Prosecution Insights
Last updated: October 01, 2026
Application No. 18/287,525

CAPABILITY DETERMINATION METHOD AND APPARATUS, AND CAPABILITY INDICATION METHOD AND APPARATUS

Non-Final OA §102§103§112
Filed
Sep 19, 2024
Priority
Apr 23, 2021 — nonprovisional of PCTCN2021089438
Examiner
MURILLO GARCIA, FABRICIO R
Art Unit
Tech Center
Assignee
Beijing Xiaomi Mobile Software Co., Ltd.
OA Round
1 (Non-Final)
85%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allowance Rate
515 granted / 606 resolved
+25.0% vs TC avg
Strong +57% interview lift
Without
With
+57.1%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 0m
Avg Prosecution
31 currently pending
Career history
625
Total Applications
across all art units

Statute-Specific Performance

§101
4.1%
-35.9% vs TC avg
§103
51.3%
+11.3% vs TC avg
§102
8.7%
-31.3% vs TC avg
§112
29.3%
-10.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 606 resolved cases

Office Action

§102 §103 §112
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 . Claim Status Claims 3-4, 6, 8-9, 12, 18-19, 21, 23-25, 29-30 have been amended. Claims 5, 7, 13-15, 20, 22, 26-28, 31-32 have been cancelled. Thus, claims 1-4, 6, 8-12, 16-19, 21, 23-25, 29-30 are presented for examination. Claim Rejections - 35 USC § 112 – Second Paragraph The following is a quotation of 35 U.S.C. 112(b): (B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. For claim 30: At line 1, the claim seems to be an independent apparatus claim. However, at line 5, the claim seems to be a method claim, and at line 16 it seems to be a dependent claim. Hence, it is unclear whether the claim is an independent or dependent claim, as well as an apparatus or method claim. 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1-4, 16-19, 24-25, 29, 30 are rejected under 35 U.S.C. 102(a)(1)-(a)(2) as being anticipated by Wang et al. (US Patent Application Publication No. 2021/0029534). Regarding claim 1, Wang teaches a capability determination method (Fig. 2), performed by a core network (disclosed core network), comprising: receiving first capability information sent by a communication device (disclosed CN receives capabilities sent by disclosed mobile terminal [Paragraphs 54-59]); and determining whether a target base station supports sending a paging reason according to the first capability information (based on the MT’s capabilities, CN determines whether disclosed BS sends reasons for paging to the MT [Paragraphs 54-59]). Regarding claim 2, Wang further teaches the method of claim 1, wherein the communication device comprises at least one of: a terminal or a base station (disclosed MT and BS). Regarding claim 3, Wang further teaches the method of claim 2, wherein the communication device is the terminal, and receiving the first capability information sent by the communication device comprises: receiving the first capability information sent by the terminal in a process of the terminal accessing the core network, or receiving the first capability information sent by the terminal after the terminal accesses the core network; or, wherein the communication device is the base station, and receiving the first capability information sent by the communication device comprises: receiving the first capability information sent by the base station in a process of establishing an interface with the base station (the communication device is the MT and shares its capabilities in view of its intention to access the CN [Paragraphs 54-59]). Regarding claim 4, Wang further teaches the method of claim 3, wherein the first capability information sent by the terminal is received in the process of the terminal accessing the core network, and the first capability information is carried in at least one of: an attachment request signaling, a registration request signaling, an attachment completion signaling, or a registration completion signaling ([Paragraph 64]). Regarding claim 12, Wang further teaches the method of claim1, further comprising at least one of: sending a request for obtaining the first capability information to the communication device; determining whether a neighboring base station of the target base station supports sending a paging reason according to the first capability information; determining, according to the first capability information, whether the target base station supports carrying the paging reason when sending a paging signaling; or determining that the target base station does not support sending the paging reason, and instructing other base stations to send the paging reason ([Paragraphs 54-59]). Regarding claims 16-19, 25, these claims are rejected as applied to claims 1-4, 12. Regarding claim 24, Wang further teaches the method of claim 16, further comprising: receiving a request for obtaining the first capability information from the core network ([Paragraphs 54-59]). Regarding claim 29, this claim is rejected as applied to claim 1. Regarding claim 30, this claim is rejected as applied to claim 1. 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 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. Claims 6, 8, 21, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Patent Application Publication No. 2021/0029534) in view of Schliwa et al. (US Patent Application Publication No. 2023/0188992). Regarding claim 6, Wang teaches all the limitations recited in claim 3. However, Wang does not explicitly mention: first capability information sent by the terminal is received after the terminal accesses the core network, and the first capability information is carried in a non-access-stratum signaling. Schliwa teaches, in a similar field of endeavor communication systems, the following: first capability information sent by the terminal is received after the terminal accesses the core network, and the first capability information is carried in a non-access-stratum signaling ([abstract | Paragraphs 6-7, 12-18]). 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 communication system (as taught by Wang) by carrying non-access-stratum (as taught by Schliwa) for the purpose of protecting capability transfer (Schliwa – Paragraph 4). Regarding claim 8, Wang further teaches the method of claim 3, wherein the communication device is the base station, the first capability information sent by the base station is received in the process of establishing the interface with the communication device ([Paragraphs 54-59]), [. However, Wang does not explicitly mention: the first capability information is carried in at least one of: a next generation application protocol (NGAP) signaling or a S 1 application protocol (SlAP) signaling. Schliwa teaches, in a similar field of endeavor communication systems, the following: the first capability information is carried in at least one of: a next generation application protocol (NGAP) signaling or a S 1 application protocol (SlAP) signaling ([Paragraphs 237, 241, 243]). 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 communication system (as taught by Wang) by carrying non-access-stratum (as taught by Schliwa) for the purpose of protecting capability transfer (Schliwa – Paragraph 4). Regarding claims 21, 23, these claims are rejected as applied to claims 6, 8. Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Patent Application Publication No. 2021/0029534) in view of Li et al. (US Patent Application Publication No. 2018/0317218). Regarding claim 9, Wang teaches all the limitations recited in claim 1. However, Wang does not explicitly mention: sending second capability information to the target base station, wherein the second capability information is configured to indicate whether the core network supports sending a paging reason. Li teaches, in a similar field of endeavor communication systems, the following: sending second capability information to the target base station, wherein the second capability information is configured to indicate whether the core network supports sending a paging reason ([Paragraphs 7-30, 42-48, 66-82]). 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 communication system (as taught by Wang) by implementing second capability information (as taught by Li) for the purpose of protecting capability transfer (Li – Paragraph 4). Regarding claim 10, Li further teaches the method of claim 9, wherein sending the second capability information to the target base station comprises: sending the second capability information to the target base station in a process of establishing an interface with the target base station ([Paragraphs 7-30, 42-48, 66-82]). Regarding claim 11, Li further teaches the method of claim 10, wherein the second capability information is carried in at least one of: a NGAP signaling or a SlAP signaling ([Paragraphs 7-30, 42-48, 66-82]). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FABRICIO R MURILLO GARCIA whose telephone number is (571)270-5708. The examiner can normally be reached 9-5pm. 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, Sam K Ahn can be reached at 5712723044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. September 18, 2026 /FABRICIO R MURILLO GARCIA/Primary Examiner, Art Unit 2633
Read full office action

Prosecution Timeline

Sep 19, 2024
Application Filed
Sep 21, 2026
Non-Final Rejection mailed — §102, §103, §112 (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

1-2
Expected OA Rounds
85%
Grant Probability
99%
With Interview (+57.1%)
2y 0m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 606 resolved cases by this examiner. Grant probability derived from career allowance rate.

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