Prosecution Insights
Last updated: April 19, 2026
Application No. 18/005,479

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

Non-Final OA §103
Filed
Jan 13, 2023
Examiner
HTUN, SAN A
Art Unit
2643
Tech Center
2600 — Communications
Assignee
BEIJING XIAOMI MOBILE SOFTWARE CO., LTD.
OA Round
3 (Non-Final)
77%
Grant Probability
Favorable
3-4
OA Rounds
3y 0m
To Grant
99%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allow Rate
581 granted / 756 resolved
+14.9% vs TC avg
Strong +23% interview lift
Without
With
+22.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
29 currently pending
Career history
785
Total Applications
across all art units

Statute-Specific Performance

§101
6.6%
-33.4% vs TC avg
§103
69.2%
+29.2% vs TC avg
§102
4.8%
-35.2% vs TC avg
§112
6.5%
-33.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 756 resolved cases

Office Action

§103
Detailed Action 1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered. 2. In virtue of this communication, claims 1-11 and 14-21 are currently pending in this Office Action. Response to Arguments 3. The arguments in Remarks submitted on 11/12/2025 were argued mainly based on the amended claim limitation. However, the amended claim limitations are considered obvious by the rationales provided in the claim rejection section set forth below. 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 Kazmi Pub. No.: US 2010/0041384 A1 in view of Stojanovski et al. Pub. No.: US 2019/0239064 A1, Mayor et al. Pub. No.: US 2021/0092555 A1 and Shih et al. Pub. No.: US 2019/0037625 A1. Claim 1 Kazmi discloses a method (multi-modal UE for reporting capability information eNodeB in fig. 2-7) for capability reporting, performed by a terminal (UE 102 in fig. 2), the method comprising: PNG media_image1.png 278 558 media_image1.png Greyscale sending capability information about a type of multi-modal communication supported by the terminal to a network device (202 in fig. 2 and see fig. 3 for a type of multi-modal communication supported by UE receives at a base station in 402 in fig. 4 and par. 0066). Although Kazmi does not explicitly show: “a type of multi-modal service; wherein the type of multi-modal communication or service comprises at least one of a real-time translation or a directional control; and wherein in a case where the network device is a base station, the capability information is contained in a radio resource control layer connection setup completion signaling”, the claim limitations are considered obvious by the following rationales. meets the claim requirement, to advance the prosecution, the alternative feature “” will be addressed. Firstly, to address the obviousness of “a type of multi-modal service”, initially recall that fig. 3 in Kazmi depicts a type of multi-modal service such as GSM, HRPD, CDMA2000, E-UTRA, etc. In particular, Stojanovski teaches UE for sending registration request (step. 4 in fig. 3, registering a request is a service, see services in par. 0082 such as UMTS, LTE, VoIP, PTT, group communication session and social networking services). 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 Kazim 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. PNG media_image2.png 764 452 media_image2.png Greyscale Secondly, to address the obviousness of the amended claim limitations “wherein the type of multi-modal communication or service comprises at least one of a real-time translation or a directional control”, recall that Kazim explains the capability information consisting of a list of RATs (par. 0060-0063) and Stojanovski discloses communication services M2M, MTC, D2D, proximity-based service ProSe, NG RAN, UMTS, PTT, GSM or LTE, NR (par. 0068-669). In particular, Mayor teaches a communication service for directing a user for a real-time (fig. 5-7) with image data captured by a device camera (fig. 3). 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 Kazim in view of Stojanovski by providing mobile device navigation system as taught in Mayor. Such a modification would have provided a mobile device to support location mapping and navigation capabilities so that an augmented reality navigation could have been generated to avoid user confusion and disorientation as suggested in par. 0003-0005 of Mayor. Lastly, the amended claim limitations are considered obvious by the rationales found in the newly cited prior art Shih. In particular, Shih teaches wherein in a case where the network device is a base station, the capability information is contained in a radio resource control layer connection setup completion signaling (par. 0075, UE may provide an indication for UE’s capability in the RRC connection setup complete message to inform the cell N1, i.e., BS). 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 Kazim in view of Stojanovski and Mayor by providing a user equipment UE as taught in Shih to obtain the claimed invention as specified in the claim. Such a modification would have provided a UE in multi-connectivity to add a secondary node into a master node so that UE could have maintained simultaneous connections to the master node and the secondary node without requiring to camp on a cell as suggested in par. 0004 of Shih. Claim 2 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 1, wherein sending the capability information about the type of multi-modal communication or service supported by the terminal to the network device (402 in fig. 4 of Kazim) comprises: sending the capability information to the network device while accessing the network device (fig. 2-4 of Stojanovski; Stojanovski, in step 7, when UE sends capability information, it can be said that UE is accessing the network device in steps 1-2 in fig. 2; and thus, the combined prior art reads on the claim). Claim 3 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 1, further comprising: receiving a request, sent by the network device, for acquiring the capability information (Stojanovski, in step 6 in fig. 2, gNB sends UE capability enquiry; hence, the combined prior art meets the claim requirement). Claim 4 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 1, wherein the network device is a base station, and the capability information is contained in at least one of: a user equipment capability information signaling (402 in fig. 4 of Kazim), or a radio resource control layer setup completion signaling (RRC in steps 1-2 in fig. 2 of Stojanovski; accordingly, the combined prior art renders the claim obvious). Claim 5 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 1, wherein the network device is a core network, and the capability information is contained in at least one of: an attach request signaling, or a registration request signaling (Stojanovski, registration request in step 4 of fig. 3; therefore, one of ordinary skill in the art would have expected the combine prior art to perform equally well to the claim). Claim 6 Kazmi discloses a method (multi-modal UE for reporting capability information eNodeB in fig. 2-7) for capability determining, performed by a network device (base station 104 in fig. 2), the method comprising: sending capability information about a type of multi-modal communication supported by the terminal to a network device (a base station receives in 402 in fig. 4 and par. 0066, see 202 in fig. 2 and fig. 3 for a type of multi-modal communication supported by UE). Although Kazmi does not explicitly show: “a type of multi-modal service; wherein the type of multi-modal communication or service comprises at least one of a real-time translation or a directional control; wherein in a case where the network device is a base station, the capability information is contained in a radio resource control layer connection setup completion signaling”, the claim limitations are considered obvious by the following rationales. meets the claim requirement, to advance the prosecution, the alternative feature “” will be addressed. Firstly, to address the obviousness of “a type of multi-modal service”, initially recall that fig. 3 in Kazmi depicts a type of multi-modal service such as GSM, HRPD, CDMA2000, E-UTRA, etc. In particular, Stojanovski teaches UE for sending registration request (step. 4 in fig. 3, registering a request is a service, see services in par. 0082 such as UMTS, LTE, VoIP, PTT, group communication session and social networking services). 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 Kazim 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. Secondly, to address the obviousness of the amended claim limitations “wherein the type of multi-modal communication or service comprises at least one of a real-time translation or a directional control”, recall that Kazim explains the capability information consisting of a list of RATs (par. 0060-0063) and Stojanovski discloses communication services M2M, MTC, D2D, proximity-based service ProSe, NG RAN, UMTS, PTT, GSM or LTE, NR (par. 0068-669). In particular, Mayor teaches a communication service for directing a user for a real-time (fig. 5-7) with image data captured by a device camera (fig. 3). 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 Kazim in view of Stojanovski by providing mobile device navigation system as taught in Mayor to obtain the claimed invention as specified in the claim. Such a modification would have provided a mobile device to support location mapping and navigation capabilities so that an augmented reality navigation could have been generated to avoid user confusion and disorientation as suggested in par. 0003-0005 of Mayor. Lastly, the amended claim limitations are considered obvious by the rationales found in the newly cited prior art Shih. In particular, Shih teaches wherein in a case where the network device is a base station, the capability information is contained in a radio resource control layer connection setup completion signaling (par. 0075, UE may provide an indication for UE’s capability in the RRC connection setup complete message to inform the cell N1, i.e., BS). 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 Kazim in view of Stojanovski and Mayor by providing a user equipment UE as taught in Shih to obtain the claimed invention as specified in the claim. Such a modification would have provided a UE in multi-connectivity to add a secondary node into a master node so that UE could have maintained simultaneous connections to the master node and the secondary node without requiring to camp on a cell as suggested in par. 0004 of Shih. Claim 7 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 6, wherein the network device is a base station, and before receiving the capability information sent by the terminal (fig. 2-4 of Kazim), the method further comprises: sending a request for acquiring the capability information to the terminal (Stojanovski, step 6 in fig. 2); wherein the request is contained in a user equipment capability enquiry signaling (Stojanovski, in step 6 in fig. 2, gNB sends UE capability enquiry, and thus, the combined prior art reads on the claim unless claim further recites what are required to be the UE capability enquiry signaling). Claim 8 Kazim, in view of Stojanovski, Mayor and Shih discloses the method of claim 6, wherein the network device is a base station (Kazim, base station 104 in fig. 2), and the method further comprises: determining a core network supporting the type of multi-modal communication or service; and communicating with the core network to provide services to the terminal (Stojanovski, gNB in fig. 2 communicates with AMF; and hence, the combined prior art meets the claim condition). Claim 10 Kazim, in view of Stojanovski, Mayor and Shih, discloses the method of claim 6, wherein the network device is a core network, and 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 (Kazim, providing the RAT for UE based on capability information transmitted to the network node in fig. 3-7; Stojanovski, supporting services in par. 0080 & 0082; accordingly, the combined prior art renders the claim obvious). Claim 14 and 16-19 PNG media_image3.png 506 590 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, Kazim discloses a terminal (UE in fig. 1-9) comprising: a processor (data processor 902 in fig. 9); and a memory (data storage 906 in fig. 9) configured to store instructions executable by the processor (910 and 908 are stored in the data storage to be executed by the data processor to perform the functions and instruction depicted in fig. 2-7). 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 PNG media_image4.png 760 604 media_image4.png Greyscale 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, Kazim discloses a network device (eNodeB in fig. 1-9) comprising: a processor (data processor 802 in fig. 8); and a memory (data storage 806 in fig. 8) configured to store instructions executable by the processor (810 and 808 are stored in the data storage to be executed by the data processor to perform the functions and instruction depicted in fig. 2-7). 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 15 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 Kazim in view of Stojanovski, Mayor, Shih and Sivavakeesar et al. Pub. No.: US 2019/0357131 A1. Claim 9 Although Kazim, in view of Stojanovski, Mayor and Shih, 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 Kazim in view of Stojanovski, Mayor and Shih 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 Kazim, in view of Stojanovski, Mayor and Shih, 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 Kazim in view of Stojanovski, Mayor and Shih 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. Contact Information 8. 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

Jan 13, 2023
Application Filed
Apr 16, 2025
Non-Final Rejection — §103
Jul 07, 2025
Response Filed
Sep 15, 2025
Final Rejection — §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 24, 2026
Non-Final Rejection — §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

3-4
Expected OA Rounds
77%
Grant Probability
99%
With Interview (+22.9%)
3y 0m
Median Time to Grant
High
PTA Risk
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