Prosecution Insights
Last updated: August 17, 2026
Application No. 18/901,134

METHODS AND SYSTEMS FOR BEAMFORMED SYSTEM INFORMATION TRANSMISSION

Non-Final OA §103§DP
Filed
Sep 30, 2024
Priority
Sep 28, 2016 — provisional 62/401,094 +5 more
Examiner
TRUONG, LAN-HUONG
Art Unit
Tech Center
Assignee
InterDigital Inc.
OA Round
1 (Non-Final)
91%
Grant Probability
Favorable
1-2
OA Rounds
4m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 91% — above average
91%
Career Allowance Rate
557 granted / 613 resolved
+30.9% vs TC avg
Moderate +10% lift
Without
With
+10.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 2m
Avg Prosecution
18 currently pending
Career history
623
Total Applications
across all art units

Statute-Specific Performance

§101
6.1%
-33.9% vs TC avg
§103
61.1%
+21.1% vs TC avg
§102
10.6%
-29.4% vs TC avg
§112
7.0%
-33.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 613 resolved cases

Office Action

§103 §DP
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 . This action is response to the application filed on 12/18/2025. Claims 15-26 are pending and herein considered. Claims 1-14 are cancelled. Oath/Declaration The receipt of oath/declaration is acknowledged. Drawings The drawings were received on 09/30/2024. These drawings are reviewed and accepted by the Examiner. Specification The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Information Disclosure Statement The information disclosure statement (IDS), submitted on submitted 09/30/2024 (which document listed has been submitted in the U.S Application No. 16/336,794 filed 04/30/2019), 05/27/2025 and 12/18/2025, are in compliance with the provisions of 37 CRR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. Claim(s) 15-26 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-18 of U.S. Patent No. 12,137,404 (Application no. 18/477,850). Although the conflicting claims are not identical, they are not patentably distinct from each other because claims of the instant application merely broaden the scope of the claims of U.S. Patent No. 12,137,404 (Application no. 18/477,850) by eliminating the elements and their functions of the claims. It has been held that the omission an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd.App.1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art and where the patent and the application are directed to transmitting a transmission including a preamble and control information to request at least one system information block (SIB), wherein the control information includes a control field, the control field having a plurality of bits that indicate the request for the at least one SIB; receiving, responsive to the transmission of the preamble and the control information, a physical downlink control channel (PDCCH) transmission using a system information radio network temporary identifier (SI-RNTI), wherein the physical downlink control channel transmission schedules a physical downlink shared channel transmission (PDSCH); and receiving the at least one SIB in the PDSCH transmission. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify claims 1-18 of U.S. Patent No. 12,137,404 (Application no. 18/477,850) to teach the invention of the claims 15-26 of the current application. 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. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Claims 15, 17, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated Kim et al.(U.S 2015/0359003) in view of Cho et al. (U.S 2018/0084560). For claim 15: Kim discloses a method implemented by a wireless/transmit receive unit (WTRU) (see Kim, at least figure 8; a wireless/transmit receive unit (WTRU)), the method comprising: transmitting a transmission including a preamble and control information to request at least one system information block (SIB) (see Kim, at least paragraph [0181]; the UE may acquire other system information by receiving different System Information Blocks (SIBs) transmitted by the eNB), wherein the control information includes a control field, the control field having a plurality of bits that indicate the request for the at least one SIB (see Kim, at least paragraph [0181]; the UE may acquire other system information by receiving different System Information Blocks (SIBs) transmitted by the eNB, and [0167]; ); receiving, responsive to the transmission of the preamble and the control information, a physical downlink control channel (PDCCH) transmission using a system information radio network temporary identifier (SI-RNTI) (see Kim, at least paragraph [0181]; The SIBs are transmitted on a DL-SCH. Whether the SIBs are present or not is checked by PDCCH signals masked with System Information Radio Network Temporary Identifiers (SI-RNTis) (S1030)), wherein the physical downlink control channel transmission schedules a physical downlink shared channel transmission (PDSCH) (see Kim, at least paragraph [0061]-[0062]; the UE may acquire more detailed system information by receiving a Physical Downlink Control Channel (PDCCH) and receiving a Physical Downlink Shared Channel (PDSCH) based on information of the PDCCH (S12)); and Kim further discloses the UE may perform a random access procedure with the eNB (S13 to S16). In the random access procedure, the UE may transmit a preamble on a Physical Random Access Channel (PRACH) (S13) and may receive a PDCCH and a PDSCH associated with the PDCCH (S14) (see Kim, at least paragraph [0062]), but does not explicitly disclose receiving the at least one SIB in the PDSCH transmission. Cho, from the same or similar fields of endeavor, discloses what Kim fails: the system information may be classified into a Mater Information Block (MIB) or a System Information Block (SIB), and the MIB is transmitted through a PBCH, and the SIB is transmitted through a PDSCH (see Cho, at least paragraph [0184]). Therefore, it would have been obvious statement before the effective filing date of the claimed invention to have a system comprises a method as taught by Cho. The motivation for doing this is to provide a system networks can supports a low latency service can transmit and receive the urgent data. For claims 17 and 23: In addition to rejection in claims 17 and 23, Kim-Cho further discloses wherein the at least one SIB includes a plurality of SIBs (see Kim, at least paragraph [0181]-[0182]; the UE may acquire other system information by receiving different System Information Blocks (SIBs) transmitted by the eNB). For claim 21: For claim 21, claim 21 is directed to a wireless/transmit receive unit (WTRU), which has similar scope as claim 15. Therefore, claim 21 remains un-patentable for the same reasons. Claims 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated Kim et al.(U.S 2015/0359003) in view of Cho et al. (U.S 2018/0084560) further in view NPL- SAMSUNG, "System Information Signalling Design in NR," 3GPP TSG-RAN WG2 Meeting #94, R2-163371, Nanjing, China (May 23-27, 2016); hereinafter “Samsung-R2-163371”). For claims 16 and 22: In addition to rejection in claims 16 and 22, Kim-Cho further does not explicitly disclose wherein the transmission is transmitted based on a determination by the WTRU to request the at least one SIB. Samsung-R2-163371, from the same or similar fields of endeavor, discloses what Kim-Cho fails: UE indicates the one or more system information it needs in system information request message (see Samsung-R2-163371, at least section 2, 2.1). Therefore, it would have been obvious statement before the effective filing date of the claimed invention to have a system comprises a method as taught by Samsung-R2-163371. The motivation for doing this is to provide a system networks can supports the system information can be provided to the UE on demand. Claims 18, 20, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated Kim et al.(U.S 2015/0359003) in view of Cho et al. (U.S 2018/0084560) further in view Kubota et al. (U.S 2016/0234759). For claims 18 and 24: In addition to rejection in claims 18 and 24, Kim-Cho does not explicitly disclose wherein the PDSCH transmission including the at least one SIB is received using a beam. Kubota, from the same or similar fields of endeavor, discloses what Kim-Cho fails: a UE may receive the MSIB, in some examples, by monitoring a System Information-Radio Network Temporary Identifier (SI-RNTI) on a common physical control channel (e.g., a PDCCH), decoding a down link assignment message associated with the SI-RNTI, and receiving the MSIB on a shared channel (e.g., a PDSCH) (see Kubota, at least figure 24 and paragraph [0100]-[0101]). Therefore, it would have been obvious statement before the effective filing date of the claimed invention to have a system comprises a method as taught by Kubota. The motivation for doing this is to provide a system networks can supports to improve communication quality and reliability between base stations and UEs. For claims 20 and 26: In addition to rejection in claims 20 and 26, Kim-Cho does not explicitly disclose wherein the PDCCH transmission is decoded using the SI-RNTI. Kubota, from the same or similar fields of endeavor, discloses what Kim-Cho fails: decode a downlink assignment message associated with the RNTI, and receive the MSIB on a shared channel (e.g., a PDSCH) according to information contained in the downlink assignment message. In another alternative, the UE may monitor an SI-RNTI in order to receive broadcast SI (see Kubota, at least paragraph [0101]). Therefore, it would have been obvious statement before the effective filing date of the claimed invention to have a system comprises a method as taught by Kubota. The motivation for doing this is to provide a system networks can supports to improve communication quality and reliability between base stations and UEs. Claims 19 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated Kim et al.(U.S 2015/0359003) in view of Cho et al. (U.S 2018/0084560) further in view Kubota et al. (U.S 2016/0234759) further in view of NPL- NTT DOCOMO, INC., “Design for RACH Procedure for NR,” 3GPP TSG RANWG1 Meeting #86, R1-167378, Goteborg, Sweden (August 22-26, 2016); hereinafter “R1-167378”. For claims 19 and 25: In addition to rejection in claims 19 and 25, Kim-Cho-Kubota further does not explicitly disclose wherein the beam is part of a plurality of beams in a selective beam sweep. R1-167378, from the same or similar fields of endeavor, discloses what Kim-Cho- Kubota fails: different analog beams can't be created in the same time interval, different analog beams should be created using different time intervals (analog-beam sweeping). And different analog beams can't be created in the same time interval, different analog beams should be created using different time intervals (analog-beam sweeping) (see R1-167378, at least figures 3-4, section 3). Therefore, it would have been obvious statement before the effective filing date of the claimed invention to have a system comprises a method as taught by R1-167378. The motivation for doing this is to provide a system networks can supports RACH procedure. Conclusion The prior arts made or record and not relied upon are considered pertinent to applicant's disclosures. Agiwal et al. (U.S 2017/0251500), discloses receive broadcast information and System information is structured into master information block (MIB) and a set of system information blocks (SIBs) and receiving the PRACH-SI, BS transmits a random access response and UE needs common system information and also wants to request additional system information and BS transmits SI-response corresponding to service supported. Dimou et al. (U.S 2017/0171764) discloses broadcast signal from base station where the broadcast signal contains the coverage enhancement RLC configuration in UEs of a SIB and UE transmits to the eNB a Radio Resource Control (RRC) Connection Request (RRCConnectionRequest) using the coverage enhancement RLC configuration to establish an RRC Connection with the eNB where the coverage enhancement is contained in an Information Element (IE) in a System Information Block (SIB). Lee et al. (U.S 2014/0098761), disclose discloses the PRACH resources (which may include preambles or sets of preambles and/or time/frequency resources which may be used for preamble transmission) may be provided or configured by the eNB. Fan et al. (U.S 2016/0164657) discloses receiving from the base station a second message including a random-access response using the random-access preamble according to the TDD configuration in the SIB. Kim et al. (U.S 2015/0359003) disclose the UE may randomly select a random-access preamble from a set of random-access preambles and select Physical RACH (PRACH) resources, and transmit the selected random-access preamble in the PRACH resources to the eNB. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAN-HUONG TRUONG whose telephone number is (571) 270-5829. The examiner can normally be reached on Monday-Friday 8am-5pm. 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, Ricky Ngo can be reached on 571-272-3139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LAN-HUONG TRUONG/Primary Examiner, Art Unit 2464 07/11/2026
Read full office action

Prosecution Timeline

Sep 30, 2024
Application Filed
Dec 18, 2025
Response after Non-Final Action
Jul 15, 2026
Non-Final Rejection mailed — §103, §DP (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
91%
Grant Probability
99%
With Interview (+10.3%)
2y 2m (~4m remaining)
Median Time to Grant
Low
PTA Risk
Based on 613 resolved cases by this examiner. Grant probability derived from career allowance rate.

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