Prosecution Insights
Last updated: October 01, 2026
Application No. 17/799,395

USER EQUIPMENT, FIRST RADIO ACCESS NETWORK NODE AND METHODS PERFORMED THEREIN FOR COMMUNICATION IN A WIRELESS COMMUNICATION NETWORK

Non-Final OA §103
Filed
Aug 12, 2022
Priority
Feb 17, 2020 — nonprovisional of PCTSE2020050173
Examiner
FIGUEROA, MARISOL
Art Unit
2643
Tech Center
2600 — Communications
Assignee
Telefonaktiebolaget LM Ericsson
OA Round
3 (Non-Final)
80%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
82%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allowance Rate
580 granted / 729 resolved
+17.6% vs TC avg
Minimal +3% lift
Without
With
+2.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
23 currently pending
Career history
747
Total Applications
across all art units

Statute-Specific Performance

§101
7.3%
-32.7% vs TC avg
§103
55.5%
+15.5% vs TC avg
§102
20.0%
-20.0% vs TC avg
§112
9.0%
-31.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 729 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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/29/2026 has been entered. Claim Status Claims 1-9, 11-17 and 26-28 are pending. Claims 12-14 and 26-28 are withdrawn from consideration in view of Applicant’s election without traverse of Group I. Response to Arguments Applicant's arguments filed on 05/29/2026 have been fully considered but they are moot in view of new grounds of rejections. See rejection below. 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 1, 2, 4, 6, 11, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. (US 2019/0098597) in views of TROTT (US 2018/0027466), TAKAHASHI et al. (US 2020/0022214) and XING et al. (US 2010/0260147). Regarding claim 1, Basu-Mallick discloses a method performed by a User Equipment (Fig. 2, UE), UE, for handling communication with a first Radio Access Network, RAN, node associated with a first Radio Access Technology, RAT (Fig. 2, RAT1), and a second RAN node associated with a second RAT (Fig. 2, RAT2), wherein the UE, the first RAN node and the second RAN node are operating in a wireless communication network (Fig. 2), and wherein the UE is in inactive state in the first RAT when being registered through the first RAN node (p. [0029]; p. [0036], lines 1-6 and 22-30; the UE being registered to one of the system first (i.e., first RAT) and dual registration capable, can request the RAN node to transition to the RRC inactive state), the method comprising: performing a registration through the second RAN node while retaining a stored inactive context related to the first RAN node, thereby having a dual registration to the first RAN node and the second RAN node (p. [0036], lines 1-6 and 22-30; the UE in RRC inactive state save the AS configuration context (i.e., retain context), may tune away to another system (i.e., second RAT) and perform registration there). But, Basu-Mallick does not particularly disclose entering a state in the second RAT while remaining in the inactive state in the first RAT. However, Trott teaches entering a state in the second RAT while remaining in the inactive state in the first RAT (p. [0065]; the UE can enter a Idle state in both networks registered). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE state in both networks that is registered. But, the combination of Basu-Malleck and Trott does not particularly disclose wherein a dual registration timer is used for retaining the stored inactive context, and wherein the UE is located on or close to a radio coverage border of the first RAT and second RAT. However, Takahashi teaches a dual registration timer is used for retaining the stored inactive context (p. [0050], [0052], [0054], [0087], [0089]; a user equipment UE receives an inactivation message for transition from the connected state to an inactive state, the inactivation message further includes timer, the UE configures an individual or common timer in the retained AS context, when the timer expires the UE may discard the AS context and/or perform a base station position registration area update procedure). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck and Trott with the teachings of Takahashi, since retaining the inactive AS context information for a sufficient period time (i.e., timer) would provide the advantage of allowing a seamless activation of the connection with the first RAN. Further, Xing teaches wherein the UE is located on or close to a radio coverage border of the first RAT and second RAT (p. [0008], [0108]; UE may be operating in a border of a cell, wherein the UE may be receiving transmissions from a first wireless network a low power levels and candidate for handover to a second wireless communications network). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, and Takahasi with the teachings of Xing, because the UE being located on the border provides a connectivity with both the first RAN and second RAN, and would allow to initiate registration procedures with the second RAN. Regarding claim 2, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, Trott discloses wherein entering a state in the second RAT comprises entering an idle state in the second RAT (p. [0065]; the UE can enter an Idle state in both networks registered). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE idle state in the second network. Regarding claim 4, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, Trott discloses further comprising: selecting or reselecting a cell of the second RAN node (p. [0065]; during the DR-Idle mode, the UE performs conventional LTE cell selection). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE idle state in the second network. Regarding claim 6, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, Basu-Malleck discloses wherein the first RAT is related to 5G and the second RAT is related to 4G (p. [0028]), but does not particularly disclose the method further comprising: initiating a Tracking Area Update, TAU, request procedure. However, Trott teaches the method further comprising: initiating a Tracking Area Update, TAU, request procedure (p. [0065]; during the DR-Idle mode, the UE performs idle mode procedures, including tracking area updates TAU). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE idle state in the second network. Regarding claim 11, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, Basu-Malleck discloses wherein the inactive context is an Access Stratum, AS, inactive context (p. [0036], lines 1-6 and 22-30; the UE in RRC inactive state save the AS configuration context (i.e., retain context)). Regarding claim 15, Basu-Mallick discloses a User Equipment, UE (Fig. 2, UE), for handling communication with a first Radio Access Network, RAN, node associated with a first Radio Access Technology, RAT (Fig. 2, RAT1), and a second RAN node associated with a second RAT (Fig. 2, RAT2), wherein the UE, the first RAN node and the second RAN node operate in a wireless communication network (Fig. 2), and wherein the UE is in inactive state in the first RAT when being registered through the first RAN node (p. [0029]; p. [0036], lines 1-6 and 22-30; the UE being registered to one of the system first (i.e., first RAT) and dual registration capable, can request the RAN node to transition to the RRC inactive state), the UE is configured to: perform a registration through the second RAN node while retaining a stored inactive context related to the first RAN node, thereby having a dual registration to the first RAN node and the second RAN node (p. [0036], lines 1-6 and 22-30; the UE in RRC inactive state save the AS configuration context (i.e., retain context), may tune away to another system (i.e., second RAT) and perform registration there). But, Basu-Mallick does not particularly disclose to enter a state in the second RAT while remaining in the inactive state in the first RAT. However, Trott teaches UE configured to enter a state in the second RAT while remaining in the inactive state in the first RAT (p. [0065]; the UE can enter a Idle state in both networks registered). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE state in both networks that is registered. But, the combination of Basu-Malleck and Trott does not particularly disclose wherein a dual registration timer is used for retaining the stored inactive context, and wherein the UE is located on or close to a radio coverage border of the first RAT and second RAT. However, Takahashi teaches a dual registration timer is used for retaining the stored inactive context (p. [0050], [0052], [0054], [0087], [0089]; a user equipment UE receives an inactivation message for transition from the connected state to an inactive state, the inactivation message further includes timer, the UE configures an individual or common timer in the retained AS context, when the timer expires the UE may discard the AS context and/or perform a base station position registration area update procedure). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck and Trott with the teachings of Takahashi, since retaining the inactive AS context information for a sufficient period time (i.e., timer) would provide the advantage of allowing a seamless activation of the connection with the first RAN. Further, Xing teaches wherein the UE is located on or close to a radio coverage border of the first RAT and second RAT (p. [0008], [0108]; UE may be operating in a border of a cell, wherein the UE may be receiving transmissions from a first wireless network a low power levels and candidate for handover to a second wireless communications network). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, and Takahasi with the teachings of Xing, because the UE being located on the border provides a connectivity with both the first RAN and second RAN, and would allow to initiate registration procedures with the second RAN. Regarding claim 16, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the UE according to claim 15, Trott discloses wherein entering a state in the second RAT comprises entering an idle state in the second RAT (p. [0065]; the UE can enter an Idle state in both networks registered). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Basu-Malleck with the teachings of Trott, since such a modification would allow the UE to perform procedures corresponding to the UE idle state in the second network. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. in views of TROTT, TAKAHASHI et al., XING et al., and MITRA et al. (US 2016/0095156). Regarding claim 5, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, but does not particularly disclose wherein the performing a registration through the second RAN node comprises maintaining a list of the second RAT in addition to maintaining a list of the first RAT. However, Mitra teaches a UE maintaining a list of the second RAT in addition to maintaining a list of the first RAT (p. [0026], [0028]-[0030]; the UE maintains a MRU list that include information of networks or cells recently camped on, the UE may maintain one combine MRU list for both RAT 102 and RAT 104, or separate MRU lists for each RAT supported by the UE). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify t the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of Mitra, since such a modification would allow the UE to increase the speed of acquiring service and/or cell selection process in various RATs available to the UE. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. in views of TROTT, TAKAHASHI et al., XING et al., and 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532), Title: Signaling enhancement for Inactive State (cited on IDS filed on 08/12/2022), hereinafter 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532). Regarding claim 7, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 6, but does not particularly disclose wherein the maintained list of the second RAT is a tracking area list and the maintained list of the first RAT is based on a Radio access node Notification Area, RNA. However, 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532) teaches a UE provided with a maintained list of a second RAT is a tracking area list and the maintained list of a first RAT is based on a Radio access node Notification Area, RNA (page 1, lines 29-end, proposal 1; page 2, lines 20-21 In order to allow for inter-RAT mobility while in Inactive mode, and able to reach the UE, the UE should be provided with a notification area consisted of both NR and LTE cells (i.e., first and second RAT), for NR, the cell list or TA/RNA list can be provided (i.e., second RAT) and for LTE (i.e., first RAT), is sufficient to provide the TA list). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532), since such a modification would support inter-RAT mobility while in Inactive mode and would allow the network to reach the UE when located in either of the first and second RAT. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. in views of TROTT, TAKAHASHI et al., XING et al., and YOUN et al. (US 2018/0376446). Regarding claim 8, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, Basu-Malleck teaches wherein the first RAT is related to 4G and the second RAT is related to 5G (p. [0028]), but does not particularly disclose the method further comprising: - initiating a Mobility Registration Update, MRU, request procedure. However, Youn teaches initiating a Mobility Registration Update, MRU, request procedure (p. [00315]; Once the UE/user is registered, the UE may update its own registration with the network in order to periodically maintain reachability (periodical registration update) if applicable, upon moving (mobility registration update), or in order to update its own capability or negotiate a protocol parameter again). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of Youn, in order for the UE to update its own registration with the network upon moving and maintain reachability with the network. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. in views of TROTT, TAKAHASHI et al., XING et al., YOUN et al., and 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532), Title: Signaling enhancement for Inactive State (cited on IDS filed on 08/12/2022), hereinafter 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532). Regarding claim 9, the combination of Basu-Malleck, Trott, Takahasi, Xing, and Youn disclose the method according to claim 8, but does not particularly disclose wherein the maintained list of the second RAT is based on an RNA and the maintained list of the first RAT is a tracking area list. However, 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532) teaches a UE provided with a maintained list of a second RAT is based on an RNA and the maintained list of a first RAT is a tracking area list (page 1, lines 29-end, proposal 1; page 2, lines 20-21 In order to allow for inter-RAT mobility while in Inactive mode, and able to reach the UE, the UE should be provided with a notification area consisted of both NR and LTE cells (i.e., first and second RAT), for NR, the cell list or TA/RNA list can be provided (i.e., second RAT) and for LTE (i.e., first RAT), is sufficient to provide the TA list). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of 3GPP TSG-RAN WG2 Meeting #108 (R2-1914532), since such a modification would support inter-RAT mobility while in Inactive mode and would allow the network to reach the UE when located in either of the first and second RAT. Claims 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over BASU-MALLICK et al. in views of TROTT, TAKAHASHI et al., XING et al., and LY Q (WO 2020/247043). Regarding claim 3, the combination of Basu-Malleck, Trott, Takahasi, and Xing disclose the method according to claim 1, but does not particularly disclose wherein entering a state in the second RAT comprises entering an inactive state, in the second RAT. However, Ly teaches wherein entering a state in the second RAT comprises entering an inactive state, in the second RAT (page 41, lines 13-14; p. [0222]; after successful registration the UE registration state is RM-Inactive or EMM-Inactive, the inactive state the UE is registered with the core network and can receive services from the core network). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of Ly, since such a state would allow the UE to be registered with the core network and receive services from the core network after successful registration. Regarding claim 17, the combination of Basu-Malleck, Trott, TAKAHASHI et al., XING et al.,Takahasi, and Xing disclose the UE according to claim 15, but does not particularly disclose wherein entering a state in the second RAT comprises entering an inactive state, in the second RAT. However, Ly teaches wherein entering a state in the second RAT comprises entering an inactive state, in the second RAT (page 41, lines 13-14; p. [0222]; after successful registration the UE registration state is RM-Inactive or EMM-Inactive, the inactive state the UE is registered with the core network and can receive services from the core network). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Basu-Malleck, Trott, Takahasi, and Xing with the teachings of Ly, since such a state would allow the UE to be registered with the core network and receive services from the core network after successful registration. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARISOL FIGUEROA whose telephone number is (571)272-7840. The examiner can normally be reached Mon-Thurs 8:00am-4:30pm. 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, Jinsong Hu can be reached at 571-272-3965. 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. /MARISOL FIGUEROA/ Primary Examiner Art Unit 2643
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Prosecution Timeline

Aug 12, 2022
Application Filed
Sep 24, 2025
Non-Final Rejection mailed — §103
Dec 29, 2025
Response Filed
Mar 30, 2026
Final Rejection mailed — §103
May 29, 2026
Request for Continued Examination
Jun 01, 2026
Response after Non-Final Action
Aug 11, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
80%
Grant Probability
82%
With Interview (+2.6%)
2y 9m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 729 resolved cases by this examiner. Grant probability derived from career allowance rate.

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