DETAILED ACTION
Claims 1-31 are currently pending in the application. Claims 1-16 are original claims to patent US 11,570,626 B2 to Chandramouli et al. (herein Chandramouli) and claims 17-31 are newly added claims.
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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,570,626 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06/09/2025 and 09/30/2025 is/are considered by the examiner in accordance with 37 CFR 1.97, 37 CFR 1.98, MPEP 609, and MPEP 1406, to the fullest extent of the items presented including any concise explanation. Documents not meeting particular criteria are lined through and not considered.
Oath/Declaration Objections
The reissue oath/declaration filed 10/17/2025 for this application is defective (see 37 CFR 1.175 and MPEP § 1414) and objected to because it fails: (1) to specifically identify at least one error under 35 USC 251 (37 CFR 1.175(a)); and (2) to identify the broadened claims (37 CFR 1.175(b)). The error identified does not provide at least one example of the specific claim language which is being corrected (see MPEP 1414), but instead discusses generalities related to “certain embodiments”. Additionally, the declaration does not specifically identify at least one broadened claim (see MPEP 1412.03).
Claim Objections
Claims 17-31 are objected to because of the following informalities in the amendment of 01/30/2025: (1) the amendment does not provide proper support from the disclosure for the changes as required by 37 CFR 1.173(c). Appropriate correction is required. In particular, the citations of support provided for the following changes to new independent claims 17 and 25, do not provide support for the claimed material: “wherein the new routing identifier indicates one or more of: an Authentication Server Function (AUSF) instance or a Unified Data Management (UDM) instance for decrypting a subscription concealed identifier (SUCI) of the mobile apparatus”.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, the originally filed disclosure does not have support for the following limitations of independent claims 17 and 25: “wherein the new routing identifier indicates one or more of: an Authentication Server Function (AUSF) instance or a Unified Data Management (UDM) instance for decrypting a subscription concealed identifier (SUCI) of the mobile apparatus”.
Claim Rejections – 35 USC § 251
Claims 1-31 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action (see Oath/Declaration Objections): (1) to specifically identify at least one error under 35 USC 251 (37 CFR 1.175(a)); and (2) to identify the broadened claims (37 CFR 1.175(b)).
Claims 1-31 are rejected as being based upon a defective amendment under 35 U.S.C. 251 as set forth above. See 37 CFR 1.173. The nature of the defect(s) in the amendment is set forth in the discussion above in this Office action (see Claim Objections): (1) the amendment does not provide proper support from the disclosure for the changes as required by 37 CFR 1.173(c).
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) 1-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0264439 A1 to Muhanna et al. (herein Muhanna).
Claim 1
Muhanna shows an apparatus, comprising: at least one processor; and at least one memory comprising computer program code, the at least one memory and computer program code configured, with the at least one processor (Muhanna: figure 23; [0100]-[0101]; figures 4, 11, 17, element UE 215; [0101], UE can be a router), to cause the apparatus at least to:
receive an encrypted new routing identifier with an integrity signature (Muhanna: figures 4, 11, 17, IAS message element and information going to UE from MME and HSS; [0080] IAS messages includes user specific information, which can be for a router and include IMSI, see [0079]; [0040], temporary network identifier, which is related to routing; and [0051], [0055], [0060], [0075], IAS includes signatures/keys) from a security or access management entity (Muhanna: figure 4, element 220; [0050]; [0055]), wherein the encrypted new routing identifier is received in a non-access stratum message (Muhanna: [0035] and [0050], NAS) after authentication of the apparatus is completed (Muhanna: figure 4, element 435 shows authentication before element 450, the IAS message; and also under the broadest reasonable interpretation this language reads upon a subsequent time a mobile device is authenticated, since UEs will be authenticated repeatedly in a network);
check a validity of the integrity signature using a key (Muhanna: [0040], after receiving messages from MME, the UE/router independently generates keys); and
if the integrity signature is valid, decipher and store the new routing identifier (Muhanna: 0040], after receiving messages from MME, the UE/router independently generates keys).
Claim 2
Muhanna shows the apparatus according to claim 1, wherein check the validity of the integrity signature using a key comprising using an integrity key to check the validity of the integrity signature (Muhanna: [0055], outer portion using MAC signature and KIASINT).
Claim 3
Muhanna shows the apparatus according to claim 2, wherein the integrity key is known only by the apparatus and a node of the home public land mobile network of the apparatus (Muhanna: [0061]).
Claim 4
Muhanna shows the apparatus according to claim 1, wherein decipher the encrypted new routing identifier further comprising decipher the encrypted new routing identifier using an encryption key (Muhanna: [0055], encrypted inner portion and KIASENC).
Claim 5
Muhanna shows the apparatus according to claim 4, wherein the encryption key is known only by the apparatus and a node of the home public land mobile network of the apparatus (Muhanna: [0061]).
Claim 6
Muhanna shows the apparatus according to claim 1, wherein the at least one memory and computer program code are further configured, with the at least one processor, to cause the apparatus at least to receive the new routing identifier as part of a configuration, authentication or registration process (Muhanna: figures 4, 11, and 17).
Claims 7-12
The limitations of claims 7-12 correspond to the limitations of claims 1-6 and as such are rejected in a corresponding manner.
Claim 13
Muhanna shows an apparatus, comprising: at least one processor; and at least one memory comprising computer program code, the at least one memory and computer program code configured, with the at least one processor (Muhanna: figure 23; [0100]-[0101]; figures 4, 11, 17, element UE 220; [0050]), to cause the apparatus at least to:
decide at the apparatus to update a routing identifier for at least one user equipment (Muhanna: figures 4, 11, 17, IAS message element and information going to UE from MME and HSS; [0080] IAS messages includes user specific information, which can be for a router and include IMSI, see [0079]; [0040], temporary network identifier, which is related to routing; and [0051], [0055], [0060], [0075], IAS includes signatures/keys);
obtain or generate a new routing identifier to be assigned to the at least one user equipment (Muhanna: figures 4, 11, 17, IAS message element and information going to UE from MME and HSS; [0080] IAS messages includes user specific information, which can be for a router and include IMSI, see [0079]; [0040], temporary network identifier, which is related to routing; and [0051], [0055], [0060], [0075], IAS includes signatures/keys);
encrypt the new routing identifier with an encryption key; generate an integrity signature of the encrypted new routing identifier with an integrity key (Muhanna: [0040], encrypted identifier; [0055], MAC signature and keys KIASENC and KIASINT); and
transmit the encrypted new routing identifier with the integrity signature in a non-access stratum message to the at least one user equipment after authentication of the at least one user equipment is completed (Muhanna: figures 4, element 450 after element 435; see also figures 11 and 17).
Claim 14
Muhanna shows the apparatus according to claim 13, wherein the encryption key and the integrity key are known only by the at least one user equipment and the apparatus (Muhanna: [0061]).
Claim 15
Muhanna shows the apparatus according to claim 14, wherein transmit the encrypted new routing identifier with the integrity signature to the at least one user equipment further comprising send a non-access stratum message that comprising the encrypted new routing identifier to the at least one user equipment (Muhanna: [0035] and [0050], NAS).
Claim 16
Muhanna shows the apparatus according to claim 15, further comprising send the non-access stratum message to the at least one user equipment after an authentication of the at least one user equipment is completed or as part of a configuration, authentication or registration process (Muhanna: figures 4, element 450 after element 435; see also figures 11 and 17).
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.
Claim(s) 17-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0264439 A1 to Muhanna et al. (herein Muhanna) in view of US 10,425,817 B2 to Torvinen et al. (herein Torvinen).
Claim 17
The limitations of claim 17 largely correspond to the limitations of claim 1 and as such are rejected in a corresponding manner. However, Muhanna does not explicitly state “the new routing identifier indicates one or more of: an Authentication Server Function (AUSF) instance or a Unified Data Management (UDM) instance for decrypting a subscription concealed identifier (SUCI) of the mobile apparatus”. Torvinen demonstrates that it was known before the effective filing date of the claimed invention to indicate a de-concealing server for a SUCI (Torvinen: 9:14-21; 10:25-11:36). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the routing identifier (user specific information including the temporary identifier) of Muhanna as indicating a server (AUSF or UDM) to decrypt a SUCI as suggested by the teachings of Torvinen. This implementation would have been obvious because one of ordinary skill in the art would have found: it is important to maintain confidentiality (Torvinen: 1:22-35); Torvinen is providing the same components as Muhanna while indicating the need to maintain confidentiality/concealment (Torvinen: 10:25-40); the implementation of is an application of a known element/technique yielding a predictable result using an acceptable piece of prior art; and both references are directed to authentication of UEs.
Claim 18
Muhanna shows the mobile apparatus of claim 17, wherein the key for the checking whether the integrity signature is valid is derived from an authentication and key agreement (AKA) procedure (Muhanna: [0035], AKA).
Claim 19
Muhanna shows the mobile apparatus of claim 17, wherein the key for the checking whether the integrity signature is valid is known only by the mobile apparatus and a node of a home public land mobile network (HPLMN) of the mobile apparatus (Muhanna: [0061]).
Claim 20
Muhanna shows the mobile apparatus of claim 17, wherein the new routing identifier is an encrypted new routing identifier, and wherein the mobile apparatus is configured to decipher the encrypted new routing identifier using an encryption key (Muhanna: [0040], [0055], encrypt/decrypt using keys and signature).
Claim 21
Muhanna shows the mobile apparatus of claim 20, wherein the encryption key is separate from the key for the checking whether the integrity signature is valid (Muhanna: [0055], MAC signature and keys KIASENC and KIASINT).
Claim 22
Muhanna shows the mobile apparatus of claim 20, wherein the encryption key is known by the mobile apparatus and a node of an HPLMN of the mobile apparatus (Muhanna: [0061]).
Claim 23
Muhanna shows the mobile apparatus of claim 17, wherein the new routing identifier is contained within a container in the NAS message (Muhanna: [0035] and [0050], NAS).
Claim 24
Muhanna shows the mobile apparatus of claim 17, wherein the new routing identifier is assigned by an HPLMN of the mobile apparatus (Muhanna: [0040]; figures 4, 11, 17).
Claims 25-31
The limitations of claims 25-31 correspond to the limitations of claims 17-24 and as such are rejected in a corresponding manner.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H WOOD whose telephone number is (571)272-3736. The examiner can normally be reached Monday-Friday 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571)272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William H. Wood/
Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992