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 .
Claim Objections
As to claim 6, the phrase “The UE device of claim 3, wherein the information receiver configured to receive destination information […]” is grammatically incorrect. The phrase should read “The UE device of claim 3, wherein the information receiver is configured to receive destination information […]”, or something similar. 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.
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.
Claims 1-8 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.
As to claim 1, claim limitation “an information receiver configured to […]” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
As to claims 2-8, the claims are rejected due to their dependency on, and therefore inclusion of, the rejected subject matter of claim 1 discussed above.
As to claim 2, claim limitation “an applicant unit configured to […]” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of U.S. Patent No. 12,295,073. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of the patent.
Instant Application
The Patent
Claim 1
Claim 1
A UE device comprising:
an information receiver configured to receive changed server address information associated with a server of a data service from a base station device in a state in which a session for traffic transmission of the data service is established between the UE device and the server.
A base station device to provide data services between a user equipment (UE) and a data network, the base station device comprising: […]
determine a server address of an application server for a session for traffic transmission of a specific data service between a specific application in the UE and the application server;
determine, in real time, that a server address of the specific data service for the UE is changed in a state in which the session for traffic transmission of the specific data service between the specific application in the UE and the application server is established; and
in response to the determination that the server address of the specific data service is changed, transfer address information of the changed application server to the UE in real time such that the UE is to perform traffic transmission of the specific data service between the specific application in the UE and the changed application server using the transferred address information of the changed application server, […].
As to claims 2 and 3, the claims are anticipated by claim 1 of the patent.
As to claim 4, the claim is anticipated by claim 2 of the patent.
As to claim 5, the claim is anticipated by claim 1 of the patent.
As to claims 6-8, the claims are anticipated by claim 4 of the patent.
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.
(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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by TAJIMA (hereafter referred to as “Tajima”), U.S. Patent App. Pub. No. 2016/0165503 A1.
As to claim 1, Tajima discloses a UE device (Fig. 1; ¶ [0209]) comprising:
an information receiver configured to receive changed server address information associated with a server of a data service from a base station device in a state in which a session for traffic transmission of the data service is established between the UE device and the server (Fig. 1; ¶ [0209]).
As to claim 2, Tajima discloses an application unit configured to perform traffic transmission of the data service using the changed server address information when the changed server address information is received (¶ [0043]).
As to claim 3, Tajima discloses wherein the changed server address information is transferred from the base station device which is notified from a node of a control plane, to the UE device (¶ [0059]).
As to claim 4, Tajima discloses wherein the changed server address information is transferred when address information of the server based on a change of the server of the data service that is provided via a notification from the control plane is different from address information of the server that is monitored as being used for traffic transmission of the data service in a user plane (¶¶ [0043], [0059], and [0209]).
As to claim 6, Tajima discloses wherein the information receiver configured to receive destination information including a condition to be applied when the UE device uses the changed server address information, from the base station device (¶¶ [0043], [0059], and [0209]).
As to claim 7, Tajima discloses wherein the destination information comprises address information including at least one of addresses of link layer (L2), Internet layer (L3), transport layer (L4), and application layer (L7) according to Internet protocol suite in association with the changed server (¶¶ [0043], [0059], and [0209]).
As to claim 8, Tajima discloses wherein the destination information comprises at least one information of activation information associated with a time point of performing traffic transmission using the address information of the changed server, duration information associated with a performance period, information associated with a protocol apply scheme, and information associated with a protocol processing scheme (¶¶ [0043], [0059], and [0209]).
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under double patenting set forth in this Office action (or if an appropriate terminal disclaimer is filed and approved) and to include 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. See the Notice of References Cited (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Whipple whose telephone number is 571-270-1244. The examiner can normally be reached Mondays-Fridays from 9:50 AM to 3:50 PM ET and Saturdays from 9:50 AM to 7:50 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joon Hwang can be reached at 571-272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Whipple/
Primary Examiner
Art Unit 2447
7/11/26
Prosecution Insights