`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`15/413,072
`
`01/23/2017
`
`Saad Ahmad
`
`lDC-11614US03
`
`3243
`
`24374
`7590
`11/21/2017
`VOLPE AND KOENIG, p.c. —
`DEPT. ICC
`DECKER, CASSANDRA L
`UNITED PLAZA
`30 SOUTH 17TH S TREET
`
`PAPER NUMBER
`
`PHILADELPHIA, PA 19103
`
`2466
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/21/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`eoffice @ volpe-koenig.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/413,072 AHMAD, SAAD
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2466CASSANDRA DECKER first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with 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).
`after SIX (6) MONTHS from the mailing date of this communication.
`If 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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 23 January 2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
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`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170620
`
`Disposition of Claims*
`5)|XI C|aim(s)1-_20is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s 1-_20 is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l C|aim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt ://\va.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
`
`
`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 30 March 2017is/are: a)IXI accepted or b)I:I objected to by the Examiner.
`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
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`

`

`Application/Control Number: 15/413,072
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`Page 2
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`Art Unit: 2466
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`Detailed Action
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
`
`Claim rejections — 35 U80 1 12(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 3-5, 13, 16-20 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
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
`
`the applicant regards as the invention.
`
`Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being incomplete for omitting essential steps, such omission amounting
`
`to a gap between the steps. See MPEP § 2172.01. The omitted steps are: steps
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`which relate the discovery process of claim 3 to the receiving and transmitting steps of
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`Claim 1.
`
`For Claim 4, it is unclear whether “configuration information” has antecedent
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`basis in Claim 1 (line 8).
`
`For Claim 5, it is unclear whether "configuration information" has antecedent
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`basis in the claim and what the configuration information is associated with.
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`

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`Application/Control Number: 15/413,072
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`Page 3
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`Art Unit: 2466
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`For Claim 13, it is unclear whether “a WLAN ProSe ID” has antecedent basis in
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`Claim 11 (line 7).
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`Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being incomplete for omitting essential steps, such omission amounting
`
`to a gap between the steps. See MPEP § 2172.01. The omitted steps are: steps
`
`which relate the discovery step of claim 13 to the receiving, transmitting, and
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`establishing steps of Claim 11.
`
`For Claim 16, it is unclear whether the claim is directed to a WTRU or a WTRU
`
`method.
`
`For Claim 16, “the WTRU method” (line 3) lacks antecedent basis in the claim.
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`Also it is unclear how a method can comprise a transmitter and receiver as claimed.
`
`For Claim 18, it is unclear whether “a WLAN ProSe ID” has antecedent basis in
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`Claim 16 (line 7).
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`Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being incomplete for omitting essential elements, such omission
`
`amounting to a gap between the elements. See MPEP § 2172.01. The omitted
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`elements are: elements relating the configuration to perform a discovery process with
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`the transmitter, receiver, and configuration to establish a connection in Claim 16.
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`For Claim 19, “the network node” lacks 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 102
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`

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`Application/Control Number: 15/413,072
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`Page 4
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`Art Unit: 2466
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`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 pre-AIA 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`Claim(s) 1, 2, 6, 11, 12, 16, and 17, as understood in light of any rejections under
`
`35 USC 112, is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Yu
`
`et al. (US 2011/0098043).
`
`For Claim 1, Yu teaches a method for establishing a wireless local area network
`
`(WLAN) proximity service (ProSe) connectivity between a first WLAN ProSe capable
`
`wireless transmit/receive unit (WTRU) and a second WLAN ProSe capable WTRU (see
`
`Figure 6, paragraph 84: WTRUs establish D2D connection), the method comprising:
`
`receiving a request from the first WLAN ProSe capable WTRU to establish a
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`WLAN ProSe connection to the second WLAN ProSe capable WTRU, the request
`
`including at least an identification of the second WLAN ProSe capable WTRU (see
`
`paragraphs 71, 82, and 89); and
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`transmitting a configuration message with configuration information associated
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`with the second WLAN ProSe capable WTRU, wherein the configuration information
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`

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`Page 5
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`Art Unit: 2466
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`includes at least one of: WLAN ID of the second WLAN ProSe capable WTRU , a
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`medium access control (MAC) ID of the second WLAN ProSe capable WTRU, a
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`frequency or channel number, a beacon interval, and timing information (see
`
`paragraphs 74, 83, and 91).
`
`For Claim 2, Yu teaches the method, further comprising: determining WLAN
`
`ProSe capabilities of the first WLAN ProSe capable WTRU and the second WLAN
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`ProSe capable WTRU (see paragraphs 85, 87 and 95, 97: D2D registration by WTRUs
`
`is an indication of capabilities).
`
`For Claim 6, Yu teaches the method, wherein the configuration message is an
`
`implicit indication to start the WLAN ProSe connection (see paragraphs 74, 83, 91:
`
`allocation of resources to be used is at least an implicit indication to start using the
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`resources).
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`For Claims 11 and 16, Yu teaches a method and a first WLAN ProSe capable
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`wireless transmit/receive unit (WTRU), comprising a receiver and transmitter (see
`
`paragraph 40) for establishing direct wireless local area network (WLAN) proximity
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`service (ProSe) connectivity with a second WLAN ProSe capable WTRU (see Figure 6,
`
`paragraph 84: WTRUs establish D2D connection), the method comprising:
`
`transmitting a request from the first WLAN ProSe capable WTRU to establish a
`
`WLAN ProSe connection with the second WLAN ProSe capable WTRU, the request
`
`including at least an identification of the second WLAN ProSe capable WTRU (see
`
`paragraphs 71, 82, and 89);
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`

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`Page 6
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`Art Unit: 2466
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`receiving a configuration message with configuration information that is
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`associated with the second WLAN ProSe capable WTRU, wherein the configuration
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`information includes at least one of: WLAN ID of the second WLAN ProSe capable
`
`WTRU, a medium access control (MAC) ID of the second WLAN ProSe capable WTRU,
`
`a frequency or channel number, a beacon interval, and timing information (see
`
`paragraphs 74, 83, and 91); and
`
`establishing a direct WLAN ProSe connection with the second WLAN ProSe
`
`capable WTRU based on the configuration message (see paragraph 83, Figure 5 item
`
`550; paragraph 91, Figure 6 item 656).
`
`For Claims 12 and 17, Yu teaches the method and WTRU, further comprising:
`
`transmitting WLAN ProSe capabilities to a network node (see paragraphs 85, 87 and
`
`95, 97: D2D registration by WTRUs is an indication of capabilities).
`
`Claim rejections — 35 USC 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`

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`Page 7
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`Art Unit: 2466
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
`
`Claims 3-5, as understood in light of rejections under 35 USC 112, are rejected
`
`under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu et al. (US
`
`2011/0098043) as applied to claim 1 above, and further in view of Calcev et al. (US
`
`9622156, citing provisional application no. 61716235, filed on 19 October 2012).
`
`For Claim 3, Yu as applied above is not explicit as to, but Calcev teaches the
`
`method, further comprising: performing discovery of at least one WLAN access point
`
`(AP) (see paragraph 2: discovery).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to allow for discovery as in Calcev when operating a multimode device in the
`
`system of Yu. One of ordinary skill would have been able to do so with the reasonably
`
`predictable result of providing a mechanism for vertical handover and improving network
`
`performance by offloading traffic to other networks.
`
`For Claim 4, Yu as applied above is not explicit as to, but Calcev further teaches
`
`the method, further comprising: receiving configuration information from the at least one
`
`WLAN AP (see paragraph 4: query; paragraphs 27-30, 58: information received).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to provide for interaction with the WLAN as in Calcev when operating a
`
`multimode device in the system of Yu. One of ordinary skill would have been able to do
`
`

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`Page 8
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`Art Unit: 2466
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`so with the reasonably predictable result of providing a mechanism for vertical handover
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`and improving network performance by offloading traffic to other networks.
`
`For Claim 5, while Yu teaches a ProSe server (see paragraph 35), Yu as applied
`
`above is not explicit as to, but Calcev teaches the method, further comprising: querying
`
`a server for a list of WLAN APs and associated configuration information (see
`
`paragraphs 4, 28, 33, 37, 39, and 45: query process; paragraphs 3, 40, 42: server).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to provide for interaction with the WLAN as in Calcev when operating a
`
`multimode device in the system of Yu. One of ordinary skill would have been able to do
`
`so with the reasonably predictable result of providing a mechanism for vertical handover
`
`and improving network performance by offloading traffic to other networks.
`
`Claims 7, 8, 15, and 20 as understood in light of any rejections under 35 USC
`
`112, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu et al.
`
`(US 2011/0098043) as applied to claims 1, 11, and 16 above, and further in view of
`
`Hakola et al. (US 2013/0013926).
`
`For Claim 7, Yu as applied above is not explicit as to, but Hakola teaches the
`
`method, wherein the configuration message includes an explicit indication to start the
`
`WLAN ProSe connection (see paragraphs 36, 42).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to provide an indication as in Hakola when switching to a ProSe connection in
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`

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`Application/Control Number: 15/413,072
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`Page 9
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`Art Unit: 2466
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`the system of Yu. The motivation would be to ensure that the ProSe connection is
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`establish at an appropriate time.
`
`For Claims 8, 15, and 20, Yu as applied above is not explicit as to, but Hakola
`
`teaches the method, wherein the configuration message is one of a radio resource
`
`control (RRC) or a Non-access stratum (NAS) message (see paragraphs 36, 42).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to use RRC messaging as in Hakola when configuring and switching to a
`
`ProSe connection in the system of Yu. One of ordinary skill would have been able to do
`
`so with the reasonably predictable result of using a known type of messaging for
`
`managing resources.
`
`Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Yu et al. (US 2011/0098043) as applied to claim 1 above, and further in view of Van
`
`Phan et al. (US 2015/0062154).
`
`For Claim 9, Yu as applied above is not explicit as to, but Van Phan teaches the
`
`method, further comprising: transmitting identification of established radio bearers that
`
`need to be switched to the WLAN ProSe connection (see paragraphs 31, 35-37:
`
`signaling, established bearer information).
`
`Thus it would have been obvious to a person of ordinary skill in the art at the time
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`of invention to include bearer information as in Van Phan during signaling regarding the
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`ProSe connection of Yu. The motivation would be for the network to ensure an
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`

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`Application/Control Number: 15/413,072
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`Page 10
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`Art Unit: 2466
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`appropriate level of service is maintained when the devices switch to the ProSe
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`connection.
`
`Claims 10, 14, and 19, as understood in light of any rejections under 35 USC
`
`112, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu et al.
`
`(US 2011/0098043) as applied to claims 1, 11, and 16 above, and further in view of
`
`Fodor et al. (US 2014/0122607).
`
`For Claim 10, Yu as applied above is not explicit as to, but Fodor teaches the
`
`method, further comprising: transmitting address information of the second WLAN
`
`ProSe capable WTRU to the first WLAN ProSe capable WTRU (see paragraphs 101,
`
`102: WTRU receives this information as part of the establishing the ProSe connection).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to provide address information as in Fodor when establishing the ProSe
`
`communication as in Yu. The motivation would be to ensure the WTRUs have the
`
`means to communication with each other and maintain their session.
`
`For Claims 14 and 19, though Yu does indicate that the registration process is
`
`part of a location area update (see paragraph 70), Yu as applied above is not explicit as
`
`to, but Fodor teaches the method, further comprising: transmitting location information
`
`of the first WLAN ProSe capable WTRU to the network node (see paragraph 87).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to provide location information as in Fodor during registration for ProSe
`
`

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`Application/Control Number: 15/413,072
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`Page 11
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`Art Unit: 2466
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`communications as in Yu. The motivation would be to provide the network with means
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`to determine which WTRUs are in appropriate locations for ProSe communications.
`
`Claim 13 and 18, as understood in light of any rejections under 35 USC 112, are
`
`rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Yu et al. (US
`
`2011/0098043) as applied to claims 11 and 16 above, and further in view of
`
`Venkatachalam et al. (US 2014/0092885).
`
`For Claims 13 and 18, Yu as applied above is not explicit as to, but
`
`Venkatachalam teaches the method, further comprising: performing a discovery process
`
`using a WLAN ProSe ID (see paragraphs 69, 71).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to perform the discovery process as in Venkatachalam when implementing the
`
`system of Yu. The motivation would be to improve network performance by offloading
`
`related signaling to the WLAN.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CASSANDRA DECKER whose telephone number is
`
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`

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`Application/Control Number: 15/413,072
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`Page 12
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`
`/CASSANDRA DECKER/
`
`Examiner, Art Unit 2466
`6/20/2017
`
`/FARUK HAMZA/
`
`Supervisory Patent Examiner, Art Unit 2466
`
`