Prosecution Insights
Last updated: August 18, 2026
Application No. 16/058,915

SIGNALING USER EQUIPMENT CAPABILITY INFORMATION

Final Rejection §103
Filed
Aug 08, 2018
Priority
Aug 11, 2017 — provisional 62/544,658
Examiner
PEREZ, JOSE L
Art Unit
2474
Tech Center
2400 — Computer Networks
Assignee
Qualcomm Incorporated
OA Round
12 (Final)
52%
Grant Probability
Moderate
13-14
OA Rounds
0m
Est. Remaining
93%
With Interview

Examiner Intelligence

Grants 52% of resolved cases
52%
Career Allowance Rate
117 granted / 225 resolved
-6.0% vs TC avg
Strong +41% interview lift
Without
With
+41.0%
Interview Lift
resolved cases with interview
Typical timeline
4y 1m
Avg Prosecution
13 currently pending
Career history
252
Total Applications
across all art units

Statute-Specific Performance

§101
7.7%
-32.3% vs TC avg
§103
49.6%
+9.6% vs TC avg
§102
11.6%
-28.4% vs TC avg
§112
30.1%
-9.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 225 resolved cases

Office Action

§103
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 . Response to Arguments Applicant’s amendments have overcome the objections to claims 1, 11, 21, and 30 and thus, the corresponding objections have been withdrawn. Applicant’s amendments have overcome the 35 U.S.C. § 112(b) rejections for claims 1, 11, 21 and thus, the corresponding rejections have been withdrawn. Applicant’s arguments on pages 8-12 with respect to 35 U.S.C § 103 rejection of claim(s) 1, 11, and 21 have been considered but are moot based on new grounds of rejection necessitated by applicant’s amendments. For a complete response, applicant’s arguments for claim) include “without any comparison between modes or identification of differences” on page 11 and “UE capability information is generated by identifying differences between capability sets of different modes or by selecting corresponding IEs. There is no disclosure or suggestion of determining which capabilities differ between, for example, a normal coverage mode and a coverage enhanced mode and then constructing UE capability information as a subset of IEs reflecting only those differences” on page 12. The examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “without any comparison between modes or identification of differences” on page 11 and “UE capability information is generated by identifying differences between capability sets of different modes or by selecting corresponding IEs. There is no disclosure or suggestion of determining which capabilities differ between, for example, a normal coverage mode and a coverage enhanced mode and then constructing UE capability information as a subset of IEs reflecting only those differences” on page 12) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim(s) merely indicate “wherein the UE capability information comprises a subset of information elements (IEs) selected from among IEs defined for non-coverage enhanced UE in normal coverage” not commensurate with applicant’s argument and thus, applicant’s arguments are non-persuasive. As indicated in the OA of 1/23/2026, the examiner respectfully recommends amendments to clearly refer to elements that are included and elements that are explicitly excluded. Further, the examiner respectfully recommends amendments to clearly capture subject matter as apparently argued (i.e. the UE comparing between modes / identifying differences, selecting IEs, constructing UE capability information that excludes particular information), and to point to corresponding support in the disclosure. Alternative rejections have been provided in an effort to assist in furthering prosecution. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim(s) 1-4, 6-14, 16-23, and 25-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mildh et al. (US 2014/0169277 A1) hereinafter Mildh in view of Vamanan et al. (US 2017/0215065 A1, cited as pertinent art in the OA of 5/8/2023) hereinafter Vamanan, and further in view of Jain et al. (US 2021/0029618 A1, made of record in the interview summary of 10/27/2023) hereinafter Jain. Regarding claim 1, Mildh teaches a method of wireless communication of a user equipment (UE) (user equipment (UE) 120; para. 31-59 and Figs. 1-5), comprising: establishing, by the UE, a connection with a base station (connection complete message from UE 120 to base station (BS) 100; para. 35-36); and sending, by the UE to the base station, UE capability information for one or more capabilities in response to a trigger (UE transmits UE capability information to BS in response to request; para. [14, 16-17, 40-43, 55, 57] and Figs. 2-4 step 60), and wherein the UE capability information comprises a subset, the subset corresponding to capabilities that differ between different modes (UE capability information includes only parts that change based on changed UE capabilities; para. [32-33, 40-43]). While Mildh discloses normal mode, radio resource control (RRC) and information elements (IEs) including capability information, Mildh does not explicitly disclose wherein the UE capability information is based on UE support for the one or more capabilities in a first coverage mode and UE support for the one or more capabilities in a second coverage mode. However, in the same field of endeavor, Vamanan teaches wherein the UE capability information is based on UE support for the one or more capabilities in a first coverage mode and UE support for the one or more capabilities in a second coverage mode (UE switches configurations based on operating environment [first / second coverage mode]; para. 40-43, UE capability information in first operating mode includes list of all capabilities of UE; para. 46, UE capability information in other operating modes include list of capabilities corresponding to mode; para. 47-51). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Vamanan to the system of Mildh, where Mildh’s maintaining UE capability information in different points (para. 9-11) along with Vamanan’s signaling of UE capabilities (para. [03, 12]) improves the communication system by enabling communication with UEs having varying capabilities and activating functionalities based on different operating conditions. While Vamanan discloses normal mode, UE capability information, and RRC messaging, the combination of Mildh and Vamanan does not explicitly disclose wherein the UE capability information comprises a subset of information elements (IEs) selected from among IEs defined for non-coverage enhanced UE in normal coverage, the subset of IEs corresponding to capabilities that differ between different coverage modes. However, in the same field of endeavor, Jain teaches wherein the UE capability information comprises a subset of information elements (IEs) (UE radio capability information element (IE); para. [55, 59, 221, 246], only changes [subset] in UE radio capability IE are transmitted; para. [55, 69]) selected from among IEs defined for non-coverage enhanced UE in normal coverage (instead of [select] complete radio capability [non-coverage enhance UE in normal coverage]; para. [55, 69]), the subset of IEs corresponding to capabilities that differ between different coverage modes (only changes in capability are transmitted; para. [55, 69]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh and Vamanan, where Mildh and Vamanan’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 2, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. While Mildh discloses multiple operating modes, Mildh does not explicitly disclose wherein the first coverage mode is a non-coverage enhanced mode. However, in the same field of endeavor, Vamanan further teaches wherein the first coverage mode is a non-coverage enhanced mode (normal mode including all available capabilities when supported; para. [21, 30-31, 46]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Vamanan to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Vamanan’s signaling of UE capabilities (para. [03, 12]) improves the communication system by enabling communication with UEs having varying capabilities and activating functionalities based on different operating conditions. While the combination of Mildh and Vamanan discloses multiple operating modes, the combination of Mildh and Vamanan does not explicitly disclose the second coverage mode is a coverage enhanced mode. However, in the same field of endeavor, Jain further teaches the second coverage mode is a coverage enhanced mode (coverage enhanced (CE) mode; para. [51, 55-56, 64-77, 178]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 3, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. While the combination of Mildh and Vamanan discloses multiple operating modes, the combination of Mildh and Vamanan does not explicitly disclose wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode. However, in the same field of endeavor, Jain further teaches wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode (different CE modes, CE mode A and CE mode B, use in new CE modes; para. [51, 69]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 4, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. While the combination of Mildh and Vamanan discloses sending capabilities when capabilities / modes change, the combination of Mildh and Vamanan does not explicitly disclose switching from the first coverage mode to the second coverage mode, wherein the trigger includes the switching from the first coverage mode to the second coverage mode. However, in the same field of endeavor, Jain further teaches switching from the first coverage mode to the second coverage mode (UE indicates usage setting [mode switch] in tracking area update (TAU); para. [19, 63-65, 71, 175] and Fig. 10 steps 1002-1008), wherein the trigger includes the switching from the first coverage mode to the second coverage mode (UE indicates usage setting [mode switch] in TAU [trigger]; para. [19, 63-65, 71, 175] and Fig. 10 steps 1002-1008). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 6, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. While the combination of Mildh and Vamanan discloses sending capabilities when capabilities / modes change, the combination of Mildh and Vamanan does not explicitly disclose further comprising: switching from the first coverage mode to the second coverage mode; receiving, by the UE, a UE capability request from the base station based on switching from the first coverage mode to the second coverage mode, wherein the trigger includes the receipt of the UE capability request. However, in the same field of endeavor, Jain further teaches further comprising: switching from the first coverage mode to the second coverage mode (UE indicates usage setting [mode switch] in TAU; para. [19, 61-65, 71, 175] and Fig. 10 steps 1002-1008); receiving, by the UE, a UE capability request from the base station based on switching from the first coverage mode to the second coverage mode (UE receives UE capability enquiry message after TAU; para. [177] and Fig. 10 steps 1002-1008), wherein the trigger includes the receipt of the UE capability request (UE indicates usage setting [mode switch] in TAU, UE transmits UE capabilities information in response to UE capability enquiry message after TAU; para. [19, 61-65, 71, 175-178] and Fig. 10 steps 1002-1008). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 7, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. Mildh further teaches wherein the connection is a Radio Resource Control (RRC) connection (connection complete message from UE 120 to BS 100 includes RRC signaling message connection complete / RRC connection reestablishment complete; para. 35-36). Regarding claim 8, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. Mildh further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode (UE capability information includes only parts that change based on changed UE capabilities [identified capabilities in different modes indicates different capabilities]; para. [32-33, 40-43]). Regarding claim 9, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. Mildh further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode (UE capability information includes only parts that change based on changed UE capabilities [excluded capabilities indicates excluded capabilities are same] and [alternatively] UE capability information includes full set of capabilities [same capabilities]; para. [32-33, 40-43]). Regarding claim 10, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 1. Mildh further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode (UE capability information includes only parts that change based on changed UE capabilities [identified capabilities in different modes indicates different capabilities] and [alternatively] UE capability information includes full set of capabilities [same capabilities]; para. [32-33, 40-43], examiner notes the use of alternative language here, thus, only one of the alternative features need to be shown by reference) or identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode (UE capability information includes only parts that change based on changed UE capabilities [excluded capabilities indicates excluded capabilities are same]; para. [32-33, 40-43]). Regarding claim 11, the claim is interpreted and rejected for the same reason as set forth in claim 1 including memory (memory; para. [30, 32]: Mildh); and at least one processor coupled to the memory, wherein the at least one processor is configured (processor coupled to memory; para. [30, 32]: Mildh). Regarding claim 12, the claim is interpreted and rejected for the same reason as set forth in claim 2. Regarding claim 13, the claim is interpreted and rejected for the same reason as set forth in claim 3. Regarding claim 14, the claim is interpreted and rejected for the same reason as set forth in claim 4. Regarding claim 16, the claim is interpreted and rejected for the same reason as set forth in claim 6. Regarding claim 17, the claim is interpreted and rejected for the same reason as set forth in claim 7. Regarding claim 18, the claim is interpreted and rejected for the same reason as set forth in claim 8. Regarding claim 19, the claim is interpreted and rejected for the same reason as set forth in claim 9. Regarding claim 20, the claim is interpreted and rejected for the same reason as set forth in claim 10. Regarding claim 21, the claim is interpreted and rejected for the same reason as set forth in claim 11. Regarding claim 22, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous 21. While Mildh discloses multiple operating modes, Mildh does not explicitly disclose wherein the first coverage mode is a non-coverage enhanced mode. However, in the same field of endeavor, Vamanan further teaches wherein the first coverage mode is a non-coverage enhanced mode (normal mode including all available capabilities when supported; para. [21, 30-31, 46], examiner notes the use of alternative language here, thus, only one of the alternative features need to be shown by reference). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Vamanan to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Vamanan’s signaling of UE capabilities (para. [03, 12]) improves the communication system by enabling communication with UEs having varying capabilities and activating functionalities based on different operating conditions. While the combination of Mildh and Vamanan discloses multiple operating modes, the combination of Mildh and Vamanan does not explicitly disclose the second coverage mode is a coverage enhanced mode, or wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode. However, in the same field of endeavor, Jain further teaches the second coverage mode is a coverage enhanced mode (CE mode; para. [51, 55-56, 64-77, 178], examiner notes the use of alternative language here, thus, only one of the alternative features need to be shown by reference) or wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode (different CE modes, CE mode A and CE mode B, use in new CE modes; para. [51, 69], examiner notes the use of alternative language here, thus, only one of the alternative features need to be shown by reference). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Jain to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Jain’s UE usage setting change (para. 04) improves the system by allowing the base station to be informed of UE usage setting change. Regarding claim 23, the claim is interpreted and rejected for the same reason as set forth in claim 14. Regarding claim 25, the claim is interpreted and rejected for the same reason as set forth in claim 16. Regarding claim 26, the claim is interpreted and rejected for the same reason as set forth in claim 17. Regarding claim 27, the claim is interpreted and rejected for the same reason as set forth in claim 18. Regarding claim 28, the claim is interpreted and rejected for the same reason as set forth in claim 19. Regarding claim 29, the claim is interpreted and rejected for the same reason as set forth in claim 20. Regarding claim 30, the claim is interpreted and rejected for the same reason as set forth in claim 11, including a non-transitory computer-readable medium having instructions stored thereon that, when executed by at least one processor of a UE (processor coupled to memory encoded with program for implementation; para. 30: Mildh). Claim(s) 5, 15, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mildh in view of Vamanan, further in view of Jain, and further in view of Futaki (US 2017/0238302 A1) hereinafter Futaki. Regarding claim 5, the combination of Mildh, Vamanan, and Jain teaches the limitation of previous claim 4. The combination of Mildh, Vamanan, and Jain does not explicitly disclose receiving, by the UE, a signal from the base station; and determining, by the UE, a property of the signal, wherein the switching from the first coverage mode to the second coverage mode is based on the property of the signal. However, in the same field of endeavor, Futaki teaches receiving, by the UE, a signal from the base station (UE acquires radio quality of downlink (DL) reference signal (RS) for reference signal received power (RSRP) / reference signal reception quality (RSRQ); para. 92-95 and para. 100, Fig. 1 showing UE 12 and BS 13); and determining, by the UE, a property of the signal (UE acquires DL radio quality including RSRP/RSRQ; para. 92-95 and para. 100), wherein the switching from the first coverage mode to the second coverage mode is based on the property of the signal (UE determines necessity of ECM based on radio quality; para. 66, UE determines necessity after connection establishment; para. 97, UE executes ECM after determination (switching from first to second coverage mode); para. 104). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Futaki to the modified system of Mildh, Vamanan, and Jain, where Mildh, Vamanan, and Jain’s modified system along with Futaki’s enabling delay tolerant access including in EC mode (para. 07) improves network resource usage by delaying transmission of delay tolerant applications with EC and rejecting connection requests by delay tolerant access when a BS is overloaded. Regarding claim 15, the claim is interpreted and rejected for the same reason as set forth in claim 5. Regarding claim 24, the claim is interpreted and rejected for the same reason as set forth in claim 15. Claim(s) 1-5, 7-15, 17-24, 26-30 is/are (alternatively) rejected under 35 U.S.C. 103 as being unpatentable over Yum et al. (US 2016/0157228 A1) hereinafter Yum in view of Su et al. (US 2018/0070282 A1, all citations are supported by US Provisional Application No. 62/384,890, filed 9/8/2016, and US Provisional Application No. 62/412,423, filed 10/25/2016) hereinafter Su. Regarding claim 1, Yum teaches a method of wireless communication of a user equipment (UE) (UE in wireless communication; para. [45, 51, 127] and Figs. 6-11, 13-15), comprising: establishing, by the UE, a connection with a base station (UE in connected state with BS; para. [83-88, 103] and Figs. 6-11, 13-14); and sending, by the UE to the base station, UE capability information for one or more capabilities in response to a trigger (UE sends UE capability information to BS in response to enquiry; para. [90, 104, 106] and Figs. 9-11, 13-14). While Yum discloses information element UECapabilityInformation, Yum does not explicitly disclose wherein the UE capability information is based on UE support for the one or more capabilities in a first coverage mode and UE support for the one or more capabilities in a second coverage mode, and wherein the UE capability information comprises a subset of information elements (IEs) selected from among IEs defined for non-coverage enhanced UE in normal coverage, the subset of IEs corresponding to capabilities that differ between different coverage modes. However, in the same field of endeavor, Su teaches wherein the UE capability information is based on UE support for the one or more capabilities in a first coverage mode and UE support for the one or more capabilities in a second coverage mode (bandwidth support in normal coverage and enhanced coverage; para. 102 and Fig. 7), and wherein the UE capability information comprises a subset of information elements (IEs) (indication of bandwidth [subset] using RRC message [information element] to request communication bandwidth; para. 92) selected from among IEs defined for non-coverage enhanced UE in normal coverage (bandwidth support in normal coverage [set]; para. [92, 102] and Fig. 7), the subset of IEs corresponding to capabilities that differ between different coverage modes (indication / request of bandwidth [subset] to request communication bandwidth [capabilities that differ between coverage modes]; para. [92, 102] and Fig. 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the system of Yum, where Yum’s efficient signaling of capability change (para. [10, 92-102]) along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 2, the combination of Yum and Su teaches the limitation of previous claim 1. Yum does not explicitly disclose wherein the first coverage mode is a non-coverage enhanced mode and the second coverage mode is a coverage enhanced mode. However, in the same field of endeavor, Su further teaches wherein the first coverage mode is a non-coverage enhanced mode and the second coverage mode is a coverage enhanced mode (switching between normal coverage mode and enhanced coverage mode; para. 102 and Fig. 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 3, the combination of Yum and Su teaches the limitation of previous claim 1. Yum does not explicitly disclose wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode. However, in the same field of endeavor, Su further teaches wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode (switching between multiple enhanced coverage modes; para. 63). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 4, the combination of Yum and Su teaches the limitation of previous claim 1. Yum does not explicitly disclose further comprising: switching from the first coverage mode to the second coverage mode, wherein the trigger includes the switching from the first coverage mode to the second coverage mode. However, in the same field of endeavor, Su further teaches further comprising: switching from the first coverage mode to the second coverage mode (determining which coverage modes to switch and switch; para. 71-73 and Fig. 5 steps 506-508), wherein the trigger includes the switching from the first coverage mode to the second coverage mode (switching performed prior to trigger; para. 65 and Fig. 5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 5, the combination of Yum and Su teaches the limitation of previous claim 4. While Yum discloses reference signal for measurement, Yum does not explicitly disclose further comprising: receiving, by the UE, a signal from the base station; and determining, by the UE, a property of the signal, wherein the switching from the first coverage mode to the second coverage mode is based on the property of the signal. However, in the same field of endeavor, Su further teaches further comprising: receiving, by the UE, a signal from the base station (UE measures signal from base station; para. 71 and Fig. 5 step 506); and determining, by the UE, a property of the signal (UE measures signal from base station including strength, quality other characteristics / metrics; para. 71 and Fig. 5 step 506), wherein the switching from the first coverage mode to the second coverage mode is based on the property of the signal (UE measures signal from base station and determines coverage mode based on measurements; para. 71 and Fig. 5 step 506-508). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 7, the combination of Yum and Su teaches the limitation of previous claim 1. Yum further teaches wherein the connection is a Radio Resource Control (RRC) connection (UE in RRC connected state with BS; para. [83-88, 103] and Figs. 6-11, 13-14). Regarding claim 8, the combination of Yum and Su teaches the limitation of previous claim 1. While Yum discloses UE capability information includes variable UE capability, Yum does not explicitly disclose wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode. However, in the same field of endeavor, Su further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode (UE transmits indication / request of bandwidth to request communication bandwidth [capabilities that differ between coverage modes]; para. [92, 102] and Fig. 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 9, the combination of Yum and Su teaches the limitation of previous claim 1. While Yum discloses UE capability information includes variable UE capability, Yum does not explicitly disclose wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode. However, in the same field of endeavor, Su further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode (UE transmits indication / request of bandwidth to request communication bandwidth [indicates (whether) capability is same or not]; para. [92, 102] and Fig. 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 10, the combination of Yum and Su teaches the limitation of previous claim 1. While Yum discloses UE capability information includes variable UE capability, Yum does not explicitly disclose wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode or identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode. However, in the same field of endeavor, Su further teaches wherein the UE capability information identifies whether UE support for the one or more capabilities in the first coverage mode is different than UE support for the one or more capabilities in the second coverage mode (UE transmits indication / request of bandwidth to request communication bandwidth [capabilities that differ between coverage modes]; para. [92, 102] and Fig. 7) or identifies whether UE support for the one or more capabilities in the first coverage mode is the same as UE support for the one or more capabilities in the second coverage mode (UE transmits indication / request of bandwidth to request communication bandwidth [indicates (whether) capability is same or not]; para. [92, 102] and Fig. 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 11, the claim is interpreted and rejected for the same reason as set forth in claim 1 including memory (memory 12/22; para. [127, 132] and Fig. 15: Yum); and at least one processor coupled to the memory, wherein the at least one processor is configured (processor 11/21 coupled to memory; para. [127, 132] and Fig. 15: Yum). Regarding claim 12, the claim is interpreted and rejected for the same reason as set forth in claim 2. Regarding claim 13, the claim is interpreted and rejected for the same reason as set forth in claim 3. Regarding claim 14, the claim is interpreted and rejected for the same reason as set forth in claim 4. Regarding claim 15, the claim is interpreted and rejected for the same reason as set forth in claim 5. Regarding claim 17, the claim is interpreted and rejected for the same reason as set forth in claim 7. Regarding claim 18, the claim is interpreted and rejected for the same reason as set forth in claim 8. Regarding claim 19, the claim is interpreted and rejected for the same reason as set forth in claim 9. Regarding claim 20, the claim is interpreted and rejected for the same reason as set forth in claim 10. Regarding claim 21, the claim is interpreted and rejected for the same reason as set forth in claim 11. Regarding claim 22, the combination of Yum and Su teaches the limitation of previous 21. While Yum discloses varying capabilities, Yum does not explicitly disclose wherein the first coverage mode is a non-coverage enhanced mode and the second coverage mode is a coverage enhanced mode, or wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode. However, in the same field of endeavor, Su further teaches wherein the first coverage mode is a non-coverage enhanced mode and the second coverage mode is a coverage enhanced mode (switching between normal coverage mode and enhanced coverage mode; para. 102 and Fig. 7), or wherein the first coverage mode is a first coverage enhanced mode and the second coverage mode is a second coverage enhanced mode (switching between multiple enhanced coverage modes; para. 63). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. Regarding claim 23, the claim is interpreted and rejected for the same reason as set forth in claim 14. Regarding claim 24, the claim is interpreted and rejected for the same reason as set forth in claim 15. Regarding claim 26, the claim is interpreted and rejected for the same reason as set forth in claim 17. Regarding claim 27, the claim is interpreted and rejected for the same reason as set forth in claim 18. Regarding claim 28, the claim is interpreted and rejected for the same reason as set forth in claim 19. Regarding claim 29, the claim is interpreted and rejected for the same reason as set forth in claim 20. Regarding claim 30, the claim is interpreted and rejected for the same reason as set forth in claim 11, including a non-transitory computer-readable medium having instructions stored thereon that, when executed by at least one processor of a UE (processor 11/21 coupled to memory storing program for execution by the processor; para. [127-128, 132] and Fig. 15: Yum). Claim(s) 6, 16, and 25 is/are (alternatively) rejected under 35 U.S.C. 103 as being unpatentable over Yum in view of Su, and further in view of Wang et al. (US 2018/0160298 A1). Regarding claim 6, the combination of Yum and Su teaches the limitation of previous claim 1. While the combination of Yum and Su discloses reference signal for measurement, the combination of Yum and Su does not explicitly disclose further comprising: switching from the first coverage mode to the second coverage mode; receiving, by the UE, a UE capability request from the base station based on switching from the first coverage mode to the second coverage mode, wherein the trigger includes the receipt of the UE capability request. However, in the same field of endeavor, Su further teaches further comprising: switching from the first coverage mode to the second coverage mode (determining which coverage modes to switch and switch; para. 71-73 and Fig. 5 steps 506-508). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Su to the modified system of Yum and Su, where Yum and Su’s modified system along with Su’s adapting to conditions (para. 08-09) improves the system by efficient signaling of capability changes due to changing conditions. While the combination of Yum and Su discloses UECapabilityEnquiry, the combination of Yum and Su does not explicitly disclose receiving, by the UE, a UE capability request from the base station based on switching from the first coverage mode to the second coverage mode, wherein the trigger includes the receipt of the UE capability request. However, in the same field of endeavor, Wang teaches receiving, by the UE, a UE capability request from the base station based on switching from the first coverage mode to the second coverage mode (UE receives capability enquiry from base station in response to tracking area update (TAU); para. 88 and Fig. 8 steps M805-M820, TAU used to inform network of mode change; para. 68), wherein the trigger includes the receipt of the UE capability request (UE transmits UE capability information in response to UE capability enquiry; para. 88 and Fig. 8 step M825). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Wang to the modified system of Yum and Su, where Yum and Su’s modified system along with Wang’s switching coverage modes (para. [01, 11]) improves user experience by avoiding coverage losses and interruption of voice / data connectivity. Regarding claim 16, the claim is interpreted and rejected for the same reason as set forth in claim 6. Regarding claim 25, the claim is interpreted and rejected for the same reason as set forth in claim 16. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Martin et al. (US 2018/0020366 A1) discloses a telecommunications apparatus and methods. US Provisional Application No. 62/384,890 (Su), having been made of record in the OA of 6/16/2022, and US Provisional Application No. 62/412,423 (also Su), having been made of record in the OA of 1/27/2024, are not included in the instant OA. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the 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 the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE L PEREZ whose telephone number is (571) 270-7348. The examiner can normally be reached M-F 11 am - 3 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/uspto-automated-interview-request-air-form. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Thier can be reached at (571) 272-2832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSE L PEREZ/Examiner, Art Unit 2474 /BENJAMIN H ELLIOTT IV/Primary Examiner, Art Unit 2474
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Prosecution Timeline

Show 31 earlier events
Mar 03, 2025
Non-Final Rejection mailed — §103
Jun 03, 2025
Response Filed
Jul 28, 2025
Final Rejection mailed — §103
Sep 26, 2025
Request for Continued Examination
Oct 07, 2025
Response after Non-Final Action
Jan 23, 2026
Non-Final Rejection mailed — §103
Apr 08, 2026
Response Filed
Jul 14, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

13-14
Expected OA Rounds
52%
Grant Probability
93%
With Interview (+41.0%)
4y 1m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 225 resolved cases by this examiner. Grant probability derived from career allowance rate.

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