DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. This office action is in response to the amendment filed on 04/29/2026. Claims 1-4, 14-17 and 21-24 are pending in this application and have been considered below. Claims 5-13 and 18-20 are cancelled by the applicant.
3. The objection of claims 5-13 and 18-20 is corrected by the amendment. Therefore, the objection is withdrawn.
4. The rejection under 35 USC 112(b) of claim 2-13 and 15-17 is corrected by the amendment. Therefore, the rejection is withdrawn.
5. Applicant’s arguments with respect to claim 1, 14 and 21 have been considered but are moot in view of new ground(s) of rejection because of the amendments.
Claim Construction
6. Contingent Limitations:
The contingent/conditional limitations are not positively recited in the claim(s) and are thus only executed [or performed or implemented], when the condition is true/met.
[See, (MPEP 2111.04) II.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.
(1) Claim 1 recites the following contingent limitations: “sending a non-access stratum (NAS) based connection release request to a network in a case that a first condition is met, the first condition comprising: the terminal needs to send paging restriction information to the network; and sending an access stratum (AS) based connection release request to the network in a case that a second condition is met, the second condition comprising: the terminal prefers to be released to an inactive state.” Claim 1 is drafted as a method (process), "in a case that a first condition is met... and in a case that a second condition is met" clause acts as a strict condition precedent. The above limitations are contingent because they recite steps that are only required to be performed if their condition precedent is met. If the condition never occurs, the steps do not need to be performed for the method to infringe or be anticipated. Therefore, the BRI of claim 1 requires the steps to be performed only if the condition is met. However, if the condition never occurs, the steps do not need to be performed for the method to infringe or be anticipated.
(2) Claims 2-4 recite contingent limitations. Claims 2-4 are drafted as a method (process), "in a case that a first condition is met... and in a case that a second condition is met"... (claim 1)" clause acts as a strict condition precedent. These limitations are contingent because they recite steps that are only required to be performed if their condition precedent is met (see condition in claim 1). If the condition never occurs, the steps do not need to be performed for the method to infringe or be anticipated. Therefore, the BRI of claims 2-4 require the steps to be performed only if the condition is met. However, if the condition never occurs, the steps do not need to be performed for the method to infringe or be anticipated.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-4, 14-17 and 21-24 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Claim 1 recites the limitation "sending a non-access stratum (NAS) based connection release request to a network in a case that a first condition is met, the first condition comprising: the terminal needs to send paging restriction information to the network; and sending an access stratum (AS) based connection release request to the network in a case that a second condition is met, the second condition comprising: the terminal prefers to be released to an inactive state". It is unclear in the claimed invention, how the above both conditions are performed simultaneously. Also, the specification of instant application discloses “performing a first operation or a second operation, where the first operation includes at least one of the following: sending a NAS leave request to a network, and sending a NAS paging rejection to the network; and the second operation includes at least one of the following: sending an AS leave request to the network, and sending an AS paging rejection to the network” (see abstract). Thus, for the purpose of examination, the examiner interprets that at least one of the conditions is being performed in the claimed invention.
Same issue as above exist in claim 14 and 21. Thus, the examiner’s interpretation remains the same as above.
(2) Claim 1 recites the word “prefer” in line 12. The word “prefer” is an indefinite term that leads to uncertainty regarding the scope of the claim. Because it does not clearly define whether the “terminal” is “released to an inactive state” or not. Therefore, the examiner suggests, removing the word “prefer” from the claim or replacing it with a definite term.
Same issue as above exist in claim 14 and 21. Thus, the examiner’s suggestion remains the same as above.
9. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well.
Applicants are reminded that MPEP 2141.02 states:
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Claim Rejections - 35 USC § 102
10. 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)(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.
11. Claims 1-4, 14-17 and 21-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Velev et al. (US 20220053448) (hereinafter Velev).
Regarding claims 1, 14 and 21:
As shown in figures 1-9, Velev discloses a terminal (see mobile terminal in figures 1-2 and 4-6), comprising a processor (605 in figures 6), a memory (610 in figures 6), and a program or an instruction that is stored in the memory (610 in figures 6) and that can be run on the processor (605 in figures 6), wherein the program or the instruction is executed by the processor (605 in figures 6) to implement the following steps (par 0135-0140):
sending a non-access stratum (NAS) based connection release request to a network in a case that a first condition is met (see step 3B in figure 4B), the first condition comprising: the terminal needs to send paging restriction information to the network (par 0113); and
sending an access stratum (AS) based connection release request to the network in a case that a second condition is met (see step 5 in figure 4B), the second condition comprising: the terminal prefers to be released to an inactive state (par 0099, 0119, 0145, 0147).
Regarding claims 2, 15 and 22:
Velev further discloses wherein the first condition further comprises: the terminal needs to send the connection release request to the network (par 0079, 0089, 0113, 0115).
Regarding claims 3, 16 and 23:
Velev further discloses wherein the second condition further comprises the terminal needs to send the connection release request to the network (par 0115, 0119, 0147).
Regarding claims 4, 17 and 24:
Velev further discloses receiving first indication information sent by the network, wherein the first indication information is used to indicate at least one of the following: allowing the terminal to concurrently send the paging restriction information when sending the NAS based connection release request; or not allowing the terminal to concurrently send the paging restriction information when sending the AS based connection release request (see 425-430 in figure 4A, par 0079, 0105-108).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (US 12245310) disclose a method and apparatus for fast small data transmission in a wireless communication system is provided. A last serving RAN node receives, from the wireless device and via a new RAN node, an AS-RAI related to early data transmission. A last serving RAN node decides whether a UE context relocation to the new RAN node for the wireless device is required or not based on the received AS-RAI. A last serving RAN node transmits, to the new RAN node, an RRC message based on the decision.
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KABIR A TIMORY whose telephone number is (571)270-1674. The examiner can normally be reached Mon-Fri 7:00 AM-3:00 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, Hannah S Wang can be reached at 571-272-9018. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KABIR A TIMORY/ Primary Examiner, Art Unit 2631
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