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 .
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 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.
DETAILED ACTION
1. This communication is in response to Applicant’s 01/16/2026 communications in the application of Somasekhar for the "EMBEDDED SUBSCRIBER IDENTITY MODULE ACTIVATION OVER PEER-TO-PEER CONNECTION" filed 01/03/2023. This application Claims Priority from Provisional Application 63388761, filed 07/13/2022. This application is a Request for Continued Examination (RCE) under 37 C.F.R. 1.114 filed on 01/16/2026. Claims 1-20 are pending in the application.
2. The applicant should use this period for response to thoroughly and very closely proof read and review the whole of the application for correct correlation between reference numerals in the textual portion of the Specification and Drawings along with any minor spelling errors, general typographical errors, accuracy, assurance of proper use for Trademarks TM, and other legal symbols @, where required, and clarity of meaning in the Specification, Drawings, and specifically the claims (i.e., provide proper antecedent basis for “the'' and “said'' within each
claim). Minor typographical errors could render a Patent unenforceable and so the applicant is
strongly encouraged to aid in this endeavor.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-6, 8-13, 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Uehling et al. (US#11,678,176) in view of Fan et al. (US#10,924,917).
Regarding claim 8, Uehling et al. (US#11,678,176) discloses a device, comprising: an embedded universal integrated circuit card (eUICC)(see Fig. 1: eSIM/eUICC 110, 130 storing one or more sets of eSIM credentials 112, 132 and storing one or more eSIM state registers 114, 134), configured to receive an eSIM profile from the other device via a peer-to-peer (P2P) connection (Fig. 2; Col. 9, lines 6-24: providing a secure peer-to-peer environment for exchanging eSIM credentials), wherein the eSIM profile is retrieved from a subscription manager data preparation (SMDP) server via a network based on the device-specific information (see Figs. 3, 5; Col. 10, line 10 to Col. 11, line 40: At block 234, the LPA 118 at the source UE 102 e.g., comprising a first of the mobile communication devices establishes a data connection with an SMDP+ server 144 associated with eSIM credentials 112 stored at the source UE 102); and performing an eSIM activation based on the eSIM profile from the other device (Figs. 3-4; Col. 11, lines 41-65 & Col. 12, lines 4-24 : At block 244, the LPA 118 at the source UE 102 can forward the activation code containing identification data for the eSIM credentials 112 to a destination UE 122. The activation code is forwarded to support a download of the eSIM credentials to the destination UE from the SMDP+ server).
Although Dreiling references does not disclose expressly wherein transmitting device specific information regarding the device to another device. However, Uehling teaches in Fig. 3 a flow diagrams illustrated the process supports transferring eSIM credentials 112 from a source UE 102 toward a destination UE 122, and hence sharing eSIM credentials 132 between two mobile communication devices, in which at step 232, the LPA 118 at the source UE 102 receives user input requesting a transfer of eSIM credentials 112 to another device. Such input can be received via a UI at the source UE 102. Block 232 may occur prior to establishing the data connection with an SMDP+ server 144 (Col. 10, lines 39-46: interpret as transmitting device specific information regarding the destination device to the source device). In the same field of endeavor, Fan et al. (US#10,924,917) discloses in Fig. 2A-B the schematic flowchart of a profile download, in which by using a local profile assistant LPA deployed in the user terminal, a profile provided by a subscribed communications operator. After the profile is installed in the eUICC, the user terminal may access an operator network (Fan et al.: Col. 1; lines 52-67 & Col. 8, lines 56-64: at step 203: The eUICC sends, to the user terminal, eUICC deployment information used to indicate that an LPA is deployed in the eUICC. At 206, the user terminal sends the download information and download verification information to the eUICC if the LPA indication information instructs to download the profile by using the LPA in the eUICC).
One skilled in the art would have recognized the need for effectively and efficiently facilitating eSIM activation over P2P connection, and would have applied Fan’s profile download method and system into Urhling’s techniques for sharing electronic subscriber identity module (eSIM) credentials between two mobile communication device. Therefore, It would have been obvious to a person of ordinary skill in the art at the time of the invention was made to apply Fan’s profile download method and system, and related device into Uehling’s eSIM transfer via activation code with the motivation being to provide a method and apparatus for eSIM activation over P2P connection.
Regarding claim 9, the reference further teaches wherein the eUICC is further configured to communicatively couple with a proxy local profile assistant (LPA) executing on the other device via the P2P connection (Uehiling et al.: Fig. 1; Col. 4, lines 41-49: a user may employ a user interface (UI) to access a local profile assistant (LPA) 118 at the source UE to initiate an eSIM transfer).
Regarding claim 10, the reference further teaches wherein the eUICC receives the eSIM profile and performs the eSIM activation without coupling to the network (Uehling et al.: Figs. 1, 4; Col. 12, lines 4-24: the LPA 138 at the destination UE 122 receives the eSIM credentials 132 from the SMDP+ server 144).
Regarding claim 11, the reference further teaches wherein the eUICC is capable of exchanging eUICC management commands with a proxy LPA executing on the other device, and wherein the eUICC management commands are exchanged via the P2P connection (Fan et al.: Fig. 2A; Col. 10, lines 39-47).
Regarding claim 12, the reference further teaches wherein the eUICC management commands exchanged are embedded in come-to-attention (AT) commands conveyed via the P2P connection (Fan et al.: Fig. 2A; Col. 10, lines 39-47).
Regarding claim 13, the reference further teaches wherein eUICC is configured to initiate operations further including extracting the eUICC management commands from the AT commands (Fan et al.: Fig. 2A; Col. 10, lines 39-47).
Regarding claims 1-6, they are method claims corresponding to the apparatus claims 8-13 discussed above. Therefore, claims 1-6 are analyzed and rejected as previously discussed with respect to claims 8-13 above.
Regarding claims 15-19, they are system claims corresponding to the apparatus claims 8-13 discussed above. Therefore, claims 15-19 are analyzed and rejected as previously discussed with respect to claims 8-13 above.
Allowable Subject Matter
5. Claims 7, 14, 20 are objected to as being dependent upon a rejected base claims, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
6. The following is an examiner's statement of reasons for the indication of allowable subject matter: The closest prior art of record fails to disclose or suggest wherein the eSIM-
capable device exchanges commands with a proxy local profile assistant (LPA) executing on
the other device and performs the eSIM activation by bypassing a proxy LPA of the eSIM-capable device, as specifically recited in the claims.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Uehling et al. (US#11,678,176) eSIM transfer via activation code.
The Uehling et al. (US#11,146,948) shows eSIM transfer via activation code.
The Dreiling et al. (US#10,764,746) shows eSIM transfer from inactive device.
The Karimli et al. (US#10,194,313) eSIM profile provisioning btw proximate devices
The Fan et al. (US#10,616,754) shows profile download method and system, and related devices.
8. Applicant's future amendments need to comply with the requirements of MPEP § 714.02, MPEP § 2163.04 and MPEP § 2163.06.
"with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims." See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). See In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) In re Wertheim, 541 F.2d at 262,191 USPQ at 96 (emphasis added). "The use of a confusing variety of terms for the same thing should not be permitted.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification." Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01 (i) and § 1302.01.
Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1,75(d)(1 ). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced."
"USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure." In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,1027-28 (Fed. Cir. 1997). MPEP § 2106. "
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. Phan whose telephone number is (571) 272-3149. The examiner can normally be reached on Mon - Fri from 6:00 to 3:00.
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, Chirag Shah, can be reached on (571) 272-3144. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-2600.
10. 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 http://pair-direct.uspto.gov. Should you have any questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at toll free 1-866-217-9197.
Mphan
02/19/2026
/MAN U PHAN/Primary Examiner, Art Unit 2477