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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/21/24 and 1/21/26 is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,156,088. Although the claims at issue are not identical, they are not patentably distinct from each other because of the mapping below:
As to claim 35, Patent ‘088 teaches a network entity, comprising: circuitry comprising any of a processor, memory, and transceiver, the circuitry configured to
receive, from a wireless transmit/receive unit (WTRU), a first message indicating a requested service continuity by the WTRU
establish a first connection associated with the requested service continuity
determine, based on the requested service continuity, that a second connection associated with the requested service continuity should be established in addition to the established first session and
send a second message, to the WTRU, to trigger establishment of the second session in addition to the established first session
wherein the first connection is not released until after establishment of the second connection is complete (‘088 Claim 1)
As to claim 36, Patent ‘088 teaches wherein: the first connection is associated with a first internet protocol (IP) address and the second connection is associated with a second internet protocol (IP) address (‘088 Claim 3)
As to claim 37, Patent ‘088 teaches wherein: the first connection is associated with a first anchor point; and the second connection is associated with a second anchor point (‘088 Claim 4)
As to claim 38, Patent ‘088 teaches wherein the first anchor point corresponds to a first gateway and the second anchor point corresponds to a second, different gateway (‘088 Claim 5)
As to claim 39, Patent ‘088 teaches wherein the circuitry is configured to send, to the WTRU, information indicating one or more policies associated with the application of the WTRU, and wherein the requested continuity type is based on the one or more indicated policies (‘088 Claim 6)
As to claim 40, Patent ‘088 teaches wherein the second message is a non-access stratum message (‘088 Claim 7)
Claims 47 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,751,116. Although the claims at issue are not identical, they are not patentably distinct from each other because of the mapping below.
As to claim 47, Patent ‘116 teaches a wireless transmit/receive unit (WTRU), comprising: circuitry, including any of a processor and transceiver, configured to operate using a first connection associated with a first gateway
transmit, to a network entity, an indication with respect to service continuity
receive, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiate the establishment of the second connection associated with the second gateway); and
move existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after the existing traffic is moved to the second connection associated with the second gateway (’116 Claim 10)
As to claim 50, Patent ‘840 teaches A method, implemented by a wireless transmit/receive unit (WTRU), the method comprising
operating using a first connection associated with a first gateway
transmitting, to a network entity, an indication with respect to service continuity
receiving, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiating the establishment of the second connection associated with the second gateway and
moving existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after moving the existing traffic to the second connection associated with the second gateway (‘116 Claim 1)
Claims 50 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,405,840 Although the claims at issue are not identical, they are not patentably distinct from each other because of the mapping below:
As to claim 50, Patent ‘840 teaches A method, implemented by a wireless transmit/receive unit (WTRU), the method comprising
operating using a first connection associated with a first gateway
transmitting, to a network entity, an indication with respect to service continuity
receiving, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiating the establishment of the second connection associated with the second gateway and
moving existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after moving the existing traffic to the second connection associated with the second gateway (‘840 Claim 1)
As to claim 52, Patent ‘840 teaches the indication with respect to service continuity is included in an information element (IE) (‘840 Claim 7)
Claims 47 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,645,625. Although the claims at issue are not identical, they are not patentably distinct from each other because of the mapping below.
As to claim 47, Patent ‘625 teaches a wireless transmit/receive unit (WTRU), comprising: circuitry, including any of a processor and transceiver, configured to operate using a first connection associated with a first gateway
transmit, to a network entity, an indication with respect to service continuity
receive, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiate the establishment of the second connection associated with the second gateway); and
move existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after the existing traffic is moved to the second connection associated with the second gateway (’625 Claim 10)
As to claim 50, Patent ‘625 teaches A method, implemented by a wireless transmit/receive unit (WTRU), the method comprising
operating using a first connection associated with a first gateway
transmitting, to a network entity, an indication with respect to service continuity
receiving, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiating the establishment of the second connection associated with the second gateway and
moving existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after moving the existing traffic to the second connection associated with the second gateway (‘625 Claim 1)
Claims 47 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,104,591. Although the claims at issue are not identical, they are not patentably distinct from each other because of the mapping below.
As to claim 47, Patent ‘591 teaches a wireless transmit/receive unit (WTRU), comprising: circuitry, including any of a processor and transceiver, configured to operate using a first connection associated with a first gateway
transmit, to a network entity, an indication with respect to service continuity
receive, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiate the establishment of the second connection associated with the second gateway); and
move existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after the existing traffic is moved to the second connection associated with the second gateway (‘591 Claim 10)
As to claim 50, Patent ‘591 teaches A method, implemented by a wireless transmit/receive unit (WTRU), the method comprising
operating using a first connection associated with a first gateway
transmitting, to a network entity, an indication with respect to service continuity
receiving, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway
initiating the establishment of the second connection associated with the second gateway and
moving existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway
wherein the first connection is deactivated after moving the existing traffic to the second connection associated with the second gateway (‘591 Claim 1)
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 39 is 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.
Claim 39 recites the limitation "the application" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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) 35-39, 47, 48, 50, 51, 53 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawashima et al (Pub No: 2005/0227692).
As to claim 35, Kawashima teaches a network entity, comprising: circuitry comprising any of a processor, memory, and transceiver, the circuitry configured to (Kawashima, [0068], a base station Node-B, which has a processor, memory and transceiver)
receive, from a wireless transmit/receive unit (WTRU), a first message indicating a requested service continuity by the WTRU (Kawashima, [0271]-[0278], Fig 20, receive from a terminal a request ASP automatic selection service connection setup (which indicates service continuity via CDMA) ;
establish a first connection associated with the requested service continuity (Kawashima, [0271]-[0278], Fig 20, establish the WLAN connection setup to continue communication service);
determine, based on the requested service continuity, that a second connection associated with the requested service continuity should be established in addition to the established first session (Kawashima, [0271]-[0278], Fig 20, determine that CDMA should be established due to deteriorating WLAN); and
send a second message, to the WTRU, to trigger establishment of the second session in addition to the established first session(Kawashima, [0271]-[0278], Fig 20, send a CDMA connection setup message);
wherein the first connection is not released until after establishment of the second connection is complete (Kawashima, [0271]-[0278], Fig 20, after the CDMA connection is completed, the WLAN connection is released).
As to claim 36, Kawashima teaches wherein: the first connection is associated with a first internet protocol (IP) address (Kawashima, Fig 20, the first WLAN connection is assigned an IP address); and the second connection is associated with a second internet protocol (IP) address (Kawashima, Fig 20, the CDMA connection is assigned an IP address);.
As to claim 37, Kawashima teaches wherein: the first connection is associated with a first anchor point; and the second connection is associated with a second anchor point (Kawashima, Fig 2, the connection (1st) is associated with a AP, and the second connection with a RNC).
As to claim 38, Kawashima teaches wherein the first anchor point corresponds to a first gateway and the second anchor point corresponds to a second, different gateway (Kawashima, Fig 2, corresponding to an a gateway that is a router and other connection a RNC/MSC).
As to claim 39, Kawashima teaches wherein the circuitry is configured to send, to the WTRU, information indicating one or more policies associated with the application of the WTRU, and wherein the requested continuity type is based on the one or more indicated policies (Kawashima, [0230]-[0234], the WTRU is sent by the ASP indicating the service registration (policies/types) available).
As to claim 47, Kawashima teaches a wireless transmit/receive unit (WTRU), comprising: circuitry, including any of a processor and transceiver, configured to operate using a first connection associated with a first gateway (Kawashima, [0068] Fig 20, a terminal using a first CDMA connection associated with an RNC);
transmit, to a network entity, an indication with respect to service continuity (Kawashima, [0271]-[0278], Fig 20, transmit a request indication to establish ASP automatic service continuity) ;
receive, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway (Kawashima, [0271]-[0278], Fig 20, receive a response (for the CDMA connection setup) Fig 2 CDMA has a different gateway) ;
initiate the establishment of the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, initiate/setup the CDMA connection with the CDMA network (gateway); and
move existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, the communication traffic changes from WLAN network to CDMA network),
wherein the first connection is deactivated after the existing traffic is moved to the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, after the CDMA connection is completed, the WLAN connection is released).
As to claim 48, Kawashima teaches wherein the first connection and the second connection are established using a cellular-based access technology (Kawashima, [0134][0135] the connections are between a CDMA and GSM or CDMA and PHS mobile/cellular based networks in one embodiment).
As to claim 50, Kawashima teaches A method, implemented by a wireless transmit/receive unit (WTRU), the method comprising (Kawashima, [0271]-[0278], Fig 20, method by a terminal):
operating using a first connection associated with a first gateway (Kawashima, [0068] Fig 20, a terminal using a first CDMA connection associated with an RNC;
transmitting, to a network entity, an indication with respect to service continuity (Kawashima, [0271]-[0278], Fig 20, transmit a request indication to establish ASP automatic service continuity);
receiving, from the network entity in response to the indication with respect to service continuity, a message triggering establishment of a second connection associated with a second gateway (Kawashima, [0271]-[0278], Fig 20, receive a response (for the CDMA connection setup) Fig 2 CDMA has a different gateway);
initiating the establishment of the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, initiate/setup the CDMA connection with the CDMA network (gateway); and
moving existing traffic from the first connection associated with the first gateway to the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, the communication traffic changes from WLAN network to CDMA network),
wherein the first connection is deactivated after moving the existing traffic to the second connection associated with the second gateway (Kawashima, [0271]-[0278], Fig 20, after the CDMA connection is completed, the WLAN connection is released).
As to claim 51, Kawashima teaches wherein the first connection and the second connection are established using a cellular-based access technology (Kawashima, [0134][0135] the connections are between a CDMA and GSM or CDMA and PHS mobile/cellular based networks in one embodiment).
As to claim 53, Kawashima teaches wherein the requested service continuity is associated with an application of the WTRU (Kawashima, [0230]-[0234], the WTRU is sent by the ASP indicating the service registration (policies/types/application) available).
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.
Claims 40, 49, 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima as applied to claims above, and further in view of Chin et al (Pub No: 2016/0183156).
As to claim 40, Kawashima teaches the second message.
Kawashima does not explicitly teach wherein the second message is a non-access stratum message.
However, Chin teaches the second message is a non-access stratum message (Chin, [0061], messages exchanged for connection procedures can be NAS protocol messages).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing data of the claimed invention to provide “NAS messages” as taught by Chin in the system of Kawashima, so that it would manage IP access for connections from mobility of user equipment (Chin, [0002])
As to claim 49, Kawashima teaches the indication with respect to service continuity (Kawashima, [0271]-[0278], Fig 20, receive from a terminal a request ASP automatic selection service connection setup (which indicates service continuity via CDMA).
Kawashima does not explicitly teach wherein the indication is included in an information element (IE).
However, Chin teaches (Chin, [0272]-[0273], information for service setup in a network is exchanged via information element).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing data of the claimed invention to provide “an information element” as taught by Chin in the system of Kawashima, so that it would manage IP access for connections from mobility of user equipment (Chin, [0002])
As to claim 52, Kawashima teaches the indication with respect to service continuity (Kawashima, [0271]-[0278], Fig 20, receive from a terminal a request ASP automatic selection service connection setup (which indicates service continuity via CDMA).
Kawashima does not explicitly teach wherein the indication is included in an information element (IE).
However, Chin teaches (Chin, [0272]-[0273], information for service setup in a network is exchanged via information element).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing data of the claimed invention to provide “an information element” as taught by Chin in the system of Kawashima, so that it would manage IP access for connections from mobility of user equipment (Chin, [0002])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFSHAWN M TOWFIGHI whose telephone number is (571)270-7296. The examiner can normally be reached M-F 8:00 AM -5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ian N Moore can be reached at 571-272-3085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFSHAWN M TOWFIGHI/Primary Examiner, Art Unit 2427
