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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/26/2026 has been entered.
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) 1-3, 5-7, 9-11 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020184995 A1 herein Lee (as witnessed by the previously provided translation) in view of US 20200128390 A1 herein Park.
Claim 1, Lee discloses A method of a server, the method comprising:
receiving, from a terminal, an embedded universal integrated circuit card (eUICC) information indicating whether a device change is supported (Pg. 4: last two paragraphs);
determining that the terminal supports the device change based on the eUICC information (Pg. 4: activation code for installing a profile); and
transmitting metadata comprising a device change configuration to the terminal based on determining that the terminal supports the device change (Pg. 4, transmission of the profile to the new terminal).
Lee may not explicitly disclose EUICCRspCapability, wherein the EUICCRspCapability, which is associated with version information of an eUICC, includes information indicating device change is supported; determining that the terminal device supports the device change based on the information indicating whether a device change is supported.
Park discloses EUICCRspCapability, wherein the EUICCRspCapability, which is associated with version information of an eUICC (0169-0171, supported version number and RSP capability), includes information indicating device change is supported (0169-0171, ensuring the version number corresponds to a version number that supports RPM, thus indicating that device change is supported); determining that the terminal device supports the device change based on the information indicating whether a device change is supported (0126, RPM result for handling profile management). 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 Lee to include checking version number to determine RSP capability as taught by Park so as to (0004, efficiently managing a SIM profile with regard to one or more terminals).
Claim 2, Lee discloses The method of claim 1, wherein the device change configuration comprises at least one of new activation code (Pg. 4).
Claim 3, Lee discloses The method of claim 1, wherein the device change configuration comprises information indicating a use of a stored activation code (Pg. 4, since the activation code is received and transferred, thus storage of the code).
Claim 5, as analyzed with respect to the limitations as discussed in claim 1. Lee discloses a method of a terminal (Title).
Claim 6, as analyzed with respect to the limitations as discussed in claim 2.
Claim 7, as analyzed with respect to the limitations as discussed in claim 3.
Claim 9, as analyzed with respect to the limitations as discussed in claim 1. Lee discloses A server (Abstract) comprising: a transceiver (exchanging of information and downloading of a profile, thus a transceiver); and at least one processor operably coupled to the transceiver (Abstract, processer).
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 13, as analyzed with respect to the limitations as discussed in claim 1. Lee discloses A terminal (Title, device; Abstract, terminal) comprising: a transceiver (implied, since a user equipment, thus a transceiver); and at least one processor operably coupled to the transceiver (implied, since a user equipment thus a processor and transceiver).
Claim 14, as analyzed with respect to the limitations as discussed in claim 2.
Claim 15, as analyzed with respect to the limitations as discussed in claim 3.
Claim(s) 4, 8, 12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Parker in view of US 20190327603 A1 herein Junior.
Claim 4, Lee discloses The method of claim 1. Lee discloses supporting the device change by the terminal is identified based on the eUICC information (see claim 1 above).
Lee may not explicitly disclose identifying version information of an eUICC installed in the terminal, and transmitting, to the terminal, the metadata comprising the device change configuration in case that the version information of the eUICC corresponds to specific version information and; and 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.
Junior discloses identifying version information of an eUICC installed in the terminal (0036, version of the eUICC), and transmitting, to the terminal, the metadata comprising the device change configuration in case that the version information of the eUICC corresponds to specific version information (0036, transfer of requested specific profile after checking version of the eUICC) and; and 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 (0036). 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 Lee to include checking versions of the eUICC as taught by Junior so as to know whether there exists enough memory in the device to install and operate the requested profile hence saving on resources (0036).
Claim 8, as analyzed with respect to the limitations as discussed in claim 4.
Claim 12, as analyzed with respect to the limitations as discussed in claim 4.
Claim 16, as analyzed with respect to the limitations as discussed in claim 4.
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
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, Nishant Divecha can be reached at (571) 270-3125. 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