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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/16/2026 has been entered.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered. The applicant argues that the Kim reference that was relied upon in the final Office action does not anticipate amended claim 1. See Remarks at 12-14. The examiner disagrees.
The applicant states:
the random access report in claim 1 "includes one or more parameters pertaining to uplink data message transmission to the base station," where the uplink data message that is transmitted is the small data transmission (SDT). This is in contrast with Kim, whose random access report indicates that a successful random access procedure occurred during an SDT procedure. That is, Kim makes no mention of the random access report of Kim "includ[ing] an indication of whether transmission of the uplink data message to the base station was successful," where "the uplink data message comprises a small data transmission message," as recited in amended independent claim 1. Thus, Kim does not disclose at least the aforementioned features of amended independent claim 1.
Id. at 13-14. The examiner disagrees.
Kim describes two types of RA (random access) reports: a report for a successful RA procedure, and a report for an RA failure. See Kim ¶ 448 and Fig. 28. Therefore Kim’s report indicates whether the RA procedure was successful. The RA procedure involves the transmission of small data transmission (SDT) uplink messages. See Fig. 27 and its description. The RA procedure will only succeed if transmission of the uplink SDT message is successful; RA setup will fail if these uplink SDT transmissions were not successful. This is because transmission to the base station of SDT messages (RA preamble for SDT, first message for SDT, etc.), and reception of RA responses from the base station, must succeed in order to set up the RA. This is described in ¶¶ 386-394, and shown in Fig. 24 and Fig. 27. Therefore the report that is sent as a result of the RA setup procedure indicates whether the SDT messages that were sent during RA setup were successfully transmitted to the base station. For example, a report indicating that RA was successfully completed (see ¶ 446) indicates that the SDT uplink transmissions that were performed during the RA setup were successful.
This disclosure in Kim meets the language of the amended claims, because Kim’s RA report “includes an indication of whether transmission of the [SDT] uplink data message to the base station was successful.”
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)(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, 6-18, 20-26, and 29-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim, US 20240032134. Support for the passages in Kim that are relied upon below can be found in provisional application 63/168,783, filed 03/31/2021.
Claim 1: Kim discloses a user equipment (UE) for wireless communication, comprising at least one memory and at least one processor coupled to the at least one memory, wherein the at least one processor is configured to (The UE in Kim is a computing device, known to have these elements. See e.g. Fig. 1B and ¶¶ 45 and 212.):
transmit, in accordance with a communications procedure, an uplink data message to a base station while the UE is in an inactive mode, wherein the uplink data message comprises a small data transmission message, and wherein the communication procedure is a random access procedure (As SDT uplink message is sent from the UE to a base station in a random access procedure while the UE is in an inactive mode. ¶¶ 383 and 420-421; Fig. 23-24 and Fig. 27);
generate a random access report that includes one or more parameters pertaining to uplink data message transmission to the base station, wherein the one or more parameters included in the random access report are based at least in part on the communications procedure associated with the uplink data message (A random access (RA) report is generated, and includes parameters relating to the uplink SDT message sent to the base station. ¶¶ 372, 421-422, and 446-448; Fig. 28.) and include an indication of whether transmission of the uplink data message to the base station was successful; and transmit the random access report to the base station (The RA report is generated that indicates whether the RA procedure was successful. ¶¶ 419-421 and 446-448. This report is transmitted to the 2nd base station. Fig. 27. The RA procedure will only succeed if transmission of the uplink SDT messages during RA setup is successful; RA setup will fail if these uplink SDT transmissions were not successful. See e.g. ¶¶ 386-394, Fig. 24 and Fig. 27. Therefore the RA report indicates whether the SDT messages that were sent during RA setup were successfully transmitted to the base station. For example, a report indicating that RA was successfully completed (see ¶ 446) indicates that the SDT uplink transmissions that were performed during the RA setup were successful).
Claim 2: Kim discloses: wherein to transmit the random access report, the at least one processor is configured to: transmit the random access report to the base station for enhancement of subsequent uplink data message transmissions from the UE, improvement of random access procedures and resources used for subsequent uplink data message transmissions from the UE, or both (The BRI of this claim language only requires that the report is transmitted “for enhancement of subsequent uplink data message transmission from the UE.” This claim language describes operations at the base station, not the UE; it shows how the base station uses the report from the UE “for enhancement” or “improvement” of subsequent transmission from the UE. See e.g. the publication of this application, US20240276275, at ¶105. Therefore this claim language does not limit the structure of the apparatus, the UE, to which claim 2 is drawn, and as such is not given patentable weight. See MPEP 2111.04 I. Even if given patentable weight, this feature is taught by Kim. See Fig. 28-30 and their description, and ¶372.).
Claim 3: Kim discloses that to transmit the uplink data message the at least one processor is configured to: receive, from the base station, a configured grant indicating one or more physical uplink shared channel resources; and transmit the uplink data message to the base station on a random access channel in accordance with the random access procedure based at least in part on a prior attempt to transmit the uplink data message to the base station on the one or more physical uplink shared channel resources in accordance with the configured grant being unsuccessful (The chosen uplink resource for initial SDT is a PUSCH. Fig. 30; ¶¶ 400 and 464-468. Failure of this communication triggers a random access procedure, which includes transmission of the initial SDT. See ¶¶ 436 and 447.).
Claim 4: Kim discloses that to transmit the uplink data message the at least one processor is configured to: transmit the uplink data message to the base station on a random access channel in accordance with the random access procedure (¶463.).
Claim 6: Kim discloses to generate the random access report the at least one processor is configured to: generate the random access report based at least in part on successful transmission of the uplink data message on the random access channel, wherein the one or more parameters included in the random access report comprise a set of random access parameters used for transmission of the uplink data message, a set of channel measurements pertaining to the communications procedure, an indication of a random access message used for transmission of the uplink data message, an indication of a random access purpose associated with the uplink data message, or a combination thereof (¶¶464-467.).
Claim 7: Kim discloses that to generate the random access report the at least one processor is configured to: generate the random access report based at least in part on successful transmission of the uplink data message on the random access channel, wherein the one or more parameters included in the random access report comprise data arrival information related to the uplink data message, radio bearer information associated with the uplink data message, , or a combination thereof (¶464).
Claim 8: Kim discloses that to generate the random access report the at least one processor is configured to: log the one or more parameters of the random access report until a connection release message or a connection resume message is received from the base station (¶¶462, 468-469).
Claim 9: Kim discloses: generate a logged minimization of drive test report or a small data transmission report based at least in part on successful transmission of the uplink data message on the random access channel (A small data transmission (SDT) report is generated based on the successful uplink RA transmission. ¶¶466-468.).
Claim 10: Kim discloses that the at least one processor is configured to: determine that transmission of the uplink data message on the random access channel was unsuccessful based at least in part on a failure of the random access procedure, expiration of a timer related to a failure status of the uplink data message, detection of an integrity check failure at the UE, or a combination thereof (¶¶465-467).
Claim 11: Kim discloses: generate a connection establishment failure report (¶448), a logged minimization of drive test report, or a small data transmission report based at least in part on failure of the transmission of the uplink data message on the random access channel (¶¶465-467).
Claim 12: Kim discloses: generate a connection establishment failure report based at least in part on determining that the transmission of the uplink data message on the random access channel was unsuccessful, wherein the connection establishment failure report comprises a set of random access parameters used for transmission of the uplink data message, a set of channel measurements related to transmission of the uplink data message, data volume information pertaining to the UE, payload information associated with the uplink data message, data arrival information related to transmission of the uplink data message, or a combination thereof (¶¶ 448 and 465-466).
Claim 13: Kim discloses: generate a small data transmission report based at least in part on the communications procedure being a successful random access procedure, wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, radio bearer information associated with the uplink data message, configured grant resource release information associated with the communications procedure, or a combination thereof (¶¶ 464-467).
Claim 14: Kim discloses: determine that a timer related to a failure status of the uplink data message has not expired; and generate a small data transmission report based at least in part on determining that the timer has not expired (¶¶ 466-469), wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, a set of channel measurements associated with transmission of the uplink data message, retransmission information associated with the uplink data message, radio bearer information related to the uplink data message, timing information associated with transmission of the uplink data message, or a combination thereof (¶¶ 464-466).
Claim 15: Kim discloses: determine that a timer related to a failure status of the uplink data message has expired (¶466); and generate a small data transmission report based at least in part on determining that the timer has expired, wherein the one or more parameters of the small data transmission report comprise a small data transmission type used for transmission of the uplink data message, a set of channel measurements associated with transmission of the uplink data message, configured grant resource release information associated with the communications procedure, cell reselection information related to the communications procedure, or a combination thereof (¶¶464-466).
Claim 16: Kim discloses that to transmit the uplink data message the at least one processor is configured to: transmit the small data transmission message as the uplink data message while the UE is in the inactive mode based at least in part on the uplink data message having a payload size that is below a preconfigured threshold (¶¶322-323 and Fig. 19 – SDT by definition includes messages with payload size below a defined threshold. The UE remains in the inactive state during this procedure. See also ¶468, which describes a SDT condition being that the message have a size that is below a threshold.).
Claim 17: Kim discloses that to generate the random access report the at least one processor is configured to: generate the random access report based at least in part on transmitting the uplink data message in an unlicensed radio frequency spectrum band (RA communications is performed in the unlicensed spectrum. ¶189.), wherein the one or more parameters of the random access report comprise bandwidth part information related to transmission of the uplink data message, listen before talk failure information associated with transmission of the uplink data message, a failure status of the uplink data message, or a combination thereof (¶¶ 408 and 464-466.).
Claim 18: Kim discloses that to transmit the random access report the at least one processor is configured to: transmit the random access report to the base station while the UE is in a connected mode or an inactive mode (Fig. 30 and its description – the report is transmitted in the inactive mode).
Claim 20: Kim discloses that the at least one processor is configured to: transmit, to the base station and based at least in part on generating the random access report, an indication that the random access report is available for transmission (The first message that is sent to the base station is an indication that the report is available. Responsive to this first message, the base station requests the report. See Fig. 30 and ¶¶ 458-461.).
Claim 21: Kim discloses that the at least one processor is configured to: receive, from the base station and in response to the indication, a request for the UE to transmit the random access report, wherein transmitting the random access report is based at least in part on receiving the request (Fig. 30 and ¶458).
Claim 22: Kim discloses that the at least one processor is configured to: transmit the uplink data message, the random access report, an indication that the random access report is available for transmission, or a combination thereof via one or more signaling radio bearers or dedicated radio bearers (SDT transmission, and the procedure depicted in Fig. 30, occur on the claimed radio bearers. ¶350).
Claims 23, 29, and 30: see rejection of claim 1.
Claims 24-26: see rejection of claims 2-4, respectively.
Claim 31: Kim discloses that the inactive mode is an RRC inactive state (¶ 391).
Claim 32: Kim discloses that the indication of whether transmission of the uplink data message to the base station was successful is an indication that transmission of the uplink data message to the base station was unsuccessful (The RA procedure will only succeed if transmission of the uplink SDT messages during RA setup is successful; RA setup will fail if these uplink SDT transmissions were not successful. See e.g. ¶¶ 386-394, Fig. 24 and Fig. 27. One reasons for an RA failure is that an RA response was not received in a response window. ¶¶ 386-391. The POSITA would understand that this would occur for one of two reasons: the initial uplink SDT was not received at the base station, or the RA response was not received by the UE. Therefore the RA failure report indicates that the SDT messages that were sent during RA setup were unsuccessfully transmitted to the base station.).
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.
Claims 5 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Xing, US 20230156821 (with support in PCT/CN2021/101331).
Claims 5 and 27: Kim fails to disclose to transmit the uplink data message on the random access channel the at least one processor is configured to: transmit the uplink data message via the random access channel based at least in part on a prior attempt to transmit the uplink data message to the base station in accordance with a configured grant being unsuccessful.
However, Xing discloses transmit a message via a random access channel based at least in part on a prior attempt to transmit the message to a base station in accordance with a configured grant being unsuccessful (¶129).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Kim with these teachings in Xing, the rationale being to enable the most suitable uplink path to be located.
Claims 19 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kim, WO 2020050575 (“Kim ‘575”).
Claims 19 and 28: Kim fails to disclose that the at least one processor is configured to: transmit, to the base station, a capability message indicating a capability of the UE to generate self-organizing network or minimization of drive test reporting information for small data transmissions; and receive, from the base station and based at least in part on the capability message, control signaling that indicates a set of self-organizing network or minimization of drive test reporting criteria.
However, Kim ‘575 discloses a UE that is programmed to transmit, to the base station, a capability message indicating a capability of the UE to generate self-organizing network or minimization of drive test reporting information; and receive, from the base station and based at least in part on the capability message, control signaling that indicates a set of self-organizing network or minimization of drive test reporting criteria (Abstract and ¶¶ 7-8).
It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify Kim with teachings in Kim ‘575, the rationale being to ensure proper reporting from the UE and in the format most useful to the base station.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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/ROBERT J HANCE/ Reexamination Specialist, Art Unit 3992
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