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 .
Claims 1-20 are pending.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive. Claims 15-20 do not contain the term “automatically” as discussed in section III, and therefore, the argument is unpersuasive. Regarding claims 1-14, 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., automatically means without human intervention) 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). Examiner suggests amending the claims to include the limitation “without human intervention.”
Claim Objections
Claims 5 and 19 are objected to because of the following informalities:
the claims have two periods: “…GSMA-defined RSP ES2+.Download Order Application Programming Interface (API).” Each claim begins with a capital letter and ends with a period. See MPEP 608.01(m). The period before “Download” must be deleted, or everything after the first period should be deleted.
“GSMA” is not defined in the claims.
“RSP” is not defined in the claims.
“ES2+” is not defined in the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 6 and 8-13, 15-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umamaheswaran et al. US Patent No. 10,708,766 B1 (IDS).
Claim 1, Umamaheswaran discloses a method, comprising:
conveying, with an embedded subscriber identity module (eSIM)-capable device, an inquiry to a wireless service provider (WSP) system inquiring whether an eSIM subscription is pending for the eSIM-capable device (fig 5 at 502, user device 110 power up, at 510 check for customer order),
wherein the conveying is automatically initiated in response to powering up the eSIM-capable device (fig 5 at 502, user device 110 power up, at 510 check for customer order);
receiving, with the eSIM-capable device, a communication from the WSP system indicating (fig 5, at 512 order found, at 520, activate device) whether the eSIM subscription is pending (fig 5, at 512 order found, at 520, ar 540 release pending order); and
automatically initiating (col 2: line5-10, use device may then automatically interface with elements of a wireless carrier/service provider network (also referred to herein as service provider) to activate the device, fig 5 at 570, activate order response), with the eSIM-capable device (fig 5 user device 110, at 570 activate order response), an eSIM subscription activation data flow from the WSP system (fig 5 user device 110, at 570 activate order response) in response to determining by the eSIM-capable device that the eSIM subscription is pending (fig 5 at 510 check for customer order).
Claim 2, Umamaheswaran discloses the method of claim 1, wherein the eSIM subscription is configured to include an eSIM profile (fig 5 at 580 query for SIM profile).
Claim 3, Umamaheswaran discloses the method of claim 2,
wherein the eSIM profile is created by the WSP system using a Subscription Manager Data Preparation (SMDP) server (col 3, line 33-35, SIM provisioning system 140 may include a subscription manager—data preparation (SM-DP) device that stores SIM profiles).
Claim 4, Umamaheswaran discloses the method of claim 2, wherein the eSIM profile is linked to an embedded Universal Integrated Circuit Card (eUICC) identifier (EID) corresponding to the eSIM-capable device (fig 5 at 580, query for SIM profile eID/IMEI, col 6, line 25-30, obtain the eUICC identifier/identification (eID)).
Claim 6, Umamaheswaran discloses the method of claim 1, wherein the communication is configured as an acquire configuration Application Programming Interface (API) configured for linking an eSIM profile to an embedded Universal Integrated Circuit Card (eUICC) identifier (EID) corresponding to an eUICC of the eSIM-capable device (fig 5 at 580 query for SIM profile eID/IMEI).
Claim 8, Umamaheswaran discloses the method of claim 1, wherein the pending eSIM subscription is pending while assigned to an embedded Universal Integrated Circuit Card (eUICC) identifier (EID) corresponding to an eUICC of the eSIM-capable device (fig 5 at 590 sim profile) prior to activation by the eSIM-capable device (col 9: line 5-10, upon storing the SIM profile in eUICC 310, user device 110 is activated with the wireless service provider (block 490; FIG. 5, 592)).
Claim 9, see claim 1 for the rejection, Umamaheswaran discloses (fig 5 user device 110) a device, comprising:
an embedded universal integrated circuit card (eUICC) (col 5: 5-7, user device 110 includes eUICC 310), wherein the eUICC is configured to initiate operations including:
conveying an inquiry to a wireless service provider (WSP) system inquiring whether an embedded subscriber identity module (eSIM) subscription is pending for the device,
wherein the conveying is automatically initiated in response to powering up the device;
receiving a communication from the WSP system indicating whether the eSIM subscription is pending; and
automatically initiating an eSIM subscription activation data flow from the WSP system in response to determining that the eSIM subscription is pending.
Claim 10, see claim 2 for the rejection, Umamaheswaran discloses the device of claim 9, wherein the eSIM subscription is configured to include an eSIM profile.
Claim 11, see claim 3 for the rejection, Umamaheswaran discloses the device of claim 10, wherein the WSP system comprises a Subscription Manager Data Preparation (SMDP) server and the eSIM profile is created using the SMDP server.
Claim 12, see claim 4 for the rejection, Umamaheswaran discloses the device of claim 10, wherein the eSIM profile is linked to an eUICC identifier (EID) corresponding to the device.
Claim 13, see claim 6 for the rejection, Umamaheswaran discloses the device of claim 9, wherein the communication is configured as an acquire configuration Application Programming Interface (API) used in linking an eSIM profile to an eUICC identifier (EID) corresponding to [[an]] the eUICC of the device.
Claim 15, Umamaheswaran discloses (fig 5) a system, comprising:
one or more processors communicatively configured to initiate operations including:
creating a pending embedded subscriber identity module (eSIM) subscription for an eSIM-capable device (fig 5 col 6, line 65-67. Col 7, line 1, Carrier provisioning system 130 may then create a new record for user device 110 including a SIM profile, and delete old records associated with the user's prior mobile device, including the prior SIM profile (block 460, FIG. 5, 542));
conveying a pending eSIM subscription message to the eSIM-capable device (fig 5 at 570, activate order response),
capable device (fig 5 at 502 user device 110 power up, at 510 check for customer order (eID/IMEI);
generating eSIM activation data (fig 5 at 560 order released, success, FQDN) based on the pending eSIM subscription for the eSIM-capable device (fig 5 at 540 release pending order); and
conveying the eSIM activation data to the eSIM-capable device for downloading to enable the eSIM-capable device (fig 5 at 590 SIM profile) to activate the pending eSIM subscription (fig 5 at 592 device activated).
Claim 16, Umamaheswaran discloses the system of claim 15, wherein the one or more processors are configured to initiate operations further including configuring the eSIM subscription to include an eSIM profile (fig 5 at 580 query for SIM profile), and wherein the eSIM activation data includes the eSIM profile (fig 5 at 580 query for SIM profile).
Claim 17, see claim 3 for the rejection, Umamaheswaran discloses the system of claim 16, wherein the one or more processors are configured to initiate operations further including creating the eSIM profile using a Subscription Manager Data Preparation (SMDP) server.
Claim 18, see claim 4 for the rejection, Umamaheswaran discloses the system of claim 16, wherein the one or more processors are configured to initiate operations further including linking the eSIM profile to an embedded Universal Integrated Circuit Card (eUICC) identifier (EID) corresponding to an
Claim 20, Umamaheswaran discloses the system of claim 15, wherein the pending eSIM subscription is created in response to conveyance of the eSIM-capable device to a user at a point-of-sale (POS) (col 3, line 5-8, in one implementation, entitlement device 120 may correspond to a front end or an interface to a wireless carrier's point-of-sale (POS)).
Claim Rejections - 35 USC § 103
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.
Claim(s) 5 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umamaheswaran et al. US Patent No. 10,708,766 B1 (IDS) in view of Kang et al. US 2020/0404501.
Claim 5, Umamaheswaran discloses the method of claim 2, further comprising: linking the eSIM profile to an embedded Universal Integrated Circuit Card (eUICC) identifier (EID) corresponding to the eSIM-capable device (fig 5 at 580 query for SIM profile eID/IMEI)
but is silent on,
using a GSMA-defined RSP ES2+.Download Order Application Programming Interface (API).
However, as using a GSMA-defined RSP ES2+.Download Order Application Programming Interface (API) is an intended use that does not have any patentability weight.
Further, as Kang discloses using a GSMA-defined RSP ES2+.Download Order Application Programming Interface (API) ([0093] downloading and management of a profile, the eSIM IoT terminal may perform message exchanges 150 and 160 with the LPA 170, based on the GSMA Remote SIM Provisioning (RSP) protocol).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to modify the Umamaheswaran invention with Kang invention to include the claimed limitation(s) so as to allow the network to configure an application programming interface with the GSMA Remote SIM Provisioning (RSP) protocol in order facilitate proper downloading and installing of eSIM as required.
Claim 19, see claim 5 for the rejection, Umamaheswaran discloses the system of claim 18, wherein linking the eSIM profile to the EID corresponding to the eSIM-capable device is performed using a GSMA-defined RSP ES2+.Download Order Application Programming Interface (API).
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umamaheswaran et al. US Patent No. 10,708,766 B1 (IDS) in view of Narasimhan et al. US 2018/0069581.
Claim 7, Umamaheswaran discloses the method of claim 1, wherein the eSIM-capable device initiates the eSIM subscription activation data flow by invoking a manage subscription Application Programming Interface (API) that, responsive to determining that the eSIM subscription is pending, releases the eSIM subscription for downloading subscription activation data to the eSIM-capable device (fig 5 at 580 query for SIM profile, at 590 SIM profile)
but is silent on
from [[an]] a Subscription Manager Data Preparation (SMDP) server.
However, as Narasimhan discloses from an SMDP server ([0008] an eSIM delivery server, as an SM-DP server, or as an SM-DP+ server, [0025] downloading the eSIM from the eSIM server).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to a person having ordinary skill in the art to modify the Umamaheswaran invention with Narasimhan invention to include the claimed limitation(s) so as to allow the network to designate a trusted eSIM server in order for the user device to download a pending eSIM for activation.
Claim 14, see claim 7 for the rejection, Umamaheswaran discloses the device of claim 9, wherein the device is configured to automatically initiate the eSIM subscription activation data flow Application Programming Interface (API) that, responsive to determining that the eSIM subscription is pending, releases the eSIM subscription for downloading subscription activation data to the device from [[an]] a Subscription Manager Data Preparation (SMDP) server.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON SLATER whose telephone number is (571)270-0375. The examiner can normally be reached MON-FRI 8AM-4PM EST, alt FRI.
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/ALISON SLATER/Supervisory Patent Examiner, Art Unit 2647