Prosecution Insights
Last updated: April 19, 2026
Application No. 17/043,355

USER EQUIPMENT

Final Rejection §103§112
Filed
Sep 29, 2020
Examiner
LINDENBAUM, ALAN LOUIS
Art Unit
2413
Tech Center
2400 — Computer Networks
Assignee
NTT Docomo Inc.
OA Round
12 (Final)
48%
Grant Probability
Moderate
13-14
OA Rounds
3y 7m
To Grant
64%
With Interview

Examiner Intelligence

Grants 48% of resolved cases
48%
Career Allow Rate
204 granted / 421 resolved
-9.5% vs TC avg
Strong +16% interview lift
Without
With
+15.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
69 currently pending
Career history
490
Total Applications
across all art units

Statute-Specific Performance

§101
2.2%
-37.8% vs TC avg
§103
56.7%
+16.7% vs TC avg
§102
20.4%
-19.6% vs TC avg
§112
17.5%
-22.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 421 resolved cases

Office Action

§103 §112
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 arguments filed February 17, 2026 have been fully considered but they are moot in view of the new grounds of rejection. As discussed in detail in the claim rejections, the newly cited reference, Yi, discloses that a RACH response is received by the UE in a CORESET for RACH response reception and using a TCI state that is determined based on the SSB block using by the UE for transmitting the RACH preamble, in the case of no TCI state being configured for the CORESET and also in the case that a TCI state was previously designated for the CORESET. Additionally, the Examiner interprets that the procedure disclosed in Grant, in which the RACH response is also received by the UE in a set of control resources for the RACH response reception and using a QCL that is determined based on the SSB block using by the UE for transmitting the RACH preamble, has no regard for any previous designation of QCL states of the control resources. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 7-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 7, 10 and 11 recite “wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the CORESET, the receiver receives the response using TCI information that is provided to the terminal.” This limitation is not disclosed in Applicant’s original Specification. Applicant’s arguments state that the amended claim limitation is disclosed on lines 32-34 on page 4,36-40 on page 5, and line 39 on page 9 to line 4 on page 10 of the specification. However, these passages do not disclose “regardless of whether or not a Transmission Configuration Indication (TCI) state is specified to the CORESET.” Rather, the cited passages disclose a first scenario that a TCI state may be not be designated for the CORESET or a second scenario that a TCI state may be designated for the CORESET and ignored by the user equipment, because the base station transmits a Msg2 with PDCCH having QCL relation with SSB selected by the user equipment. But the scope of that disclosure is not commensurate with the claim limitation “wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the CORESET.” The existence of a first scenario in which a TCI state is designated and a second scenario in which a TCI state is not designated does not have the same scope of the term “regardless” for whether a TCI state is designated, and does not mean that there are not additional scenarios for reception of the response do have “regard” for whether a TCI state is designated. Further, the scope of the term “regardless” would not have been clearly understandable by a person of ordinary skill in the art, at the time of the invention. Claims 8 and 9 are rejected because the depend from claim 7. The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 7-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 7, 10 and 11 recite “wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the CORESET, the receiver receives the response using TCI information that is provided to the terminal.” However, it is unclear what the scope of the term “regardless” is. Accordingly, a person of ordinary skill in the art, at the time of the invention, would not have been able to ascertain the metes and bounds of the claims. Claims 8 and 9 are rejected because the depend from claim 7. Claim Rejections - 35 USC § 103 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) 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grant et al. (US 2020/0059281) in view of Yi et al. (US 2020/0120584). Regarding claim 7, Grant discloses a terminal (Grant, paragraph [0002], UE or wireless terminal) comprising: a receiver that receives control information that is a trigger for initiating a random access procedure (Grant, Fig. 3, PDCCH order trigger signal; paragraph [0026], gNB transmits a trigger signal to wireless device to update the SS-BPL that initiates a PRACH transmission by the wireless device to indicate to the gNB a new SS-BPL; paragraph [0049], gNB send a trigger signal to the wireless device); a processor (Grant, paragraph [0071], processing circuit) that selects an occasion for transmitting a random access preamble (Grant, Fig. 1, PRACH signal; Fig. 3, PRACH-like preamble; paragraph [0007], wireless device transmits signal similar to a preamble on PRACH; paragraph [0031], PRACH occasion; paragraph [0049], responsive to the trigger signal, wireless device detects a preferred SS block and transmits PRACH-like preamble); and a transmitter (Grant, paragraph [0070], transmitter) that transmits the random access preamble using the occasion (Grant, Fig. 1, PRACH signal; Fig. 3, PRACH-like preamble; paragraph [0007], wireless device transmits signal similar to a preamble on PRACH; paragraph [0008], during the PRACH; paragraph [0031], configured PRACH occasions; paragraph [0034], wireless device transmits PRACH signals associated with SS block by a spatial QCL assumption to form a first BPL; paragraph [0049], responsive to the trigger signal, wireless device transmits reselection signal resembling a preamble on the PRACH), wherein the receiver receives a response to the random access preamble using a control resource set, that is for monitoring control information for receiving the first response (Grant, Fig. 1, PDSCH and/or PDCCH in response to PRACH signal; paragraph [0004], gNB signals to wireless device that CSI-RS is QCL’d with PDSCH and DMRS; paragraph [0008], during the beam recovery procedure, the gNB and wireless device establish a SS beam pair link and the wireless device assumes spatial QCL with previously transmitted SS block; paragraph [0034], wireless device detects a preferred SS block and transmits PRACH signals to the gNB on the same beam as the preferred SS block was received; after receiving the PRACH signal from the wireless device on the preferred beam, the gNB knows the preferred SS block and beam and transmits downlink data on PSCCH or PDSCH associated by a second spatial QCL assumption to form a second BPL; paragraph [0042], gNB and wireless device each have an established BPL under a spatial QCL assumption for DL SS block and UL PRACH signal; paragraphs [0053]-[0054], UE receives Msg2 having QCL relation with the SSB, base station specifies RACH occasion index so as to obtain the QCL relation between the PDCCH order and the SSB); and wherein, QCL is not designated for the control resource set, the receiver receives the response using QCL information that is provided to the terminal but not designated for the control resource set (Grant, Fig. 1, SS Block and PDSCH and/or PDCCH in response to PRACH signal; paragraph [0034], wireless device detects a preferred SS block and transmits PRACH signals to the gNB on the same beam as the preferred SS block was received; after receiving the PRACH signal from the wireless device on the preferred beam, the gNB knows the preferred SS block and beam and transmits downlink data on PSCCH or PDSCH associated by a second spatial QCL assumption to form a second BPL; paragraph [0043], gNB transmits a series burst of SS blocks, multiple blocks transmitted in different beamforming directions; paragraph [0044], wireless device selects a preferred SS block; paragraph [0045], wireless device assumes QCL associations with the preferred SS block; paragraphs [0053]-[0054], UE receives Msg2 having QCL relation with the SSB, base station specifies RACH occasion index so as to obtain the QCL relation between the PDCCH order and the SSB; in Grant, there is no dependence based on whether or not a Transmission Configuration Indication (TCI) state is specified to the CORESET). Grant does not explicitly disclose that a resource for monitoring control information may be called a CORESET, a QCL state may be called a TCI state and that a TCI state may be designated for a CORESET. Yi discloses a transmitter (Yi, Fig. 12; paragraph [0028], transmitter and receiver part of the UE)) that transmits the random access preamble (Yi, paragraph [0091], reception beam may be determined based on SS block associated with PRACH; paragraph [0108], TCI state may be updated by the RACH procedure, configured TCI may be maintained until the RACH procedure changes beams ; paragraph [0294], TCI state of the CORESET may be determined based on the selected RACH preamble), wherein the receiver receives a response to the random access preamble using a CORESET (Control Resource Set), that is for monitoring control information for receiving the first response (Yi, paragraph [0099], RAR is transmitted through common search space or search space associated with beam recovery failure, the CORESET/TCI state may be determined based on the RACH procedure); and wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the control resource set, the receiver receives the response using TCI information that is provided to the terminal but not designated for the CORESET (Yi, paragraph [0072], base station transmits CORESET configuration for each CORESET to the terminal; paragraph [0089], QCL may be associated with an accessed SSB block; paragraph [0091], TCI indication may be in MAC CE ; paragraph [0099], RAR is transmitted through common search space or search space associated with beam recovery failure, the CORESET/TCI state may be determined based on the RACH procedure; paragraph [0102], in RACH procedure, the TCI state may be updated for reception of RAR; paragraph [0107], different TCI states (based on the RACH procedure) not including the TCI state, may be associated with the CORESET; paragraph [0109], configured TCI state may be updated by the RACH procedure; paragraph [0109], TCI state may be updated by RRC; paragraph [0125], information about TCI state for RAR CORESET may be provided by RRC and/or MAC CE; paragraphs [0126], TCI state may not be indicated for the CORESET for RAR and then beam recovery procedure changes the previous TCI state; paragraph [0127], CORESET for RAR may be configured without a TCI state and then the TCI state is updated according to the RACH procedure; paragraph [0294], beam recovery CORESET currently indicated TCI state may not be aligned with the PRACH, the TCI state of the CORESET may be determined based on the selected RACH preamble). It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to monitor a CORESET with a pre-designated TCI state for RACH response and to use a TCI state based on the UE selected SSB for monitoring for the response, in the invention of Grant. The motivation to combine the references would have been to use the UE-determined best beam for monitoring for the response. Regarding claim 8, Grant discloses the terminal as claimed in claim 7, wherein the processor selects a synchronization signal block, and selects the occasion corresponding to the synchronization signal block (Grant, Fig. 3, PRACH-like preamble; paragraph [0031], PRACH occasion; paragraph [0034], wireless device transmits PRACH signals on the uplink that are associated with the SS block by a spatial QCL, wireless device detects preferred SS block and transmits PRACH signals on the same beam; paragraph [0049], gNB transmits the SS blocks in a beam swept manner, each PRACH resource is associated with a SS block), and the receiver assumes quasi co-location with the synchronization signal block when receiving the response (Grant, Fig. 1, PDSCH and/or PDCCH; paragraph [0034], after receiving the PRACH signal from the wireless device, the gNB knows the preferred SS block and beam and transmits downlink data on PSCCH or PDSCH associated by a second spatial QCL assumption to form a second BPL; paragraph [0049], when receiving the PRACH resource, the network knows which SS blocks the wireless device prefers). Regarding claim 9, Grant discloses the terminal as claimed in claim 8, wherein the synchronization signal block is associated with a beam (Grant, Fig. 3, PRACH-like preamble; paragraph [0031], PRACH occasion; paragraph [0034], wireless device transmits PRACH signals on the uplink that are associated with the SS block by a spatial QCL, wireless device detects preferred SS block and transmits PRACH signals on the same beam; paragraph [0049], gNB transmits the SS blocks in a beam swept manner, each PRACH resource is associated with a SS block). Claim 10 is rejected under substantially the same rationale as claim 7. Claim 11 is rejected under substantially the same rationale as claim 7. Grant additionally discloses a base station in (Grant, paragraph [0002], base station). 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. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yuan (US 2021/0058998) discloses a transmitter (Yuan, paragraph [0156], transmitter) that transmits the random access message (Yuan, paragraph [0054], UE transmits BFR on a dedicated PRACH resource on a new beam and the network device transmits BFR-DCI on a PDCCH as a response to the BFR); wherein the receiver (Yuan, paragraph [0156], receiver) receives a response to the random access preamble using a CORESET (Control Resource Set) that is for monitoring control information for receiving the first response (Yuan, paragraph [0054], UE transmits BFR on a dedicated PRACH resource on a new beam and the network device transmits BFR-DCI on a PDCCH as a response to the BFR; paragraph [0055] UE will keep monitoring CORESET for the PDCCH; paragraph [0056], UE shall monitor the CORESET-BFR for dedicated PDCCH reception; paragraph [0057], configured CORESET has K>1 TCI states; paragraph [0058], UE may be reconfigured by gNB to another TCI state by MAC-CE of CORESETs before beam failure); and wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the CORESET, the receiver receives the response using TCI information that is provided to the terminal (Yuan, paragraph [0054], UE transmits BFR on a dedicated PRACH resource on a new beam and the network device transmits BFR-DCI on a PDCCH as a response to the BFR; paragraph [0055] UE will keep monitoring CORESET for the PDCCH; paragraph [0057], if the configured CORESET has K>1 TCI states; paragraph [0058], until the re-indication of TCI-states for PDCCH, UE shall assume DRS of PDSCH is spatial QCLed with DL RS of the UE-identified candidate beam, UE may be reconfigured by gNB to another TCI state by MAC-CE of CORESETs before beam failure; paragraph [0059], until reconfiguration of TCI states, the UE shall assume spatial QCL with the UE-identified candidate beam in the beam failure recovery request; paragraph [0095], response for BFR transmitted on a regular CORESET instead of the specified one). Hakola (US 2020/0389884) discloses a terminal (Hakola, paragraph [0001], UE or wireless terminal) comprising: a transmitter (Hakola, paragraph [0085], transmitter) that transmits the random access preamble (Hakola, paragraph [0064], UE indicates new candidate RSs to gNB via dedicated preamble; paragraph [0067], UE transmits recovery request indicating a candidate beam that is configured as a TCI state and UE will monitor the CORESET corresponding to the TCI state instead of the BFR; for beam recovery using dedicated RA preamble, gNB responds to the UE with a message using RA-RNTI using CORESET configured for monitoring random access response; paragraph [0077], indicated TCI state indicated by BFRQ preamble; paragraph [0078], PRACH resources for beam failure recovery), wherein the receiver receives a response to the random access preamble using a CORESET (Control Resource Set), that is for monitoring control information for receiving the first response (Hakola, paragraph [0067], gNB responds to the UE with a message using CORESET configured for monitoring random access response); and wherein, regardless of whether or not a Transmission Configuration Indication (TCI) state is designated for the control resource set, the receiver receives the response using TCI information that is provided to the terminal (Hakola, paragraph [0067], UE performed recovery to a TCI state associated with a current CORESET for PDCCH reception, UE would not be monitoring RAR response but instead monitoring on the CORESET associated with indicated TCI state). Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN LOUIS LINDENBAUM whose telephone number is (571)270-3858. The examiner can normally be reached Monday through Friday 11:00 AM to 7:00 PM EST. 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, Un Cho can be reached on (571) 272-7919. 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. /ALAN L LINDENBAUM/ Examiner, Art Unit 2413 /UN C CHO/ Supervisory Patent Examiner, Art Unit 2413
Read full office action

Prosecution Timeline

Sep 29, 2020
Application Filed
Sep 29, 2020
Response after Non-Final Action
Mar 24, 2022
Non-Final Rejection — §103, §112
Jun 28, 2022
Response Filed
Jul 18, 2022
Final Rejection — §103, §112
Sep 22, 2022
Response after Non-Final Action
Oct 25, 2022
Request for Continued Examination
Oct 28, 2022
Response after Non-Final Action
Dec 22, 2022
Non-Final Rejection — §103, §112
Mar 29, 2023
Response Filed
Apr 18, 2023
Final Rejection — §103, §112
Jul 21, 2023
Response after Non-Final Action
Aug 24, 2023
Request for Continued Examination
Sep 01, 2023
Response after Non-Final Action
Sep 28, 2023
Non-Final Rejection — §103, §112
Jan 04, 2024
Response Filed
Jan 31, 2024
Final Rejection — §103, §112
May 08, 2024
Request for Continued Examination
May 17, 2024
Response after Non-Final Action
Jul 15, 2024
Non-Final Rejection — §103, §112
Oct 21, 2024
Response Filed
Nov 12, 2024
Final Rejection — §103, §112
Feb 17, 2025
Response after Non-Final Action
Mar 11, 2025
Request for Continued Examination
Mar 17, 2025
Response after Non-Final Action
Apr 07, 2025
Non-Final Rejection — §103, §112
Jul 14, 2025
Response Filed
Jul 29, 2025
Final Rejection — §103, §112
Nov 05, 2025
Request for Continued Examination
Nov 08, 2025
Response after Non-Final Action
Nov 10, 2025
Non-Final Rejection — §103, §112
Feb 17, 2026
Response Filed
Mar 17, 2026
Final Rejection — §103, §112 (current)

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Prosecution Projections

13-14
Expected OA Rounds
48%
Grant Probability
64%
With Interview (+15.8%)
3y 7m
Median Time to Grant
High
PTA Risk
Based on 421 resolved cases by this examiner. Grant probability derived from career allow rate.

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