Prosecution Insights
Last updated: April 19, 2026
Application No. 18/096,615

Method of Providing a Communication Function in a User Equipment

Non-Final OA §103
Filed
Jan 13, 2023
Examiner
PARK, JEONG S
Art Unit
2454
Tech Center
2400 — Computer Networks
Assignee
BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT
OA Round
3 (Non-Final)
80%
Grant Probability
Favorable
3-4
OA Rounds
3y 0m
To Grant
99%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
607 granted / 756 resolved
+22.3% vs TC avg
Strong +21% interview lift
Without
With
+21.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
35 currently pending
Career history
791
Total Applications
across all art units

Statute-Specific Performance

§101
11.6%
-28.4% vs TC avg
§103
55.9%
+15.9% vs TC avg
§102
7.5%
-32.5% vs TC avg
§112
12.1%
-27.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 756 resolved cases

Office Action

§103
DETAILED ACTION This communication is in response to Application No. 18/096,615 filed on 1/13/2023. The amendment presented on 1/23/2026, which amends claims 1 and 17, is hereby acknowledged. Claims 1-3 and 5-18 have been examined. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/23/2026 has been entered. Response to Arguments Applicant’s arguments with respect to claims 1-3 and 5-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. 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 1-3, 5-7 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (hereinafter Kim)(US 2017/0244837) in view of Fan et al. (hereinafter Fan)(US 2019/0327605), and further in view of Foti et al. (hereinafter Foti)(US 2023/0023278). Regarding claims 1 and 16-18, Kim teaches as follows: A management module (interpreted as the electronic device 201 in figure 2 and the external device 603 in figure 6) for a communication module, the management module comprising: a communication interface (interpreted as the interface 270 in figure 2) configured for communication with the communication module and a server (the interface 270 may be included in the communication interface 170 illustrated in FIG. 1. Additionally or alternatively, the interface 270 may include a mobile high definition link (MHL) interface, a SD card/multi-media card (MMC) interface, or an infrared data association (IrDA) standard interface, see, ¶ [0055] and figure 2)(the communication interface 170 may establish communication between the electronic device 101 and a first external electronic device 102, a second external electronic device 104, or a server 106. For example, the communication interface 170 may be connected to a network 162 through wireless communication or wired communication to communicate with the second external electronic device 104 or a server 106, see, ¶ [0045] and figure 1), wherein the communication interface is configured to receive a login request or information about a user login; and a processor module (interpreted as the processor 210 in figure 2) configured to: determine, based on the login request of the information about the user login, whether the communication module has a communication profile associated with a user (in step 611, the external electronic device 603 tries to register an eSIM profile. When a voice-related function provision is requested by a user at a setup wizard step, the electronic device 601 may request the external electronic device 603 to register an eSIM profile, and the external electronic device 603 may try to register the eSIM profile, see, ¶ [0118] and figure 6); upon determining that the communication module has the communication profile associated with the user, initiate enabling of the communication profile (in step 613, the external electronic device 603 reads an eSIM. In step 615, the external electronic device determines an eSIM activation state based on a result of reading the eSIM. The eSIM activation state may include information concerning whether there exists an eSIM in the external electronic device. In step 617, the external electronic device transmits the eSIM activation state to the electronic device 601, see, ¶ [0120] and figure 6); and upon determining that the communication module does not have the communication profile associated with the user (in step 621, the external electronic device 603 determines whether there exists a valid eSIM. For example, the valid eSIM may indicate that there exists an eSIM in the external electronic device and an eSIM profile corresponding to the eSIM is registered (or stored). An invalid eSIM may indicate that there exists an eSIM in the external electronic device 603, but an eSIM profile corresponding to the eSIM is not registered (or stored), see, ¶ [0124] and figure 6), send a request to a first server via the communication interface to request support information (in step 527, the external electronic device 503 transmits the eUICC information to the server 505 via the electronic device 501, see, ¶ [0108] and figure 5) for obtaining the communication profile associated with the user (in step 533, the electronic device 501 performs a procedure of downloading and installing an eSIM profile with the external electronic device 503 and the server 505. The electronic device 501 may download an eSIM profile from the server 505, and transmit the downloaded eSIM profile to the external electronic device 503. In addition, the external electronic device 503 may install the received eSIM profile, see, ¶ [0110] and figure 5), wherein the communication interface is configured to receive the support information from the first server (in step 531, the server 505 generates a confirmation response message and transmit the same to the electronic device 501. The confirmation response message may include a result of identifying the EID, see, ¶ [0109] and figure 5), and wherein the management module is configured to obtain the communication profile from the first server based on the support information (interpreted as the activation code)(in step 521, the electronic device 501 acquires the activation code from the electronic device which requests subscription to the telecommunication operator. The electronic device 501 may directly communicate with the telecommunication operator 507 and acquire the activation code, see, ¶ [0105] and figure 5)(the external electronic device 603 may request an eSIM profile download from the electronic device 601. The electronic device 601 may output an activation code input request screen according to the eSIM profile download request. When an activation code is inputted, the electronic device 601 may download the eSIM profile from a server using the activation code, and may transmit the eSIM profile to the external electronic device 603. The external electronic device 603 may install the eSIM profile, see, ¶ [0127] and figure 6), wherein the support information includes an activation code for the communication profile (the external electronic device 603 may request an eSIM profile download from the electronic device 601. The electronic device 601 may output an activation code input request screen according to the eSIM profile download request. When an activation code is inputted, the electronic device 601 may download the eSIM profile from a server using the activation code, and may transmit the eSIM profile to the external electronic device 603. The external electronic device 603 may install the eSIM profile, see, ¶ [0127]). Kim does not explicitly teach receiving the support information (activation code) directly from the first server. Fan teaches as follows: The download server (equivalent to applicant’s first server) generates download information and a profile. In this embodiment of the present invention, the download information may be an activation code (Activation Code, AC)... When the download information is an activation code, the activation code may carry download information required for downloading the profile, for example, an address of the download server, an equipment identity of the download server, and the profile identifier (see, ¶ [0136]-[0137] and 301 in figure 3A); and the user terminal (equivalent to applicant’s user equipment) obtains the download information. In this embodiment of the present invention, when the download information is an activation code, the user terminal may scan and parse the activation code, to obtain the download information that is required for downloading the profile and that is carried in the activation code. In this embodiment of the present invention, the user terminal may send an activation code obtaining request to the download server, and receive the activation code sent by the download server; or the user terminal may directly obtain the activation code from the download server (see, ¶ [0145]-[0147] and 305 in figure 3A). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kim with Fan to include the user terminal receiving the activation code directly from the download server as taught by Fan in order for secure communications with the download server. Therefore, Kim in view of Fan teaches all limitations as presented above except for the login request triggering of determining whether there exists an eSIM profile stored. The Examiner interpreted the login request as a login request to log the user into the user equipment (see, Applicant’s Specification ¶ [0008]) which is equivalent to an unlocking process. Foti teaches as follows: As per the unlock pattern (e.g., PIN, password, swipe pattern, etc.) used by the user to unlock the UE, a SIM (out of multiple SIMs) may be activated and/or S-NSSAIs indicated by the allowed NSSAI may be associated to the SIM (e.g., per UE rule). In some embodiments, as per an unlock pattern used by the user to unlock the UE, in addition to activation of a SIM, a slice (or a subset of slices) out of multiple slices may be associated to the activated SIM and therefore useable by the UE to establish a PDU session. (see, ¶ [0031] and figure 2). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kim in view of Fan with Foti to include activating a SIM upon the unlock pattern entered by a user as taught by Foti in order for the user to initiate eSIM activation procedure. Regarding claim 2, Kim teaches as follows: Enabling, by the user equipment, the communication profile obtained from the first server or the second server (the electronic device may download an eSIM profile from the server 505, and transmit the downloaded eSIM profile to the external electronic device 503. In addition, the external electronic device 503 may install the received eSIM profile, see, ¶ [0110])(in step 547, the external electronic device connects to a network. The external electronic device may connect to a network using the installed eSIM profile, see, ¶ [0115] and figure 5). Regarding claim 3, Kim teaches as follows: Wherein the first request includes at least one of user equipment identification information, Subscriber Identity Module information, or user information (in step 527, the external electronic device 503 transmits an embedded subscriber identity module (eSIM) information to the server 505 via the electronic device 501, see, ¶ [0108] and figure 5). Regarding claim 5, Kim teaches as follows: wherein the support information further includes Subscriber Identity Module information (in step 527, the external electronic device 503 transmits an embedded subscriber identity module (eSIM) information to the server 505 via the electronic device 501, see, ¶ [0108] and figure 5). Regarding claim 6, Kim teaches as follows: Wherein obtaining, by the user equipment, the communication profile from the first server based on the support information includes: sending, by the user equipment, a second request to the first server to request a download of the communication profile from the first server (the external electronic device 603 may request an eSIM profile download from the electronic device 601. The electronic device 601 may output an activation code input request screen according to the eSIM profile download request. When an activation code is inputted, the electronic device 601 may download the eSIM profile from a server using the activation code, and may transmit the eSIM profile to the external electronic device 603. The external electronic device 603 may install the eSIM profile, see, ¶ [0127]). Regarding claim 7, Fan teaches as follows: The user terminal (equivalent to applicant’s user equipment) obtains the download information. In this embodiment of the present invention, when the download information is an activation code, the user terminal may scan and parse the activation code, to obtain the download information that is required for downloading the profile and that is carried in the activation code. In this embodiment of the present invention, the user terminal may send an activation code obtaining request to the download server, and receive the activation code sent by the download server (equivalent to applicant’s first server and second server); or the user terminal may directly obtain the activation code from the download server (see, ¶ [0145]-[0147] and 305 in figure 3A); and the eUICC downloads the target profile from the download server (see, ¶ [0164] and 312 in figure 3B). Therefore, it is rejected for similar reason as presented above. Regarding claims 12 and 13, Foti teaches as follows: As per the unlock pattern (e.g., PIN, password, swipe pattern, etc.) used by the user to unlock the UE, a SIM (out of multiple SIMs) may be activated and/or S-NSSAIs indicated by the allowed NSSAI may be associated to the SIM (e.g., per UE rule)(see, ¶ [0031] and figure 2); and in some embodiments there are provided multi-SIM UEs that may belong to the same or different operators. In some embodiments of the present disclosure, each SIM in a UE can be associated to a different lock/unlock pattern/code using the techniques disclosed herein (see, ¶ [0037]). The lock process is equivalent to applicant’s logout request. Therefore, Foti inherently teaches of disabling the activated SIM when the user locked out the UE by inputting the lock pattern. Regarding claims 14 and 15, Kim teaches as follows: The external electronic device 102 may change the eSIM profile downloaded through the setting menu (equivalent to applicant’s deletion request received via user input) to an enable state, and may set up call forwarding using the eSIM profile in the enable state (see, ¶ [0166]); and the external electronic device 102 may change the state of each eSIM profile stored or may individually delete the eSIM profile. In FIG. 10, the external electronic device 102 may manage (download, change the state, and delete) the eSIM profile (see, ¶ [0175] and figure 10). Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (hereinafter Kim)(US 2017/0244837) in view of Fan et al. (hereinafter Fan)(US 2019/0327605) and Foti et al. (hereinafter Foti)(US 2023/0023278), and further in view of Elzein (US 2015/0212807). Regarding claims 8-11, Kim teaches of installing the communication (eSIM) profile received from a server and deleting the eSIM profile as presented above. Therefore, Kim in view of Fan and Foti teaches all limitations as presented above except for checking memory availability associated with the installation. Elzein teaches as follows: The processor is further configured to determine if the VCS needs an update to the VCS Bluetooth profile based at least upon the version of the mobile device Bluetooth profile, determine if sufficient memory space is available to download and install the update to the VCS Bluetooth profile, download a software update to the VCS Bluetooth profile from an off-board server (see, ¶ [0005]). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kim in view of Fan and Foti with Elzein to include determining sufficient memory space before installation as taught by Elzein in order to efficiently prevent installation failure due to lack of memory space. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeong S Park whose telephone number is (571)270-1597. The examiner can normally be reached Monday through Friday 8:00-4:30 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, Glenton B Burgess can be reached at 571-272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JEONG S PARK/Primary Examiner, Art Unit 2454 February 11, 2026
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Prosecution Timeline

Jan 13, 2023
Application Filed
May 15, 2025
Non-Final Rejection — §103
Aug 15, 2025
Response Filed
Oct 24, 2025
Final Rejection — §103
Dec 22, 2025
Response after Non-Final Action
Jan 23, 2026
Request for Continued Examination
Jan 29, 2026
Response after Non-Final Action
Feb 11, 2026
Non-Final Rejection — §103 (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

3-4
Expected OA Rounds
80%
Grant Probability
99%
With Interview (+21.2%)
3y 0m
Median Time to Grant
High
PTA Risk
Based on 756 resolved cases by this examiner. Grant probability derived from career allow rate.

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