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 .
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Publication No. 2024/0048962 (“Holla et al.”).
Regarding claim 1, Holla et al. discloses a method of providing an electronic subscriber identity module (eSIM) profile to a wireless communication device, comprising:
receiving, by a subscription manager–data preparation plus (SM-DP+) server, an eSIM profile provisioning request, wherein the eSIM profile provisioning request comprises device parameters including an embedded UICC identifier (EID) number, a type allocation code (TAC), and an International Mobile Equipment Identifier (IMEI) number (fig. 5, 506 send an inquiry to an SM-DP+ server associated with a carrier to determine if the SM-DP+ server stores an eSIM profile associated with a unique identifier of the wireless communication device; [0038] the device ID may include one or more of the following: an embedded universal integrated circuit, card (eUICC) identifier and an international mobile equipment identity (IMEI), and any other unique device identifier);
determining, by the SM-DP+ server, whether the eSIM profile associated with the device parameters is available for download to the wireless communication device ([0045] in case the SM-DP+ server does not store any eSIM profile associated with device ID, the SM-DP+ server may return no finding to the device 102);
identifying, by the SM-DP+ server, a domain of the wireless communication device associated with the device parameters in response to determining that the eSIM profile is unavailable; determining, by the SM-DP+ server, a first domain SM-DP+ server based on the identified domain; and transmitting, by the SM-DP+ server, a first network address of the first domain SM-DP+ server to the wireless communication device to establish a first communication with the first domain SM-DP+ server (Fig. 4, transmitting inquiry to one of a plurality of first domain SM-DP+ servers; [0044-0045] For each carrier that serves the device's geographic location, the system 112 may send the device ID to the SM-DP+ server associated with the carrier to inquire if the SM-DP+ server stores an eSIM profile associated with the device ID).
Claim 11 recites a system comprising: a subscription manager–data preparation plus (SM-DP+) server in communication with a wireless communication device, configured to perform the method recited in claim 1. Thus claim 11 is rejected in view of Holla et al for the same reasons discussed in claim 1.
Claim 20 recites one or more non-transitory computer-readable media of a subscription manager–data preparation plus (SM-DP+) server storing computer-executable instructions that upon execution cause one or more processors to perform acts comprising the method of claim 1. Thus claim 20 is rejected in view of Holla et al for the same reasons discussed in claim 1 (Holla, [0094] The memory may be a non-transitory computer readable medium).
Regarding claim 2, Holla et al. discloses the method of claim 1, further comprising:
receiving, by the first domain SM-DP+ server from the wireless communication device, the eSIM profile provisioning request; and determining, by the first domain SM-DP+ server based on eSIM profile provisioning request, whether the eSIM profile associated with the identified domain is available for download to the wireless communication device ([0045] If there is an eSIM profile associated with the device ID, the SM-DP+ server may send a reply to the device 102. The reply may include information indicating availability of the eSIM profile for download, [0023] includes a link to initiate communication with the first domain SM-DP+ server).
Regarding claim 12, Holla et al. discloses the system of claim 11, wherein the domain SM-DP+ server is in communication with the wireless communication device and configured to:
receive, from the wireless communication device, the eSIM profile provisioning request, the eSIM profile provisioning request is routed from the wireless communication device to the domain SM-DP+ server via the first network address; and determine, based on eSIM profile provisioning request, whether the eSIM profile associated with the identified domain is available for download to the wireless communication device ([0045] If there is an eSIM profile associated with the device ID, the SM-DP+ server may send a reply to the device 102. The reply may include information indicating availability of the eSIM profile for download, [0023] includes a link to initiate communication with the first domain SM-DP+ server).
Regarding claims 3 and 13, Holla et al. discloses the method of claim 2, further comprising transmitting, by the first domain SM-DP+ server, the eSIM profile to the wireless communication device in response to determining that the eSIM profile is available (Fig. 5, display on a graphical user interface a prompt to a user. The reply may also include metadata of the eSIM profile indicated that the eSIM profile stored on the SM-DP+ server is available for download, and [0023] initiating the download of the profile by the user at the wireless communication device).
Regarding claims 4 and 14, Holla et al. discloses the method of claim 2, wherein in response to determining that the eSIM profile is unavailable, the method further comprises: determining, by the first domain SM-DP+ server, a second domain SM-DP+ server based on the identified domain; and transmitting, by the first domain SM-DP+ server, a second network address of the second domain SM-DP+ server to the wireless communication device to establish a second communication with the second domain SM-DP+ server ([0044-0045] In case the SM-DP+ server does not store any eSIM profile associated with device ID, the SM-DP+ server may return no finding to the device 102. The system 112 may send the device ID to the SM-DP+ server associated with the carrier to inquire if the SM-DP+ server stores an eSIM profile associated with the device ID).
Regarding claims 6 and 16, Holla et al. discloses the method of claim 1, wherein the SM-DP+ server comprises a plurality of domain specific SM-DP+ network addresses associated with corresponding domains ([0010] storing a list of known carriers along with geographic information of their network communication services and their subscription server addresses).
Regarding claims 7 and 17, Holla et al. discloses the method of claim 1, wherein the eSIM profile provisioning request further comprises a default network address of the SM-DP+ server to establish a second communication between the SM-DP+ server and the wireless communication device ([0045] For each carrier that serves the device's geographic location, the system 112 may send the device ID to the SM-DP+ server associated with the carrier to inquire if the SM-DP+ server stores an eSIM profile associated with the device ID).
Regarding claims 8 and 18, Holla et al. discloses the method of claim 1, wherein the TAC comprises an 8-digit number that identifies a particular model of the wireless communication device ([0038] TAC is the first part of the 15-digit International Mobile Equipment Identity (IMEI) number).
Regarding claims 9 and 19, Holla et al. discloses the method of claim 1, wherein the device parameters indicate a type and a manufacturer of the wireless communication device (0038] TAC is the first part of the 15-digit International Mobile Equipment Identity (IMEI) number) and a Type Allocation Code (TAC) inherently identifies the manufacturer and model).
Regarding claim 10, Holla et al. discloses the method of claim 1, wherein the wireless communication device is an Internet of things (IoT) device, a smart phone, a wearable computer, a laptop computer, a tablet computer, or a notebook computer (fig. 1, wireless device 102 is a smart phone).
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.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US Publication No. 2024/0048962 (“Holla et al.”) in view of KR 20240110301 (“Kim et al.”).
Regarding claims 5 and 15, Holla et al. does not specify the method of claim 4, wherein the eSIM profile is determined to be unavailable for the wireless communication device when a number of profile download attempts reach a preset threshold.
However in a similar field of endeavor, Kim et al. discloses eSIM setup including a counter value counting the number of attempts to download the eSIM profile by the terminal reaches the threshold, the terminal's access rights to a specific data network may expire.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to implement a timeout value such as a counter threshold for downloading valid SIM information when the valid SIM information is detected in the terminal; and a step of downloading the eSIM profile through the specific data network as discussed by Kim et al. in order to prevent continuous attempts.
Conclusion
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/JIRAPON TULOP/Examiner, Art Unit 2693
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