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 .
Disposition of Claims
With the Applicants submission dated 10/17/2025, the status of the claims are: claims 1, 3, 6, 8-9, 12, 14, 16, 19, and 21, are pending examination; claims 2, 4-5, 7, 10, 11, 13, 15, 17-18, and 20, have been cancelled; and no new claims have been added.
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.
Claim(s) 1, 3, 6, 8-9, 12, 14, 16, 19, and 21, 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
With regard to the independent claim 1, 8, and 14, the claims have been amended to recite, in part:
“acquiring, by the terminal device, capability grouping information, wherein the capability grouping information comprise a plurality of capability groups and capabilities comprised in each of the capability groups and;
acquiring, by the terminal device, the capability grouping information comprises:
receiving a Non-Access Stratum (NAS) signaling sent from the network device by the terminal device, wherein the NAS signaling carries the capability grouping information”.
While the applicants specification has written description support for sending the capability grouping information to the UE via NAS signaling, this feature is not adequately discussed in the specification, such that the reader could make and or use the invention without undue experimentation.
At the time of filing the use of NAS signaling to send a plurality of capability grouping information was not a standard in the art, as the attach accept used in (4G) or the registration accept used in (5G) were not configured to transmit a table or list of a plurality of capabilities configured in capability groups for the UE to select from. For example, the 4G and 5G messages are used for mobility management, NAS security, paging, or NAS signaling features. When reviewing the PG PUB (US 2021/0160686 A1) the specification does disclose using NAS or AS signaling carrying the capability grouping information, but recites the features at a very high level, which would cause a need for undue experimentation for the reasons given above. For example the PG PUB recites, “receive the NAS signaling or the AS signaling sent from the network device. The NAS signaling and the AS signaling may carry the capability grouping information.”. The question then becomes how this information is conveyed to the UE because, as discussed above, the NAS signaling known at the time was not used for sending capability grouping information and was instead used for security, mobility, and others as discussed above.
For example, Kim (2019/0335532 A1), describes a NAS attach request and NAS attach response, par.[0320 – 0345] which are known in the art as NAS signaling messages and are well-known in the art. The prior art also discloses the use of NAS signaling during the Attach Request to send capability information to the network, see Kim et al. (US 2015/0056986 A1), par.[0155]. Because the use of NAS signaling from the network for capability grouping information is not discussed with any particularity in the applicants specification utilizing unknown NAS signaling to convey a complex capability table as an embedded structure within an NAS message, which is not specifically disclosed which in the specification, was not originally supported in 3GPP, and would require specific and careful design to implement. Thus, the claims are rejected for lack of enablement because the reader would have to perform undue amounts of experimentation in order to make and/or use the invention described.
Claims 3, 6, 8-9, 12, 16, 19, and 21, are rejected for their dependency on the independent claims and for failing to cure the deficiencies therein.
Response to Arguments
Applicant’s arguments with respect to claim(s) 10/17/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Shah (US 6,029,065) “Remote Feature Code Programming for Mobile Stations”
Pandya et al. (US 2015/0193219 A1) “Flexible Feature Deployment Strategy”
Chai et al. (US 2009/0111467 A1) “Method for Reporting the Device Capability Information and Terminal Device”
Li (US 2011/0319069 A1) “Apparatuses and Methods for Mobile Capability Signaling”
Tabatabaei Yazdi et al. (US 2014/0098756 A1) “Apparatus and Methods for Improved User Equipment (UE) Capability Signaling”
Palm et al. (US 2016/0262053 A1) “Node and Method for Carrier Aggregation Compatibility Reporting of a Wireless Device” Figures 8a and 9a.
Kim et al. (US 2015/0327269 A1) “Method and Apparatus for Transmitting and Receiving UE Capability Information in Mobile Communications System”
Hsu et al. (US 2016/0242072 A1) “Handling Over-Sized Call Setup Messages”
Edge et al. (US 2007/0224990 A1) “Extended Capability Transfer Between a User Equipment and a Wireless Network”
Ke (US 2021/0160685 A1) “Capability Management Method and Communication Device”
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.
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JAMAAL HENSON
Primary Examiner
Art Unit 2411
/JAMAAL HENSON/Primary Examiner, Art Unit 2411