IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`In the PATENT APPLICATION of:
`
`Our File:
`
`IDC-20 12P00609USO 1
`(IDC-11614US03)
`
`Date: June 12’ 2020
`
`InterDigital Patent Holdings, Inc.
`
`Application No.: 15/413,072
`
`.
`.
`Confirmatlon N0.. 3243
`Filed:
`January 23, 2017
`For: METHODS TO ENABLE WLAN
`PROXIMITY SERVICE
`
`Group:
`
`Examiner:
`
`2466
`
`DECKER, CASSANDRA L
`
`REASONS FOR PRE—APPEAL BRIEF REQUEST FOR REVIEW
`
`Mail Stop AF
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`This Communication is being filed in response to the Final Office Action
`
`dated March 12, 2020 (hereinafter “Office Action”). A Pre-Appeal Brief Review is
`
`hereby requested in the above application for the following reasons:
`
`Claim 1 has Proper Antecedent Basis
`
`Claim 1, 2, and 8-10 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 inventors regard as the invention.
`
`6309827-1
`
`
`
`PATENT
`
`In the PATENT APPLICATION of:
`
`Our File:
`
`IDC-20 12P00609USO 1
`(IDC-11614US03)
`
`Date: June 12’ 2020
`
`InterDigital Patent Holdings, Inc.
`
`Application No.: 15/413,072
`
`.
`.
`Confirmatlon N0.. 3243
`Filed:
`January 23, 2017
`For: METHODS TO ENABLE WLAN
`PROXIMITY SERVICE
`
`Group:
`
`Examiner:
`
`2466
`
`DECKER, CASSANDRA L
`
`REASONS FOR PRE—APPEAL BRIEF REQUEST FOR REVIEW
`
`Mail Stop AF
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`This Communication is being filed in response to the Final Office Action
`
`dated March 12, 2020 (hereinafter “Office Action”). A Pre-Appeal Brief Review is
`
`hereby requested in the above application for the following reasons:
`
`Claim 1 has Proper Antecedent Basis
`
`Claim 1, 2, and 8-10 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 inventors regard as the invention.
`
`6309827-1
`
`
`
`Applicant: InterDigital Patent Holdings, Inc.
`Application N0.: 15/413,072
`
`The Office Action on page 3 recites that claim 1 “appears to have antecedent
`
`basis in the claim [,]” however proceeds to reject the claim and its dependents. No
`
`other basis under section 1 12 is given for the Applicant to respond to.
`
`Respectfully, for at least the reason that claim 1 does have appropriate
`
`antecedent basis for each and every element, thus it appropriately points out and
`
`distinctly claims the subject matter, the Applicant respectfully requests the
`
`rejection over claim 1 and its dependents be withdrawn.
`
`Final Office Action Does Not Give a Reason to Combine the Cited
`
`References
`
`Claims 1, 2, 10-12, 14, 15, 17, and 19 are rejected under pre-AIA 35 U.S.C.
`
`103(a) as being unpatentable over Johnsson et al. (US 2014/0036793) (hereinafter
`
`“Johnsson”) in view of Mgrdechian et al. (US 201 1/0276412) (hereinafter
`
`“Mgrdechian”), Fodor et al. (US 2014/0122607) (hereinafter “Fodor”), and Yu et al.
`
`(US 2011/0098043) (hereinafter “Yu”).
`
`One of skill in the art would not combine Johnsson and Mgrdechian.
`
`Johnsson is directed to device-to-device discovery and communication. Mgrdechian
`
`is directed to dating and entertainment websites. One of skill in the art would not
`
`modify Johnsson to employ an identifier, for example, a username used in the
`
`dating website of Mgrdechian. This is true, because the identifier used in the UE
`
`discovery request of Johnsson, sent by a UE to the EPC, identifies a user equipment
`
`(UE) which is understood by other UEs and the EPC.
`
`In contrast, a username of the dating website of Mgrdechian, would not be
`
`understood to be the EPC of Johnsson. Furthermore, the dating website username
`
`_ 2 _
`
`
`
`Applicant: InterDigital Patent Holdings, Inc.
`Application N0.: 15/413,072
`
`does not directly identify a UE operable in a wireless network such as Johnsson.
`
`Instead, the username of Mgrdechian identifies a particular user of the web based
`
`entertainment system. The username does not identify user equipment such that
`
`the EPC of Johnsson would be able to identify a UE from it. This is because the
`
`username correlates to a user of a website. For example, the FDA cites paragraph
`
`28 of Mgrdechian, however this paragraph refers to the use of identification to
`
`download images correlated with a different user’s account. The identification is not
`
`directly correlated to a UE or even device-device communication.
`
`Yu and Fodor do not solve the deficiencies of Johnson and Mgrdechian.
`
`Respectfully, for at least the reason given above, the Applicant respectfully
`
`submits that Johnsson, Mgrdechian, Fodor, and Yu, alone or in combination fail to
`
`teach all the elements of claim 1. Claims 1 1 and 16 recite similar elements to claim
`
`1 and are also not taught by the cited references of record for the same reasons
`
`given above.
`
`Despite and in addition to the arguments above, the rejection of claim 1 is
`
`improper in that the reasons given on Pages 3 and 4 of the FDA why the
`
`combination of elements from Johnsson, Mgrdechian, Fodor, and Yu would be made
`
`by one skilled in the art rely on the benefit of hindsight. As stated in the Applicant’s
`
`Reply filed January 31, 2020, Mgrdechian, Fodor, and Yu “are silent as to a ProSe
`
`function receiving ‘a request from the first WLAN ProSe capable WTRU, for EPC
`
`support to establish a WLAN ProSe connection to the second WLAN ProSe capable
`
`WTRU...’ as is required by amended claim 1. By providing a ProSe function in the
`
`EPC to support the establishment of a WLAN ProSe connection, the EPC may
`
`_ 3 _
`
`
`
`Applicant: InterDigital Patent Holdings, Inc.
`Application N0.: 15/413,072
`
`maintain control of charging policies for offline (outside of EPC) communications.
`
`This functionality is not taught, or suggested, by the cited five-way combination of
`
`references detailed above.” (See 1/31/2020 Reply, page 7) The FDA declined to
`
`address this argument, instead concluding it was moot in light of Johnsson and
`
`asserted new grounds of rejection. However, this fails to provide rationale for why
`
`the cited references now render ProSe functionality in the EPC obvious.
`
`Particularly in light of the above argument regarding Mgrdechian.
`
`As MPEP § 2 143 states “[t]he key to supporting any rejection under 35 U.S.C.
`
`103 is the clear articulation of the reasons why the claimed invention would have
`
`been obvious. The Supreme Court in KSR noted that the analysis supporting a
`
`rejection under 35 U.S.C. 103 should be made explicit.” Moreover, the Supreme
`
`Court in KSR stated, “a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art.
`
`[I]t can be important to identify a reason that would have prompted
`
`a person of ordinary skill in the relevant field to combine the elements in the way
`
`the claimed invention does.” KSR Int'l Co. v. Teleflex Inc., 550 U. S. 398, 418
`
`(2007).
`
`
`
`Applicant: InterDigital Patent Holdings, Inc.
`Application No.: 15/413,072
`
`Conclusion
`
`In View of the foregoing remarks, Applicant respectfully requests a
`
`Pre-Appeal Brief Review and a notice to that effect is respectfully requested.
`
`Respectfully submitted,
`
`InterDigital Patent Holdings, Inc.
`
`By /Wesley T. McMichael/
`Wesley T. McMichael
`Registration No. 56,982
`
`Volpe and Koenig, PC.
`30 South 17th Street, 18th Fl.
`
`Philadelphia, PA 19103-4009
`Telephone: (215) 568-6400
`Facsimile:
`(215) 568-6499
`
`WTM/srp
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
