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 .
Response to Amendments
This office action responds to the amendments filed on July 27, 2026 for application 19/017,349. Claims 7-20 are cancelled, claims 21-34 are added as new claims, and claims 1-6 and 21-34 remain pending in the application.
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 1-6, 21-25, 29, and 32-34 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims as enumerated below of U.S. Patent No. 12,225,623. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in scope as detailed below by the claim-by-claim comparison table and the accompanying remarks (noting that claims 21-25, 29, and 32-34 are not presented below because they mirror claims 1-6).
Instant Application
Patent No. 12,225,623
1. A computer-readable storage medium, excluding transitory signals and carrying instructions, which, when executed by at least one data processor of a system, cause the system to:
maintain a set of roaming permissions for a wireless device, the set of roaming permissions comprising:
an indication of whether the wireless device has authorization to access a roaming cellular network, and a set of geographic regions in which the wireless device is authorized to access the roaming cellular network;
process a request received from the wireless device to attach to the roaming cellular network in a specified geographic region; and
enable the wireless device to access the roaming cellular network based on the set of roaming permissions.
1. A system comprising:
at least one hardware processor; and
at least one non-transitory memory storing instructions, which, when executed by the at least one hardware processor, cause the system to:
maintain mappings between respective identifiers of wireless devices and roaming permissions for each wireless device, the wireless devices being registered to operate on a home cellular network and the roaming permissions for a respective wireless device including:
an indication of whether the respective wireless device has authorization to access a roaming cellular network, and
identifiers of one or more geographic regions in which the respective wireless device is authorized to access the roaming cellular network;
receive a request from a target wireless device to attach to the roaming cellular network in a specified geographic region;
in response to the request, query the mappings for an identifier of the target wireless device;
in response to the mappings indicating that the target wireless device is authorized to access the roaming cellular network and is authorized in the specified geographic region,
transmit a message to the roaming cellular network to cause the roaming cellular network to attach to the target wireless device; and
in response to the mappings indicating that the target wireless device is not authorized to access the roaming cellular network in the specified geographic region, transmit a message to the roaming cellular network to deny the request.
2. The computer-readable storage medium of claim 1, wherein to enable the wireless device to access the roaming cellular network comprises the instructions further causing the system to: transmit a message to the roaming cellular network to deny the request by the wireless device to attach to the roaming cellular network if the set of roaming permissions indicates the wireless device is not authorized to use the roaming cellular network.
1. … in response to the mappings indicating that the target wireless device is not authorized to access the roaming cellular network in the specified geographic region, transmit a message to the roaming cellular network to deny the request.
3. The computer-readable storage medium of claim 1, wherein to enable the wireless device to access the roaming cellular network comprises the instructions further causing the system to: transmit a message to the roaming cellular network to deny the request by the wireless device to attach to the roaming cellular network in the specified geographic region if the set of roaming permissions indicates the wireless device is not authorized to use the roaming cellular network in the specified geographic region.
12. The computer-readable storage medium of claim 10, wherein selectively enabling the UE devices to access the roaming telecommunications network comprises:
transmitting a message to the roaming telecommunications network to deny a request by a target UE device to attach to the roaming telecommunications network in a target geographic region if the mappings indicate the target UE device is not authorized to use the roaming telecommunications network in the target geographic region.
4. The computer-readable storage medium of claim 1, wherein to enable the wireless device to access the roaming cellular network comprises the instructions further causing the system to: transmit a message to the roaming cellular network to approve the request by wireless device to attach to the roaming cellular network in the specified geographic region if the set of roaming permissions indicates: the wireless device is authorized to use the roaming cellular network, and the wireless device is authorized to roam in the specified geographic region, wherein the roaming cellular network is configured to attach to the wireless device in response to the message.
13. The computer-readable storage medium of claim 10, wherein selectively enabling the UE devices to access the roaming telecommunications network comprises:
transmitting a message to the roaming telecommunications network to approve a request by a target UE device to attach to the roaming telecommunications network in a target geographic region if the mappings indicate:
the target UE device is authorized to use the roaming telecommunications network, and
the target UE device is authorized to roam in the target geographic region,
wherein the roaming telecommunications network is configured to attach to the target UE device in response to the message.
5. The computer-readable storage medium of claim 1, wherein the request is received via a diameter edge agent (DEA) associated with the roaming cellular network.
2. The system of claim 1, wherein the request is received via a diameter edge agent (DEA) associated with the home cellular network.
6. The computer-readable storage medium of claim 1, wherein the request is received via a security edge protection proxy (SEPP) associated with the roaming cellular network.
6. The system of claim 1, wherein the request is received via a security edge protection proxy (SEPP) associated with the home cellular network.
Claim Rejections - 35 USC § 103
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 following conventions apply to the mapping of the prior art to the claims:
Italicized text – claim language.
Parenthetical plain text – Examiner’s citation and explanation.
Citation without an explanation – an explanation has been previously provided for the respective limitation(s).
Quotation marks – language quoted from a prior art reference.
Underlining – language quoted from a claim.
Brackets – material altered from either a prior art reference or a claim, which includes the Examiner’s explanation that relates a claim limitation to the quoted material of a reference.
Braces – a limitation taught by another reference, but the limitation is presented with the mapping of the instant reference for context.
Numbered superscript – a first phrase to be moved upwards to the primary reference analysis.
Lettered superscript – a second phrase to be moved after the movement of the first phrase from which it was lifted, or more succinctly, move numbered material first, lettered material last.
A. Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over “Balasubramanian” (US 2019/0223003) in view of “Xue” (US 9,167,410).
Regarding Claim 1
Balasubramanian discloses
A computer-readable storage medium, excluding transitory signals and carrying instructions, which, when executed by at least one data processor of a system (¶ [0029], “The profile update 304 of the SIM 114 may be associated with a method, or methods, that can be implemented by the execution of computer-executable instructions (e.g., computer program code) stored within a non-transitory computer-readable memory, such as the computer-executable instructions of the SIM manager 112 stored within the memory of the secure element 110 of the mobile device 102 and/or the computer-executable instructions stored within the memory [computer-readable storage medium] of any of the SIM server(s) 106 depicted in FIG. 1.”; and ¶ [0026], “Communication between a SIM server 106 and the secure element 110 can be through a secure channel between the host [data] processor(s) 108 and the secure element 110 [all of the system].”), cause the system to:
maintain a set of roaming permissions for a wireless device (¶ [0020], “The mobile [wireless] device can provide the indication for an option to enable [because a permission exists/maintained] cellular data roaming temporarily for the purpose of activation and/or updating of the SIM”), the set of roaming permissions comprising:
an indication of whether the wireless device has authorization to access a roaming cellular network (¶ [0020], “Cellular data roaming may be disabled by default to avoid unexpected roaming charges for the user of the mobile device. The mobile [wireless] device can provide the indication for an option [authorization] to enable [access] cellular data roaming temporarily for the purpose of activation and/or updating of the SIM.”), and
a set of geographic regions in which the wireless device is authorized to access the roaming cellular network (¶ [0020], “When the region for the MNO associated with the SIM does not correspond to the current geographic location of the mobile device, a cellular data connection may only be available through a local roaming cellular wireless network. The SIM can include a pre-installed list [set] of cellular wireless networks [within their respective geographic regions], e.g., a public land mobile network (PLMN) list, that includes information for detecting cellular wireless networks with which the SIM may allow [be authorized] the mobile [wireless] device to establish a connection [access the roaming cellular network].”);
1 …; and
enable the wireless device to access the roaming cellular network based on the set of roaming permissions (¶ [0020], “The mobile device can provide the indication for an option to enable cellular data roaming temporarily…”).
Balasubramanian doesn’t disclose
1 process a request received from the wireless device to attach to the roaming cellular network in a specified geographic region;
Xue, however, discloses
1 process a request received from the wireless device to attach to the roaming cellular network in a specified geographic region (Fig. 4, Col. 5:6-27, “In FIG. 4, during an attachment process between a user device and a roaming wireless communication network, home wireless network 330 receives (401) a roaming authorization request for user device 310 to roam on the roaming wireless communication network. Before user device 310 can roam onto roaming wireless network 320, an attachment process is performed. During this attachment process, a roaming authorization check is performed that authorizes or verifies user device 310 is authorized to roam onto roaming wireless network 320.”);
Regarding the combination of Balasubramanian and Xue, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cellular network system of Balasubramanian to arrive at the claimed invention. KSR establishes that a rationale for obviousness is proven by showing a “use of [a] known technique to improve similar devices in the same way.” See MPEP § 2143(I)(C).
To substantiate the conclusion of obviousness under this KSR rationale, the Examiner finds pursuant to MPEP § 2143(I)(C):
1) the prior art contained a base system, namely the cellular network system of Balasubramanian, upon which the claimed invention can be seen as an “improvement” through the use of a roaming request feature;
2) the prior art contained a “comparable” system, namely the cellular network system of Xue, that has been improved in the same way as the claimed invention through the roaming request feature; and
3) one of ordinary skill in the art could have applied the known improvement technique of applying the roaming request feature to the base cellular network system of Balasubramanian, and the results would have been predictable to one of ordinary skill in the art.
Regarding Claim 2
Balasubramanian in view of Xue (“Balasubramanian-Xue”) discloses the computer-readable storage medium of claim 1, and Balasubramanian further discloses
wherein to enable the wireless device to access the roaming cellular network (¶ [0020]) comprises the instructions further causing the system (¶ [0029]) to:
transmit a message to the roaming cellular network to deny the request by the wireless device to attach to the roaming cellular network if the set of roaming permissions indicates the wireless device is not authorized to use the roaming cellular network (¶ [0020], “Cellular data roaming may be disabled [and consequently denied] by default to avoid unexpected roaming charges for the user of the mobile device.”; see also Xue Col. 5:40-55, “In some examples, user device 310 might be denied roaming onto roaming wireless network 320 during the attachment process, such as when roaming wireless network 320 and home wireless network 330 do not have a roaming agreement, or when user device 310 is not a current subscriber of home wireless network 330.”).
Regarding Claim 3
Balasubramanian-Xue discloses the computer-readable storage medium of claim 1, and Balasubramanian further discloses
wherein to enable the wireless device to access the roaming cellular network (¶ [0020]) comprises the instructions further causing the system (¶ [0029]) to:
1 …
in the specified geographic region if the set of roaming permissions indicates the wireless device is not authorized to use the roaming cellular network in the specified geographic region (¶ [0020], “Cellular data roaming may be disabled [not authorized in the specified geographic region] by default to avoid unexpected roaming charges for the user of the mobile device. The mobile device can provide the indication for an option to enable cellular data roaming temporarily for the purpose of activation and/or updating of the SIM.”; and “The mobile device can determine a region, e.g., a country of origin, for the MNO associated with the SIM and can compare the region to a current geographic location of the mobile device.”).
Xue further discloses
1 transmit a message to the roaming cellular network to deny the request by the wireless device to attach to the roaming cellular network… (Col. 5:28-39, “As shown in FIG. 3, roam allow/deny message 361 is transferred for delivery to MME 322 by HSS 332, which indicates a network-wide roaming authorization for user device 310 on roaming wireless network 320.”).
Regarding the combination of Balasubramanian and Xue, the rationale to combine is the same as provided for claim 1 due to the overlapping subject matter of claims 1 and 3.
Regarding Claim 4
Balasubramanian-Xue discloses the computer-readable storage medium of claim 1, and Balasubramanian further discloses
wherein to enable the wireless device to access the roaming cellular network (¶ [0020]) comprises the instructions further causing the system (¶ [0029]) to:
1 …, and
and
the wireless device is authorized to roam in the specified geographic region (¶ [0020], “Cellular data roaming may be disabled [not authorized in the specified geographic region] by default to avoid unexpected roaming charges for the user of the mobile device. The mobile device can provide the indication for an option to enable cellular data roaming temporarily for the purpose of activation and/or updating of the SIM.”; and “The mobile device can determine a region, e.g., a country of origin, for the MNO associated with the SIM and can compare the region to a current geographic location of the mobile device.”),
2 ….
Xue further discloses
1 transmit a message to the roaming cellular network to approve the request by wireless device to attach to the roaming cellular network in the specified geographic region (Col. 5:28-39, “As shown in FIG. 3, roam allow [approve]/deny message 361 is transferred for delivery to MME 322 by HSS 332, which indicates a network-wide roaming authorization for user device 310 on roaming wireless network 320.”) if the set of roaming permissions indicates:
the wireless device is authorized to use the roaming cellular network (Col. 5:28-39, “As shown in FIG. 3, roam allow/message 361 is transferred for delivery to MME 322 by HSS 332, which indicates a network-wide roaming authorization for user device 310 on roaming wireless network 320.”),
2 wherein the roaming cellular network is configured to attach to the wireless device in response to the message (Col. 5:6-39, “As shown in FIG. 3, roam allow/deny message 361 is transferred for delivery to MME 322 by HSS 332, which indicates a network-wide roaming authorization for user device 310 on roaming wireless network 320.”; and “During this attachment process, a roaming authorization check is performed that authorizes or verifies user device 310 is authorized to roam onto roaming wireless network 320.”).
Regarding the combination of Balasubramanian and Xue, the rationale to combine is the same as provided for claim 1 due to the overlapping subject matter of claims 1 and 4.
B. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian in view of Xue, and further in view of “Patel” (US 2015/0065125).
Regarding Claim 5
Balasubramanian-Xue discloses the computer-readable storage medium of claim 1, and Xue further discloses
wherein the request (Fig. 4, Col. 5:6-27) is…1.
Regarding the combination of Balasubramanian and Xue, the rationale to combine is the same as provided for claim 1 due to the overlapping subject matter of claims 1 and 5.
1 received via a diameter edge agent (DEA) associated with the roaming cellular network.
Balasubramanian-Xue doesn’t disclose
1 received via a diameter edge agent (DEA) associated with the roaming cellular network
Patel, however, discloses
1 received via a diameter edge agent (DEA) associated with the roaming cellular network (¶ [0019], “Each of network devices 110 provides signaling to support the establishment and maintenance of connections with roaming users. For example, each of network devices 110 may be implemented to include a Diameter Edge Agent (DEA) or similarly functioning network element (e.g., a proprietary network element, etc.).”).
Regarding the combination of Balasubramanian-Xue and Patel, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cellular network system of Balasubramanian-Xue to arrive at the claimed invention. KSR establishes that a rationale for obviousness is proven by showing a “use of [a] known technique to improve similar devices in the same way.” See MPEP § 2143(I)(C).
To substantiate the conclusion of obviousness under this KSR rationale, the Examiner finds pursuant to MPEP § 2143(I)(C):
1) the prior art contained a base system, namely the cellular network system of Balasubramanian-Xue, upon which the claimed invention can be seen as an “improvement” through the use of a diameter edge agent;
2) the prior art contained a “comparable” system, namely the cellular network system of Patel, that has been improved in the same way as the claimed invention through the diameter edge agent; and
3) one of ordinary skill in the art could have applied the known improvement technique of applying the diameter edge agent to the base cellular network system of Balasubramanian-Xue, and the results would have been predictable to one of ordinary skill in the art.
C. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian in view of Xue, and further in view of “Rajput” (US 2022/0272541).
Regarding Claim 6
Balasubramanian-Xue discloses the computer-readable storage medium of claim 1, and Xue further discloses
wherein the request (Fig. 4, Col. 5:6-27) is…1
Regarding the combination of Balasubramanian and Xue, the rationale to combine is the same as provided for claim 1 due to the overlapping subject matter of claims 1 and 6.
Balasubramanian-Xue doesn’t disclose
1 received via a security edge protection proxy (SEPP) associated with the roaming cellular network.
Rajput, however, discloses
1 received via a security edge protection proxy (SEPP) associated with the roaming cellular network (¶ [0023], “The NRF 340, in step 335, can query the visitor NRF nodes 370 via SEPP 350, 360 for an address of a GMLC of the visitor network 120. The Security Edge Protection Proxy (SEPP) enables a secure interconnect [based on the request] between 5G networks 110, 120. The SEPP ensures end-to-end confidentiality and/or integrity between the home and visitor networks 110, 120 for all 5G interconnect roaming messages.”).
D. Claims 21-34 are rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian in view of Xue, and further in view of Patel and Rajput.
Regarding Independent Claims 21 and 32 and Dependent Claims 22-31 and 33-34
In response to the restriction requirement of May 26, 2026, Applicant presented new claims 21-32. By submitting new claims after the restriction requirement, Applicant admits that the subject matter encompassed by claims 22-34 is obvious in view of the elected claims 1-6. See MPEP § 803 (stating “If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required.”). Thus, the reasoning as provided for claims 1-6 applies, mutatis mutandis, to the subject matter of claims 21-34. Therefore, claims 21-34 are rejected, for similar reasons, under the grounds set forth for claims 1-6. (To the extent Applicant inadvertently submitted claims that are patentably distinct from claims 1-6, the Examiner at this point extends an opportunity for the Applicant to either withdraw or cancel such claims.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D'ARCY WINSTON STRAUB whose telephone number is (303)297-4405. The examiner can normally be reached Monday-Friday 9:00-5:00 Mountain Time.
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/D'Arcy Winston Straub/Primary Examiner, Art Unit 2491
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