Prosecution Insights
Last updated: October 04, 2026
Application No. 17/966,173

METHOD AND USER EQUIPMENT FOR REPORTING UE CAPABILITY FOR SMALL DATA TRANSMISSION

Final Rejection §103
Filed
Oct 14, 2022
Priority
Oct 14, 2021 — provisional 63/255,888
Examiner
SUGDEN, NOAH JAMES
Art Unit
2475
Tech Center
2400 — Computer Networks
Assignee
Sharp Corporation
OA Round
6 (Final)
85%
Grant Probability
Favorable
7-8
OA Rounds
0m
Est. Remaining
98%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allowance Rate
28 granted / 33 resolved
+26.8% vs TC avg
Moderate +13% lift
Without
With
+13.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
28 currently pending
Career history
68
Total Applications
across all art units

Statute-Specific Performance

§101
1.4%
-38.6% vs TC avg
§103
73.1%
+33.1% vs TC avg
§102
20.1%
-19.9% vs TC avg
§112
5.0%
-35.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 33 resolved cases

Office Action

§103
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 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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 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 1-2, 8-9, 15-16, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al. (2020/0229076), hereinafter Jin, in view of Kim et al. (2023/0247721), hereinafter Kim, and Christofferson et al. (2025/0097822), hereinafter Christofferson. Re. Claims 1 and 8, Jin teaches a method performed by a user equipment (UE) (Fig. 1, ¶0049 - The terminal may include user equipment (UE), a mobile station (MS), a cellular phone, a smart phone, a computer, or a multimedia system capable of performing a communication function; and ¶0053 - User equipment (hereinafter, referred to as “UE” or a “terminal”) 1a-35 accesses an external network through the eNBs 1a-05, 1a-10, 1a-15, and 1a-20 and the S-GW 1a-30.) comprising at least one processor (¶0016 - The terminal includes a transceiver, and at least one processor), at least one non-transitory computer-readable medium coupled to the at least one processor; storing one or more computer-executable instructions, and wherein the content of a UE capability information message indicates whether the UE supports at least one of random access (RA)-SDT or configured grant (CG)-SDT (Fig. 1, ¶0049 - The terminal may include user equipment (UE), a mobile station (MS), a cellular phone, a smart phone, a computer, or a multimedia system capable of performing a communication function, Examiner interprets that a UE inherently contains a memory in order to carry out the method it is provided, since Jin discloses a UE in Fig. 1, Examiner interprets that UE contains a non-transitory computer readable medium) wherein the UE reports UE capability for small data transmission (SDT) (Fig. 5), the method comprising: receiving, from a base station (BS), a UE capability enquiry message; set, in response to receiving the UE capability enquiry message (Fig. 5 & ¶0158 - the UE capability is configured); and transmitting, to the BS, the UB capability information message after setting the content of the UE capability information message (Fig. 5 & ¶0158 – [T]he terminal 1e-01 transmits a UE capability information message including the UE capability to the base station in operation 1e-10.) Yet, Jin does not explicitly teach setting the content of the UE capability information message to further indicate that the UE supports multiple CG-SDT configurations in a case that the UE supports the CG-SDT and the UE supports up to a maximum number of active CG configurations; and wherein the CG-SDT comprises a transmission of data or signaling over allowed radio bearers via a CG type 1, white the UE is in a radio resource control (RRC) INACTIVE state. However, Kim does expressly teach wherein the content of a UE capability information message indicates whether the UE supports at least one of random access (RA)-SDT OR configured grant (CG)-SDT (¶0346 - SDT may be configured to either take place on RACH or configured uplink grant (CG) resources. Additionally, Examiner interprets that only one of the claimed features needs to be mapped because of the presence of “Or”); and wherein the CG-SDT comprises a transmission of data or signaling over allowed radio bearers via a CG type 1 (¶0346 - SDT may be configured to either take place on RACH or configured uplink grant (CG) resources (e.g., type 1 CG resources)), while the UE is in a radio resource control (RRC) INACTIVE state (¶0360 – [T]he wireless device may perform the subsequent transmission while staying in the RRC inactive state). Yet still, The combination of Jin, and Kim do not expressly teach setting the content of the UE capability information message to further indicate that the UE supports RA-SDT configuration or CG-SDT configuration on a dedicated bandwidth part (BWP). However, Christofferson explicitly teaches setting the content of the UE capability information message (¶0025 - The configuration of CG resources for UE UL SDT is contained in the RRCRelease message) to further indicate that the UE supports RA-SDT configuration OR CG-SDT configuration (¶0033 - the UE-specific capability for the SDT procedure may indicates one or more of other capabilities regarding the beam failure detection (BFD), beam failure recovery (BFR), L1 channel state information (CSI) report, discontinuous reception (DRX), configured grant (CG) transmission and dynamic grant (DG) transmission, etc. Additionally, Examiner interprets that only one of the claimed features needs to be mapped because of the presence of “Or”) on a dedicated bandwidth part (BWP) (¶0110 - FFS CG-SDT resource can be configured on BWPs other than initial BWP) and setting the content of the UE capability information message to further indicate that the UE supports restricting data transmission from a given logical channel (LCH) to a configured set of CG configurations for SDT (¶0130-0132 – Parameters that are used to indicate a set of CG configurations should be restricted; ¶0154-0162 – the MAC entity sets the parameters referenced above upon new transmission to be included in the RRC transmission; ¶0163 – confirmation of the use of these parameters; ¶0204 - when a SDT procedure is initiated and some or all of the available UL data in DRBs configured for SDT is mapped to a LCH which is subject to LCH restrictions which do not allow transmission on a CG-SDT resource, the CG-SDT procedure is not selected). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teachings of Kim and Christofferson to the teaching of Jin. The motivation for combining the teaching of Kim to Jin would be as Kim provides a means of increasing efficiency of the transmission by allowing the SDT to be stored on configured grant resources while the UE is performing in an RRC INACTIVE state (Kim ¶0360). Additionally, the motivation for combining Christofferson and Jin is that Christofferson provides a means of increasing efficiency of the transmission by setting a capability message to indicate the UE supports CG-SDT on a bandwidth part (Christofferson, ¶0033) and indicate a restriction of the logical channel for a set of CG configurations (Christofferson, ¶0204). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Re. Claims 2 and 9, Jin, Kim, and Christofferson teach Claims 1 and 8. Yet, Jin, Kim, and Chin do not expressly teach a method and a UE wherein the RA-SDT comprises the transmission of the data or the signaling over the allowed radio bearers via an RA procedure, while the UE is in the RRC INACTIVE state. However, Christofferson teaches a method and a UE wherein the RA-SDT comprises the transmission of the data (¶0005 - General procedure to enable transmission of small data packets from INACTIVE state (e.g., using MsgA or Msg3 of the Random Access (RA) procedure) [RAN2] (see, e.g., 3GPP TS 38.213 V16.5.0, for example physical layer procedures, including RA). Additionally, examiner interprets that only one of the claimed features to be mapped because of the presence of “Or.”), OR the signaling over allowed radio bearers via an RA procedure while the UE is in the (RRC) INACTIVE state (¶0003–0005 - For the RRC_INACTIVE state:… General procedure to enable transmission of small data packets from INACTIVE state (e.g., using MsgA or Msg3 of the Random Access (RA) procedure) [RAN2] (see, e.g., 3GPP TS 38.213 V16.5.0, for example physical layer procedures, including RA)). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of Christofferson to the teaching of Jin and Kim. The motivation to combine Christofferson and Jin would be to increase efficiency of the transmission as Christofferson provides information regarding the forms of SDT that can be transmitted between a UE and a BS in an enquiry message within a new radio wireless mobile communication network. (¶0003-0005, Christofferson). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Re. Claims 15 and 20, Jin, Kim, and Christofferson teach Claims 1 and 8. However, Jin and Kim do not explicitly teach wherein the dedicated BWP is not an initial BWP. Yet, Christofferson explicitly teaches wherein the dedicated BWP is not an initial BWP (¶0110 - FFS CG-SDT resource can be configured on BWPs other than initial BWP). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of Christofferson to the teaching of Jin and Kim. The motivation to combine Christofferson and Jin would be to increase efficiency of the transmission as Christofferson provides that the dedicated BWP is not restricted to be only on the initial BWP (¶0110, Christofferson). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Re. Claims 16 and 21, Jin, Kim, and Christofferson teach Claims 1 and 8. However, Jin, and Kim, do not expressly teach setting the content of the UE capability information message to further indicate that the UE supports applying logical channel (LCH) restriction related parameters for SDT. Yet, Christofferson explicitly teaches setting the content of the UE capability information message to further indicate that the UE supports applying logical channel (LCH) restriction related parameters for SDT (¶0238 - The method 300 may include the UE receiving a release message from a serving radio network node of the communication network in association with the UE transitioning from an active mode to the inactive mode in advance of receiving the data into the UL transmission buffer of the UE). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of Christofferson to the teaching of Jin, and Kim. The motivation to combine Christofferson and Jin would be to increase efficiency of the transmission as Christofferson provides that the capability information includes support for a logical channel restriction (¶0238, Christofferson). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Claims 18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Jin, in view of Kim, Christofferson, Park et al. (2021/0051653), hereinafter Park. Re. Claims 18 and 23, Jin, Kim, and Christofferson teach Claims 1 and 8. However, Jin, Kim, and Christofferson do not expressly teach setting the content of the UE capability information message to further indicate that the UE supports an unlicensed band for SDT. Yet, Park explicitly teaches setting the content of the UE capability information message to further indicate that the UE supports an unlicensed band for SDT (¶0300 - The first wireless device 2912 may send, to a base station 2904, at least one uplink message 2918 (e.g., uplink RRC message) comprising the sidelink capability information (e.g., the unlicensed band support information 2908) of the second wireless device 2916). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of Park to the teaching of Jin, Kim, and Christofferson. The motivation to combine Park and Jin would be to increase efficiency of the transmission would be as Park provides that a capability information message can indicate support for an unlicensed band for SDT (¶0300, Park). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Claims 19 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Jin, in view of Kim, Christofferson, Yue et al. (2024/0276498), hereinafter Yue. Re. Claims 19 and 24, Jin, Kim, and Christofferson teach Claims 1 and 8. However, Jin, Kim, and Christofferson do not expressly teach setting the content of the UE capability information message to further indicate that the UE supports an autonomous retransmission for SDT. Yet, Yue explicitly teaches setting the content of the UE capability information message to further indicate that the UE supports an autonomous retransmission for SDT (¶0018 - The non-first SDT data refers to autonomous transmission of the first SDT data and/or autonomous retransmission of the first SDT data and/or subsequent SDT data). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of Yue to the teaching of Jin, Kim, and Christofferson. The motivation to combine Yue and Jin would be to increase efficiency of the transmission would be as Yue provides a capability information message can indicate support for an autonomous retransmission for SDT (¶0018, Yue). All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements, as claimed by known methods, and the combination would have yielded predictable results to one having ordinary skill in the art at the time of invention. Response to Arguments Applicant’s arguments, filed on 06/23/2026, with respect to claims 1-2, 8-9, 15-16, 18-21, and 23-24 have been considered but are not considered persuasive. Starting on Page 6, Applicant argues that provided reference Christofferson does not disclose “setting the content of the UE capability information message to further indicate that the UE supports restricting data transmission from a given logical channel (LCH) to a configured set of CG configurations for SDT”. To reject this limitation, Examiner provided ¶0204 (when a SDT procedure is initiated and some or all of the available UL data in DRBs configured for SDT is mapped to a LCH which is subject to LCH restrictions which do not allow transmission on a CG-SDT resource, the CG-SDT procedure is not selected) of Chistofferson. Examiner maintains that ¶0204 discloses that the provided data configured to the SDT is directly mapped or set in order to indicate what CG-SDT resources are not to be transmitted and has provided further context in ¶0130-0132, and ¶0154-0163 to support this claim. Here, the reference provides further detail regarding the parameters that are used to indicate whether a configured grant should be transmitted or restricted and is shown to be set at the time of every new transmission. As such, Examiner recognizes the argument provided by applicant but maintains the rejection of the independent claims 1 and 8 on the previously provided grounds under 35 § U.S.C. 103. Additionally, by means of dependency, Examiner respectfully disagrees with Applicant’s arguments for allowance for newly presented claims 15-16, 18-21, and 23-24, as they depend upon Claims 1 and 8 and have each been rejected in their own means as presented above. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kiilerich Pratas et al. (2023/0403703) See: Fig. 3A, 3B, 3C, and ¶0019-0092. Park et al. (2023/0379880) See: Fig. 13A, 13B, 13C, 20, ¶0173-195, and ¶0237-0238 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 NOAH JAMES SUGDEN whose telephone number is (571)270-7406. The examiner can normally be reached Mon-Thurs 9:00-6:00 ET, Fri 9:00-1:00 ET. 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, Khaled Kassim can be reached at (571) 270-3770. 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. /N.J.S./Examiner, Art Unit 2475 /KHALED M KASSIM/supervisory patent examiner, Art Unit 2475
Read full office action

Prosecution Timeline

Show 6 earlier events
Jun 27, 2025
Non-Final Rejection mailed — §103
Sep 10, 2025
Response Filed
Nov 12, 2025
Final Rejection mailed — §103
Feb 06, 2026
Request for Continued Examination
Feb 20, 2026
Response after Non-Final Action
Mar 23, 2026
Non-Final Rejection mailed — §103
Jun 23, 2026
Response Filed
Sep 09, 2026
Final Rejection mailed — §103 (current)

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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
85%
Grant Probability
98%
With Interview (+13.0%)
3y 0m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 33 resolved cases by this examiner. Grant probability derived from career allowance rate.

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