Prosecution Insights
Last updated: July 17, 2026
Application No. 18/005,479

CAPABILITY REPORTING METHOD AND APPARATUS, AND CAPABILITY DETERMINATION METHOD AND APPARATUS

Final Rejection §103
Filed
Jan 13, 2023
Priority
Jul 27, 2020 — nonprovisional of PCTCN2020104922
Examiner
HTUN, SAN A
Art Unit
2643
Tech Center
2600 — Communications
Assignee
Beijing Xiaomi Mobile Software Co., Ltd.
OA Round
4 (Final)
77%
Grant Probability
Favorable
5-6
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
594 granted / 771 resolved
+15.0% vs TC avg
Strong +23% interview lift
Without
With
+22.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
15 currently pending
Career history
795
Total Applications
across all art units

Statute-Specific Performance

§101
3.0%
-37.0% vs TC avg
§103
92.4%
+52.4% vs TC avg
§102
1.4%
-38.6% vs TC avg
§112
2.5%
-37.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 771 resolved cases

Office Action

§103
Detailed Action 1. This Office Action is in response to the Applicant’s communication filed on 04/28/2026. In virtue of this communication, claims 1-11 and 14-21 are currently pending in this Office Action. Response to Arguments 2. Applicant presents the amended limitations as argument in Remarks. However, the amended claim limitations are considered obvious by the rationales explained in the claim rejection section set forth below. Concerns for New Matter 3. Applicant amends the claims to recite “… a radio resource control layer connection setup …”. Applicant is reminded of requirement to new matter. See MPEP 2163.06. Claim Rejections - 35 USC § 103 4. 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 of this title, 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. 5. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. 6. Claims 1-8, 10 and 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kadiri et al. Pub. No.: US 2021/0259031 A1 in view of Stojanovski et al. Pub. No.: US 2019/0239064 A1.. Claim 1 Kadiri discloses a method (UE in fig. 4-7 & 10-12 for RRC connection Setup Complete) for capability reporting to a network device (BS 704 in fig. 7A), performed by a terminal (UE 702 in fig. 7), the method comprising: PNG media_image1.png 578 856 media_image1.png Greyscale in a case where the network device is a base station (BS 704 in fig. 7A), sending to the base station, a radio resource control layer connection setup completion signaling (UE sends RRC connection setup complete to BS in fig. 7A). Although Kadiri does not explicitly show: “carrying at least one of an identifier of a rea-time translation or an identifier of a directional control”, the claim limitation is considered obvious by the following rationales. PNG media_image2.png 830 610 media_image2.png Greyscale Initially, it’s to note that claim does not specifically define “what are required to be an identifier of a real-time translation or an identifier of a directional control”. See MPEP 2111. In fact, a massage carrying an identifier is intrinsic feature in wireless communication, for instance, even a phone call, voice or data call, carries a destination number. Kadiri discusses a RRC connection request for a base station including a 48 bit 5G-S TMSI, UE identity and 8 bit of them may be sent in the RRC connection setup complete message (par. 0104). This teaching from Kadiri could have rendered the addressing claim limitation obvious. However, to advance the prosecution, further evidence is provided herein. In particular, Stojanovski teaches UE for sending UE identifier, its public key, and the NONCE encrypted using its private key (par. 0043 and see par. 0047-0048). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify truncated identification indicator of Kadiri by providing UE capabilities provisioning and retrieval in cellular networks as taught in Stojanovski. Such a modification would have provided a user equipment UE to register with multiple cellular networks with the capabilities so that UE capacity information message could not have caused a problematic, large contribution of carrier aggregation band combination as suggested in par. 0010 of Stojanovski. Claim 2 Kadiri, in view of Stojanovski, discloses the method of claim 1, further comprising: sending capability information to the network device while accessing the network device (Kadiri, UE capabilities in fig. 4; Stojanovski, step 7 in fig. 2 for sending UE capability), wherein the capability information comprises at least one of the identifier of the real-time translation or the identifier of the directional control (Kadiri, UE identity and truncated UE identity in fig. 5; Stojanovski, Capability ID along with Model ID, Device manufacture ID and UE capability subset ID; accordingly, the combined prior art reads on the claim). Claim 3 Kadiri, in view of Stojanovski, discloses the method of claim 1, further comprising: receiving a request, sent by the network device, for acquiring capability information (Stojanovski, step 6 in fig. 2, gNB sends UE capability request), and sending the capability information comprising the at least one of the identifier of the real-time translation or the identifier of the directional control in response to the request (Stojanovski, Capability ID along with Model ID, Device manufacture ID and UE capability subset ID in fig. 1 & 7; accordingly, the combined prior art meets the claim requirement). Claim 4 Kadiri, in view of Stojanovski, discloses the method of claim 1, wherein in the case where the network device is the base station (Kadiri, BS in fig. 7; Stojanovski, gNB in fig. 2), the method further comprises: sending, to the base station, a user equipment capability information signaling (Stojanovski, step 7 in fig. 4 for sending UE capability information) or a radio resource control layer setup completion signaling carrying the at least one of the identifier of the real-time translation or the identifier of the directional control (Kadiri, RRC connection setup complete in fig. 7A and see par. 0043 for including UE identifier, its public key and the NONCE encrypted using its private key in the RRC Connection Setup Complete; and thus, the combined prior art renders the claim obvious). Claim 5 Kadiri, in view of Stojanovski, discloses the method of claim 1, wherein in a case where the network device is a core network (Kadiri, transmit AMF of a core network in 1022 in fig. 10C), the method further comprises: sending, to the core network, an attach request signaling, or a registration request signaling carrying the at least one of the identifier of the real-time translation or the identifier of the directional control (Kadiri, see UE ID truncating information in fig. 10C-11A; Stojanovski, registration message, attach/tracking area update is used to carry UE capability ID from the UE to the eNB in par. 0032 and see fig. 8-10; accordingly, with these teachings, the combined prior art meets the four corners of the claim). Claim 6 Kadiri discloses a method (UE in fig. 4-7 & 10-12 for RRC connection Setup Complete) for capability determining, performed by a network device, the method comprising: in a case where the network device is a base station (BS 704 in fig. 7A), receiving a radio resource control layer connection setup completion signaling (in fig. 7A, BS 704 receives RRC Connection Setup Complete); and determining a type of multi-modal communication or service supported by the terminal (configure SRB based on UE capabilities in fig. 7A). Although Kadiri does not explicitly show: “carrying at least one of an identifier of a real-time translation or an identifier of a directional control; at least one of the identifier of the real-time translation or the identifier of the directional control”, the claim limitations are considered obvious by the same rationales. Initially, it’s to note that claim does not specifically define “what are required to be an identifier of a real-time translation or an identifier of a directional control”. See MPEP 2111. In fact, a massage carrying an identifier is intrinsic feature in wireless communication, for instance, even a phone call, voice or data call, carries a destination number. Kadiri discusses a RRC connection request for a base station including a 48 bit 5G-S TMSI, UE identity and 8 bit of them may be sent in the RRC connection setup complete message (par. 0104). This teaching from Kadiri could have rendered the addressing claim limitation obvious. However, to advance the prosecution, further evidence is provided herein. In particular, Stojanovski teaches UE for sending UE identifier, its public key, and the NONCE encrypted using its private key (par. 0043 and see par. 0047-0048). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify truncated identification indicator of Kadiri by providing UE capabilities provisioning and retrieval in cellular networks as taught in Stojanovski. Such a modification would have provided a user equipment UE to register with multiple cellular networks with the capabilities so that UE capacity information message could not have caused a problematic, large contribution of carrier aggregation band combination as suggested in par. 0010 of Stojanovski. Claim 7 Kadiri, in view of Stojanovski, discloses the method of claim 6, wherein in the case where the network device is the base station (Kadiri, BS 704 in fig. 1A-B; Stojanovski, gNB in fig. 2), the method further comprises: sending a request for acquiring capability information to the terminal (Stojanovski, in step 6 in fig. 2, gNB sends UE capability Enquiry); wherein the request is contained in a user equipment capability enquiry signaling (Stojanovski, step 6 in fig. 2 and thus, the combined prior art reads on the claim). Claim 8 Kadiri, in view of Stojanovski, discloses the method of claim 6, wherein in the case where the network device is the base station, the method further comprises: determining a core network supporting the type of multi-modal communication or service (Kadiri, AMF responds UE capabilities in fig. 7A-B; Stojanovski, AMF determines UE ID in UE capability database); and communicating with the core network to provide services to the terminal (Kadiri, BS communicate with AMF to provide services based on UE capability in fig. 7A-B; Stojanovski, gNB communicates with AMF to get UE capabilities in order to provide the services; accordingly, the combined prior art renders the claim obvious). Claim 10 Kadiri, in view of Stojanovski, discloses the method of claim 6, wherein in a case where the network device is a core network (Kadiri, transmit AMF of a core network in 1022 in fig. 10C), the method further comprises: providing, by a function of the core network supporting the type of multi-modal communication or service, services to the terminal (Kadiri, providing services to UE by configuring SRB based on UE capabilities as depicted in fig. 7A-B; Stojanovski, depicts fig. 2-6 for registration accepted and RRC connection setup based on UE capabilities by checking database and fig. 8-10 depicts that how services or call is provided; and thus, the combined prior art renders the claim obvious). Claim 14 and 16-19 PNG media_image3.png 462 754 media_image3.png Greyscale Claims 14 and 16-19 are terminal claims corresponding to method claims 1-5. All of the limitations in claims 14 and 16-19 are found reciting for the structures of the same scopes of the respective limitations in claims 1-5. Accordingly, claims 14 and 16-19 are considered obvious by the same rationales applied in the rejection of claims 1-5 respectively set forth above. Additionally, Kadiri discloses a terminal (UE in fig. 3 & 8) comprising: a processor (controller / processor 359 in fig. 3); and a memory (memory 360 in fig. 3) configured to store instructions executable by the processor (359 and 360 are communicated to perform the functions and instruction depicted in fig. 4-7 & 10-12 and see fig. 8). Claim 15 Claim 15 is a computer product claim corresponding to method claim 1. All of the limitations are reciting for the same scope of the respective limitations of claim 1. Accordingly, claim 15 is considered obvious by the same rationales applied in the rejection of claim 1 set forth above. Claim 20 Claim 20 is a device corresponding to method claim 6. All of the limitations are found reciting for the structures of the same scopes of the respective limitations in claim 6. Accordingly, claim 20 is considered obvious by the same rationales applied in the rejection of claim 6 set forth above. Additionally, Kadiri discloses a network device (base station in fig. 3 & 9) comprising: a processor (controller/processor 375 in fig. 3); and a memory (memory 376 in fig. 3) configured to store instructions executable by the processor (370 and 376 are communicated to perform the functions and instruction depicted in fig. 4-7 & 10-12 and see fig. 9). Claim 21 Claim 21 is a computer product claim corresponding to method claim 6. All of the limitations are reciting for the same scope of the respective limitations of claim 6. Accordingly, claim 21 is considered obvious by the same rationales applied in the rejection to claim 6 set forth above. 7. Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kadiri in view of Stojanovski and Sivavakeesar et al. Pub. No.: US 2019/0357131 A1. Claim 9 Although Kadiri, in view of Stojanovski, does not disclose: “the method of claim 8, further comprising: sending first indication information to the terminal in response to determining that there is no core network supporting the type of multi-modal communication or service, wherein the first indication information is configured to indicate the terminal to access another base station”, claim 9 is considered obvious by the following rationales. Initially, it’s to note that the claim does not specifically define what are involved in the indication information. In particular, Sivavakeesar teaches configuring handover HO cell lists, forbidden cells per UE based on slice types supported by a cell/gNB, UE SLA and UE capabilities (S712 in fig. 7; see fig. 8 for indicating handover restriction list which may be based on slice types supported by a cell in par. 0128, it means cells are forbidden to handover due to the slice type not supported by the cell) and performing handover based on slice type supported (fig. 9 and see fig. 16). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify reporting of multiple RAT layer restrictions of Kadiri in view of Stojanovski by providing RRC procedures to a 5G network implementing network slicing as taught in Sivavakeesar to obtain the claimed invention as specified in the claim. Such a modification would have provided a network slicing to support a user equipment UE with a network slice in accordance with the UE capabilities so that the efficient slicing mechanism would have selected the available slices for roaming and paging appropriately without wasting network resources as suggested in par. 0020-0025 of Sivavakeesar. Claim 11 Although Kadiri, in view of Stojanovski, does not disclose: “the method of claim 10, further comprising: sending second indication information to the terminal in response to determining that there is no core network function supporting the type of multi-modal communication or service in the core network, wherein the second indication information is configured to indicate the terminal to access another core network”, claim 11 is considered obvious by the following rationales. Initially, it’s to note that the claim does not specifically define what are involved in the indication information. In particular, Sivavakeesar teaches configuring handover HO cell lists, forbidden cells per UE based on slice types supported by a cell/gNB, UE SLA and UE capabilities (S712 in fig. 7; see fig. 8 for indicating handover restriction list which may be based on slice types supported by a cell in par. 0128, it means cells are forbidden to handover due to the slice type not supported by the cell) and performing handover based on slice type supported (fig. 9 and see fig. 16). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify reporting of multiple RAT layer restrictions of Kadiri in view of Stojanovski by providing RRC procedures to a 5G network implementing network slicing as taught in Sivavakeesar to obtain the claimed invention as specified in the claim. Such a modification would have provided a network slicing to support a user equipment UE with a network slice for UE capabilities so that the efficient slicing mechanism would have selected the available slices for roaming and paging appropriately as suggested in par. 0020-0025 of Sivavakeesar. Conclusion 8. 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. Contact Information 9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN HTUN whose telephone number is (571)270-3190. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM. 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 on 5712723965. 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. /SAN HTUN/ Primary Examiner, Art Unit 2643
Read full office action

Prosecution Timeline

Show 2 earlier events
Jul 07, 2025
Response Filed
Sep 18, 2025
Final Rejection mailed — §103
Nov 12, 2025
Response after Non-Final Action
Dec 17, 2025
Request for Continued Examination
Jan 12, 2026
Response after Non-Final Action
Jan 28, 2026
Non-Final Rejection mailed — §103
Apr 28, 2026
Response Filed
Jul 08, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

5-6
Expected OA Rounds
77%
Grant Probability
99%
With Interview (+22.7%)
2y 10m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 771 resolved cases by this examiner. Grant probability derived from career allowance rate.

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