DETAILED ACTION
Claims 1-20 are presented for examination.
Claims 1, 8, 9, 13-15, 19, and 20 are amended.
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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/30/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 12/30/2024. These drawings are acceptable.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,192,753 .
Note that the applicant filing of the continuing application is voluntary and not the direct, unmodified result of restriction requirement under 35 U.S.C. 121 (i.e. without a restriction requirement by the examiner) and the claims of the second application are drawn to the “same invention” as the first application or patent. Moreover, although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the instant application merely broadens the scope of the claims of the Patent by eliminating the elements and their functions of the claims, and the claims of this instant application are therefore and obvious variant thereof.
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 1, A method of operating a base station (BS) in a wireless network, comprising:
Claim 1, A method of operating a user equipment (UE) in a wireless network, comprising:
receiving, by the BS, an initial registration request message that includes fifth generation (5G) mobility management (5GMM) capabilities of a user equipment (UE) that are indicative of whether the UE supports voice over internet protocol multimedia subsystem (IMS);
generating, by the UE, an initial registration request message that includes fifth generation mobility management (5GMM) capabilities of the UE that are indicative of whether the UE supports voice over internet protocol multimedia subsystem (IMS);
Claim 2, The method of claim 1, further comprising forwarding the initial registration request to a core network node.
Claim 7, The method of claim 6, wherein the receiving includes receiving the 5GMM capability IE using non-access stratum signaling during a registration procedure with the BS.
transmitting, by the UE, the initial registration request message using Non-Access Stratum (NAS) signaling to a radio access network (RAN) node in the wireless network; and
comparing, by the BS, the 5GMM capabilities of the UE and capabilities of the BS; determining whether the UE supports voice over IMS in a 5G network based on the comparison of the 5GMM capabilities of the UE and capabilities of the BS; and transmitting, by the BS, a registration accept message that includes an indication of whether voice over IMS is approved, wherein the indication is based on the determination of whether the UE supports voice over IMS in the 5G network.
receiving, by the UE, a registration accept message that includes an indication of whether voice over IMS is approved, wherein the indication is based on a comparison of the 5GMM capabilities of the UE and capabilities of the RAN node.
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 3, The method of claim 1, wherein the 5GMM capabilities of the UE include one or more of: a first indication of whether the UE supports voice over new radio (VoNR);a second indication of whether the UE supports voice over long-term evolution- fifth generation core (VoLTE-5 GC);a third indication of whether the UE supports inter-radio access technology (RAT) fallback to VoLTE-5GC via handover; or a fourth indication of whether the UE supports evolved packet system (EPS) fallback via handover, and voice over evolved universal terrestrial radio access (E- UTRA) connected to an evolved packet core (EPC).
Claim 2, The method of claim 1, wherein the 5GMM capabilities of the UE include one or more of: a first indication of whether the UE supports voice over new radio (VoNR); a second indication of whether the UE supports voice over long-term evolution-fifth generation core (VOLTE-5GC); a third indication of whether the UE supports inter-radio access technology (RAT) fallback to VOLTE-5GC via handover; or a fourth indication of whether the UE supports evolved packet system (EPS) fallback via handover, and voice over evolved universal terrestrial radio access (E-UTRA) connected to an evolved packet core (EPC).
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 4, The method of claim 3, wherein the initial registration request message includes a 5GMM capability information element (IE) that includes one or more of the first, second, third, or fourth indications.
Claim 3, The method of claim 2, wherein the generating includes generating the initial registration request message to include a 5GMM capability information element (IE) that includes one or more of the first, second, third, or fourth indications.
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 5, The method of claim 1, wherein the 5GMM capabilities include: a first indication of whether the UE supports voice over new radio (VoNR); a second indication of whether the UE supports voice over long-term evolution- fifth generation core (VoLTE-5GC);a third indication of whether the UE supports inter-radio access technology (RAT) fallback to VoLTE-5GC via handover; and a fourth indication of whether the UE supports evolved packet system (EPS) fallback via handover, and voice over evolved universal terrestrial radio access (E- UTRA) connected to an evolved packet core (EPC).
Claim 4, The method of claim 1, wherein the 5GMM capabilities include: a first indication of whether the UE supports voice over new radio (VoNR); a second indication of whether the UE supports voice over long-term evolution-fifth generation core (VOLTE-5GC); a third indication of whether the UE supports inter-radio access technology (RAT) fallback to VOLTE-5GC via handover; and a fourth indication of whether the UE supports evolved packet system (EPS) fallback via handover, and voice over evolved universal terrestrial radio access (E-UTRA) connected to an evolved packet core (EPC).
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 6, The method of claim 5, wherein the initial registration request message includes a 5GMM capability information element (IE) that includes: a first bit representative of the first indication; a second bit representative of the second indication; a third bit representative of the third indication; and a fourth bit representative of the fourth indication.
Claim 5, The method of claim 4, wherein the generating includes generating the initial registration request message to include a 5GMM capability information element (IE) that includes: a first bit representative of the first indication; a second bit representative of the second indication; a third bit representative of the third indication; and a fourth bit representative of the fourth indication.
The method of claim 6, wherein the performing further comprises performing voice over IMS communications with the RAN node based on a successful match between at least one of the 5GMM capabilities of the UE and capabilities of the RAN node.
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 8, The method of claim 1, wherein the comparison of the 5GMM capabilities of the UE and the capabilities of the BS results in a match between at least one of the 5GMM capabilities of the UE and the capabilities of the BS.
Claim 7, The method of claim 6, wherein the performing further comprises performing voice over IMS communications with the RAN node based on a successful match between at least one of the 5GMM capabilities of the UE and capabilities of the RAN node.
Instant Application 19/005275
U.S. Patent No. 12,192,753
Claim 8, The method of claim 1, wherein the comparison of the 5GMM capabilities of the UE and the capabilities of the BS results in a match between at least one of the 5GMM capabilities of the UE and the capabilities of the BS.
Claim 8, The method of claim 1, wherein the comparison results in a match between at least one of the 5GMM capabilities of the UE and capabilities of the RAN node.
Claims 9-20 disclose similar limitations to claims 9-20 of the Patent and are therefore rejected for the same reason as indicated above.
Allowable Subject Matter
Claims 1-20 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Niemi et al., U.S. Publication No. 2020/0053134 discloses including a 5GS network feature support information element (IE) carried by a registration accept message sent from the network during the registration procedure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKIE ZUNIGA ABAD whose telephone number is (571)270-7194. The examiner can normally be reached Monday - Friday, 8:00am - 4:00pm.
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, IAN 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JACKIE ZUNIGA ABAD/ Primary Examiner, Art Unit 2469
