Prosecution Insights
Last updated: September 17, 2026
Application No. 16/561,337

METHODS AND APPARATUSES FOR SMALL DATA TRANSMISSIONS

Final Rejection §103
Filed
Sep 05, 2019
Priority
Sep 07, 2018 — provisional 62/728,571
Examiner
FOLLANSBEE, KEITH TRAN-DANH
Art Unit
2411
Tech Center
2400 — Computer Networks
Assignee
Sierra Wireless Inc.
OA Round
10 (Final)
61%
Grant Probability
Moderate
11-12
OA Rounds
0m
Est. Remaining
77%
With Interview

Examiner Intelligence

Grants 61% of resolved cases
61%
Career Allowance Rate
56 granted / 92 resolved
+2.9% vs TC avg
Strong +16% interview lift
Without
With
+15.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
28 currently pending
Career history
138
Total Applications
across all art units

Statute-Specific Performance

§101
1.8%
-38.2% vs TC avg
§103
66.3%
+26.3% vs TC avg
§102
16.3%
-23.7% vs TC avg
§112
12.9%
-27.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 92 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 . Claims 1, 10, 35, 36, 38, and 39 have been amended. Claims 5, and 14 have been canceled. 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 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. Claims 1, 6, 8, 10, 15-16, 34, 36, 37, 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma (U.S. Pub. No 2018/0139774) in view of Shiin (US20210314925), further in view of Fujishiro et al (US20210120622 herein after Fujishiro). Regarding claim 1, 10, Ma teaches A user equipment (UE) (Fig. 6A: “UE1”; [0053] a.k.a. “ED”, “as a user equipment/device (UE)”; [0062]: “Fig. 2A illustrates an example ED”) for small data transmission ([0208]: “UE1 for which a grant free allocation scheme is selected”), the UE comprising: a network interface ([0062]/Fig. 2A: “antenna or NIC 204”; [0056]/Fig. 2A: “air interface 190”) for receiving and transmitting data (Fig. 1: “air interface 190” Rx/Tx with “base station 170”); a processor (Fig. 2A: “processing unit 200”); and a non-transient memory (Fig. 2A: “memory 208”) for storing instructions that when executed by the processor cause the UE ([0064]: “memory 208 stores instructions … executed by the processing unit(s) 200”) to: receive initial configuration information, wherein the initial configuration information includes preconfigured uplink resource (PUR) configuration information ([0202] “In the step 603, a detailed resource allocation is provided to UE1 by the TPR. In step 604, UE1 operating in GF mode, performs the UL transmission based on the assigned transmission resource. Steps 601 to 604 are performed in a similar fashion to step 401 to 404 of FIG. 4A as described above”, [0230] “In all of the above scenarios, the transmission resources are based on preconfigured grant-free resources”) wherein the PUR configuration information includes information related to a frequency range and a time range for an uplink data transmission ([0005] “An example of uplink resources that may be granted by the base station is a set of time-frequency locations in an uplink orthogonal frequency-division multiple access (OFDMA) frame, this transmission mode is called grant based transmission”, [0081] “Table 306 is similar in scope to table 302, except instead of MA signatures, there is a one-to-one mapping between physical uplink resources used for the grant-free transmissions and UEs. Nine different time-frequency locations {A1, A2, A3, B1, B2, B3, C1, C2, and C3} are partitioned into initial and retransmission sets and assigned to each one of UEs 110a-c using a one-to-one mapping”), ([0202] “In step 604, UE1 operating in GF mode, performs the UL transmission based on the assigned transmission resource”, (examiner note: grant free or GF is equivalent to “without resource overhead required for a random-access process” defined in applicant’s specification [0042-44]”), wherein the assigned PUR uses the frequency range and the time range from the initial configuration information wherein the uplink data transmission is grant free ([0202] “In step 604, UE1 operating in GF mode, performs the UL transmission based on the assigned transmission resource”, ([0005] “An example of uplink resources that may be granted by the base station is a set of time-frequency locations in an uplink orthogonal frequency-division multiple access (OFDMA) frame, this transmission mode is called grant based transmission”, [0081] “Table 306 is similar in scope to table 302, except instead of MA signatures, there is a one-to-one mapping between physical uplink resources used for the grant-free transmissions and UEs. Nine different time-frequency locations {A1, A2, A3, B1, B2, B3, C1, C2, and C3} are partitioned into initial and retransmission sets and assigned to each one of UEs 110a-c using a one-to-one mapping”)), Ma does not teach of a PUR assigned to the UE and user specific search space (USS) configuration information for monitoring a downlink control channel for a downlink control information (DCI) identifier (ID), wherein the DCI ID is a preconfigured radio network temporary identifier (PC-RNTI) used as a UE ID and wherein the PC-RNTI is reused among a plurality of UEs; after receiving the initial configuration information, transition by the UE to idle mode; when the UE is in the idle mode, transmit uplink data in the assigned PUR to the network node, and wherein, when the UE has additional data pending for transmission to or reception from the network node, the uplink data transmission includes a request to place the UE in connected mode or an indication that additional data transmission is expected between the UE and the network node; receive while the UE is in the idle mode first downlink control information (DCI) on the downlink control channel in the USS, wherein the first DCI is indicative of an acknowledgement of the uplink data transmission, and wherein the first DCI is identified using the PC-RNTI and the USS configuration information; upon receipt of the first DCI, transition by the UE to the connected mode; receive a radio resource control (RRC) message with a cell radio network temporary identifier (C-RNTI) from the network node after receiving the first DCI, the C- RNTI configured to be used for subsequent transmission between the UE and the network node; receive, while the UE is in the connected mode, a subsequent DCI on the downlink control channel, wherein the subsequent DCI includes a downlink grant and the C-RNTI; and receive downlink data. Shin teaches of a PUR assigned to the UE and user specific search space (USS) configuration information for monitoring a downlink control channel for a downlink control information (DCI) identifier (ID) ([0023] “Information related to a preconfigured UL resource (PUR) is transmitted through radio resource control (RRC) signaling, and when a first search space related to the PUR and a second search space in which downlink control information (DCI) related to a specific operation is transmitted overlap with each other, the second search space has a priority”), wherein the DCI ID is a preconfigured radio network temporary identifier (PC-RNTI) used as a UE ID ([0271] “The eNB decides a PDCCH format according to the DCI to be sent to the UE and attaches cyclic redundancy check (CRC) to the control information. The CRC is masked with a radio network temporary identifier (RNTI) according to an owner or a purpose of the PDCCH. The CRC may be masked with a unique identifier (e.g., cell-RNTI (C-RNTI)) of the UE in the case of the PDCCH for a specific UE. Alternatively, in the case of the PDCCH for the paging message, the CRC may be masked with a paging indication identifier (e.g., paging-RNTI (P-RNTI)). In the case of the PDCCH for system information, more specifically, a system information block (SIB), the CRC may be masked with a system information-RNTI (SI-RNTI)”) and wherein the PC-RNTI is reused among a plurality of UEs ([0742] “the base station may configure the shared resource to a plurality of UEs through the RRC signaling or system information and a resource suitable for each UE may be configured to be selected by applying a UE ID or a UE specific value to a predetermined specific equation”); after receiving the initial configuration information, transition by the UE to idle mode; when the UE is in the idle mode, transmit uplink data in the assigned PUR to the network node ([0008] “a user equipment (UE), uplink data by using a preconfigured uplink (UL) resource (PUR) in a wireless communication system supporting a narrowband Internet of things (NB-IoT) system includes: receiving information related to the PUR for transmitting the uplink data in an RRC connected state; and transmitting the uplink data by using the PUR in an RRC idle state”), and wherein, when the UE has additional data pending for transmission to or reception from the network node, the uplink data transmission includes a request to place the UE in connected mode or an indication that additional data transmission is expected between the UE and the network node ([0574] “As a result, the UE may transmit an RRC connection resume request message to the base station in order to move to the RRC connected state”); ([0023] “Information related to a preconfigured UL resource (PUR) is transmitted through radio resource control (RRC) signaling, and when a first search space related to the PUR and a second search space in which downlink control information (DCI) related to a specific operation is transmitted overlap with each other, the second search space has a priority”) ([0023] “Information related to a preconfigured UL resource (PUR) is transmitted through radio resource control (RRC) signaling, and when a first search space related to the PUR and a second search space in which downlink control information (DCI) related to a specific operation is transmitted overlap with each other, the second search space has a priority” It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ma to incorporate the teachings of Shin. One of ordinary skill in the art would have been motivated to make this modification in order to increase the flexibility of the system. Shin does not teach receive while the UE is in the idle mode first downlink control information (DCI) on the downlink control channel in the USS, wherein the first DCI is indicative of an acknowledgement of the uplink data transmission, and wherein the first DCI is identified using the PC-RNTI and the USS configuration information; upon receipt of the first DCI, transition by the UE to the connected mode; receive a radio resource control (RRC) message with a cell radio network temporary identifier (C-RNTI) from the network node after receiving the first DCI, the C- RNTI configured to be used for subsequent transmission between the UE and the network node; receive, while the UE is in the connected mode, a subsequent DCI on the downlink control channel, wherein the subsequent DCI includes a downlink grant and the C-RNTI; and receive downlink data. Fujishiro teaches receive while the UE is in the idle mode first downlink control information (DCI) on the downlink control channel ([0124] “In step S111, the transmitter 210 of the eNB 200 transmits Msg4 to the UE 100. Specifically, the transmitter 210 of the eNB 200 transmits Msg4 (RRC Connection Resume) to the UE 100 via the PDSCH after transmitting the DCI (PDCCH)”)), wherein the first DCI is indicative of an acknowledgement of the uplink data transmission, and wherein the first DCI is identified using the PC-RNTI; upon receipt of the first DCI, transition by the UE to the connected mode ( [0107] “n step S106, the UE 100 selects a radio resource for uplink transmission in the GFT procedure. Specifically, the receiver 110 of the UE 100 receives, from the eNB 200, information indicating candidate radio resources for use in the transmission of the bit sequence, and the controller 130 of the UE 100 selects a radio resource for use in the transmission of the bit sequence from the candidate radio resources based on the identifier being held (in this operation example, the Resume ID or a portion thereof). By thus selecting a resource by means of an identifier, collision of resources between a plurality of UEs 100 can be suppressed”), Fig 8 “S111”, [0122] “For example, if it overlaps an RNTI (a portion of a Resume ID) already generated for another UE, the controller 130 of the eNB 200 determines to use a different RNTI as the C-RNTI”, [0124] “In step S111, the transmitter 210 of the eNB 200 transmits Msg4 to the UE 100. Specifically, the transmitter 210 of the eNB 200 transmits Msg4 (RRC Connection Resume) to the UE 100 via the PDSCH after transmitting the DCI (PDCCH)”); receive a radio resource control (RRC) message with a cell radio network temporary identifier (C-RNTI) from the network node after receiving the first DCI, the C- RNTI configured to be used for subsequent transmission between the UE and the network node ( [0107] “n step S106, the UE 100 selects a radio resource for uplink transmission in the GFT procedure. Specifically, the receiver 110 of the UE 100 receives, from the eNB 200, information indicating candidate radio resources for use in the transmission of the bit sequence, and the controller 130 of the UE 100 selects a radio resource for use in the transmission of the bit sequence from the candidate radio resources based on the identifier being held (in this operation example, the Resume ID or a portion thereof). By thus selecting a resource by means of an identifier, collision of resources between a plurality of UEs 100 can be suppressed”), Fig 8 “S111”, [0122] “For example, if it overlaps an RNTI (a portion of a Resume ID) already generated for another UE, the controller 130 of the eNB 200 determines to use a different RNTI as the C-RNTI”, [0124] “In step S111, the transmitter 210 of the eNB 200 transmits Msg4 to the UE 100. Specifically, the transmitter 210 of the eNB 200 transmits Msg4 (RRC Connection Resume) to the UE 100 via the PDSCH after transmitting the DCI (PDCCH)”); receive, while the UE is in the connected mode, a subsequent DCI on the downlink control channel, wherein the subsequent DCI includes a downlink grant and the C-RNTI; and receive downlink data ([0123-124] “Specifically, it generates DCI with a CRC parity bit scrambled with the portion of Resume ID being held …In step S111, the transmitter 210 of the eNB 200 transmits Msg4 to the UE 100… This Msg4 may include the C-RNTI.”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Ma, Shin to incorporate the teachings of Fujishiro. One of ordinary skill in the art would have been motivated to make this modification in order to minimize the signaling between the UE and network node. Regarding claims 6, 15, Ma, Shin does not teach wherein the UE indicates an expectation of the downlink data during configuration of uplink resources. However, Fujishiro teaches wherein the UE indicates an expectation of the downlink data during configuration of uplink resources (Fig 6 “Sending a scheduling request to the network”, “Waiting for DL (downlink) transmission”) It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ma, Shin to incorporate the teachings of Fujishiro to allow the UE indicates an expectation of the downlink data during configuration of uplink resources. One of ordinary skill in the art would have been motivated to make this modification in order to minimize power consumption by limiting time UE is waiting col 6 lines 54-60. Regarding claim 8, 16, Ma teaches wherein the PC-RNTI is assigned to the UE for one or more of dedicated time, frequency and signature resource (e.g. Fig 5A-5C, [0193] “allocate multiple MA CTUs for UE1”, MA CTU is defined in [0189] which are transmission resources of a set of time-frequency resources that are shared amongst a group of UEs”) Regarding claim 34, 37, Ma teaches DCI ID ([0209]: “each ACK may be associated with a UE ID” or “associated with an index identifying the MA signature of the uplink transmission being acknowledged”). Ma does not teach wherein the first DCI is scrambled with the ID. Shin teaches wherein the first DCI is scrambled with the ID ([0297] “The UE may validate the PDCCH including the SPS indication when all of the following conditions are satisfied. First, the CRC parity bit added for the PDCCH payload should be scrambled with the SPS C-RNTI”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ma to incorporate the teachings of Shin. One of ordinary skill in the art would have been motivated to make this modification in order to increase the flexibility of the system. Regarding claims 36, 39, Ma wherein the instructions when executed by the processor further cause the UE ([0064]: “memory 208 stores instructions … executed by the processing unit(s) 200”) to: include in a request for the initial configurations ([0115] “MA resources such as pilots can be associated with a preconfigured basic resource region… UEs can be pre-configured to access this basic resource region, each UE with pre-defined unique mapping”, Fig. 6A, “601 initial access”; [0209]: “UEs send respective data to the TRP in a respective grant-free uplink transmission”; [0003] refers “TRP” to “for example a base station”) Shin teaches the request to place the UE in the connected mode in response to the condition when the UE expects more uplink data to be sent after the uplink data transmission in the PUR or when the UE expects more downlink data to be received after the uplink transmission in PUR ([0574] “As a result, the UE may transmit an RRC connection resume request message to the base station in order to move to the RRC connected state”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ma to incorporate the teachings of Shin. One of ordinary skill in the art would have been motivated to make this modification in order to increase the flexibility of the system. Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Shin further in view of Fujishiro, and further in view of Ying (U.S. Pub No 2018/0323909). Regarding claim 7, Ma, Shin Fujishiro, does not teach wherein the UE indicates a non-expectation of downlink data packets during transmission of the uplink data to the network node. However, Ying teaches wherein the UE indicates a non-expectation of downlink data packets during transmission of the uplink data to the network node ([0065] “UE may retransmit the same TB at a configured resource without wait for the response … from the g/NB/eNB). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Ma, Shin, Fujushiro, to incorporate the teachings of Ying to allow the UE to transmit without waiting for the response. One of ordinary skill in the art would have been motivated to make this modification in order to allow the UE to minimize configuration time between the UE and the node. Claim(s) 35, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Shin, further in view of Fujishiro and further in view of Myung et al.(US 20210307036 herein after Myung). Regarding claims 35, 38, Ma, Shin, Fujishiro, does not teach wherein the instructions when executed by the processor further cause the UE to: include in the request for the initial configuration one or more of a desired connected mode discontinuous reception (C-DRX) period and a desired connected mode extended DRX (C-eDRX) period, wherein the desired C-DRX period and the desired C- eDRX period are used by the UE while the UE is in connected mode. However, Myung teaches wherein the instructions when executed by the processor further cause the UE ([0532] “The processor 2310 can implement functions, procedures and methods described in the present description”) to: include in the request for the initial configuration one or more of a desired connected mode discontinuous reception (C-DRX) period ([0722] “transmitted to the base station for a specified time in the connected mode or at a set time, the UE may perform a connected-mode DRX (C-DRX)”) and a desired connected mode extended DRX (C-eDRX) period ([0723] “When extended DRX (eDRX) is configured for the UE through higher-layer signaling (e.g., system information), the UE may perform an eDRX operation in the idle mode or the connected mode”), wherein the desired C-DRX period and the desired C- eDRX period are used by the UE while the UE is in the connected mode ([0723] “When extended DRX (eDRX) is configured for the UE through higher-layer signaling (e.g., system information), the UE may perform an eDRX operation in the idle mode or the connected mode”, [0722] “in the connected mode or at a set time, the UE may perform a connected-mode DRX (C-DRX)”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Ma, Shin, Fujishiro, to incorporate the teachings of Myung. One of ordinary skill in the art would have been motivated to make this modification in order to reduce power consumption. Response to Arguments Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive. Applicant’s Argument Applicant remark’s the combination of Ma, Fujishiro, Cao and Lee does not teach or suggest any of the above-noted features of amended claims 1 and 10. Examiner’s Response Examiner respectfully disagrees. Reference Cao and Lee are no longer relied upon. Newly added reference Shin is incorporated. See updated rejection above. Conclusion THIS ACTION IS MADE FINAL. 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 KEITH TRAN-DANH FOLLANSBEE whose telephone number is (571)272-3071. The examiner can normally be reached 10am -6 pm M-Th. 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/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Derrick Ferris can be reached on 571-272-3123. 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. /K.T.F./Examiner, Art Unit 2411 /DERRICK W FERRIS/Supervisory Patent Examiner, Art Unit 2411
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Prosecution Timeline

Show 18 earlier events
May 22, 2024
Non-Final Rejection mailed — §103
Aug 22, 2024
Response Filed
Dec 11, 2024
Final Rejection mailed — §103
Jun 11, 2025
Request for Continued Examination
Jun 16, 2025
Response after Non-Final Action
Dec 31, 2025
Non-Final Rejection mailed — §103
Apr 30, 2026
Response Filed
Sep 09, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

11-12
Expected OA Rounds
61%
Grant Probability
77%
With Interview (+15.7%)
3y 3m (~0m remaining)
Median Time to Grant
High
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