www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`96/000,317
`
`02/14/2020
`
`9549426
`
`16-010-SUP
`
`9169
`
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 S. WACKER DRIVE
`32ND FLOOR
`CHICAGO,IL 60606
`
`HENEGHAN, MATTHEW E
`
`3992
`
`MAIL DATE
`
`07/07/2020
`
`Pe NER
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`ERICSSON EXHIBIT 1016, Page 1
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`ERICSSON EXHIBIT 1016, Page 1
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`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`96/000,317
`
`Patent Under Reexamination
`9549426
`
`Examiner
`MATTHEW E HENEGHAN
`
`Art Unit
`3992
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`
`a.
`
`Responsive to the communication(s)filed on 99 April 2020.
`(J Adeclaration(s)affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`.
`
`b. (J This action is made FINAL.
`
`Cc.
`
`A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortenedstatutory period for responseto this action is set to expire 2 month(s) from the mailing date ofthis letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuanceof an eygarfe reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (30) days, a response within the statutory minimum ofthirty (30) days
`will be consideredtimely.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`Notice of References Cited by Examiner, PTO-892.
`3. Interview Summary, PTO-474.
`Information Disclosure Statement, PTO/SB/08.
`4.44
`.
`
`Part!
`1.
`2.
`
`Part Il
`
`ta.
`
`1b.
`
`2.
`
`SUMMARY OF ACTION
`
`Claims 1-17 are subject to reexamination.
`
`Claims _ are not subject to reexamination.
`
`Claims ___ have been canceledin the present reexamination proceeding.
`
`Claims __ are patentable and/or confirmed.
`
`YOOOSDO08 Acknowledgment is made ofthe priority claim under 35 U.S.C. 119(a)-(d) or (f).
`
`10. ( Other: cc: Requester (if third
`
`Claims 1-17 are rejected.
`
`Claims _ are objectedto.
`
`The drawings, filed on
`are acceptable.
`The proposed drawing correction, filed on
`
`has been (7a)
`
`(} approved (7b)
`
`() disapproved.
`
`a)
`
`All
`
`b)
`
`(J Some* c)
`
`(CJNone
`
`of the certified copies have
`
`1 (1 been received.
`
`2 (J not been received.
`
`3
`
`been filed in Application No. 14905143.
`
`4 ( been filed in reexamination Control No.
`
`5 (] been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9.
`
`(J Since the proceeding appears to be in condition for issuance of an exparte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordancewith the practice under Exparfe Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`U.S. Patent and Trademark Office
`PTOL-466(Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`PartofPaperNo.
`
`20200528
`
`ERICSSON EXHIBIT 1016, Page 2
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`ERICSSON EXHIBIT 1016, Page 2
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 1
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Supplemental ex parte reexamination has been granted in response to a request
`
`by the Patent Ownerfor U.S. Patent No. 9,549,426 to Mancevska et al. (hereinafter “the
`
`‘426 patent”), granted on 1/7 January 2017. The ‘426 patentfiled as a national stage
`
`entry under 35 U.S.C. 371 of PCT No. PCT/EP2014/065071,
`
`filed on 15 July 2014,
`
`claiming foreign priority to EP Patent Application No. 13176452, filed on 15 July 2013.
`
`The filing date of the Requestis 14 February 2020, for claims 1-17.
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 10 April 2020 wasfiled
`
`before the mailing date of the instant office action. The submission is in compliance
`
`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis
`
`being considered by the examiner.
`
`References Used for Reexamination
`
`ERICSSON EXHIBIT 1016, Page 3
`
`ERICSSON EXHIBIT 1016, Page 3
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 2
`
`The follow references have either been cited as establishing a Substantial New
`
`Question of Patentability (SNQ) or have been subsequently submitted by the Patent
`
`Ownerin an IDS, and are being considered in this office action:
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); LTE; Service requirements for Machine-Type
`
`Communications (MTC); Stage 1 (3GPP TS 22.368 version 11.6.0 Release 11); 2012-
`
`09-25; retrieved from
`
`https :/Awww.etsi.org/deliver/etsi_ts/122300_122399/122368/11.06.00_60/ts_1223
`
`68vl10600p.pdf, hereinafter “TS 22.368”
`
`3rdGeneration Partnership Project; Technical Specification Group Services and System
`
`Aspects; System Improvements for Machine-Type Communications (Release 11);
`
`3GPP TR 23.888 V2.0.0 (2012-OS); retrieved from
`
`https ://portal.3gpp.org/ngppapp/CreateTdoc.aspx?mode=view&contri bution Uid=SP-
`
`120489, hereinafter “TR 23.888"
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); LTE; Organization of subscriber data (3GPP TS
`
`23.008 version 11.6.0 Release 11); 2013-01-16; retrieved from
`
`https :/Awww.etsi.org/deliver/etsi_ts/123000_123099/123008/11.06.00_60/ts_123008vI
`
`10600p.pdf, hereinafter “TS 23.008”
`
`ERICSSON EXHIBIT 1016, Page 4
`
`ERICSSON EXHIBIT 1016, Page 4
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 3
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); General Packet Radio Service (GPRS); Service
`
`description; Stage 2 (3GPP TS 23.060 version 11.3.0 Release 11); 2012 11-14;
`
`retrieved from
`
`https ://www.etsi.org/deliver/etsi_ts/123000_123099/123060/II.03.00_60/ts_123060vI110
`
`300p.pdf, hereinafter “TS 23.060”
`
`3rd Generation Partnership Project; Technical Specification Group Services and System
`
`Aspects; General Packet Radio Service (GPRS) enhancements for Evolved Universal
`
`Terrestrial Radio Access Network (E-UTRAN) access (Release 12); 3GPP TS 23.401
`
`V12.0.0 (2013-03); retrieved from
`
`https ://portal.3gpp.org/deskto pmodules/Specifications/SpecificationDetails.aspx?s pecifi
`
`cationld=849, hereinafter “TS 23.401”
`
`Universal Mobile Telecommunications System (UMTS); LTE; Architecture
`
`enhancements for non-3GPP accesses (3GPP TS 23.402 version 11.5.1 Release 11);
`
`2013-02-15; retrieved from
`
`https :/Awww.etsi.org/deliver/etsi_ts/123400_123499/123402/11.05.01_60/ts_123402v11
`
`0501p.pdf, hereinafter “TS 23.402”
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); LTE; Network architecture (83GPP TS 23.002
`
`version 11.5.0 Release 11); 2013-01-10; retrieved from
`
`ERICSSON EXHIBIT 1016, Page 5
`
`ERICSSON EXHIBIT 1016, Page 5
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 4
`
`https ://www.etsi.org/deliver/etsi_ts/123000_123099/123002/11 .05.00_60/ts_123002v11
`
`0500p.pdf, hereinafter “TS 23.002”
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); Mobile Application Part (MAP) specification
`
`(8GPP TS 29.002 version 11.5.0 Release 11); 2013-01-28; retrieved from
`
`https :/Awww.etsi.Org/deliver/etsi_ts/129000_129099/129002/1 1.05.00_60/ts_129002v11
`
`0500p.pdf, hereinafter “TS29.002”
`
`Universal Mobile Telecommunications System (UMTS); LTE; Evolved Packet System
`
`(EPS); Mobility Management Entity (MME) and Serving GPRS Support Node (SGSN)
`
`related interfaces based on Diameter protocol (3GPP TS 29.272 version 11.5.0 Release
`
`11); 2013-01-29; retrieved from
`
`https :/Awww.etsi.org/deliver/etsi_ts/129200_129299/129272/Il.05.00_60/ts_1292 72vl
`
`10500p.pdf, hereinafter “TS 29.272”
`
`3rd Generation Partnership Project; Technical Specification Group Core Network and
`
`Terminals; Mobile radio interface Layer 3 specification; Core network protocols; Stage 3
`
`(Release 12); 3GPP TS 24.008 V12.2.0 (2013-06); retrieved from
`
`https ://portal.3gpp.org/deskto pmodules/Specifications/SpecificationDetails.aspx?s pecifi
`
`cationld=1015, hereinafter “TS 24.008”
`
`ERICSSON EXHIBIT 1016, Page 6
`
`ERICSSON EXHIBIT 1016, Page 6
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page5S
`
`Digital cellular telecommunications system (Phase 2+); Universal Mobile
`
`Telecommunications System (UMTS); Numbering, addressing and identification (3GPP
`
`TS 23.003 version 10.6.0 Release 10); 2013-01-16; retrieved from
`
`https :/www.etsi.org/deliver/etsi_ts/123000_123099/123003/10.06.00_60/ts_123003vl00
`
`600p.pdf, hereinafter “TS 23.003”
`
`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 usingit, in such full, clear, concise, and exact terms as to
`enable anypersonskilledin the art to whichit pertains, or with whichit is most nearly connected, to
`make and use the same,and shall set forth the best mode contemplated by the inventor or joint
`inventor of carrying out the invention.
`
`Claims 4 and 12 are rejected under 35 U.S.C. 112(a) as failing to comply with the
`
`written description requirement. The claim(s) contains subject matter which was not
`
`described in the specification in such a way as to reasonably conveyto one skilled in
`
`the relevant art that the inventor or a joint inventor had possession of the claimed
`
`invention.
`
`Claim 4 recites a method, wherein, above and beyond thelimitations of base
`
`claim 2, the receiving and storage ofthe first set of subscription data comprises 1)
`
`transmitting a request from the attach control node to the subscriber database in
`
`response to receiving an attach request from the user equipment at the attach control
`
`node, and receiving only the first set of subscription data on the basis of a partial
`
`transfer indication associated with the user equipmentin the subscription database; 2)
`
`ERICSSON EXHIBIT 1016, Page 7
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`ERICSSON EXHIBIT 1016, Page 7
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 6
`
`transmitting a request from the attach control node to the subscriber database, the
`
`request containing a partial transfer indication; and 3) receiving subscriber data from the
`
`subscriber database and storing onlyafirst set of subscriber data from the received
`
`subscriber data in response to a partial attach state indication in the attach control node.
`
`Looking to the instant disclosure, it is noted that the background discloses
`
`several “alternatives for storing the first set of subscription data’ (see the ‘426 Patent,
`
`column 5, lines 4-6). The first limitation of the claim is described in column 5, lines 7-16
`
`as one alternative;
`
`the second limitation is described in column 5 lines 17-46, as a
`
`secondalternative; and the third limitation is described in column 5, lines 47-53, as a
`
`third alternative.
`
`It is not clear that the patent background disclosesutilizing the three
`
`steps together as claimed.
`
`Claim 12 recites a telecommunications node wherein, above and beyond the
`
`limitations of base claim 11, the receiving and storing the first set of subscription data
`
`comprises: 1) transmitting a request from the telecommunications node to the
`
`subscriber database in response to receiving an attach request from the user equipment
`
`at the telecommunications node, and receiving only thefirst set of subscription data on
`
`the basis of a partial transfer indication associated with the user equipmentin the
`
`subscription database; 2) transmitting a request from the telecommunications node to
`
`the subscriber database, the request containing a partial transfer indication; and 3)
`
`receiving subscriber data from the subscriber database and storing onlyafirst set of
`
`subscriber data from the received subscriber data in response to a partial attach state
`
`indication in the telecommunications node.
`
`ERICSSON EXHIBIT 1016, Page 8
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`ERICSSON EXHIBIT 1016, Page 8
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 7
`
`Looking to the instant disclosure, it is noted that the background discloses
`
`several “alternatives for storing the first set of subscription data’ (see the ‘426 Patent,
`
`column 5, lines 4-6). The first limitation of the claim is described in column 5, lines 7-16
`
`as one alternative;
`
`the second limitation is described in column 5 lines 17-46, as a
`
`secondalternative; and the third limitation is described in column 5, lines 47-53, as a
`
`third alternative.
`
`It is not clear that the patent background disclosesutilizing the three
`
`steps together as claimed.
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventoror a joint inventor regards as the
`invention.
`
`Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to
`
`particularly point out and distinctly claim the subject matter which the inventor or a joint
`
`inventor.
`
`The term "insufficient" in claims 1, 8-10, and 16 is a relative term which renders
`
`the claim indefinite. The term "insufficient" is not defined by the claim, the specification
`
`does not provide a standard for ascertaining the requisite degree, and one of ordinary
`
`skill in the art would not be reasonably apprised of the scope of the invention.
`
`It is
`
`unclear from the specification how much subscription data would be deemed
`
`“insufficient,” as opposed to “sufficient,” for enabling establishing a communication
`
`session.
`
`Claims 2 and 11 recites the limitation "the Network Access Mode parameter"in
`
`column 17, lines 7-8 and column 19, line 11, respectively. There is insufficient
`
`antecedent basis for this limitation in the claim.
`
`ERICSSON EXHIBIT 1016, Page 9
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`ERICSSON EXHIBIT 1016, Page 9
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`

`

`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 8
`
`Claim 12 is dependent upon base claim 11 and incorporatesall of the limitations
`
`of that claim, rendering it likewise indefinite.
`
`Regarding claims 1, 8, and 10, multiple steps to the claimed method are recited
`tt
`
`on a conditional basis ("if an authentication step is required...,”
`
`“if establishing a
`
`communication session is required”), making it unclear as to whether the metes and
`
`bounds of the claimed method encompass those steps.
`
`Regarding claims 6 and 14, a step to the claimed method is recited on a
`
`conditional basis ("if the telecommunications system is an LTE telecommunications
`
`system”), making it unclear as to whether the metes and bounds of the claimed method
`
`encompass those steps.
`
`Claim 9 recites the limitation “the attach control’ in column 18,
`
`line 32. There is
`
`insufficient antecedent basis for this limitation in the claim. It is being presumedthatthis
`
`refers to the attach control node.
`
`Further regarding claim 9, multiple steps to the claimed method are recited ona
`
`conditional basis ("if the attach control received authentication data in an authentication
`0 tt
`
`step...,”
`
`“if establishing a communication session is required”), making it unclear as to
`
`whether the metes and boundsof the claimed method encompass those steps.
`
`Regarding claim 16, multiple steps and structure to the claimed user equipment
`
`and method performed thereon are recited on a conditional basis (“if establishing a
`yn
`tt
`
`communication session is required,”
`yn
`tt
`
`“if the user equipment is an LTE type user
`
`equipment,”
`
`“processor’), making it unclear as to whether the metes and boundsof the
`
`claimed method encompass those steps.
`
`ERICSSON EXHIBIT 1016, Page 10
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`ERICSSON EXHIBIT 1016, Page 10
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 9
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`Further regarding claims 6, 7, and 14-16, the trademark LTE® cannotbe usedin
`
`a Claim as a limitation to identify or describe a particular material or product as the claim
`
`scope is uncertain since the trademark or trade name cannot be used properly to
`
`identify that material or product.
`
`Claim 2-5, 7, 11-13, and 17 depend upon baseclaims 1, 10, and 16 and
`
`incorporate all of their respective limitations, rendering those claims likewise indefinite.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g.,
`
`In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
`
`In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`
`may be used to overcome an actualor provisional rejection based on nonstatutory
`
`ERICSSON EXHIBIT 1016, Page 11
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`ERICSSON EXHIBIT 1016, Page 11
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 10
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
`
`706.02(1)(3) for applications not subject to examination under thefirst inventor to file
`
`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321(b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`
`
`Claims 1, 3, 5-10, and 13-15 are rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-4, 6, 7, 9, 10-13, and 17-19 of U.S.
`
`Patent No. 9,750,065 to Mancevska etal. (hereinafter “the ‘O65 Patent’). Although the
`
`claims at issue are not identical, they are not patentably distinct from each other
`
`because:
`
`ERICSSON EXHIBIT 1016, Page 12
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`ERICSSON EXHIBIT 1016, Page 12
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 11
`
`Regarding claim 1, the ‘065 Patent discloses a method for controlling an attach
`
`state of a user equipment in an attach control node of a telecommunications system
`
`further comprising a subscriber database containing subscription data of the user
`
`equipment, the method comprising (see preamble of claim 1): receiving in a first transfer
`
`stage a first set of subscription data from the subscriber database andstoring the first
`
`set of subscription data in the attach control node, wherein the first set of subscription
`
`data is insufficient for enabling establishing a communication session between the user
`
`equipment and the telecommunications system (see column 16, line 63 to column 17,
`
`line 4), and wherein,
`
`if an authentication step is required, authentication data are
`
`received in the attach control node prior to the receiving in the first transfer stage (see
`
`claim 2); if establishing a communication session is required between the user
`
`equipment and the telecommunications network, receiving in a secondtransfer stage
`
`following the first transfer stage at least one second set of subscription data from the
`
`subscriber database in the attach control node, and storing the secondsetof
`
`subscription data in the attach control node, wherein a combination ofthe first set of
`
`subscription data and the second set of subscription data is sufficient for enabling
`
`establishing a communication session between the user equipment and the
`
`telecommunications network (see claim 3, the claimed telecommunications network is a
`
`type of telecommunications system; since the embodimentis not mutually exclusive
`
`with that of claim 2,
`
`it would be obvious to combine the teachings of claims 2 and 3).
`
`Regarding claim 3, the additional
`
`limitation is anticipated by claim 4 of the ‘O65
`
`Patent.
`
`ERICSSON EXHIBIT 1016, Page 13
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`ERICSSON EXHIBIT 1016, Page 13
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 12
`
`Regarding claim 5, the additional
`
`limitation is anticipated by claim 8 of the ‘O65
`
`Patent.
`
`Patent.
`
`Patent.
`
`Regarding claim 6, the additional
`
`limitation is anticipated by claim 9 of the ‘O65
`
`Regarding claim 7, the additional
`
`limitation is anticipated by claim 10 of the ‘065
`
`Regarding claim 8, claim 11 of the ‘O65 Patent discloses a non-transitory
`
`computer-readable medium having instructions stored thereon that, upon execution by
`
`one or more processors of a telecommunications system comprising an attach control
`
`node and a subscriber database containing subscription data of a user equipment,
`
`cause the one or more processorsto carry out operations including: receiving inafirst
`
`transfer stage a first set of subscription data from the subscriber database and storing
`
`the first set of subscription data in the attach control node, wherein thefirst set of
`
`subscription data is insufficient for enabling establishing a communication session
`
`between the user equipment and the telecommunications system, and wherein,
`
`if an
`
`authentication step is required, authentication data are received in the attach control
`
`node prior to the receiving in the first transfer stage (see column 18, lines 21-26 and 30-
`
`39) and it would be obvious to further implementit using the additional method
`
`limitations of claim 3 of that patent.
`
`Regarding claim 9, claim 12 of the ‘065 Patent discloses a subscriber database
`
`system configured for use in a telecommunications system, wherein the
`
`telecommunications system comprises an attach control node, the subscriber database
`
`system comprising: a subscriber database containing subscription data of a user
`
`ERICSSON EXHIBIT 1016, Page 14
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`ERICSSON EXHIBIT 1016, Page 14
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 13
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`equipment; a processor having access to instructions that when executed cause the
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`
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`database system to carry out operations including: inafirst transfer stage, providing to
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`the attach control nodea first set of subscription data from the subscriber database,
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`wherein the first set of subscription data is insufficient for enabling establishing a
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`communication session between the user equipment and the telecommunications
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`system (see column 18, lines 44-58).
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`The ’065 Patent recites if the attach control received authentication data in an
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`authentication step, the first transfer stage is carried out following the authentication
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`step (see claim 2), and
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`if establishing a communication session is required between the user equipment
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`and the telecommunications network, then in a second transfer stage following the first
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`transfer stage, providing to the attach control node at least one second setof
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`subscription data from the subscriber database, wherein a combination of the first set of
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`subscription data and the second set of subscription data is sufficient for enabling
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`establishing a communication session between the user equipment and the
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`telecommunications network(claim 3).
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`Regarding claim 10, claim 13 of the ‘065 Patent discloses a telecommunications
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`node configured for use in a telecommunications system, wherein the
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`telecommunications system comprises a subscriber database containing subscription
`
`data of a user equipment, the telecommunications node comprising: a processor having
`
`access to instructions that when executed cause the telecommunications node to carry
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`out operations including: receiving in a first transfer stage a first set of subscription data
`
`from the subscriber database and storing the first set of subscription data in the
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`ERICSSON EXHIBIT 1016, Page 15
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`ERICSSON EXHIBIT 1016, Page 15
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`

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`Application/Control Number: 96/000, 317
`Art Unit: 3992
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`Page 14
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`telecommunications node, wherein the first set of subscription data is insufficient for
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`enabling establishing a communication session between the user equipment and the
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`telecommunications system (see column 18, line 63 to column 19, line 3 and column 19,
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`lines 7-14).
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`The ’065 further recites if an authentication step is required, authentication data
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`are received in the telecommunications node prior to the receiving in the first transfer
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`stage (see claim 2); and
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`if establishing a communication session is required between the user equipment
`
`and the telecommunications network, receiving in a second transfer stage following the
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`first transfer stage at least one second set of subscription data from the subscriber
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`database, and storing the second set of subscription data in the telecommunications
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`node, wherein a combination of the first set of subscription data and the secondset of
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`subscription data is sufficient for enabling establishing a communication session
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`between the user equipment and the telecommunications network (see claim 3).
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`Regarding claim 13, the additional
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`limitation is anticipated by claim 17 of the ‘065
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`Patent.
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`Patent.
`
`Patent.
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`Regarding claim 14, the additional
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`limitation is anticipated by claim 18 of the ‘065
`
`Regarding claim 15, the additional
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`limitation is anticipated by claim 19 of the ‘065
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`Claims 1, 3, 5-8, 10, and 13-15 are rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-4, 7-12, and 16-18 of U.S. Patent No.
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`ERICSSON EXHIBIT 1016, Page 16
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`ERICSSON EXHIBIT 1016, Page 16
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`Application/Control Number: 96/000, 317
`Art Unit: 3992
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`Page 15
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`9,907,101 to Mancevska etal. (hereinafter “the ‘101 Patent’). Although the claims at
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`issue are not identical, they are not patentably distinct from each other because:
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`Regarding claim 1, the ‘101 Patent discloses a method for controlling an attach
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`state of a user equipment in an attach control node of a telecommunications system
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`further comprising a subscriber database containing subscription data of the user
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`equipment, the method comprising (see column 16, lines 8-12): receiving in a first
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`transfer stage a first set of subscription data from the subscriber database and storing
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`the first set of subscription data in the attach control node, wherein thefirst set of
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`subscription data is insufficient for enabling establishing a communication session
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`between the user equipment and the telecommunications system (see column 16, lines
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`17-23), and wherein,
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`if an authentication step is required, authentication data are
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`received in the attach control node prior to the receiving in the first transfer stage (see
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`claim 2); if establishing a communication session is required between the user
`
`equipment and the telecommunications network, receiving in a secondtransfer stage
`
`following the first transfer stage at least one second set of subscription data from the
`
`subscriber database in the attach control node, and storing the secondsetof
`
`subscription data in the attach control node, wherein a combination ofthe first set of
`
`subscription data and the second set of subscription data is sufficient for enabling
`
`establishing a communication session between the user equipment and the
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`telecommunications network (see claim 3, the claimed telecommunications network is a
`
`type of telecommunications system; since the embodiment is not mutually exclusive
`
`with that of claim 2, it would be obvious to combine the teachings of claims 2 and 3).
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`Regarding claim 3, the additional
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`limitation is recited in claim 4 of the ‘101 Patent.
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`ERICSSON EXHIBIT 1016, Page 17
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`ERICSSON EXHIBIT 1016, Page 17
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`Application/Control Number: 96/000, 317
`Art Unit: 3992
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`Page 16
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`Regarding claim 5, the additional
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`limitation is recited in claim 8 of the ‘101 Patent.
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`Regarding claim 6, the additional
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`limitation is recited in claim 9 of the ‘101 Patent.
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`Regarding claim 7, the additional
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`limitation is recited in claim 10 of the ‘101
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`Patent.
`
`Regarding claim 8, the ‘101 Patent discloses a non-transitory computer-readable
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`medium having instructions stored thereon that, upon execution by one or more
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`processors of a telecommunications system comprising an attach control node and a
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`subscriber database containing subscription data of a user equipment, cause the one or
`
`more processorsto carry out operations including: receiving in a first transfer stage a
`
`first set of subscription data from the subscriber database andstoring the first set of
`
`subscription data in the attach control node, wherein the first set of subscription data is
`
`insufficient for enabling establishing a communication session between the user
`
`equipment and the telecommunications system, and wherein,
`
`if an authentication step is
`
`required, authentication data are received in the attach control node prior to the
`
`receiving in the first transfer stage (see claim 11, column 17, lines 39-44 and 49-58); if
`
`establishing a communication session is required between the user equipment and the
`
`telecommunications network, receiving in a second transfer stage following the first
`
`transfer stage at least one second set of subscription data from the subscriber database
`
`in the attach control node, and storing the second set of subscription data in the attach
`
`control node, wherein a combination of the first set of subscription data and the second
`
`set of subscription data is sufficient for enabling establishing a communication session
`
`between the user equipment and the telecommunications network (see claim 3, it would
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`ERICSSON EXHIBIT 1016, Page 18
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`ERICSSON EXHIBIT 1016, Page 18
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`Application/Control Number: 96/000, 317
`Art Unit: 3992
`
`Page 17
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`be obvious to further the instructions on the computer-readable medium with this
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`method limitation).
`
`Regarding claim 10, claim 12 of the ‘101 Patent discloses a telecommunications
`
`node configured for use in a telecommunications system, wherein the
`
`telecommunications system comprises a subscriber database containing subscription
`
`data of a user equipment, the telecommunications node comprising: a processor having
`
`access to instructions that when executed cause the telecommunications node to carry
`
`out operations including: receiving in a first transfer stage a first set of subscription data
`
`from the subscriber database and storing the first set of subscription data in the
`
`telecommunications node, wherein the first set of subscription data is insufficient for
`
`enabling establishing a communication session between the user equipment and the
`
`telecommunications system (see column 17, line 63 to column 18, line 3 and column 18,
`
`lines 8-14), and wherein, if an authentication step is required, authentication data are
`
`received in the telecommunications node prior to the receiving in the first transfer stage
`
`(see method of claim 2); if establishing a communication session is required between
`
`the user equipment and the telecommunications network, receiving in a second transfer
`
`stage following thefirst transfer stage at least one second set of subscription data from
`
`the subscriber database, and storing the second set of subscription data in the
`
`telecommunications node, wherein a combination ofthe first set of subscription data
`
`and the second set of subscription data is sufficient for enabling establishing a
`
`communication session between the user equipment and the telecommunications
`
`network (see claim 13).
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`ERICSSON EXHIBIT 1016, Page 19
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`ERICSSON EXHIBIT 1016, Page 19
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`Applicatio