UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/413,072
`
`01/23/2017
`
`Saad Ahmad
`
`IDC-2012P00609USOI
`
`3243
`
`VOLPE AND KOENIG, P.C.
`DEPT. ICC
`30 SOUTH 17TH STREET — 18TH FLOOR
`
`PHILADELPHIA, PA 19103
`
`DECKER, CASSANDRA L
`
`2466
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/12/2020
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`eoffiee@volpe-koenig.eom
`
`PTOL-90A (Rev. 04/07)
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`

`

`0/7709 A0170” Summary
`
`Application No.
`15/413,072
`Examiner
`CASSANDRA L DECKER
`
`Applicant(s)
`Ahmad, Saad
`Art Unit
`2466
`
`AIA (FITF) Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 31 January 2020.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) D This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1—2,8—12,14—17 and 19—20 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss)
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`is/are allowed.
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`8)
`Claim(s 1 —2, 8— 12, 14— 17 and 19 —20 is/are rejected.
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`D Claim(ss_) is/are objected to.
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`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
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`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:] Some**
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`c)l:i None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200302
`
`

`

`Application/Control Number:15/413,072
`Art Unit22466
`
`Page2
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`DETAILED ACTION
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`This Office action is in response to the amendment filed 31 January 2020. Claims 1, 2, 8-12, 14-
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`17, 19, and 20 are pending in this application.
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre-AIA first to invent provisions.
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`Claim Rejections - 35 USC § 112
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`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, 2, and 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter
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`which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`For Claim 1 (penultimate line), ”EPC network” appears to have antecedent basis in the claim.
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`Remaining claims are rejected as depending from a rejected claim.
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`Claim Rejections - 35 USC § 103
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`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`prior Office action.
`
`

`

`Application/Control Number:15/413,072
`Art Unit22466
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`Page3
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`Claims 1, 2, 10-12, 14, 15, 17, and 19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Johnsson et al. (US 2014/0036793) in view of Mgrdechian et al. (US 2011/0276412),
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`Fodor et al. (US 2014/0122607), and Yu et al. (US 2011/0098043).
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`For Claim 1, Johnsson teaches a method, performed by a proximity service (ProSe) function
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`operating in an evolved packet core (EPC) network, for establishing a wireless local area network
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`(WLAN) proximity service (ProSe) connectivity between a first WLAN ProSe capable wireless
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`transmit/receive unit (WTRU) and a second WLAN ProSe capable WTRU (see abstract), the method
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`comprising:
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`receiving, at the ProSe function, a request from the first WLAN ProSe capable WTRU, for EPC
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`support to establish a WLAN ProSe connection to the second WLAN ProSe capable WTRU, the request
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`including at least an identification of the second WLAN ProSe capable WTRU (see paragraph 30: the
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`second WTRU is identified);
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`transmitting, by the ProSe function, a configuration message with configuration information
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`associated with the second WLAN ProSe capable WTRU, wherein the configuration information includes:
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`a WLAN ProSe ID that is associated with at least the second WLAN ProSe capable WTRU, and timing
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`information (see paragraphs 33, 34); and
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`wherein the configuration message with configuration information associated with the second
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`WLAN ProSe capable WTRU is an indication from EPC network to establish the WLAN ProSe connection
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`(see paragraphs 33, 34).
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`Johnsson as applied above is not explicit as to, but Mgrdechian teaches a request including an
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`application layer identification (ID) that is an identification of the second WLAN ProSe capable WTRU
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`(see paragraphs 28, 41: request from first device includes id of second device; paragraphs 45, 50, 75,
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`107: the id is used at the application layer).
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`

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`Application/Control Number:15/413,072
`Art Unit22466
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`Page4
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`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
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`include an identifier as in Mgrdechian when requesting to establish the connection as in Johnsson. The
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`motivation would be to ensure that information needed for desired functionality is provided.
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`Though Johnsson indicates that security information is obtained (see paragraph 27), the
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`references as applied above are not explicit as to, but Fodor teaches that a security key is provided to
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`the devices for a D2D link (see paragraph 100).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
`
`provide the key as in Fodor when implementing the method ofJohnsson. The motivation would be to
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`ensure that communications over the D2D link are secure.
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`The references as applied above are not explicit as to, but Yu teaches that a frequency or
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`channel number is provided (see paragraphs 74, 83, and 91).
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`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
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`include channel information as in Yu when implementing the method ofJohnsson. The motivation
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`would be to ensure that information needed for desired functionality is provided.
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`For Claim 2, Johnsson further teaches the method, further comprising: determining WLAN ProSe
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`capabilities of the first WLAN ProSe capable WTRU and the second WLAN ProSe capable WTRU (see
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`paragraphs 27, 45).
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`For Claim 10, Johnsson further teaches the method, further comprising: receiving address
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`information of the second WLAN ProSe capable WTRU at the first WLAN ProSe capable WTRU (see
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`paragraph 46: first WTRU is informed of other WTRUs).
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`For Claims 11 and 16, Johnsson teaches a method and a first WLAN ProSe capable wireless
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`transmit/receive unit (WTRU), comprising a receiver and transmitter (see paragraphs 53, 54) for
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`establishing direct wireless local area network (WLAN) proximity service (ProSe) connectivity with a
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`second WLAN ProSe capable WTRU (see abstract), the method comprising:
`
`

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`Application/Control Number:15/413,072
`Art Unit22466
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`Page5
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`transmitting, to a ProSe function operating in an evolved packet core (EPC) network, a request
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`from the first WLAN ProSe capable WTRU for EPC support to establish a WLAN ProSe connection with
`
`the second WLAN ProSe capable WTRU, the request including at least an identification of the second
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`WLAN ProSe capable WTRU (see paragraph 30);
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`receiving, from the ProSe function, a configuration message with configuration information that
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`is associated with the second WLAN ProSe capable WTRU, wherein the configuration information
`
`includes: a WLAN ProSe ID that is associated with at least the second WLAN ProSe capable WTRU, and
`
`timing information (see paragraphs 33, 34),
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`wherein the configuration message with configuration information is an indication from the EPC
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`network to establish the WLAN ProSe connection (see paragraphs 33, 34); and
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`establishing a direct WLAN ProSe connection with the second WLAN ProSe capable WTRU based
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`on the configuration message (see paragraph 34).
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`Johnsson as applied above is not explicit as to, but Mgrdechian teaches a request including an
`
`application layer identification (ID) that is an identification of the second WLAN ProSe capable WTRU
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`(see paragraphs 28, 41: request from first device includes id of second device; paragraphs 45, 50, 75,
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`107: the id is used at the application layer).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
`
`include an identifier as in Mgrdechian when requesting to establish the connection as in Johnsson. The
`
`motivation would be to ensure that information needed for desired functionality is provided.
`
`Though Johnsson indicates that security information is obtained (see paragraph 27), the
`
`references as applied above are not explicit as to, but Fodor teaches that a security key is provided to
`
`the devices for a D2D link (see paragraph 100).
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`

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`Application/Control Number:15/413,072
`Art Unit22466
`
`Page6
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`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
`
`provide the key as in Fodor when implementing the method ofJohnsson. The motivation would be to
`
`ensure that communications over the D2D link are secure.
`
`The references as applied above are not explicit as to, but Yu teaches that a frequency or
`
`channel number is provided (see paragraphs 74, 83, and 91).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
`
`include channel information as in Yu when implementing the method ofJohnsson. The motivation
`
`would be to ensure that information needed for desired functionality is provided.
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`For Claims 12 and 17, Johnsson further teaches the method, further comprising: transmitting
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`WLAN ProSe capabilities to a network node (see paragraphs 25, 27, 45).
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`For Claims 14 and 19, Johnson further teaches the method, further comprising: transmitting
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`location information of the first WLAN ProSe capable WTRU to the network node (see paragraph 29).
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`Claims 8, 15, and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Johnsson et al. (US 2014/0036793), Mgrdechian et al. (US 2011/0276412), Fodor et al. (US
`
`2014/0122607), and Yu et al. (US 2011/0098043) as applied to claims 1, 11, and 16 above, and further in
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`view of Hakola et al. (US 2013/0013926).
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`For Claims 8, 15, and 20, the references as applied above are not explicit as to, but Hakola
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`teaches the method, wherein the configuration message is one of a radio resource control (RRC) or a
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`Non-access stratum (NAS) message (see paragraphs 36, 42).
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`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to use
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`RRC messaging as in Hakola when configuring and switching to a ProSe connection in the system of
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`Johnsson. One of ordinary skill would have been able to do so with the reasonably predictable result of
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`using a known type of messaging for managing resources.
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`

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`Application/Control Number:15/413,072
`Art Unit22466
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`Page7
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`Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Johnsson et al. (US
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`2014/0036793), Mgrdechian et al. (US 2011/0276412), Fodor et al. (US 2014/0122607), and Yu et al. (US
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`2011/0098043) as applied to claim 1 above, and further in view of Van Phan et al. (US 2015/0062154).
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`For Claim 9, the references as applied above are not explicit as to, but Van Phan ’154 teaches
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`the method, further comprising: transmitting identification of established radio bearers that need to be
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`switched to the WLAN ProSe connection (see paragraphs 31, 35-37: signaling, established bearer
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`information).
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`Thus it would have been obvious to a person of ordinary skill in the art at the time of invention
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`to include bearer information as in Van Phan ’154 during signaling regarding the ProSe connection of
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`Johnsson. The motivation would be for the network to ensure an appropriate level of service is
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`maintained when the devices switch to the ProSe connection.
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`Response to Arguments
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`The amendment filed 31 January 2020 has been entered.
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`Applicant’s arguments with respect to the rejections under 35 USC 103 have been fully
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`considered, but are moot in view of the new grounds of rejection introduced herein. The claims remain
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`rejected under 35 USC 103.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`

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`Application/Control Number:15/413,072
`Art Unit22466
`
`Page8
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to CASSANDRA L DECKER whose telephone number is (571)270-3946. The examiner
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`Application/Control Number:15/413,072
`Art Unit22466
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`Page9
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`
`/CASSANDRA L DECKER/
`Examiner, Art Unit 2466
`
`3/2/2020
`
`/FARUK HAMZA/
`
`Supervisory Patent Examiner, Art Unit 2466
`
`