DETAILED ACTION
1. The following Office Action is based on the amendment filed on 22 July 2026, having claims 1-4, 6-12, 14-17, and 19-23 (claims 5, 13, and 18 were cancelled; and claims 21-23 were added).
Notice of Pre-AIA or AIA Status
2. 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
3. Applicant’s arguments filed 22 July 2026, with respect to the rejection of claims 1-4, 6-12,14-17, and 19-23 have been fully considered and are persuasive. Therefore, the rejection is withdrawn. However, upon further consideration, a new ground of rejection is made in view of Shi et al. (US 2023/0108725 A1).
Claim Objections
4. Claim 9 is objected to because of the following informalities:
The phrase “or not” recited after the word “whether” in line 9 of claim 9 must be deleted to render the claim affirmative. Appropriate correction is required.
Claim Rejections - 35 USC § 102
5. 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.
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 names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 6, 8-9, 14, 20, and 22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shi et al. (US 2023/0108725 A1).
For claims 1, 8, and 20, Shi discloses a first network node (Fig 4, last serving gNB or Fig 11, apparatus 1100) comprising: at least one memory (Fig 11, CRM 1108); and at least one processor (Fig 11, processor 1106) coupled with the at least one memory and configured to cause the first network node to:
receive, from a second network node (Fig 4, gNB1), first information associated with mobile terminating small data transmission (MT-SDT) for a user equipment (UE) from a second network node ([0038] gNB1 transmits a request to last serving gNB, wherein [0072] the request comprises a cause value indicating time for MT-SDT data is over a threshold);
determine whether to indicate the MT-SDT to the UE based on at least the first information received from the second network node ([0072] the last serving gNB sends an acknowledgment response message to gNB1 comprising the UE context release indication); and
transmit to the second network node in response to determining to indicate the MT-SDT to the UE, second information indicating the first network node determines to indicate the MT-SDT to the UE ([0072] the last serving gNB sends an acknowledgment response message to gNB1 comprising the UE context release indication).
For claims 6, 14, and 22, Shi discloses the second information is included in a message for requesting UE context from the second network node via an interface between the first network node and the second network ([0038] gNB1 transmits the cause value in UE context request sent to the last serving gNB); or the second information is included in a message other than the message for requesting the UE context from the second network node via the interface between the first network node and the second network node ([0072] the last serving gNB sends an acknowledgment response message to gNB1 comprising the UE context release indication).
For claim 9, Shi discloses A first network node (Fig 4, gNB1 or Fig 11, apparatus 1100) comprising: at least one memory (Fig 11, CRM 1108); and at least one processor (Fig 11, processor 1106) coupled with the at least one memory and configured to cause the first network node to:
provide first information associated with mobile terminating small data transmission (MT-SDT) for a user equipment (UE) ([0038] gNB1 transmits a request to last serving gNB, wherein [0072] the request comprises a cause value indicating time for MT-SDT data is over a threshold);
if the UE is in a non-RRC Connected state (Fig 4, UE is in RRC inactive state), send the first information associated with the MT-SDT for the UE to a second network node that determines whether or not to indicate the MT-SDT to the UE ([0038] gNB1 transmits a request to last serving gNB, wherein [0072] the request comprises a cause value indicating time for MT-SDT data is over a threshold); and
receive, from the second network node (Fig 4, last serving gNB) in response to the second network node determining to indicate the MT-SDT to the UE, second information indicating the second network node determines to indicate the MT-SDT to the UE ([0072] the last serving gNB sends an acknowledgment response message to gNB1 comprising the UE context release indication).
Claim Rejections - 35 USC § 103
6. 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4, 7, 10-12, 16-17, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 2023/0108725 A1) in view of Wang et al. (US 2025/0142527 A1).
For claims 2, 10, 16 and 21, Wang discloses the first information is included in a radio access network (RAN) paging message from the second network node (abstract, the information for the MT-SDT procedure is included in a paging message), or the first information is included in another message other than the RAN paging message from the second network node.
Wang, from the same or similar field of endeavor, discloses the first information is included in a radio access network (RAN) paging message from the second network node (abstract, the information for the MT-SDT procedure is included in a paging message), or the first information is included in another message other than the RAN paging message from the second network node. Thus, it would have been obvious to one skilled in the art to include the first or second information a paging message in the communication network of Shi based on the teachings of Wang at the time of the invention.
For claims 3, 11, 17 and 23, Wang disclose the first information associated with the MT-SDT of the UE includes at least one of the following: a first information element indicating a size of downlink data for the UE [0076]; one or more second information elements indicating one or more SDT configurations [0119]; a third information element indicating the first network node to determine whether to initiate the MT-SDT for the UE; a fourth information element indicating a network node to determine whether to initiate the MT-SDT for the UE; or a fifth information element indicating whether the second network node sends a paging message for the MT-SDT in the second network node or sends the paging message to the UE to initiate the MT-SDT.
For claims 4 and 12, Wang discloses the one or more SDT configurations include at least one of: one or more data radio bearers (DRBs) ([0118] the configuration information comprises a first set of radio bearers supporting MT-SDT); one or more service types associated with the one or more DRBs; one or more quality of service (QoS) parameters; one or more signaling radio bearer (SRBs); or one or more thresholds associated with SDT.
For claim 7, Wang discloses cause the first network node to determine to initiate the MT-SDT for the UE for a time duration (abstract, MT-SDT procedure is initiating at a time following determination to perform the MT-SDT procedure for the terminal).
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisabeth B Magloire whose telephone number is (571)272-5601. The examiner can normally be reached M-F 8 AM-5 PM ET.
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, Sujoy K Kundu can be reached at 571-272-8586. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELISABETH BENOIT MAGLOIRE/Primary Examiner, Art Unit 2471
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