Prosecution Insights
Last updated: April 18, 2026
Application No. 17/763,520

TERMINAL AND COMMUNICATION METHOD

Final Rejection §103
Filed
Mar 24, 2022
Examiner
WU, JIANYE
Art Unit
2462
Tech Center
2400 — Computer Networks
Assignee
NTT Docomo Inc.
OA Round
6 (Final)
82%
Grant Probability
Favorable
7-8
OA Rounds
3y 1m
To Grant
97%
With Interview

Examiner Intelligence

Grants 82% — above average
82%
Career Allow Rate
696 granted / 851 resolved
+23.8% vs TC avg
Strong +15% interview lift
Without
With
+15.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
52 currently pending
Career history
903
Total Applications
across all art units

Statute-Specific Performance

§101
5.7%
-34.3% vs TC avg
§103
57.0%
+17.0% vs TC avg
§102
7.9%
-32.1% vs TC avg
§112
19.9%
-20.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 851 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 . Claim Objections Claims 9 and 12-15 are objected to because of the following informalities: Claim 9 recites a new claim limitation “… a receiver that receives … information indicating a BWP to be transitioned to a Dormant state or a BWP to be transitioned from the Dormant state to an active state of the plurality of BWPs, for each of the plurality of secondary cells … wherein the information includes a 1 bit field to indicate transition to the dormant state, a 1 bit field to indicate transition to the active state and a 1 bit field to indicate if CSI reporting is performed, and wherein the bit fields are received when a primary cell is in an active state and without indicating whether the primary cell transitions the states.”. First, there is insufficient antecedent basis for “the states”. Appropriate correction is required. Response to Arguments/Amendments Applicant's arguments filed 3/10/26 have been fully considered but they are not persuasive. For claim 9, Applicant argues D1 in view of Yi does not discloses “wherein the information includes a 1 bit field to indicate transition to the dormant state, a 1 bit field to indicate transition to the active state and a 1 bit field to indicate if CSI reporting is performed” because: a) “a ‘bit value’ is not present in Yi” and “In other words, Yi remains entirely silent with respect to a bit value indicating a transition from the dormant to the active state or vice versa”; b) “paragraph [0479] of Yi only describes a bit field to indicate transition to the active and dormant states but does not mention CSI reporting”; c) “even assuming arguendo a skilled person were to combine the references in the manner suggested by the Examiner, the combination would still fail to render independent claim 9 obvious, because a person of ordinary skill in the art would have had no motivation to supply the missing elements without the benefit of Applicant’s own disclosure as a guide”. In response, Examiner respectfully disagree: a) Yi clearly discloses a bit has value of 0 or 1 in [0479], such as “The bit value ‘0’ corresponds to an indication to transition to a dormant state of the corresponding cell”. Note that it is well known in the art that a bit has two values: 0 and 1. b) a bit can be used to indicate any binary state, including to a binary state of “if CSI reporting is performed or not”; c) using a bit to present a binary state (with value “0” for one status and value “1” for another status of the state) is well-known in the art. It would have been an obvious try to use/apply the teaching of Yi to the each of binary states by D1 to yield a predictable result of presenting status of each binary state according to MPEP 2143(E), or MPEP 2143(D). Therefore, Applicant’s arguments are not persuasive. Applicant arguments to other claims are based on the arguments to claim 1, to which Examiner’s responses are the same. 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. Claims 9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over D1 (3GPP R1-1903353, NPL dated 8/28/23, 28 pages) in view of Yi (US 20210203468 A1). For independent claim 9, D1 discloses a terminal comprising: a processor that performs Bandwidth Part (BWP) switching for each of a plurality of secondary cells used for carrier aggregation (Section 2.2, 1st para “… For the case of carrier aggregation (CA), BWP switching can also be applied independently in primary cell (PCell) and secondary cells (SCells)”); and a receiver that receives, when the terminal is configured with a plurality of BWPs (the para under Table 1, item 1: “… Rel-16 can allow UE to measure periodic CSI-RS covering the union frequency range of all configured BWPs and the initial BWP”), information, which is received when a primary cell is in an active state, (receiving information in an active state by definition is implied unless otherwise stated) indicating a BWP to be transitioned to a Dormant state or a BWP to be transitioned from the Dormant state to an active state of the plurality of BWPs, for each of the plurality of secondary cells (Section 2.2, 1st para “For the case of carrier aggregation (CA), BWP switching can also be applied independently in primary cell (PCell) and secondary cells (SCells)” and Section 2.2, 2nd para “In the dormant state, UE doesn’t need to monitor PDCCH but keeps periodic measurements and reports. The main benefit is faster recovery time to the activated state, reduced from 24 ms to 8 ms. This feature achieves better balance in UE power saving and SCell efficiency.”), wherein the processor switches a BWP configured to each of the secondary cells (Section 2.2, 1st para “BWP switching can also be applied independently in primary cell (PCell) and secondary cells (SCells)”): to the BWP to be transitioned to the Dormant state; or to the BWP to be transitioned to the active state (Section 2.2, 2nd para “In the dormant state, UE doesn’t need to monitor PDCCH but keeps periodic measurements and reports. The main benefit is faster recovery time to the activated state, reduced from 24 ms to 8 ms. This feature achieves better balance in UE power saving and SCell efficiency.”), and wherein the terminal further comprises a transmitter that performs a CSI report when the secondary cell (Section 2.2, 1st para “BWP switching can also be applied independently in primary cell (PCell) and secondary cells (SCells)”) is in the Dormant state (Section 2.2, 2nd para “In the dormant state, UE doesn’t need to monitor PDCCH but keeps periodic measurements and reports” and Section 2.1, last para, Proposal 2, 2nd bullet “Allowing power saving signal to trigger A-CSI reporting …”) and a BWP configured to the secondary cell is a Downlink (DL) BWP (Section 10, 2nd para “… Additional DL RS resources can be considered to assist UE in performing RRM/CSI measurement and channel time/frequency and/or beam tracking” and Section 2.1, 4th para “The power saving signal/channel in triggering UE frequency domain processing adaptation for further study is the power saving signal/channel can be used to trigger the indication of DL and/or UL RS configuration for channel tracking, CSI measurements with possible associated reporting occasion, and beam management for the additional assistance of dynamic switching of BWP or activation of SCell in achieving the power saving gain …”). D1 is silent on: wherein the information includes a 1 bit field to indicate transition to the dormant state, a 1 bit field to indicate transition to the active state and a 1 bit field to indicate if CSI reporting is performed. However, using a bit to indicate a state is well-known technique in the art, e.g., Yi in the same field of endeavor of wireless communication, discloses “a 1 bit field to indicate transition to the dormant state” ([0479] “… each bit indicates transition of a power state for a cell of a plurality of cells configured to the wireless device. For example, the first command comprises a bitmap of [1 . . . 0 . . . 1], wherein the bitmap corresponds to transition of a power state of PCell, . . . , SCellk, . . . , SCellm shown in FIG. 27. In the example, a bit value ‘1’ corresponds to an indication to transition to a normal state of a corresponding cell. The bit value ‘0’ corresponds to an indication to transition to a dormant state of the corresponding cell. ...”. Similarly, a 1 bit field may be used to “indicate transition to the active state” and another 1 bit may be used to indicate “if CSI reporting is performed”. Therefore, it would have been an obvious try to use/apply the teaching of Yi in using bit to indicate a status of a binary state to each of 3 states (1-transition to the dormant state, transition to the active state; 2-wether CSI reporting is performed, and 3- by D1 to yield a predictable result of presenting each binary state according to MPEP 2143(E) or MPEP 2143(D). Therefore, it would have been obvious to OOSA before the effective filing date of the application to combine D1 and Yi for the benefit of clearly indicating a state status ([0479] of Yi). Independent claim 13 is rejected because it is a corresponding claim of the base station that is associated with the terminal of the claim 9 and has the same subject matter as claim 9. Independent claim 14 is rejected because it is a claim of the method performed by the terminal of claim 9 and has the same subject matter as claim 9. Independent claim 15 is rejected because it is a claim of the system comprises the terminal of claim 9 and the base station of claim 13 and has the same subject matter. As to claim 12, D1 in view of Yi discloses claim 9, D1 further discloses: wherein the information further includes power saving information before on-duration of Discontinuous Reception (DRX), and the power saving information includes a Wakeup indication (Section 2.1, Proposal 2 “Allowing power saving signal to trigger A-CSI reporting outside DRX OnDuration” and Section 6.1, 1st para “Wakeup mechanism can be utilized to indicate whether UE needs to monitor the upcoming DRX OnDuration”; note that “before” is “outside” of the OnDuration). Conclusion 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 JIANYE WU whose telephone number is (571)270-1665. The examiner can normally be reached M-TH 8am-6pm. 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, Yemane Mesfin can be reached on (571) 272-3927. 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. /JIANYE WU/Primary Examiner, Art Unit 2462
Read full office action

Prosecution Timeline

Mar 24, 2022
Application Filed
Sep 05, 2023
Response after Non-Final Action
Mar 09, 2024
Non-Final Rejection — §103
Jun 12, 2024
Response Filed
Jul 12, 2024
Final Rejection — §103
Oct 14, 2024
Response after Non-Final Action
Oct 21, 2024
Response after Non-Final Action
Oct 21, 2024
Applicant Interview (Telephonic)
Nov 04, 2024
Request for Continued Examination
Nov 09, 2024
Response after Non-Final Action
Dec 27, 2024
Non-Final Rejection — §103
Mar 28, 2025
Response Filed
Jul 04, 2025
Final Rejection — §103
Oct 07, 2025
Response after Non-Final Action
Oct 30, 2025
Request for Continued Examination
Nov 12, 2025
Response after Non-Final Action
Dec 06, 2025
Non-Final Rejection — §103
Mar 10, 2026
Response Filed
Apr 04, 2026
Final Rejection — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

7-8
Expected OA Rounds
82%
Grant Probability
97%
With Interview (+15.3%)
3y 1m
Median Time to Grant
High
PTA Risk
Based on 851 resolved cases by this examiner. Grant probability derived from career allow rate.

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