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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/22/26 has been entered.
Response to Arguments
Applicant's arguments filed 8/2/2025 have been fully considered but they are not persuasive.
Applicant states, in section II. A. on page 2 of the remarks, “Applicant respectfully submits that even accepting, for the sake of argument, that storing a PLMN ID in Jheng's forbidden list may involve storing MCC/MNC values as part of that identifier, this concession does not resolve the fundamental deficiency in the mapping of step C. The critical and dispositive distinction lies not in what identifier is stored, but in the nature of the "stop" that step C requires.” Further arguing in section II. B. on page 2 of the remarks, “The word "stop" in this context means to definitively and permanently cease attempting to register with the first selected network. This is consistent with the specification, which describes the purpose of the Forbidden VPLMN list as permanently excluding networks that have demonstrated an inability or unwillingness to route the e-IMSI to the first mobile network operator's network.”
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “nature of the "stop"” and “The word "stop" in this context means to definitively and permanently cease attempting to register with the first selected network) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims merely recite “If said first selected network does not route said message to the network of said first mobile network operator, stop trying to register with said first selected network and put MCC/MNC (Mobile Country Code / Mobile Network Code) codes of said first selected network in said Forbidden VPLMN list of said secure element”. As can be seen from the limitation, there is nothing in the claim that states after stopping, the system could later remove the network from the forbidden list and try and connect again at a later time. Further, in Jheng, they specifically disclose “stop trying to register with said first network and put the MCC/MNC codes of said first selected network in said forbidden VPLMN list…” as noted in par. 33 and figure 5. Jheng states (in par. 33) that “Upon receiving the ATTACH Reject message and the error cause, in step 513, UE 501 stores an entry to a network forbidden list, which is indexed by the PLMN ID (e.g., PLMN #1)”. Then, Jheng states that “Once a PLMN ID is stored in the network forbidden list, the UE is no longer allowed to attach to the same PLMN until such entry is removed from the forbidden list or until its timer expires…” It is clear that in Jheng, the device “stops” trying to register with the first selected network until it is removed from the forbidden list. This removal can be from the expiration of a timer, or another method as noted in par. 33 (i.e. “…until such entry is removed from the forbidden list or until its timer expires…”) Thus, it is clear that Jheng “stops” attempting to connect to the first network and puts the codes in the forbidden list, which reads on the claims as written as there is nothing indicating that the “stop” is permanent as argued by applicant.
Applicant further argues, “In sharp contrast, Jheng's Figure 5 and paragraph [0033] explicitly teach a timer-based forbidden list mechanism.” (section II. B, page 2, last par)
In response to applicants arguments, the examiner would like to point to the explanation above, as it is relevant to this statement. Further, examiner notes that it is not only the timer that can remove a network from the forbidden list as Jheng states in par. 33 “…until such entry is removed from the forbidden list or until its timer expires…” Therefore, Jheng does teach a timer, but also teaches “until such entry is removed from forbidden list”. With that being said, the fact that Jheng teaches a timer for removal from the forbidden list (or for being able to try and connect to the network again) does not take away from the fact that when a reject message is received and the device puts the network in the forbidden list, it “stops” attempting to connect to that network (i.e. “Once a PLMN ID is stored in the network forbidden list, the UE is no longer allowed to attach to the same PLMN until such entry is removed from the forbidden list or until its timer expires…”) Thus, Jhengs figure 5 and par. 33 read on this claim limitation as currently presented.
Applicant further notes “Accordingly, in Jheng's Figure 5 embodiment, the UE does not "stop" trying to register with PLMN #1 in any permanent or definitive sense. After the timer expires, PLMN #1 is removed from the forbidden list and the UE is free to — and will automatically — attempt to register with PLMN #1 again. This is a temporary suspension of registration attempts, not a stop. The claimed method requires a definitive stop: once the MCC/MNC codes of the first selected network are placed in the Forbidden VPLMN list, the device does not return to that network. Jheng teaches the opposite: the device is designed to return to PLMN #1 after the timer expires.” (section II. B. page 3 of remarks)
In response to applicant’s argument, the examiner respectfully disagrees. Please refer to the responses above, which explains how applicant is reading limitations into the claims which are not present. Further, the word stop does not mean that whatever is stopped, must be stopped permanently. It is widely well known that something may “stop” and later restart. The claims mention nothing about the specifics of how long the system “stops” attempting, and thus the claim is not limited by the length of the stop. In Jheng, they clearly stop attempting to register…until the network is removed from the forbidden list or the timer expires (states precisely this in par. 33). Even though Jheng discusses the option of later removing the network from the forbidden list to try and connect again, it does not take away from the fact that it had stopped attempting to connect previously, and thus Jheng’s par. 33 and figure 5 read on this limitations as noted by the examiner.
Applicant further argues, “This distinction is not merely semantic. The specification explains the technical problem being solved: a serving network (VPLMN) that detects an e-IMSI may simply refuse to route the registration request to the first MNO's network, either by rejecting it or by not answering at all. If the UE were to return to that same network after a timer expires — as Jheng teaches — the network would again refuse to route the request, resulting in an endless loop of futile registration attempts…Jheng's timer-based mechanism does not solve this problem and does not teach or suggest the definitive "stop" recited in step C.” (section II. B., page 3 of remarks)
In response to applicants’ arguments, the examiner respectfully disagrees. Asa noted above, the features upon which applicant relies (i.e., “the definitive "stop" recited in step C”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As shown in the responses above, Jheng clearly stops attempting to connect to the network when it is added to the forbidden list, which reads on the claims as written. Applicant argues that the word stop is “definitive” and “permanent”, however, these are limitations not recited in the claims and applicant is reading the claims narrower than they are written. As noted above, the word “stop” does not mean forever, and need not be interpreted as such. Therefore, the examiner disagrees with applicants assertions/arguments and maintains that the combination teaches the argued limitations.
Applicant further argues, “Step E of independent claims 1 and 4 recites: "Repeat steps A to D until a network routes said first IMSI to the network of said first mobile network operator." The Examiner maps this limitation to Jheng's paragraph [0033], stating that "[a]ttachment is successful when PLMN does not respond with ATTACH reject message." Applicant respectfully submits that this mapping is incorrect and that the combined teachings of Anslot and Jheng fail to disclose step E. The termination condition recited in step E is specific and functional: the iterative loop of steps A through D continues until a network actually routes the first IMSI (the e-IMSI) to the network of the first mobile network operator — that is, to the D-HSS/first MNO that is capable of providing the second IMSI (t-IMSI). This is a routing-based success criterion tied to the specific e-IMSI provisioning architecture of the claimed invention. (section III., page 4 of remarks) In response to applicant’s arguments, the examiner respectfully disagrees. In the provided rejections, steps A-D are taught in the combination of Anslot and Jheng. Jheng discloses when a reject message is received, the device will add that network to the forbidden list and then select another network to attempt the connection. It is clear to one of ordinary skill in the art that this process in Jheng continues until a connection is made, thus clearly reading on repeating the steps. The examiner respectfully maintains that the combination teaches the claims as written.
Applicant further argues Jheng has no concept of an ephemeral IMSI (e-IMSI), no concept of a Discovery HSS (D-HSS), and no concept of routing a first IMSI to a first mobile network operator for the purpose of obtaining a second IMSI. Jheng's termination condition — the absence of an ATTACH Reject message — is a generic network attachment success criterion that is entirely unrelated to whether any network has routed an e-IMSI to a first MNO. The mere absence of a rejection message in Jheng does not constitute, teach, or suggest the routing-based termination condition of step E. (section III. Page 4 of remarks)
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Anslot was shown to teach the noted “ephemeral IMSI (e-IMSI),…a Discovery HSS (D-HSS),…a first IMSI to a first mobile network operator for the purpose of obtaining a second IMSI…” Jheng was then combined to show to concept of attempting to register, adding the network to a forbidden list when receiving a reject message (a reject message inherently means the network did not route a message), and repeating the steps with another network to attempt registration. Therefore, the combination teaches the claims as written.
Applicant further argues, Anslot teaches the D-HSS routing architecture, but Anslot does not teach the iterative network selection loop of steps A through D, and in particular does not teach the step of placing a non-routing network's MCC/MNC codes in a Forbidden VPLMN list and searching for another network. The combination of Anslot and Jheng does not supply the missing routing-based termination condition of step E, because Jheng's termination condition is fundamentally different in kind from what step E requires. Applicant respectfully submits that the combined teachings of Anslot and Jheng fail to disclose or suggest step E as claimed. (section III. page. 4-5, of remarks)
In response to applicants argument, the examiner respectfully disagrees. Please see the responses above which explain the examiners stance with regards this this argument.
Lastly, applicant argues, “There is no motivation in either Anslot or Jheng to modify Jheng's timer-based mechanism to produce a permanent, non-timer-based exclusion of a non-routing network, because Jheng's entire purpose is to provide a temporary, recoverable exclusion mechanism for networks experiencing transient failures. (section IV. Page. 5 of remarks)
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Jheng specifically discloses in par. 27 that the connection/registration method disclosed helps to reduce wasting power. This is a well known and clear cut motivation in the mobile communications art, and one of ordinary skill in the art would have been motivated to combine based on this obvious benefit. Further, as noted in the updated rejection below, Jheng teaches one embodiment that adds a PLMN (with a specific RAT) to a forbidden list, and does NOT set a timer (see figure 3). Thus, since Jheng actually has an embodiment that is permanent and does not use a timer, the combination would have been obvious to one of ordinary skill in the art. The rejection below is updated to combine this embodiment with the previous combination, to show the permanent and definitive “stop” as argued by applicant, even though this is not in the claim language.
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 1-2, 4-5 are rejected under 35 U.S.C 103 as being unpatentable over Anslot et al. (WO 2018141896) hereinafter “Anslot”, in view of Jheng et al. (US 2013/0316699) figure 5 and supporting paragraphs, hereinafter “Jheng EMB1”, in further view of Jheng et al. (US 2013/0316699) figure 3 and supporting paragraphs, hereinafter “Jheng EMB2”
Regarding claim 1 and 4, Anslot teaches:
A method for connecting a secure element cooperating with a device to a network of a first mobile network operator (Fig. 7) with an ephemeral first IMSI (Page 14: lines 4-10; See Fig. 8, step 58, 59, 60. UE/device powers on (Step 58) and sends Attach request, being an e-IMSI (ephemeral first IMSI or International Mobile Subscriber Identity ) to the MME (Step 59), that then forwards authentication information including e-IMSI, to the D-HSS (step 60), as taught in this attachment process), said first IMSI being stored in said secure element (Page 13: lines 16-19; purchased end user device (i.e. handset) comprises of secure element (extractable UICC+ or embedded UICC+ (eUICC+), which comprises a subscription profile (programs, files, keys, file structure…) page 1, lines 12-13), in order to get a second IMSI, from said first mobile network operator (Fig. 7; Step 56) Device receives IMSI switch message with t-IMSI (equates to second IMSI), from D-HSS to handset/device.), said method comprising:
B - Sending by said device a REGISTER REQUEST message comprising said first IMSI to said first selected network (Page 14: lines 4-10; See Fig. 8, steps 58, 59, 60. UE/device turns on (Step 58) and sends Attach request with unique identifier of the eUICC+, being an e-IMSI (first IMSI) message, to the MME (Step 59), that forwards authentication information including e-IMSI, to the D-HSS (step 60);
…put MCC/MNC codes… (Page 14: lines 6-10: The e-IMSI message contains essentially the first MCC/MNC (MCC1/MNC1) codes, which uniquely identifies (associated) with a first PLMN/RAT network, along with a payload that contains the complete identifier of the eUICC+ element (Step 59). Page 14, lines 18-23: Step 64 – the UE/UICC+ checks if the current MCC and MNC (MMC1/MNC1) correspond to the MCC/MNC contained in the response from the D-HSS (step 62) and MME (Step 63, includes t-IMSI/second IMSI)). If yes (that is, Attachment request is accepted) then the UE will receive the t-IMSI (second IMSI) and replace the initial IMSI with the t-IMSI, for successful attachment).
Anslot does not teach the attachment process when the request is returned negatively,
However, Jheng EMB1 in a similar endeavor discloses the rejection process using a forbidden PLMN list, teaches:
A - Selecting by said device a first radio serving network after executing the 3GPP network selection procedure, said first selected network being not listed in a Forbidden VPLMN list of said secure element ([0033-0037]: See Fig. 5. Step 511. UE 501 selects PLMN#1, where mobile communication system comprises of PLMN #1 and PLMN #2 [0033]. PLMN#1 and PLMN#2 are available. )
C - If said first selected network does not route said message to the network of said first mobile network operator stop trying to register with said first selected network and put … of said first selected network in said Forbidden VPLMN list of said secure element ([0033]: Step 512, PLMN#1 sends an ATTACH Reject message with error cause of PLMN#1 (e.g. Severe network failure, per TS24.301), or if registration with the network is unsuccessful [0026] because the IMSI is unknown in the home network (i.e. IMSI is not properly installed or routed . Upon receiving the ATTACH Reject message, in Step 513, the UE 501 stores an entry in a network forbidden list, which is indexed by the PLMN # (See Fig. 4, 6, 7 that show entries PLMN#1, PLMN#2, …PLMN#N). See Fig. 6, 7 that illustrate different embodiments for multiple PLMNs with errored codes in a forbidden PLMN list [0034-0037].
Examiner’s Note: The claim limitation (“C”) is broadly interpreted to include any response not specifically excluded. An active response (Jheng: ATTACH reject message) may not be dismissed or excluded as it is not specifically excluded. Such a response generates the same or similar result of the non-responsive PLMN to added to the forbidden PLMN list.
D - Searching by said device for another network with the 3GPP network selection procedure to register with; and ([0033]:In step 515, the UE selects another network PLMN#2 and tries to attach to PLMN#2 by sending an ATTACH Request to the network.)
E - Repeat steps A to D until a network routes said first IMSI to the network of said first mobile network operator ([0033]:In step 515, the UE selects another network PLMN#2 and tries to attach to PLMN#2 by sending an ATTACH Request to the network. Attachment is successful when PLMN does not respond with ATTACH reject message (e.g. due to errored/failure state or IMSI not found/established in the SIM/USIM. [0025])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the teachings of Jheng EMB1 into the method of Anslot where the process of updating a forbidden list different network operations (PLMNs) with an active rejection message is adapted to reduce wasteful consumption of UE power ([0027] Jheng). However, although the combination teaches the claims as written (see above), for clarity, the provided combination has been made. As shown above Jheng figure 5 teaches setting a timer when a network is put on the forbidden list. Jheng notes that the UE cannot attempt to register with the network on the forbidden list until such entry is removed or the timer expires. Although the claims do not require the “stop” to be permanent, for clarity, to show that the UE “stops” attempting to connect to the network once placed on the forbidden list, and does not include a timer that would then allow the UE to attempt connection again, we can look to another embodiment in Jheng, shown in figure 3 and par. 31. Jheng EMB2 teaches in figure 3 and par. 31, that the UE “tries to attach to PLMN #1 by sending an ATTACH Request message to the network using RAT #1. Due to a severe network failure occurred in RAT #1, the attachment is rejected by the network. In step 312, UE 301 receives an ATTACH Reject message with error cause of RAT #1 (e.g., In TS24.301, #42 (Severe network failure) is specific for LTE RAT). Upon receiving the ATTACH Reject message and the error cause, in step 313, UE 301 stores an entry to a network forbidden list, which is indexed by both the PLMN ID (e.g., PLMN #1) and the RAT ID (e.g., RAT #1). Once a PLMN/RAT is stored in the network forbidden list, the UE is no longer allowed to attach to the same PLMN/RAT until such entry is removed from the forbidden list (e.g., see 314).” As can be seen, in this embodiment, the UE would add the PLMN/RAT1 to the forbidden list, and thus without a timer, this is permanent until some other removal from the forbidden list. Although Jheng EMB1 is teaching different PLMNs and Jheng EMB2 is teaching different RATs, the concept of permanent forbidden list (for PLMNs) would have been obvious to one of ordinary skill in the art based on the combination of Jheng EMB2 with Jheng EMB1. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Jheng EMB2 into the combined method of Anslot and Jheng EMB1 where the process of updating a forbidden list different network operations without a timer is adapted to improve on the attachment process reducing wasteful consumption of UE power ([0027] Jheng).
Reharding claim 4, Anslot teaches:
A secure element containing instructions for performing the following steps (Page 1, lines 12-15; secure element comprises a subscription profile (programs, files, keys, file structure…) allowing a subscriber to enter in communication with network of an MNO.)
Regarding claims 2 and 5, Anslot teaches:
secure element is an e-UICC or an i-UICC (Page 13: lines 16-19; purchased end user device (i.e. handset) comprises of secure element (extractable UICC+ or embedded UICC+ (eUICC+), where UICC+ and/or e-UICC+ is an enhanced form of UICC.)
Claims 3 and 6 are rejected under 35 U.S.C 103 as being unpatentable over “Anslot”, in view of “Jheng EMB1” and “Jheng EMB2”, in further view of Cheng (EP 2624642) hereinafter “Cheng”.
Regarding claim 3 and 6, The previous combination teaches taking a second set of MCC/MNC to attach to the MNO’s network but does not distinguish the second set of MCC/MNC to be a different MNO than the first.
Cheng in the same field of attaching to different MNO after failure of receiving a successful attachment to a first MNO, teaches:
steps A to E do not permit said secure element to get said second IMSI, sending to a roaming hub mobile network operator partner having different MNC or different MCC codes from said first IMSI said REGISTER REQUEST message comprising said different MNC or different MCC codes (Fig. 1, Step 140: after receiving attach reject message, the UE attempts to attach to a second RAT on the first PLMN [0017, 0025]; Step 150: UE performs a third attach procedure on a third RAT on a second PLMN [0018, 0026]. Step 140 follows Step 150 in response to attach rejection from the MNO [0017, 0025]. In other words, after exhausting the attach process with RAT #1 and Rat #2, on the same PLMN, the UE addresses a new PLMN, implying requiring a new set of MCC/MNC as each PLMN has a unique set of MCC/MNC values. This equates to the UE requesting attachment to a “partner having different MNC or different MCC codes form the first IMSI” message.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the teachings of Cheng into the method of Anslot in view of Jheng EMB1 and Jheng EMB2 in order to adapt a re-try mechanism to attach to a (last)network available so that the UE is not left without a connection, for increased success rate of provided service ([0012], Cheng).
Conclusion
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/Michael Thier/Supervisory Patent Examiner, Art Unit 2474
Michael Thier
Supervisory Patent Examiner
Art Unit 2474
Prosecution Insights