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 .
1. Instant application is Continuation of Application No. 17/627795, now U.S. Patent 12,245,022. In a preliminary amendment dated 03/12/2025, claim 1 was amended. Claims 2-16 were newly added. Claims 1-16 have been examined.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 09/04/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
3. Claims 4-6 and 10-12 are 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.
Claims 4 and 10 recite the limitation "the second node" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claims 2 and 8 introduce “a second node”, however claims 4 and 10 depend on claims 1 and 7, respectively.
Claims 5-6 and 11-12 recite the limitation "the authentication procedure" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claims 2 and 8 introduce “an authentication procedure”, however claims 5-6 and 11-12 depend on claims 4,1, 10, and 7, respectively.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1, 3-7 and 9-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A Prong One
Claims 1-16 recite a method and network node for operating in a telecommunications network. Claims 1, 7 and 13 comprise the steps of “determining that the first subscriber information comprises an anonymous Subscription Concealed Identifier (SUCI) containing an anonymous identifier”, which under its broadest, reasonable interpretation covers a “mental process” that “can be performed in the human mind, or by a human using a pen and paper” (note MPEP 2106.04(a)(2)III). For example, a human can look at an indicator in a set of values and decide if an anonymous identifier is indicated. Claims 2, 5, 8, 11, 14 and 16 further recite similar “determining” steps that could be a “mental process”.
Other than reciting, “by a network node”, nothing in the claim elements precludes the steps from being performed in the mind. The claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. Thus, the claim is considered to recite a mental process (note MPEP 2106.04(a)(2)III.C.).
Step 2A Prong Two
Claims 1, 3-7 and 9-12 recite the additional element of “receiving an authentication request…”. Claims 2, 8, 13-14 recite “transmitting a first message”, “receiving a second message”, “receiving an authentication request…” and “transmitting a response”. As merely receiving and sending data, this is extra-solution activity to the judicial exception and does not integrate the abstract idea into a practical application. Claim 7 recites additional elements of “processing circuitry” and “memory”. This judicial exception is not integrated into a practical application because the additional elements (e.g. processor, memory…) are generic computer components. The use of a generic computer component does not integrate the abstract idea into a practical application because merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f) have been identified by the courts as not integrating a judicial exception into a practical application.
Claims 1-16 also recite additional elements of “an Authentication Server Function (AUSF) node”, “a unified data management, UDM, node”, “a 5th generation, 5G, telecommunication network” and “a non-5G capable, N5GC, device”. However, generally linking the use of the judicial exception to a particular technological environment or field of use, i.e. 5G network, does not integrate a judicial exception into a practical application (note MPEP 2106.05(h)).
However, analysis of the claims as a whole, shows that the process of “the second message including a first indicator indicating that the first subscriber information includes the anonymous identifier and a second indicator indicating an authentication procedure, and wherein determining that the first subscriber information includes the anonymous identifier comprises determining that the first subscriber information includes the anonymous identifier based on the first indicator” (claims 2 and 8) or “responsive to determining the authentication procedure to be performed, transmitting a response including authentication data to the first network node, the response including an indicator indicating the authentication procedure and an indicator indicating that the subscriber information includes the anonymous identifier” (claim 13) improves the functioning of the computer by preserving subscription identifier privacy by allowing for use of an anonymous SUCI in an authentication procedure (note paragraphs [0032]-[0034] of Applicant’s Specification).
Improvements to the functioning of a computer are limitations that are indicative of integration into a practical application. Since claims 2, 8 and 13-16 are integrated into a practical application, they are eligible subject matter.
Step 2B
Claims 1, 3-7 and 9-12 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the extra-solution activities and generic computer components being used to perform mental processes are not sufficient to amount to significantly more than the judicial exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of an inventive concept. The additional elements of an AUSF node receiving an authentication request is well-understood, routine and conventional. There are no additional steps in claims 1, 3-7 and 9-12 which integrate the exception into a practical application by improving the functioning of the computer or implementing the judicial exception with a particular machine. Therefore, claims 1, 3-7 and 9-12 are not patent eligible.
5. 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.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 1, 4-7 and 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yang et al. (U.S. Patent Application Publication 2022/0295276; hereafter “Yang”).
For claims 1 and 7, Yang teaches a method and a first network node, configured to operate in a telecommunications network, wherein the first network node is an Authentication Server Function (AUSF) node and wherein the telecommunications network is a 5th generation, 5G, telecommunications network (note paragraph [0021], AUSF of 5G network), the first network node comprising:
processing circuitry and memory collectively configured to perform operations (note paragraphs [0044]-[0045], processor and memory) comprising:
receiving an authentication request associated with a communication device requesting registration with the telecommunications network, the authentication request including first subscriber information (note paragraph [0038], AUSF receives an authentication request from UE); and
determining that the first subscriber information comprises an anonymous Subscription Concealed Identifier (SUCI) containing an anonymous identifier (note paragraph [0038], AUSF determines request includes a dummy IMSI value with, e.g. all-zeroes MSIN values, to identify the UDM to which to forward the message).
For claims 4 and 10, Yang teaches claims 1 and 7, wherein the second network node is a unified data management, UDM, node (note paragraph [0038], message is forwarded to UDM).
For claims 5 and 11, Yang teaches claims 4 and 10, wherein determining the authentication procedure to be performed comprises determining the authentication procedure to be performed based on a second indicator (note paragraph [0038], UDM response includes an indicator UE passed authentication and values to use in an authentication procedure).
For claims 6 and 12, Yang teaches claims 1 and 7, wherein the authentication procedure comprises at least one of an extensible authentication protocol, EAP (note paragraph [0037], EAP-AKA procedure is used), transport layer security, TLS, and an EAP tunneled transport layer security, TTLS.
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.
7. Claims 2-3 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang as applied to claims 1 and 7 above, and further in view of Atarius et al. (U.S. Patent Application Publication 2023/0224704; hereafter “Atarius”).
For claims 2 and 8, Yang teaches claims 1 and 7, further comprising:
responsive to receiving the authentication request, transmitting a first message to a second network node, the first message including the first subscriber information (note paragraph [0038], authentication request message with subscriber information is forwarded to UDM); and
responsive to transmitting the first message to the second network node, receiving a second message from the second network node (note paragraph [0038], UDM response includes an indicator UE passed authentication and values to use in an authentication procedure),
Yang differs from the claimed invention in that they fail to teach:
the second message including a first indicator indicating that the first subscriber information includes the anonymous identifier and a second indicator indicating an authentication procedure, and wherein determining that the first subscriber information includes the anonymous identifier comprises determining that the first subscriber information includes the anonymous identifier based on the first indicator.
Atarius teaches:
the second message including a first indicator indicating that the first subscriber information includes the anonymous identifier and a second indicator indicating an authentication procedure (note paragraph [0106], UDM response message includes initial pseudonym and authentication parameters), and wherein determining that the first subscriber information includes the anonymous identifier comprises determining that the first subscriber information includes the anonymous identifier based on the first indicator (note paragraph [0106], AUSF determines subscriber information is a pseudonym based on pseudonym in UDM message).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. It would have been obvious to one of ordinary skill to combine the user device 5G authentication of Yang and the registration message via 3GPP access network using a pseudonym for access authentication over non-3GPP network of Atarius. One of ordinary skill would have been motivated to combine Yang and Atarius because it would allow for maintaining subscriber privacy when performing access authentication over a non-3GPP network (note paragraphs [0038]-[0039] of Atarius).
For claims 3 and 9, the combination of Yang and Atarius teaches claims 1 and 7, wherein the authentication request further includes an indicator indicating that the communication device is a non-5G capable, N5GC, device (note Fig. 2 and paragraph [0094] of Atarius, step 221, authentication request includes indicates support for non-3GPP access with a pseudonym), and wherein determining that the first subscriber information includes the anonymous identifier comprises determining that the first subscriber information includes the anonymous identifier based on the authentication request including the indicator indicating that the communication device is a N5GC device (note paragraph [0106] of Atarius, AUSF determines subscriber information is a pseudonym based on pseudonym in UDM message).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. It would have been obvious to one of ordinary skill to combine the user device 5G authentication of Yang and the registration message via 3GPP access network using a pseudonym for access authentication over non-3GPP network of Atarius. One of ordinary skill would have been motivated to combine Yang and Atarius because it would allow for maintaining subscriber privacy when performing access authentication over a non-3GPP network (note paragraphs [0038]-[0039] of Atarius).
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.
8. Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,245,022. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
12,245,022
Claims 1 and 7, a method and a first network node, configured to operate in a telecommunications network, wherein the first network node is an Authentication Server Function (AUSF) node and wherein the telecommunications network is a 5th generation, 5G, telecommunications network, the first network node comprising:
processing circuitry and memory collectively configured to perform operations comprising:
receiving an authentication request associated with a communication device requesting registration with the telecommunications network, the authentication request including first subscriber information; and
determining that the first subscriber information comprises an anonymous Subscription Concealed Identifier (SUCI) containing an anonymous identifier.
Claims 1 and 15, a method of operating a first network node in a telecommunications network, wherein the first network node is an Authentication Server Function (AUSF) node and wherein the telecommunications network is a 5th generation, 5G, telecommunications network, first network node, comprising:
processing circuitry and memory collectively configured to:
receive an authentication request associated with a communication device requesting registration with the telecommunications network, the authentication request including first subscriber information;
determine that the first subscriber information comprises an anonymous Subscription Concealed Identifier (SUCI) containing an anonymous identifier; and generate second subscriber information based on the first subscriber information
Claims 2 and 8
Claims 2 and 16
Claims 3 and 9
Claims 4 and 18
Claims 4 and 10
Claims 7 and 21
Claims 5 and 11
Claims 9 and 23
Claims 6 and 12
Claims 10 and 24
Claim 13 A method of operating a second network node in a telecommunications network, wherein the second network node comprises a unified data management, UDM, node and wherein the telecommunications network is a 5th generation, 5G, telecommunications network, the method comprising:
receiving, from a first network node comprising an Authentication Server Function (AUSF), a request for authentication data associated with a communication device requesting registration with the telecommunications network, the request including first subscriber information;
responsive to receiving the request, determining that the first subscriber information comprises an anonymous subscription concealed identifier (SUCI) containing includes an anonymous identifier;
responsive to determining that the first subscriber information includes the anonymous identifier, determining an authentication procedure to be performed; and
responsive to determining the authentication procedure to be performed, transmitting a response including authentication data to the first network node, the response including an indicator indicating the authentication procedure and an indicator indicating that the subscriber information includes the anonymous identifier.
Claim 11 A method of operating a second network node in a telecommunications network, wherein the second network node comprises a unified data management, UDM, node and wherein the telecommunications network is a 5th generation, 5G, telecommunications network, the method comprising:
receiving, from a first network node comprising an Authentication Server Function (AUSF), an authentication request associated with a communication device requesting registration with the telecommunications network, the authentication request including first subscriber information;
responsive to receiving the authentication request, determining that the first subscriber information comprises an anonymous subscription concealed identifier (SUCI) containing an anonymous identifier;
responsive to determining that the first subscriber information includes the anonymous identifier, determining an authentication procedure to be performed; and
responsive to determining the authentication procedure to be performed, transmitting an authentication response to the first network node, the authentication response including an indicator indicating the authentication procedure and an indicator indicating that the subscriber information includes the anonymous identifier.
Claim 14
Claim 12
Claim 15
Claim 13
Claim 16
Claim 14
Claim 1-28 of U.S. Patent No. 12,245,022 contain every element of claims 1-16 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Allowable Subject Matter
9. Claims 13-16 would be allowable with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
For independent claim 13, the prior art of record, alone or in combination, fails to teach the following limitations in conjunction with the rest of the claimed limitations:
determining that the first subscriber information comprises an anonymous subscription concealed identifier (SUCI) includes an anonymous identifier; responsive to determining that the first subscriber information includes the anonymous identifier, determining an authentication procedure to be performed; … the response including an indicator indicating the authentication procedure and an indicator indicating that the subscriber information includes the anonymous identifier
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nix (U.S. Patent Application Publication 2022/0264300) discloses EAP-TLS authentication in a 5G network with a concealed user identity (note Abstract and Fig. 2).
Salkintzis et al. (U.S. Patent Application Publication 2023/0262455) discloses determining an authentication type for 5G authentication of a device using non-3GPP access network (note Fig. 2B)
Kunz et al. (U.S. Patent Application Publication 2023/0262463) discloses 5G network authentication using a concealed identity (note Fig. 2A-2C).
Yu (U.S. Patent Application Publication 2022/0007277) discloses anonymous slice IDs and temporary subscriber identifiers when attaching to a network (note paragraphs [0066]-[0069]).
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407
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