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 .
This Office Action is responsive to application 19/117,633 that entered the national stage on April 2, 2025, and presented 62 claims. By way of the preliminary amendment of April 2, 2025, claims 1, 4, 6-9, 11-12, 15-16, 19-21, and 24 are amended, and claims 17-18, 22-23, and 25-62 are cancelled. Thus, claims 1-16, 19-21, and 24 remain pending in the application.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “120” in Fig. 1 has been used to designate both “gNB-DU” and “gNB,” and “1408” in Fig. 14 has been used to designate both “Radio Front-End Circuitry” and “Power Source.” Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
I. Written Description Requirement under § 112(a)
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 1-10 and 24 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. Claims 1 and 24 each recite, “security key known only by the PEMC UE and an authentication server function, AUSF, of the communication network.” The issue of complying with the written description requirement arises because the description fails to describe how a security key is created that is known by more than one party.
While symmetric keys are shared by two parties, private keys in a private-public key pair are only known to one party—these are the two, well-known methods to secure communication via encryption. However, the 3GPP Technical Report 23.700-88 V18.0.0 states, “Editor's note: The generation of PIN security key will be revised based on SA WG3 study.” Based upon this statement, the generation of the “security key” is not trivial and requires “study.” Thus, more is involved than the typical communication supported by Public Key Instructure.
The disclosure fails to provide any information that relates to generating a security key that can be “known only by the PEMC UE and an authentication server function, AUSF.” At most, the disclosure offers statements that mirror the language found in claims 1 and 24 and offers nothing to suggest a “study” that yielded a means to generate a “security key” with the claimed privacy and security properties.
Claim 11, which depends upon claim 1, is not rejected under section § 112(a) because it claims “security key is Kausf,” and to the extent a Kausf key can inherently be known only by the UE and AUSF, then one skilled in the art would not need to conduct a “study” to generate a key with the claimed privacy and security property.
Dependent claims 2-10 are rejected under § 112(a) because they depend upon independent claim 1, and they fail to remedy the lack of compliance with the written description requirement.
II. Indefiniteness under § 112(b)
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.
Claim 12 is 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. Claim 12 recites the limitation "security key," and there is insufficient antecedent basis for this limitation in the claim. Claim 12 avoided a rejection under § 112(a), and the Examiner concludes that Applicant failed to initially recite “a security key known only by the PEMC UE and an authentication server function, AUSF, of the communication network.” While this potential oversight allowed claim 12 to escape a § 112(a) rejection, the oversight leads to a § 112(b) rejection for indefiniteness. Dependent claims 13-16 and 19-22 are similarly rejected under § 112(b) because they depend upon claim12 and fail to remedy the issue of indefiniteness.
Prior Art Made of Record
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: 1) Staufer (US 20240056302), 2) Staufer (US 2024/0056805), 3) Liang (US 2026/0254655), 4) Choudhury (US 2026/0223236) and 5) Kumar (US 2025/0212149).
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.
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, WILLIAM KORZUCH can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D'Arcy Winston Straub/Primary Examiner, Art Unit 2491
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