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 .
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because of the new ground of rejection.
Previous Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive. Applicant essentially argues that Lee in view of Park does not teach the amendments to the limitations of the independent claims.
Applicant argues that Lee never sends information regarding a device change is requested.
The Examiner respectfully disagrees. Lee clearly discloses a profile is transmitted to allow for a profile to be installed on a new device. Thus, a configuration is sent to install a profile for a device change request.
The Applicant argues that Park does not remedy the short comings of Lee and neither Lee nor Park disclose “wherein the eUICCRspCapability, which is associated with version information of an eUICC, includes information indicating whether a device change is supported”.
The Examiner respectfully disagrees. Park clearly discloses that a profile is transferred for a terminal that is replacing an older terminal (0057). With regards to “wherein the eUICCRspCapability, which is associated with version information of an eUICC, includes information indicating whether a device change is supported”, the clause is descriptive and merely states that the eUICCRspCapability is associated with a version information of the eUICC. Park discloses that the LPA/UE checks whether the version of the eUICC is capable of handling a remote management (0169), which is part of the profile exchange/replacement for the new terminal. Lee and Park both disclose that the profile is transferred to a terminal which is replacing an older terminal.
Thus, the applied references clearly disclose all the argued and claimed limitations.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/171475 herein Duckey Lee in view of US 2020/0128390 A1 herein Hyewon Lee.
WO 2020/171475 is published in Korean. US 2022/0078615 A1 is the English-language publication of the same international application, PCT/KR2020/002025, claiming the same Korean priority, and citations herein to Duckey Lee are to the paragraph numbering of US 2022/0078615 A1.
Claim 1, Duckey Lee discloses a method of a server (0020, Method), the method comprising:
receiving, from a terminal, an embedded universal integrated circuit card (eUICC) information (0147, device 1 transmits eUICClnfo or Devicelnfo about device 2 to the profile server);
transmitting, to the terminal, metadata comprising a device change configuration based on determining that the terminal supports the device change (0226, the SM-DP+ determines whether a profile transfer is possible and transmits profile metadata in an AuthenticateClientResponse; 0171, the response includes transfer support and device restriction information).
Duckey Lee may not explicitly disclose eUICC information including eUICCRspCapability, wherein the eUICCRspCapability, which is associated with version information of an eUICC, includes an indicator indicating whether a device change is supported, and determining that the terminal supports the device change if the indicator indicates that an eUICC of the terminal supports the device change.
Hyewon Lee discloses eUICC information including eUICCRspCapability, wherein the eUICCRspCapability, which is associated with version information of an eUICC, includes an indicator indicating whether a function is supported, and determining that the terminal supports the function if the indicator indicates that an eUICC of the terminal supports the function (0171, euiccRspCapability is checked for rpmSupport, and the eUICC specification version number is checked against a predetermined version; if rpmSupport is described the command can be handled, and if absent it cannot; 0245, the SVN or RSP capability of the eUICC supports the function). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Duckey Lee to include an eUICC RSP capability carrying an indicator of whether a function is supported, as taught by Hyewon Lee, so as to avoid delivering a command the eUICC cannot handle (0175).
Claim 2, Duckey Lee in view of Hyewon Lee discloses the method of claim 1, wherein the device change configuration comprises a new activation code (0117, the profile server generates an activation code for downloading the second profile).
Claim 3, Duckey Lee in view of Hyewon Lee discloses the method of claim 1, wherein the device change configuration comprises information indicating a use of a stored activation code (0236, an activation code and a Delete Profile or Reuse Profile flag are stored in the first terminal; 0237, the terminal invokes the stored activation code).
Claim 4, Duckey Lee in view of Hyewon Lee discloses the method of claim 1, further comprising:
identifying the version information of the eUICC installed in the terminal (0216, the terminal identifies an SVN value through message exchange with the SM-DP+),
transmitting, to the terminal, the metadata comprising the device change configuration if the version information of the eUICC corresponds to specific version information (0216, the SM-DP+ allows the transfer when the version information satisfies a specific condition),
wherein:
the version information of the eUICC, received from the terminal, is included in a message or other messages, or
the version information of the eUICC is identified based on at least one piece of information included in the message received from the terminal (0221, device 1 determines transfer support from version or indicator information returned to its InitiateAuthenticateRequest).
Duckey Lee may not explicitly disclose supporting the device change by the terminal is identified based on the eUICC information.
Hyewon Lee discloses supporting a function is identified based on the eUICC information (0171, euiccRspCapability is checked for rpmSupport; 0250, the terminal checks the SVN or RSP capability of the eUICC). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Duckey Lee to include an eUICC RSP capability carrying an indicator of whether a function is supported, as taught by Hyewon Lee, so as to avoid delivering a command the eUICC cannot handle (0175).
Claim 5, as analyzed with respect to the limitations as discussed in claim 1. Duckey Lee discloses a method of a terminal, the method comprising (0018, a method performed by a first terminal).
Claim 6, Duckey Lee in view of Hyewon Lee discloses claim 6, further comprising storing a new activation code if the device change configuration comprises the new activation code (0118, the activation code is transferred to the first terminal; 0119, the first terminal displays it and notifies the user it has been prepared, thus retained by the terminal; 0095).
Claim 7, as analyzed with respect to the limitations as discussed in claim 3.
Claim 8, as analyzed with respect to the limitations as discussed in claim 4.
Claim 9, as analyzed with respect to the limitations as discussed in claim 1. Duckey Lee discloses a server (0023, a profile server), and comprising:
a transceiver (0271, the transceiver transmits or receives signals with another network entity); and
at least one processor operably coupled to the transceiver (0272, the controller controls the overall operation of the profile server).
Claim 10, as analyzed with respect to the limitations as discussed in claim 2.
Claim 11, as analyzed with respect to the limitations as discussed in claim 3.
Claim 12, as analyzed with respect to the limitations as discussed in claim 4.
Claim 13, as analyzed with respect to the limitations as discussed in claim 5. Duckey Lee discloses a terminal (0021, a first terminal), and comprising:
a transceiver (0265, the transceiver transmits or receives signals with another network entity); and
at least one processor operably coupled to the transceiver (0264, the controller may include at least one processor).
Claim 14, as analyzed with respect to the limitations as discussed in claim 6.
Claim 15, as analyzed with respect to the limitations as discussed in claim 7.
Claim 16, as analyzed with respect to the limitations as discussed in claim 8.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20190208405 A1 - An electronic device is provided. The electronic device includes a UICC in which a first profile is installed, an eUICC, and a processor electrically connected with the UICC and the eUICC. The processor requests a second profile to be installed in the eUICC from a first server based on the first profile, receives the second profile from a second server associated with the first server, and installs the received second profile in the eUICC. The second profile and the first profile include the same subscriber identification information.
US 20210160683 A1 – Techniques for flexible electronic subscriber identity module (eSIM) deployment to a wireless device by a network server, including generation of multiple eSIMs using an identical eSIM identifier value, such as an identical integrated circuit card identifier (ICCID) value, and subsequent selection of an eSIM based on capabilities of the wireless device. Multiple eSIMs that correspond to different sets of wireless device capabilities are generated without knowledge of the wireless communication standards that a wireless device supports. The multiple eSIMs include a first eSIM that includes fifth generation (5G) wireless communication protocol information and a second eSIM that excludes 5G wireless communication protocol information. The network server selects an eSIM from the multiple eSIMs based on whether the wireless device is 5G capable. After selection and binding of a profile package that includes the eSIM, the remaining eSIMs that use the identical ICCID value are deleted, for security enforcement against cloning.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Mehmood B. Khan whose telephone number is (571)272-9277. The examiner can normally be reached M-F 9:30 am-6:30 pm. 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, Asad Nawaz can be reached at (571) 272-3988. 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.
/Mehmood B. Khan/ Primary Examiner, Art Unit 2468
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