Response to Amendment
The amendment filed on 01/22/2026 has been entered and considered by Examiner. Claims 1-3, 6, 8, 10-11, 14, 15, 17-18, and 28 are presented for examination. This Action is made FINAL.
Specification
The title of the invention is objected for not being descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 14-15 are objected to because of the following informalities:
Claims 14-15 cannot be depended on a canceled claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. For claims 14-15, there’s no antecedent basis for these claim limitations, they are without parent claim(s).
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 of this title, 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, 6, 8, 10-11, 15, 17, 18, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Johansson et al. (US Pub. 20210385635 A1) in view of Namiranian (US Pub. 20190028884 A1).
For claim 1, Johansson discloses a method for handling download of a subscription profile from a pool of subscription profiles, where the subscription profiles of the pool are served by a mobile network operator, (MNO) entity (Fig. 2, "...The MNO entity 200 and a profile provisioning server 300 are therefore configured to support handling of a batch of profiles.'') [0062],
the method comprising:
managing the pool of subscription profiles, wherein the pool of subscription profiles has its own pool identifier ("...The MNO entity 200 and the SM-OP+ 300 also agree on identifier (s), called Matching identifier(s), that is/are used to track the profile download order at both entities.'') [0065];
obtaining a request from a communication device for download of one of the subscription profiles from the pool of subscription profiles, wherein the pool identifier is obtained from the communication device as part of mutual authentication between the subscription management entity and the communication device (''Activation Code: When ordering a 3GPP subscription, the device owner/user is provided with an Activation Code (AC) containing an activation code token (also known as matching identifier or matching ID for short) and address of the SM-DP+ 300 to be contacted for the profile download...The Matching identifier is provided to the SM-DP+ 300 and allows the SM-DP+ 300 to identify the correct profile download order from the MNO entity 200.'') [0019-20], ("...Each wireless device 500a, 500b, ..., 500N performs a profile download process with the SM- DP+ 300 to download the 3GPP profile (procedure: "Profile download" and messages "Profile installed (info)" and" Enable profile'').'') [0067];
enabling download to the communication device of one of the subscription profiles from the pool of subscription profiles upon having authenticated the communication device and bound a device identifier of the communication device to said one of the subscription profiles ("The device identity information is obtained by the profile provisioning server 300 from each wireless device 500a in the set of wireless devices 500a, 500b, ..., 500N during subscription profile download... Each piece of device identity information is bound to one out of the set of subscription profiles at the profile provisioning server 300.'') [0087], ("The procedure for profile download between each wireless device 500a and the profile provisioning server 200 follows the standard GSMA RSP protocol for profile download... In this procedure the matching identifier is signed by the wireless device 500a, linking the matching identifier to the EID (in an AuthenticateServerResponse message).'') [0210]; and
But Johansson doesn’t explicitly discloses filling up the pool of subscription profiles so that total number of subscription profiles in the pool of subscription profiles remains unchanged upon having obtained an indication that said one of the subscription profiles has been deleted from the communication device;
wherein a state of said one of the subscription profiles is changed from released to installed when said one of the subscription profiles is downloaded and successfully installed, and wherein the pool of subscription profiles is filled up by the state being changed back from installed to release upon the subscription management entity having obtained the indication that said one of the subscription profiles has been deleted from the communication device, or
the pool of subscription profiles is filled up by said one of the subscription profiles being deleted from the pool of subscription profiles and a new subscription profile being added to the pool of subscription profiles
However, Namiranian discloses filling up the pool of subscription profiles so that total number of subscription profiles in the pool of subscription profiles remains unchanged upon having obtained an indication that said one of the subscription profiles has been deleted from the communication device (In operation, the SM-OP+ of the wireless communication carrier 102 may receive a notification from the user device 104 indicating that the eSIM profile 108 is deleted from the eUICC 106... In tum, the SM-OP+ may change a profile state of the eSIM profile 108 from in use to suspended instead of deleted... Subsequently, the SM-OP+ may inform the billing function 114 of the deletion notification regarding the eSIM profile 108 and the change to the profile state of the profile.) [0024-25], ...if the eSIM profile 108 is determined by the business logic of the billing function 114 to have the inactive status 124, the billing function 114 may deem the eSIM profile 108 as being reusable by any eUICC. Accordingly, the billing function 114 may request that the SM-DP+ transition the profile state of the eSIM profile 108 to available for reuse by any eUICC.) [0026],
wherein a state of said one of the subscription profiles is changed from released to installed when said one of the subscription profiles is downloaded and successfully installed (Fig. 5, the transition from released to installed corresponds to release to in use upon download and installation) [0012, 0020-22, 0045], and
wherein the pool of subscription profiles is filled up by the state being changed back from installed to release upon the subscription management entity having obtained the indication that said one of the subscription profiles has been deleted from the communication device (Fig. 3 302-314, the pool is filled by changing the state back from installed (in use) to released after deletion indication) [0012, 0036, 0039], or
the pool of subscription profiles is filled up by said one of the subscription profiles being deleted from the pool of subscription profiles and a new subscription profile being added to the pool of subscription profiles (Fig. 5, 504-512 Rather than just resetting a state, the pool can be refilled by deleting the old subscription profile from the pool and adding a newly generated profile to replace it) [0013-14, 0045, 0022].
Since, all are analogous arts addressing user profiles used in a mobile system; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art would have been motivated to combine the teachings of Johansson with Namiranian to ensure available/free resources can be properly reused, thus, improving system operations.
Claim 28 differs from claim 1 only by the additional recitation of the following limitation, which is also taught by the cited prior art. The cited prior art Johansson further discloses subscription management entity for handling download of a subscription profile from a pool of subscription profiles (Fig. 2, "...The MNO entity 200 and a profile provisioning server 300 are therefore configured to support handling of a batch of profiles.'') [0062], where the subscription profiles of the pool of subscription profiles are served by a mobile network operator, MNO, entity, the subscription management entity managing the pool of subscription profiles, wherein the pool of subscription profiles has its own pool identifier ("...The MNO entity 200 and the SM-OP+ 300 also agree on identifier (s), called Matching identifier(s), that is/are used to track the profile download order at both entities.'') [0065], the subscription management entity comprising processing circuitry [0229, 0235, 0242], the processing circuitry being configured to cause the subscription management entity to [0229, 0235, 0242]. All other identical limitations are rejected based on the same rationale as shown above.
For claim 2, Johansson, as modified by Namiranian, discloses the method further comprises: obtaining an order from the MNO entity for the subscription management entity to create the pool of subscription profiles, and wherein the pool of subscription profiles is created by the subscription management entity in response thereto ("The MNo entity 200 places a batch download order (message:"DownloadBatchOrder (NbrOfDev, Profile Type, [BID], [ICC/Os],
[IMS/s], [IEDsj)'') at the SM-DP+ 300.'') [0187].
For claim 3, Johansson, as modified by Namiranian, discloses the order comprises zero or more device identifiers of communication devices to be associated with the subscription profiles, and in the order,
(i) there is a mismatch between number of ordered subscription profiles and number of device identifiers [0069, 0072],
(ii) same reference data for subscription profile download is provided for all ordered subscription profiles [0105, 0186-187], or
(iii) a pool indicator is set to indicate that the order is for a pool of subscription profiles [0065, 0072].
For claim 6, Johansson, as modified by Namiranian, discloses the method further comprises: obtaining a request from the MNO entity for the subscription management entity to update the pool of subscription profiles in terms of: number of subscription profiles in the pool of subscription profiles, and/or which communication devices are allowed to download one of the subscription profiles from the pool of subscription profiles ("The MNO entity 200 places a batch download order (message:"DownloadBatchOrder (NbrOfDev, Profile Type, [BID],r1cc1osJ, fJMSJsJ, fJEDs])''J at the SM-DP+ 300.'') [0187] since the MNO may specify in the batch order the EIDs of the devices for which a subscription profile needs to be available for download at the subscription manager.
For claim 8, Johansson, as modified by Namiranian, discloses the pool of subscription profiles is associated with a list of devices identifiers, only communication devices having a device identifier in the list of devices identifiers is allowed to download one of the subscription profiles from the pool of subscription profiles, and as part of mutual authentication between the subscription management entity and the communication device, the subscription management entity verifies that the communication device has a device identifier in the list of devices identifiers ("The eUICC/iUICC identifier (EID) is used to identify the wireless device 500a linked to the profile management operation, i.e. the identify the wireless device 500a for which the event is valid.'') [0021].
For claim 10, Johansson, as modified by Namiranian, discloses as part of mutual authentication between the subscription management entity and the communication device, the subscription management entity verifies that the communication device does not possess a subscription profile that has previously been downloaded from the pool of subscription profiles (the management entity checking to see whether the downloaded profile matches identifier of a profile; this check includes whether a profile identifier doesn’t match the downloaded content) [0148, 0209, 0228].
For claim 11, Johansson, as modified by Namiranian, discloses providing information to the MNO entity that said one of the subscription profiles has been downloaded to the communication device and/or that said one of the subscription profiles has been deleted from the communication device (Fig.3, step "Profile installed" between SM-DP+ and MNO) [0148, 0209, 0228].
For claim 15, Johansson as modified by Namiranian, Namiranian further discloses each subscription profile in the pool of subscription profiles has its own security parameters [0003, 0019], and wherein the security parameters of said one of the subscription profiles are changed when the state is changed back from installed to released [0003, 0019, 0026]. See motivation to combine the references from the above.
For claim 17, Johansson as modified by Namiranian, Namiranian further discloses each of the subscription profiles in the pool of subscription profiles is configured with a usage limitation in term of:
point in time after download when the subscription profile will be automatically deleted [0012, 0015, 0036], and/or
amount of data communicated by a given communication device using the subscription profile before the subscription profile will be automatically deleted from said given communication device [0012, 0015, 0036]. See motivation to combine the references from the above.
For claim 18, Johansson as modified by Namiranian, Namiranian further discloses each of the subscription profiles in the pool of subscription profiles is configured with: instructions for a notification to be sent from a given communication device upon the subscription as downloaded to said given communication device is deleted from said given communication device [0012, 0015, 0036], and/or
a policy according to which the subscription profile as downloaded to a given communication device is automatically deleted from said given communication device when being disabled by said given communication device [0012, 0015, 0036]. See motivation to combine the references from the above.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Johansson et al. (US Pub. 20210385635 A1) in view of Namiranian (US Pub. 20190028884 A1) in further view of Scoggins et al. (US Pub. 20060071810 A1).
For claim 14, Johansson, as modified by Namiranian, discloses all limitations this claim depended on.
Johansson, as modified by Namiranian, doesn’t explicitly disclose the following limitation taught by Scoggins.
Scoggins discloses a counter specifying number of download attempts of said one of the subscription profiles is reset upon the state being changed back from installed to released [0007-8].
Since, all are analogous arts addressing downloading contents used in a communication system; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art would have been motivated to combine the teachings of Johansson, as modified by Namiranian, with Scoggins to ensure useless information can be purged, and make the free resources available again for usage, in order to improve the availability of system resources.
Response to Arguments
Applicant's latest filed arguments have been fully considered but they are not persuasive.
With regard to the references failing to teach every element recited in the independent claims; the Examiner respectfully disagrees with the arguments by the Applicant. Even though, the Examiner acknowledges Applicant's invention may possess some novel features, the claims are written too broad that can be read on the current cited prior art(s). Further actions must be taken to explicitly claim those novel features of the current application.
With regards to the argument for the limitation “…wherein a state of said one of the subscription profiles is changed from released to installed when said one of the subscription profiles is downloaded and successfully installed,” the Examiner asserts that Namiranian discloses, on Fig. 5, the transition from released to installed corresponds to release to in use upon download and installation.
This limitation requiring that a state of one of the subscription profiles is changed from released to installed when the profile is downloaded and successfully installed is taught in paragraphs [0012], [0020], [0022], and [0045]. Paragraph [0012] discloses that the subscription management service tracks profile states and transitions a profile state to “released.” Paragraph [0020] teaches that an eSIM profile is sent via data packets to the eUICC for installation. Paragraph [0022] explains that when an eSIM profile is provisioned to an eUICC for use, its profile state is set to “in use,” which corresponds to the installed state. Paragraph [0045] further teaches sending the available eSIM profile to the eUICC for installation.
See below for direct quotes:
Profile States Are Explicitly Tracked “[0012] …the subscription management service may be configured to track new types of profile states for eSIM profiles…” Then Released State Exists for Reuse “[0012] …the subscription management service may transition the profile state of the eSIM profile to a state of released. The released state means that the eUICC… can be provisioned with another duplicate copy of the same eSIM profile…” This teaches a released state used prior to provisioning. Then Provisioning and Installation into the eUICC “[0020] …the subscription management service… may send one or more data packets that contain an eSIM profile… The data packets are assembled… and sent to the eUICC 106 for installation in the eUICC 106.” “[0045] …send the available eSIM profile… to the eUICC of the user device for installation in the eUICC…” Finally, “In Use” State (Installed State), “[0022] …when an eSIM profile is provisioned to an eUICC for use… the profile state… as in use.”
With regards to the argument for the limitation “…wherein the pool of subscription profiles is filled up by the state being changed back from installed to release upon the subscription management entity having obtained the indication that said one of the subscription profiles has been deleted from the communication device…”, the Examiner asserts that Namiranian discloses, on Fig. 3 302-314, the pool is filled by changing the state back from installed (in use) to released after deletion indication.
This limitation requiring that the pool of subscription profiles is filled up by changing the state back from installed to released upon receiving an indication that the subscription profile has been deleted from the communication device is taught in paragraphs [0012], [0036], [0039], [0013], and [0028]. Paragraphs [0012] and [0036] disclose receiving a notification that the eSIM profile is deleted from the eUICC and transitioning the profile state from “in use” to “suspended.” Paragraph [0039] teaches transitioning the profile state from suspended to “released for reuse solely by the eUICC.” Paragraph [0013] explains that an eSIM profile in the available or released state is put into a pool of available eSIM profiles, and paragraph [0028] discloses that the eSIM profile is placed in the eSIM profile store with a pool of other unassigned eSIM profiles ready for assignment.
See below for direct quotes:
Deletion Notification Received “[0012] …receive a notification from a user device… that the eSIM profile is deleted from the eUICC…” “[0036] …receive a notification… that an eSIM profile is deleted from an eUICC…” Then Installed (“In Use”) to Suspended “[0012] …transition a profile state of the eSIM profile from a state of in use to a state of suspended…” “[0036] …change a profile state… from in use to suspended.” Then from Suspended to Released
“[0039] …request a transition… to released for reuse solely by the eUICC…” Finally, Placement Back into Pool “[0028] …the eSIM profile 108 is then placed… in the eSIM profile store 112 with a pool with other unassigned eSIM profiles… ready for assignment.” “[0013] …the eSIM profile is put into a pool of available eSIM profile, and is available for reuse by any eUICC.”
Thus, the pool is filled by changing the state back from installed (in use) to released after deletion indication.
With regards to the argument for the limitation “…the pool of subscription profiles is filled up by said one of the subscription profiles being deleted from the pool of subscription profiles and a new subscription profile being added to the pool of subscription profiles…”, the Examiner asserts that Namiranian discloses, on Fig. 5, 504-512, rather than just resetting a state, the pool can be refilled by deleting the old subscription profile from the pool and adding a newly generated profile to replace it.
This limitation requiring that the pool of subscription profiles is filled up by one subscription profile being deleted from the pool and a new subscription profile being added to the pool is taught in paragraphs [0013], [0014], [0022], and [0045], as well as claim 2 of the reference. Paragraph [0013] discloses that eSIM profiles are placed into a pool of available profiles for reuse. Paragraph [0045] teaches determining whether an eSIM profile exists in the available pool and selecting a profile from that pool for provisioning, which results in the selected profile being removed from the pool when provisioned and placed “in use” as described in paragraph [0022]. Paragraph [0014] further discloses that deleted eSIM profiles may be recycled for reuse by other eUICCs, thereby replenishing the pool, and claim 2 expressly recites placing a duplicate of the eSIM profile with a reusable profile state in a pool of eSIM profiles maintained by the wireless communication carrier.
See below for direct quotes:
First, Pool Exists “[0013] …put into a pool of available eSIM profile…” Claim 2: “…placing a duplicate… in a pool of eSIM profiles that are available for assignment…” Next, Profile Selected from Pool “[0045] …determine whether an eSIM profile… exists in an available pool…” “[0045] …associate an IMSI of a particular eSIM profile selected from the pool of available eSIM profiles…” Once Provisioned, It Leaves Pool (Becomes In Use) “[0022] …when an eSIM profile is provisioned… profile state… as in use.” Finally, Deleted Profiles Replenish Pool “[0014] …eSIM profiles that are deleted… may be recycled for reuse…”.
ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS
NECESSARY
The arguments made by the counsel cannot take the place of evidence in the record. The Applicant representative’s arguments for the obvious reason to combine the implicit and explicit teaching of the cited reference(s) failed to provide factual support to sustain the ground of arguments. The mere statement of disagreement of the prior art made by the Applicant’s representative cannot be served as evidence for support. Please see the following case law for detail:
In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465,43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
ARGUING AGAINST REFERENCES INDIVIDUALLY
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck and Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 extension fee 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAKEE FANG whose telephone number is (571)270-3633. The Examiner can normally be reached on Mon-Fri 9:00AM-5:00PM.
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, Armouche, Hadi can be reached on 571-270-3618. 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.
/PAKEE FANG/
Primary Examiner, Art Unit 2409
Prosecution Insights