DETAILED ACTION
I. This office action is in response to the correspondence filed on September 8, 2026. Claims 5-10 are pending and being examined.
Notice of Pre-AIA or AIA Status
II. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
III. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
IV. Claims 5-6 and 8-10 are objected to because of the following informalities:
Claim 5 recites “in a case that the UE accesses to the SNPN” in lines 8-9. This appears to be a grammatical error and should be changed to -in a case that the UE accesses the SNPN- to be corrected.
Claim 6 recites “in a case that the UE accesses to the SNPN” in line 10. This appears to be a grammatical error and should be changed to -in a case that the UE accesses the SNPN- to be corrected.
Claims 8-9 contain the acronyms “ME” and “5GS” without first spelling out the acronym. It would be more appropriate if the first occurrence on the acronym were spelled out with the acronym following in parenthesis.
Claim 10 recites “being in operating in” in line 3. This appears to be a grammatical error and should be changed to -the UE operating in- to be corrected.
Claim 10 recites “in a case that the UE accesses to the SNPN” in lines 6-7. This appears to be a grammatical error and should be changed to -in a case that the UE accesses the SNPN- to be corrected.
Appropriate correction is required.
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.
V. Claims 5, 8, and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Claim 5 recites “the same counter” in line 7. It is unclear what “the same counter” refers to because the claim does not earlier mention a counter. The limitation renders the claim indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
For purposes of examination, the examiner will treat the following quotations from claim 5, “the same counter” as “a counter”.
Claim 8 is dependent on claim 5 and is rejected for indefiniteness under 35 U.S.C. 112(b) for the same reasons given above regarding claim 5.
Claim 10 recites “the same counter” in line 5. It is unclear what “the same counter” refers to because the claim does not earlier mention a counter. The limitation renders the claim indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
For purposes of examination, the examiner will treat the following quotations from claim 10, “the same counter” as “a counter”.
The following prior art rejection is based on the best possible interpretation of the claim language in light of the above rejections under 35 U.S.C. 112(b).
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.
VI. Claims 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-9 of copending Application No. 18/996,949. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 18/996,949 application teach similar limitations on an UE operating in a Stand-alone Non-public Network (SNPN) access operation mode.
Claim Mapping:
Claim 5 of the instant application and claim 4 of U.S. Patent Application No. 18/996,949 is mapped below.
Instant Application
Patent Application No. 18/996,949
Claim 5. A user equipment (UE) comprising: transmission and reception circuitry; and controlling circuitry,
wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode, and the controlling circuitry uses the same counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN).
Claim 4. A user equipment (UE) comprising: transmission and reception circuitry; and controlling circuitry,
wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode, and the controlling circuitry uses the same SNPN-specific attempt counter for non-3GPP access in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN),
Claims 6-10 are also rejected under obviousness-type double patenting by claims 5-9 respectively of the 18/996,949 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
VII. Claims 5- 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Won (US 2021/0051577 A1), hereinafter referred to as Won 1.
Regarding claim 5 Won 1 teaches a user equipment (UE) comprising: transmission and reception circuitry (208, Figure 2); and controlling circuitry (204. Figure 2) (see paragraphs [0068] – [0069]), wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode (see paragraph [0080], The UE is operating in SNPN access mode and shall maintain counters for non-3GPP access types. This reads on wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode), and the controlling circuitry uses the same counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN) (see paragraph [0062], The UE is configured to use only a single counter for “SIM/USIM considered invalid for GPRS services” events and a single counter for “SIM/USIM considered invalid for 5GS services over non-3GPP access” events. The GPRS service event is considered a service via a Public Land Mobile Network (PLMN). This reads on the controlling circuitry uses the same counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN)).
Regarding claim 6 Won 1 teaches a user equipment (UE) comprising: transmission and reception circuitry (208, Figure 2); controlling circuitry (204, Figure 2); and storage circuitry (206, Figure 2) (see paragraphs [0068] – [0069]), wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode (see paragraph [0080], The UE is operating in SNPN access mode and shall maintain counters for non-3GPP access types. This reads on wherein the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode), the storage circuitry stores a counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, and the storage circuitry maintains the counter stored on the storage circuitry in a case that the UE accesses the SNPN directly over the non-3GPP access (see paragraphs [0080]; [0082] [0084], The UE shall maintain for each of the entries of access in the list of subscriber data at least one or more counters. An SNPN attempt counter for non-3GPP type access, the counter being configured to count access attempts via non-3GPP access only. One counter for the entry for the current SNPN is considered invalid for non-3GPP access events. This reads on the storage circuitry stores a counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, and the storage circuitry maintains the counter stored on the storage circuitry in a case that the UE accesses the SNPN directly over the non-3GPP access).
Regarding claim 7 Won 1 teaches wherein the counter is used in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN) and in the case that the UE accesses to the SNPN service directly over the non-3GPP access (see paragraph [0062], The UE is configured to use only a single counter for “SIM/USIM considered invalid for GPRS services” events and a single counter for “SIM/USIM considered invalid for 5GS services over non-3GPP access” events. The GPRS service event is considered a service via a Public Land Mobile Network (PLMN). This reads on wherein the counter is used in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN) and in the case that the UE accesses to the SNPN service directly over the non-3GPP access).
Regarding claim 8 Won 1 teaches wherein in a case that the transmission and reception circuitry received a reject cause value over the non-3GPP access, the controlling circuitry increments the counter, the reject cause value indicates Illegal UE, Illegal ME, or 5GS services not allowed, and the reject cause value is further included in a registration reject message without integrity protection or a service reject message without the integrity protection (see paragraphs [0087]; [0089]; [0091]; [0135], If the UE receives a rejection message from a network (sometimes called a reject message), such as after sending a request for registration or a request for provisioning of a service to the UE, the UE can evaluate the rejection message. In the context of 5G networks, the UE receives a REGISTRATION REJECT or SERVICE REJECT message without integrity protection with one or more of select 5GMM cause value. The cause value can be 5GS update status to 5U3 ROAMING NOT ALLOWED. Illegal UE, or illegal ME. This reads on wherein in a case that the transmission and reception circuitry received a reject cause value over the non-3GPP access, the controlling circuitry increments the counter, the reject cause value indicates Illegal UE, Illegal ME, or 5GS services not allowed, and the reject cause value is further included in a registration reject message without integrity protection or a service reject message without the integrity protection).
Regarding claim 9 Won 1 teaches limitations as recited in claim 8 and therefore claim 9 is rejected for the same reasons given above.
Regarding claim 10 Won 1 teaches a communication method performed by a User Equipment (UE) (see paragraphs [0068] – [0069]), the communication control method comprising: the UE operating in a Stand-alone Non-public Network (SNPN) access operation mode (see paragraph [0080], The UE is operating in SNPN access mode and shall maintain counters for non-3GPP access types. This reads on the UE is operating in a Stand-alone Non-public Network (SNPN) access operation mode), and using the same counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN) (see paragraph [0062], The UE is configured to use only a single counter for “SIM/USIM considered invalid for GPRS services” events and a single counter for “SIM/USIM considered invalid for 5GS services over non-3GPP access” events. The GPRS service event is considered a service via a Public Land Mobile Network (PLMN). This reads on the using the same counter for an event that an entry for a current SNPN is considered invalid for non-3GPP access, in a case that the UE accesses to the SNPN service directly over non-3GPP access and in a case that the UE accesses to the SNPN service via a Public Land Mobile Network (PLMN)).
Conclusion
VIII. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Won Pub. No.: US 2021/0258857 A1, hereinafter Won 2 discloses methods, apparatuses, and computer program products for managing a device network capabilities in private networks including non-3GPP access which may be used in the counter for the entry for current SNPN considered invalid for non-3GPP access, that can also be used to express access to SNPN services via a PLMN (see paragraphs [0383] – [0390]).
Tiwari et al. Pub. No.: US 2021/0051566 A1 discloses method and system for managing closed access group feature for user equipment and network including the UE sets the counter for “SIM/USIM considered invalid for GPRS services” events and the counter for “SIM/USIM considered invalid for 5GS services over non-3GPP access, then the UE sets the counter for “the entry for the current SNPN considered invalid for 3GPP access” events to the UE implementation-specific maximum value in case of the PLMN (see paragraph [0059]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J MILLER whose telephone number is (571)272-7869. The examiner can normally be reached M-F.
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/BRANDON J MILLER/ Primary Examiner, Art Unit 2647
September 8, 2026
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