Equipment (UE) (Abstract, figures 6, 7, 10, ¶12,13), comprising determining a need to access a network to establish a Protocol Data Unit (PDU) session for Internet Protocol (IP) Multimedia Subsystem (IMS) signaling or for a voice call over a packet-switched (PS) domain (¶46-49, 88, 96, etc.). Determining an access category for accessing the network, wherein the access category is different from an access category for mobile-originated data (¶267, 269-271, 302, etc.) and attempting to access the network using the access category (¶12, 13, 177, 266-269, etc.)
Regarding claims 2, 11, 20, the access category is one of an access categories for mobile-originated Multimedia Telephony (MMTel) voice call (¶177-183, 185-187, 266-269) or a particular access category specific for PDU session establishment for IMS signaling or voice calls (¶169). This claim is optional and non-limiting. Note paragraphs 7, 11, and 12 above.
Regarding claims 3, 12, this claim is optional and non-limiting. Note paragraphs 7, 11, and 12 above.
Regarding claims 4,13, the access category for mobile-originated MMTel voice call is Access Category 4 in the 5GS, note ¶273, 282, 291-292, etc. This claim is optional and non-limiting. Note paragraphs 7, 11, and 12 above
Regarding claims 5 and 14, the access category for mobile-originated data is Access Category 7 in the 5GS, note ¶129. This claim is optional and non-limiting. Note paragraphs 7, 11, and 12 above.
Regarding claims 7, 16 note ¶129.
Regarding claims 8, 17, note ¶113, 135, 162, etc.
Regarding claim 9, 18, note Abstract, ¶12-15, 18, 294, etc. Note paragraph 10.
Regarding claim 10, this is an inherent apparatus version of the method claims since the apparatus has the same functions of the method and is rejected for the same reasons as stated above. Also note figure 11, #120, 130.
Regarding claim 19, this is an inherent product version of the method claims since the product has the same functions of the method and is rejected for the same reasons as stated above. Also note ¶334.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 6 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645
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