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-l 1614USO3
`
`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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`03/15/2019
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`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.
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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 18 January 2019.
`[:1 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) C] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`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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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1—2,8—12,14—17 and 19—20 is/are rejected.
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`[:1 Claim(s)
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`is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] 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):] 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)D All
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`b)I:J Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] 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.
`
`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] 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 20190304
`
`

`

`Application/Control Number: 15/413,072
`Art Unit: 2466
`
`Page 2
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`DETAILED ACTION
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`This Office action is in response to the amendment filed 18 January 2019. 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.
`
`Claim Rejections - 35 USC § 112
`
`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 orjoint
`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, 2, 8-12, 14-17, 19, and 20 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)
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`contains subject matter which was not described in the specification in such a way as to reasonably
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`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the
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`inventor(s), at the time the application was filed, had possession of the claimed invention.
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`For the independent claims, the disclosure fails to teach ”the request including at least
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`an
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`application ID that identifies a third party ProSe application server”.
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`Remaining claims are rejected as depending from a rejected claim.
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`

`

`Application/Control Number: 15/413,072
`Art Unit: 2466
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`Page 3
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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.
`
`Claims 1, 2, 8, 11, 12, 15-17, and 20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Yu et al. (US 2011/0098043) in view of Pirzada et al. (US 2006/0073847), Hakola et al.
`
`(US 2013/0013926), and Van Phan et al. (US 2015/0289125).
`
`For Claim 1, Yu teaches a method for establishing a wireless local area network (WLAN)
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`proximity service (ProSe) connectivity between a first WLAN ProSe capable wireless transmit/receive
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`unit (WTRU) and a second WLAN ProSe capable WTRU (see Figure 6, paragraph 84: WTRUs establish
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`D2D connection), the method comprising:
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`receiving a request from the first WLAN ProSe capable WTRU to establish a WLAN ProSe
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`connection to the second WLAN ProSe capable WTRU, the request including at least an identification of
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`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 with the second
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`WLAN ProSe capable WTRU, wherein the configuration information includes: a frequency or channel
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`number and timing information (see paragraphs 74, 83, and 91).
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`Yu as applied above is not explicit as to, but Pirzada teaches the configuration information
`
`including a WLAN ID of the second WLAN ProSe capable WTRU , a medium access control (MAC) ID of
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`the second WLAN ProSe capable WTRU, a frequency or channel number, a beacon interval, and timing
`
`information (see paragraphs 28, 29: parameters for configuration process; paragraph 24: device to
`
`device, 802.11).
`
`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 parameters as in Pirzada when implementing the method of Yu. One of ordinary skill would have
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
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`Page 4
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`been able to do so with the reasonably predictable result of using known parameters to establish direct
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`links in a known type of network.
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`Though Yu teaches the configuration message being at least an implicit indication to establish
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`the WLAN ProSe connection (see paragraphs 74, 83, 91: allocation of resources to be used is at least an
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`implicit indication to establish a connection using the resources), the references as applied above are
`
`not explicit as to, but Hakola teaches the configuration message with configuration information
`
`associated with the second WLAN ProSe capable WTRU being an indication to establish 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 the system of Yu and Pirzada.
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`The motivation would be to ensure that the ProSe connection is established at an appropriate time.
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`The references as applied above are not explicit as to, but Van Phan teaches the request
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`including at least an application level identification of the second WLAN ProSe capable WTRU, and an
`
`application ID that identifies a third party ProSe application server (see paragraphs 28, 34, 38, 40, 41, 17:
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`application layer identifiers, discovery report identifies devices that were discovered; the proximity
`
`discovery devices may be terminal devices; paragraphs 16, 21, 28: discovery report to server, server
`
`operates at application layer, a report directed to a server must identify the server).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to use
`
`application level identification as in Van Phan when implementing an application level service such as
`
`D2D communications. One of ordinary skill would have been able to do so with the reasonably
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`predictable result of establishing a known type of service in a known manner.
`
`For Claim 2, Yu teaches the method, further comprising: determining WLAN ProSe capabilities of
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`the first WLAN ProSe capable WTRU and the second WLAN ProSe capable WTRU (see paragraphs 85, 87
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`and 95, 97: D2D registration by WTRUs is an indication of capabilities).
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
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`Page 5
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`For Claims 11 and 16, Yu teaches a method and a first WLAN ProSe capable wireless
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`transmit/receive unit (WTRU), comprising a receiver and transmitter (see paragraph 40) for establishing
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`direct wireless local area network (WLAN) proximity service (ProSe) connectivity with a second WLAN
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`ProSe capable WTRU (see Figure 6, paragraph 84: WTRUs establish D2D connection), the method
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`comprising:
`
`transmitting a request from the first WLAN ProSe capable WTRU to establish a WLAN ProSe
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`connection with the second WLAN ProSe capable WTRU, the request including at least an identification
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`of the second WLAN ProSe capable WTRU (see paragraphs 71, 82, and 89);
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`receiving a configuration message with configuration information that is associated with the
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`second WLAN ProSe capable WTRU, wherein the configuration information includes at least a frequency
`
`or channel number and timing information (see paragraphs 74, 83, and 91); 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 83, Figure 5 item 550; paragraph 91, Figure 6 item 656).
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`Yu as applied above is not explicit as to, but Pirzada teaches the configuration information
`
`including at least a 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 28, 29: parameters for configuration process; paragraph 24: device
`
`to device, 802.11).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to
`
`include parameters as in Pirzada when implementing the method of Yu. One of ordinary skill would have
`
`been able to do so with the reasonably predictable result of using known parameters to establish direct
`
`links in a known type of network.
`
`Though Yu teaches the configuration message being at least an implicit indication to establish
`
`the WLAN ProSe connection (see paragraphs 74, 83, 91: allocation of resources to be used is at least an
`
`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
`
`Page 6
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`implicit indication to establish a connection using the resources), the references as applied above are
`
`not explicit as to, but Hakola teaches the configuration message with configuration information
`
`associated with the second WLAN ProSe capable WTRU being an indication to establish 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 the system of Yu and Pirzada.
`
`The motivation would be to ensure that the ProSe connection is established at an appropriate time.
`
`The references as applied above are not explicit as to, but Van Phan teaches the request
`
`including at least an application level identification of the second WLAN ProSe capable WTRU, and an
`
`application ID that identifies a third party ProSe application server (see paragraphs 28, 34, 38, 40, 41, 17:
`
`application layer identifiers, discovery report identifies devices that were discovered; the proximity
`
`discovery devices may be terminal devices; paragraphs 16, 21, 28: discovery report to server, server
`
`operates at application layer, a report directed to a server must identify the server).
`
`Thus it would have been obvious to one of ordinary skill in the art at the time of invention to use
`
`application level identification as in Van Phan when implementing an application level service such as
`
`D2D communications. One of ordinary skill would have been able to do so with the reasonably
`
`predictable result of establishing a known type of service in a known manner.
`
`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
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`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 Yu.
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`One of ordinary skill would have been able to do so with the reasonably predictable result of using a
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`known type of messaging for managing resources.
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
`
`Page 7
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`For Claims 12 and 17, Yu teaches the method and WTRU, further comprising: transmitting
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`WLAN ProSe capabilities to a network node (see paragraphs 85, 87 and 95, 97: D2D registration by
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`WTRUs is an indication of capabilities).
`
`Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu et al. (US
`
`2011/0098043), Pirzada et al. (US 2006/0073847), Hakola et al. (US 2013/0013926), and Van Phan et al.
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`(US 2015/0289125) as applied to claim 1 above, and further in view of Van Phan et al. (US
`
`2015/0062154).
`
`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 Yu
`
`and Pirzada. 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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`Claims 10, 14, and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu
`
`et al. (US 2011/0098043), Pirzada et al. (US 2006/0073847), Hakola et al. (US 2013/0013926), and Van
`
`Phan et al. (US 2015/0289125) as applied to claims 1, 11, and 16 above, and further in view of Fodor et
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`al. (US 2014/0122607).
`
`For Claim 10, the references as applied above are not explicit as to, but Fodor teaches the
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`method, further comprising: receiving address information of the second WLAN ProSe capable WTRU at
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
`
`Page 8
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`the first WLAN ProSe capable WTRU (see paragraphs 101, 102: WTRU receives this information as part
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`of the establishing the ProSe connection).
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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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`provide address information as in Fodor when establishing the ProSe communication as in Yu and
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`Pirzada. The motivation would be to ensure the WTRUs have the means to communication with each
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`other and maintain their session.
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`For Claims 14 and 19, though Yu does indicate that the registration process is part of a location
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`area update (see paragraph 70), the references as applied above are not explicit as to, but Fodor teaches
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`the method, further comprising: transmitting location information of the first WLAN ProSe capable
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`WTRU to the network node (see paragraph 87).
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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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`provide location information as in Fodor during registration for ProSe communications as in Yu and
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`Pirzada. The motivation would be to provide the network with means to determine which WTRUs are in
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`appropriate locations for ProSe communications.
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`Response to Arguments
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`The amendment filed 18 January 2019 has been entered.
`
`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 SUC 103.
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
`
`Page 9
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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).
`
`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.
`
`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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`can normally be reached on 7:30 am - 4:00 pm.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Faruk Hamza can be reached on 571-272-7969. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`

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`Application/Control Number: 15/413,072
`Art Unit: 2466
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`Page 10
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`
`/CASSANDRA L DECKER/
`Examiner, Art Unit 2466
`
`3/4/2019
`
`/FARUK HAMZA/
`
`Supervisory Patent Examiner, Art Unit 2466
`
`