Prosecution Insights
Last updated: April 19, 2026
Application No. 18/280,536

DELIVERY OF ON-DEMAND SIB USING SDT

Final Rejection §102
Filed
Sep 06, 2023
Examiner
GARCIA, SANTIAGO
Art Unit
2673
Tech Center
2600 — Communications
Assignee
Telefonaktiebolaget Lm Ericsson (Publ)
OA Round
2 (Final)
88%
Grant Probability
Favorable
3-4
OA Rounds
2y 5m
To Grant
99%
With Interview

Examiner Intelligence

Grants 88% — above average
88%
Career Allow Rate
895 granted / 1015 resolved
+26.2% vs TC avg
Moderate +13% lift
Without
With
+12.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
21 currently pending
Career history
1036
Total Applications
across all art units

Statute-Specific Performance

§101
7.6%
-32.4% vs TC avg
§103
60.2%
+20.2% vs TC avg
§102
18.7%
-21.3% vs TC avg
§112
2.3%
-37.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1015 resolved cases

Office Action

§102
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 . Response to Arguments Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive. On page 9 applicant argues that SDT (Small data transmission) was not around at the time Chen was filed and was not functionality defined in 3GPP. The Examiner respectfully disagrees, by Chen having “small” message as evident by applicant on page 9 as well, SDT is then taught by Chen. There are no details in the claim language to even suggest that “SDT” is the SDT that is in the 3GPP standard not even in the specification. The claims do not say “SDT” in the 3GPP standard for example, or some other limitation that would limit it as such. The limitations “Small Data Transmission” are vague and not specific. Therefore “small” data message covers this limitation. The applicant is not evoking 112f either and the specification is further not specific enough for limitations to be brought in from the specification in view of itself. Therefore, the same rejection applies. The Examiner suggests adding the allowable subject matter to place the current application in condition of allowance. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1-2, 4-9, 11-14, 16-19, 21-25, 29, 31 and 59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 2019/0124715). As per claims 1, 29, 31 and 59 Chen teaches, a method, device, a node and method performed by a network node performed by a wireless communication device (Chen, fig.1 a wireless communication device ) comprising: while in inactive state (Chen, ¶[0348] “[0349] RRC_INACTIVE: [0350] Broadcast of system information;” and ¶[0368] “dedicated RRC signalling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE” this represents while the device being inactive), transmitting a message to a network node (Chen, ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs), one RACH preamble can be used to request multiple SI messages and the gNB acknowledges the request in MSG2. When MSG3 is used, the gNB acknowledges the request in MSG4.” This represents transmitting a message), wherein the message comprises: an identity, ID, of the wireless communication device (Chen, ¶[0195] “If no Random Access Response or, for BL UEs or UEs in enhanced coverage for mode B operation, no PDCCH scheduling Random Access Response is received within the RA Response window, or if none of all received Random Access Responses contains a Random Access Preamble identifier corresponding to the transmitted Random Access Preamble” this represents that preamble has an identifier); information that indicates one or more System Information Blocks, SIBs, and/or one or more position SIBs, posSIBs, being requested by the wireless communication device (Chen, ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs), one RACH preamble can be used to request multiple SI messages and the gNB acknowledges the request in MSG2. When MSG3 is used, the gNB acknowledges the request in MSG4.” This represents information that indicates one or more System Information Blocks, SIBs with the set of SIBs and the acknowledge request represents requested by wireless communication device ); and an indication that the wireless communication device supports a Small Data Transmission, SDI, functionality for requesting the one or more SIBs and/or the one or more posSIBs and/or an indication of a capability of the wireless communication device to obtain SIBs and/or posSIBs via downlink SDT transmission (Chen, ¶[0368] “[0368] For UEs in RRC_CONNECTED, dedicated RRC signaling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE, the request triggers a random access procedure (see subclause 9.2.6)” this represents having SDT as a SDT is a feature that allows a device to send a small amount of data while in a low-power, idle-like state (RRC_INACTIVE) without having to establish a full radio connection hence also the idle part and , ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs) represents one or more SIBs requests). As per claim 2, Chen teaches, the method of claim 1 wherein the message comprises a Medium Access Control, MAC, Control Element, CE, that comprises the information that indicates the one or more SIBs and/or the one or more posSIBs being requested by the wireless communication device (Chen, ¶[0029] “Medium Access Control (MAC) protocol specification” and ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs), one RACH preamble can be used to request multiple SI messages and the gNB acknowledges the request in MSG2. When MSG3 is used, the gNB acknowledges the request in MSG4.” And ¶[0104] “If the MAC entity receives a request for a new Random Access procedure while another is already ongoing in the MAC entity, it is up to UE implementation whether to continue with the ongoing procedure or start with the new procedure. [0124] NOTE: An NB-IoT UE measures RSRP on the anchor carrier.” ). As per claim 4, Chen teaches, the method of claim 2, wherein the wireless communication device indicates, to the network node, that the wireless communication device supports SmallData Transmission, SDT, functionality for requesting the one or more SIBs and/or the one or more posSIBs via: capability information reported to the network node, or use of a Logical Channel Identity, LCID, or enhanced Logical Channel Identity, eLCID, in the MAC CE, or use of a certain random access preamble resource group for transmission of an associated random access preamble (Chen, ¶[0176] “[0176] The MAC entity may stop monitoring for Random Access Response(s) after successful reception of a Random Access Response containing Random Access Preamble identifiers that matches the transmitted Random Access Preamble.” This is equivalent to certain random access preamble resource group for transmission of an associated random access preamble). As per claim 5, Chen teaches, the method of claim 2, wherein the MAC CE further comprises the identity of the wireless communication device (Chen, ¶ [0225] “Contention Resolution is based on either C-RNTI on PDCCH of the SpCell or UE Contention Resolution Identity on DL-SCH.” And ¶[0226] “[0244] if the UE Contention Resolution Identity included in the MAC control element matches” therefore the MAC CE further comprises the identity of the wireless communication device by having UE Contention Resolution Identity and being part of the MAC control element). As per claim 6, Chen teaches, the method of claim 2, wherein the identity of the wireless communication device is either an Inactive mode Radio Network Temporary Identifier, I-RNTI, or Short I-RNTI of the wireless communication device (Chen, ¶[0470] “In one embodiment, the MAC CE could be a C-RNTI (Cell-Radio Network Temporary Identifier) MAC CE. The CCCH SDU could be a system information request message.” Cell-Radio Network Temporary Identifier represents Radio Network Temporary Identifier, I-RNTI since the Inactive part comes in that “[0368] For UEs in RRC_CONNECTED, dedicated RRC signaling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE, the request triggers a random access procedure (see subclause 9.2.6)” this represents having SDT as a SDT is a feature that allows a device to send a small amount of data while in a low-power, idle-like state (RRC_INACTIVE) without having to establish a full radio connection hence also the idle part and , ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs) represents one or more SIBs requests ). As per claims 7 and 12, Chen teaches, the method of claim 6 wherein the MAC CE further comprises an indicator that indicates whether the identity of the wireless communication device comprised in the MAC CE is an I-RNTI or a Short I-RNTI (Chen, ¶[0477] “The first identity could be shorter than the second identity. The second identity could be equal to or larger than 40 bits.” This represents indicator that indicates whether the identity of the wireless communication device comprised in the MAC CE is an I-RNTI or a Short I-RNTI by having the first identity could be shorter than the second identity). As per claim 8, Chen teaches, the method of claim 2, wherein the MAC CE further comprises information that indicates whether the one or more SIBs and/or the one or more posSIBs being requested by the wireless communication device are one or more SIBs or one or more posSIBs (Chen, ¶[0382] “Proposal 1: The information about the one or more SIB(s) needed by UE is included in SI request message.” And this message is part of MAC CE ). As per claim 9, Chen teaches, the method of claim 2, wherein the MAC CE comprises a subheader that comprises an enhanced Logical Channel Identity, eLCID, wherein the eLCID comprises a plurality of bits that that indicate which of a plurality of SIBs and/or posSIBs are being requested by the wireless communication device (Chen, ¶[0177] “If a downlink assignment for this TTI has been received on the PDCCH for the RA-RNTI and the received TB is successfully decoded, the MAC entity shall regardless of the possible occurrence of a measurement gap or a Sidelink Discovery Gap for Transmission or a Sidelink Discovery Gap for Reception: [0178] if the Random Access Response contains a Backoff Indicator subheader: [0179] set the backoff parameter value as indicated by the BI field of the Backoff Indicator subheader and Table 7.2-1, except for NB-IoT where the value from Table 7.2-2 is used.” This represents having a subheader). As per claim 11, Chen teaches, the method of claim 9 wherein the eLCID further comprises the identity of the wireless communication device (Chen, ¶[0325] “The UE Contention Resolution Identity MAC control element is identified by MAC PDU subheader with LCID as specified in table 6.2.1-1. This control element has a fixed 48-bit size and consists of a single field defined as follows (FIG. 6.1.3.4-1)” The a fixed 48-bit size would represent the identity of the communication device). As per claim 13, Chen teaches, the method of claim 12 wherein the eLCID further comprises an indicator that indicates whether the identity of the wireless communication device comprised in the eLCID is an I-RNTI or a Short I-RNTI (Chen, ¶[0477] “The first identity could be shorter than the second identity. The second identity could be equal to or larger than 40 bits.” This represents indicator that indicates whether the identity of the wireless communication device comprised in the MAC CE is an I-RNTI or a Short I-RNTI by having the first identity could be shorter than the second identity). As per claim 14, Chen teaches, the method of claim 1 wherein the message comprises a Radio Resource Control, RRC, message that comprises the information that indicates the one or more SIBs and/or the one or more posSIBs being requested by the wireless communication device (Chen, ¶[0368] “For UEs in RRC_CONNECTED, dedicated RRC signalling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE, the request triggers a random access procedure (see subclause 9.2.6) and is carried over MSG3 unless the requested SI is associated to a subset of the PRACH resources, in which case MSG1 can be used. When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs),” RRC signaling represents Radio Resource Control, RRC, message, and SIBs the SIBs ). As per claim 16, Chen teaches, the method of claim 14 wherein the information that indicates the one or more SIBs and/or the one or more posSIBs being requested by the wireless communication device comprises a bitmap or explicit indication that indicates one or more SIBs and/or one or more posSIBs being requested by the wireless communication device (Chen, ¶[0388] “ [0388] It was proposed in [2] to jointly acknowledge different SI requests from different UEs using a bitmap in single Msg 4.” Bitmap represents UEs using a bitmap in single Msg 4 ). As per claim 17, Chen teaches, the method of claim 14, wherein transmitting the message comprises transmitting the RRC message to be used for communication of small data transmission, SDT, framework instead of a legacy RRC message that is normally used when transitioning from an idle/inactive state or in a connected state (Chen, ¶[0368] “For UEs in RRC_CONNECTED, dedicated RRC signaling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE, the request triggers a random access procedure (see subclause 9.2.6)” this represents having SDT as a SDT is a feature that allows a device to send a small amount of data while in a low-power, idle-like state (RRC_INACTIVE) without having to establish a full radio connection hence also the idle part and , ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs) represents one or more SIBs requests). As per claim 18, the method of claim 14, wherein transmitting the message comprises embedding the RRC message comprising information that indicates a capability of receiving SIBs and/or posSIBs using small data transmission, SDT, framework within a legacy RRC message that is normally used when transitioning from an idle/inactive state or in a connected state (Chen, ¶[0368] “For UEs in RRC_CONNECTED, dedicated RRC signaling is used for the request and delivery of the Other SI. For UEs in RRC.sub.— IDLE and RRC_INACTIVE, the request triggers a random access procedure (see subclause 9.2.6)” this represents having SDT as a SDT is a feature that allows a device to send a small amount of data while in a low-power, idle-like state (RRC_INACTIVE) without having to establish a full radio connection hence also the idle part and , ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs) represents one or more SIBs requests. Small data is embeted in RRC inactive and it is normally idle). As per claim 19, Chen teaches, the method of claim 14, wherein transmitting the message comprises transmitting the RRC message in either a Msg3 of a 4-step random access for a SDT procedure or MsgA of a 2-step random access for a SDT procedure (Chen, ¶[0456] “ the UE could reuse current LTE 4-step RA procedure (i.e. if the transmission is not being made for the CCCH..” this represents the 4-step random access ). As per claim 21, Chen teaches, the method of claim 1, further comprising receiving at least one of the one or more SIBs and/or at least one of the one or more posSIBs as part of a Msg 4 of an associated random access or as part of an RRC Release message (Chen, ¶[0386] “2. After sending SI request message, UE waits for Msg 4. UE starts contention resolution timer as in normal random-access procedure. [0387] The Msg 4 should include the UE Contention Resolution Identity i.e. x bits of CCCH SDU transmitted in Msg 3. [0388] It was proposed in [2] to jointly acknowledge different SI requests from different UEs using a bitmap in single Msg 4. ‘ ). As per claim 22, Chen teaches, the method of claim 1, further comprising receiving at least one of the one or more SIBs and/or at least one of the one or more posSIBs via broadcast (Chen, ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs),” and ¶[0369] “[0369] The Other SI may be broadcast at a configurable periodicity and for a certain duration. It is a network decision whether the other SI is broadcast or delivered through dedicated and UE specific RRC signaling.” Represents the broadcast ). As per claim 23, Chen teaches, the method of claim 22 wherein receiving the at least one of the one or more SIBs and/or the at least one of the one or more posSIBs via broadcast comprises receiving a broadcast status flag(s) associated to the at least one of the one or more SIBs and/or the at least one of the one or more posSIBs where the broadcast status flag(s) is(are) changed to indicate that the at least one of the one or more SIBs and/or the at least one of the one or more posSIBs are broadcasted (Chen, ¶[0368] “When MSG1 is used, the minimum granularity of the request is one SI message (i.e. a set of SIBs),” at least one SIB is broadcasted and see also ¶[0369] “[0369] The Other SI may be broadcast at a configurable periodicity and for a certain duration. It is a network decision whether the other SI is broadcast or deliVered through dedicated and UE specific RRC signaling.” Represents the broadcast). As per claim 24, Chen teaches, the method of claim 1, further comprising receiving a message that disables the request for the one or more SIBs and/or the one or more posSIBs (Chen, ¶[0173] “Response window starts at the subframe that contains the end of the last preamble repetition plus 41” the end of the preamble disables any more requests). As per claim 25, Chen teaches, the method of claim 1, wherein transmitting the message comprises either: transmitting a MsgA in a 2-step random access, where the MsgA comprises a random access preamble, a RRC Resume Request, data, and the message; or transmitting a Msg3 in a 4-step random access, where the Msg3 comprises a RRC Resume Request, data, and the message (Chen, ¶[0061] “[0062] if Random Access Preambles group B exists, the thresholds, messagePowerOffsetGroupB and messageSizeGroupA, the configured UE transmitted power of the Serving Cell performing the Random Access Procedure, P.sub.CMAX, c [10], and the offset between the preamble and Msg3, deltaPreambleMsg3” this represents transmitting a Msg3 in a 4-step random access and ¶[0456] “could reuse current LTE 4-step RA procedure” ). Allowable Subject Matter Claims 10 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. As per claim 10 the limitations “wherein the MAC CE comprises a flag in the subheader or in the eLCID that indicates whether the one or more SIBs and/or the one or more posSIBs being requested by the wireless communication device are one or more SIBs or one or more posSIBs” were not found in the prior art. In particular the MAC CE comprising a flag or indicator in the subheader or eLCID” was not found in the prior art in particular the flag in the subheader. As per claim 20 “wherein the identity of the wireless communication device is not included in the RRC message, but is included in a Medium Access Control, MAC, Control Element, CE, transmitted by the wireless communication device to the network node either before or after the RRC message.” the identity of the wireless communication device is not included in the RRC message but in the Medium Access Control, MAC, Control Element, CE was not found in the prior art. Conclusion 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 SANTIAGO GARCIA whose telephone number is (571)270-5182. The examiner can normally be reached Monday-Friday 9:30am-5:30pm. 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, Chineyere Wills-Burns can be reached at (571) 272-9752. 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. /SANTIAGO GARCIA/ Primary Examiner, Art Unit 2673 /SG/
Read full office action

Prosecution Timeline

Sep 06, 2023
Application Filed
Oct 10, 2025
Non-Final Rejection — §102
Jan 16, 2026
Response Filed
Feb 25, 2026
Final Rejection — §102 (current)

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Prosecution Projections

3-4
Expected OA Rounds
88%
Grant Probability
99%
With Interview (+12.8%)
2y 5m
Median Time to Grant
Moderate
PTA Risk
Based on 1015 resolved cases by this examiner. Grant probability derived from career allow rate.

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