Prosecution Insights
Last updated: July 17, 2026
Application No. 18/463,057

METHOD AND SYSTEM FOR CAPABILITY AWARENESS IN STEERING OF ROAMING

Final Rejection §103
Filed
Sep 07, 2023
Examiner
HUYNH, CHUCK
Art Unit
2644
Tech Center
2600 — Communications
Assignee
Cisco Technology Inc.
OA Round
2 (Final)
72%
Grant Probability
Favorable
3-4
OA Rounds
8m
Est. Remaining
86%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allowance Rate
350 granted / 488 resolved
+9.7% vs TC avg
Moderate +14% lift
Without
With
+13.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
22 currently pending
Career history
521
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
82.4%
+42.4% vs TC avg
§102
15.6%
-24.4% vs TC avg
§112
0.3%
-39.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 488 resolved cases

Office Action

§103
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 . Response to Arguments Applicant's arguments filed 1/2/20226 have been fully considered but they are not persuasive. Applicant argues that Nas in view of Foti does not disclose the specific limitation of “determining whether to register the UE with the first visited network based on whether the first list indicates that the first visited network is associated with a first network capability, wherein the first network capability is a network capability that is requested by the UE” (Remarks: Page 10-11). Examiner respectfully disagrees and would like to assert that due to the broadness of the claim language, Nas does disclose the limitation of, determining whether to register the UE with the first visited network based on whether the first list indicates that the first visited network is associated with a first network capability, wherein the first network capability is a network capability that is requested by the UE (Nas: [0030]: a roaming PLMN roaming list that includes a listing of preferred VPLMNs, wherein the preferred PLMN roaming list can be based on phone capabilities such as preferred technology capability like W-CDMA or GSM). Therefore, the claims are still not yet in condition for allowance, and are still rejected as shown below. Furthermore, Examiner would like to suggest Applicant to file the correct Automated Interview Request (AIR) form, or Applicant may also contact Examiner directly via Examiner’s office phone number to set up a telephonic interview. Thank you. 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, 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. Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nas (US 2011/0217979) in view of Foti et al. (US 2024/0284320; priority date: 9/7/2022; hereinafter Foti). Regarding claims 1 and 11, Nas discloses a method for bringing network capability awareness to steering of roaming, the method comprising: providing, in a home network, a first list of visited networks, wherein the first list includes visited networks, and the first list associates the visited networks with corresponding network capabilities of the respective visited networks ([0030]: providing a preferred PLMN roaming list containing preferred VPLMNs along with the network capabilities; [0030]: updating preferred PLMN roaming list while MS under HPLMN); providing, in user equipment (UE), a roaming partners list (RPL) that includes a plurality of visited networks arranged in order of priority with a first visited network having priority over other visited networks in the plurality of visited networks ([0030]: a roaming PLMN roaming list that includes a listing of preferred VPLMNs; [0045]: being able to update to a more preferred VPLMN); receiving, at the first visited network, a registration request from the UE, wherein registration request is a request to register the UE with the first visited network [(0031]: being able to register with the VPLMN); and determining whether to register the UE with the first visited network based on whether the first list indicates that the first visited network is associated with a first network capability, wherein the first network capability is a network capability that is requested by the UE ([0030]: the preferred PLMN roaming list can be based on phone capabilities) . Nas discloses all the limitations of the claim but is unclear about the visited network list being organized with a certain priority; However, Foti does disclose the said feature of wherein the visited network list being organized with a certain priority ([0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality). It would have been obvious to one ordinarily skilled in the art at the time of invention to incorporate Foti’s disclosure to provide better prioritization of VPLMNs to roam to. Regarding claims 2 and 12, Nas in view of Foti discloses the method of claim 1, further comprising: sending, from the UE to the first visited network, the registration request that includes an indication that the first network capability is being requested by the UE ([0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality); receiving, at the home network, an authentication request from the first visited network, wherein the authentication request indicates that the first network capability is being requested ([0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality); comparing, at the home network, the first network capability to the network capabilities in the first list ([0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality); and determining, based on the comparison, whether the first visited network supports the first network capability, and generating thereby a determination result ([0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality). Regarding claims 3 and 13, Nas discloses the method of claim 2, wherein determining whether the first visited network supports the first network capability is based on comparing the first network capability to the network capabilities in the first list to determine whether the first network capability matches one or more network capabilities in the first list that are associated with the visited network ([0029]-[0030], [0032]: the MS may register to a preferred network based on the list of preferred PLMN which includes network capability; [0032]: the preferred list is customized to the particular subscriber capabilities);. Regarding claims 4 and 14, Das discloses the method of claim 2, wherein, when the determination result is that the first visited network supports the first network capability, the method further comprises: sending, to the first visited network, an acceptance of the registration request ([0031]-[0031]: UE registering to the VPLMN); and registering the UE with the first visited network ([0031]-[0031]: UE registering to the VPLMN). Regarding claims 5 and 15, Das discloses the method of claim 2, wherein, when the determination result is that the first visited network does not support the first network capability, the method further comprises: sending, to the first visited network, an instruction for the UE to reorder the plurality of visited network in the RPL such that one or more other visited network that are determined by the comparison to the first list to support the first network capability are prioritized ahead of the first visited network ([0033]-[0036]: updating the preferred roaming list); and registering the UE with a second visited network that is in a highest priority in the reordered RPL ([0033]-[0036]: updating and registering to the new preferred roaming list). Regarding claims 6 and 16, Das discloses the method of claim 1, further comprising: receiving, from the first visited network to the UE, network-capability information indicating which of the visited networks in the first list are associated with which network capabilities ([0029]-[0030], [0032]: the MS may register to a preferred network based on the list of preferred PLMN which includes network capability; [0032]: the preferred list is customized to the particular subscriber capabilities); determining that the UE wants a first network capability ([0029]-[0030], [0032]: the MS may register to a preferred network based on the list of preferred PLMN which includes network capability; [0032]: the preferred list is customized to the particular subscriber capabilities); and comparing, at the UE, the first network capability to the received network-capability information to determine whether the first visited network supports the first network capability, and generating thereby a determination result ([0029]-[0030], [0032]: the MS may register to a preferred network based on the list of preferred PLMN which includes network capability; [0032]: the preferred list is customized to the particular subscriber capabilities). Regarding claims 7 and 17, Das discloses the method of claim 6, when the determination result is that the first visited network supports the first network capability, the method further comprises: registering the UE with the first visited network ([0029]-[0030], [0032]: the MS may register to a preferred network based on the list of preferred PLMN which includes network capability; [0032]: the preferred list is customized to the particular subscriber capabilities). Regarding claims 8 and 18, Das discloses the method of claim 6, wherein, when the determination result is that the first visited network does not support the first network capability, the method further comprises: reordering the RPL such that an other visited network that supports the first network capability is moved to a top of the RPL and is thereby prioritized ahead of the first visited network; and registering the UE with the other visited network ([0033]-[0036]: updating and registering to the new preferred roaming list). Regarding claims 9 and 19, Das in view of Foti discloses the method of claim 1, wherein the first network capability is selected from the group consisting of a time sensitive network (TSN) feature, an access traffic steering (Foti: [0094]-[0111]: wherein the UE capabilities are determined to be able to handle a prioritized list of VPLMNs according to the Steering of Roaming functionality), switching and splitting (ATSSS) feature, an ATSSS lower layer (ATSSS-LL) feature, a voice over WiFi (VoWiFi) feature, an ethernet protocol data unit (PDU) feature, a multi-path transmission control protocol (MPTCP), an MPTCP Proxy feature, a fine timing measurement (FTM) feature, and a non-regulatory location services feature. It would have been obvious to one ordinarily skilled in the art at the time of invention to incorporate Foti’s disclosure to provide better prioritization of VPLMNs to roam to. Regarding claims 10 and 20, Das discloses the method of claim 1, further comprising: registering the UE with the first visited network; after registering that the UE with the first visited network, signaling, at the UE, that based on the first list the first visited network does not support the first network capability; reordering the RPL such that an other visited network that supports the first network capability is moved to a top of the RPL and is thereby prioritized ahead of the first visited network; deregistering the UE with the first visited network; and registering the UE with the other visited network ([0033]-[0036]: updating and registering to the new preferred roaming list when the current network is not preferred). 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 CHUCK HUYNH whose telephone number is (571)272-7866. The examiner can normally be reached M-F 10am - 6pm. 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, Kathy Wang-Hurst can be reached at 571-270-5371. 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. /CHUCK HUYNH/Primary Examiner, Art Unit 2644
Read full office action

Prosecution Timeline

Sep 07, 2023
Application Filed
Oct 01, 2025
Non-Final Rejection mailed — §103
Jan 02, 2026
Response Filed
May 28, 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

3-4
Expected OA Rounds
72%
Grant Probability
86%
With Interview (+13.9%)
3y 6m (~8m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 488 resolved cases by this examiner. Grant probability derived from career allowance rate.

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