DETAILED ACTION
Notice of Pre-AIA or AIA Status
I. 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 Amendment
II. This action is in response to applicants amendment/arguments filed on May 6, 2026. This action is made FINAL.
Response to Arguments
III. Applicant's arguments filed May 6, 2026 have been fully considered but they are not persuasive. Regarding claims 1, 13, and 19 applicant argues that Gundavelli and Drexel do no teach wherein the eSIM includes metadata comprising data defining a geographical area; and performing wireless communication using the NPN when the UE determines that the UE is within the geographical area.
The examiner disagrees.
The combination of Gundavelli and Drexel teaches wherein the eSIM includes metadata comprising data defining a geographical area; and performing wireless communication using the NPN when the UE determines that the UE is within the geographical area (see below).
Gundavelli teaches performing wireless communication using the NPN when the UE determines that the UE is within a geographical area (see paragraphs [0056] – [0059]).
The UE accesses the second private network using the locale-specific second eSIM profile and this reads on performing wireless communication using the NPN (see paragraph [0059]).
The UE monitors its GPS location and detects the change from the first locale to the second locale (see paragraph [0056]).
Responsive to detecting the relocation, the UE collects information of the second locale (see paragraph [0057]) and communicates with the SM-DP+ to receive the second eSIM to enable the UE to access the second private network (see paragraph [0058]).
This reads on performing wireless communication using the NPN when the UE determines that the UE is within a geographical area because the UE detects the new location by monitoring its GPS location (see paragraph [0056]) and this detection of the new location by the UE is what starts the process of accessing and performing wireless communication using the second NPN.
Drexel teaches an eSIM that includes metadata comprising data defining a geographical area (see paragraphs [0012]; [0022]; [0033] and Fig. 1).
The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card.
This reads on wherein the eSIM includes metadata comprising data defining the geographical area.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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., wherein the UE itself determines that it should begin to perform wireless communications using the NPN without communications with the network) 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).
Therefore, the rejection of claims 1, 13, and 19 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1) will remain.
Claims 3-12, 15-18, and 20-22 are dependent on independent claims 1, 13, and 19 and will remain rejected for the reasons above and below.
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.
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.
IV. Claims 1, 11, 13, 19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1).
Regarding claim 1 Gundavelli teaches a method preformed in a wireless system (see paragraph [0020] and Fig. 2, network environment reads on wireless system), the method comprising: receiving, by a receiver of a User Equipment (UE), an embedded Subscriber Identity Module (eSIM) associated with a Non-Public Network (NPN) (see paragraph [0059], The UE receives from the SM-DP+ server, a locale-specific second eSIM profile configured to enable the UE to access the second private network. This reads on receiving, by a receiver of a User Equipment (UE), an embedded Subscriber Identity Module (eSIM) associated with a Non-Public Network (NPN)); and performing wireless communication using the NPN (see paragraph [0059], The UE accesses the second private network using the locale-specific second eSIM profile and this reads on performing wireless communication using the NPN) when the UE determines that the UE is within a geographical area (see paragraphs [0056] – [0059], The UE monitors its GPS location and detects the change from the first locale to the second locale. Responsive to detecting the relocation, the UE collects information of the second locale and communicates with the SM-DP+ to receive the second eSIM to enable the UE to access the second private network. This reads on performing wireless communication using the NPN when the UE determines that the UE is within a geographical area).
Gundavelli does not specifically teach wherein the eSIM includes metadata comprising data defining the geographical area.
Drexel teaches an eSIM that includes metadata comprising data defining a geographical area (see paragraphs [0012]; [0022]; [0033] and Fig. 1, The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card. This reads on wherein the eSIM includes metadata comprising data defining the geographical area).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the eSIM in Gundavelli adapt to include metadata comprising data defining the geographical area because it is well known that geographic data can be included in the eSIM using well-known techniques (see Drexel above) and it would provide for a more efficient mechanism for providing the location based service.
Regarding claim 11 Gundavelli teaches updating, by an operator, using an operator-embedded Universal Integrated Circuit Card (eUICC) connection (see paragraphs [0023] - [0024] & [0038], when the UE moves or relocates from the home locale to the new locale, the SM-DP+ configures the UE with the new locale specific eSIM profile (see paragraph [0041]). This reads on updating, by an operator, using an operator-embedded Universal Integrated Circuit Card (eUICC) connection).
Regarding claim 13 Gundavelli teaches a user device comprising: a receiver (see paragraphs [0060] & [0074]) that obtains an embedded Subscriber Identity Module(eSIM) associated with a Non-Public Network (NPN) (see paragraph [0059], The UE receives from the SM-DP+ server, a locale-specific second eSIM profile configured to enable the UE to access the second private network. This reads on a receiver that obtains an embedded Subscriber Identity Module(eSIM) associated with a Non-Public Network (NPN)); and a processor (802, Fig. 8 and paragraphs [0060] – [0061]) that performs wireless communication using the NPN (see paragraph [0059], The UE accesses the second private network using the locale-specific second eSIM profile and this reads a processor that performs wireless communication using the NPN) when the processor determines that the user device is within a geographical area (see paragraphs [0056] – [0059], The UE monitors its GPS location and detects the change from the first locale to the second locale. Responsive to detecting the relocation, the UE collects information of the second locale and communicates with the SM-DP+ to receive the second eSIM to enable the UE to access the second private network. This reads on performing wireless communication using the NPN when the UE determines that the UE is within a geographical area).
Gundavelli does not specifically teach wherein the eSIM includes metadata comprising data defining the geographical area.
Drexel teaches an eSIM that includes metadata comprising data defining a geographical area (see paragraphs [0012]; [0022]; [0033] and Fig. 1, The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card. This reads on wherein the eSIM includes metadata comprising data defining the geographical area).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the eSIM in Gundavelli adapt to include metadata comprising data defining the geographical area because it is well known that geographic data can be included in the eSIM using well-known techniques (see Drexel above) and it would provide for a more efficient mechanism for providing the location based service.
Regarding claim 19 Gundavelli teaches a wireless system comprising: a Non-Public Network (NPN) server, the NPN server (see paragraph [0014], subscription manager data preparation (SM-DP+) server reads on NPN server) comprising: a processor (802, Fig. 8 and paragraph [0062]) that embeds data in an embedded Subscriber Identity Module (eSIM) associated with an NPN (see paragraph [0038], The SM-DP+ generates a new locale-specific eSIM profile for UE. The new locale-specific eSIM profile includes a NPN ID for the new locale-specific private network. This reads on a processor that embeds data in an embedded Subscriber Identity Module (eSIM) associated with an NPN); a user device comprising: a receiver (see paragraphs [0060] & [0074]) that obtains an embedded Subscriber Identity Module(eSIM) associated with a Non-Public Network (NPN) (see paragraph [0059], The UE receives from the SM-DP+ server, a locale-specific second eSIM profile configured to enable the UE to access the second private network. This reads on a receiver that obtains an embedded Subscriber Identity Module(eSIM) associated with a Non-Public Network (NPN)); and a processor (802, Fig. 8 and paragraphs [0060] – [0061]) that performs wireless communication using the NPN (see paragraph [0059], The UE accesses the second private network using the locale-specific second eSIM profile and this reads a processor that performs wireless communication using the NPN) when the processor determines that the user device is within a geographical area (see paragraphs [0056] – [0059], The UE monitors its GPS location and detects the change from the first locale to the second locale. Responsive to detecting the relocation, the UE collects information of the second locale and communicates with the SM-DP+ to receive the second eSIM to enable the UE to access the second private network. This reads on performing wireless communication using the NPN when the UE determines that the UE is within a geographical area).
Gundavelli does not specifically teach wherein the eSIM includes metadata comprising data defining the geographical area.
Drexel teaches an eSIM that includes metadata comprising data defining a geographical area (see paragraphs [0012]; [0022]; [0033] and Fig. 1, The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card. This reads on wherein the eSIM includes metadata comprising data defining the geographical area).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the eSIM in Gundavelli adapt to include metadata comprising data defining the geographical area because it is well known that geographic data can be included in the eSIM using well-known techniques (see Drexel above) and it would provide for a more efficient mechanism for providing the location based service.
Regarding claim 21 Drexel teaches wherein the data comprises geofencing data (see paragraphs [0012]; [0022]; [0033] and Fig. 1, The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card. This reads on wherein the data comprises geofencing data).
Regarding claim 22 Drexel teaches wherein the data comprises geofencing data (see paragraphs [0012]; [0022]; [0033] and Fig. 1, The SIM card can obtain GPS location data. The SIM card can store the GPS location data. The GPS location data includes geofences which are stored to the storage device of the SIM card. This reads on wherein the data comprises geofencing data).
V. Claims 3, 5, 7-9, 15, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1) and Pang (US 2016/0165393 A1).
Regarding claim 3 Gundavelli and Drexel teach the method of claim 21 except for wherein the data is stored as part of an enterprise configuration of the metadata.
Pang teaches wherein the data is stored as part of an enterprise configuration of the metadata (see paragraph [0020], The geofence information can include latitude information and longitude information of the geofence; and radius information of the geofence. An enterprise can configure the mobile device with the fence information or the mobile device can store the fence information in response to receiving the fence information from the server. This reads on wherein the data is stored as part of an enterprise configuration of the metadata).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the data stored in the Gundavelli and Drexel combination adapt to include data stored as part of an enterprise configuration of the metadata because it further improve location specific service by providing location services in a variety of geographical locations.
Regarding claim 5 Gundavelli and Drexel teach the method of claim 1 except for wherein the wireless system does not include a geofence server.
Pang teaches wherein the wireless system does not include a geofence server (see paragraph [0022], The mobile device can retrieve information on one or more geo-fences stored locally and this reads on wherein the wireless system does not include a geofence server).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the Gundavelli and Drexel combination adapt to include wherein the wireless system does not include a geofence server because it can provide for improved efficiency by reducing signaling.
Regarding claim 7 Gundavelli and Drexel teach the method of claim 21 except for wherein the geofencing data comprise at least one of: a latitude, a longitude, and a radius.
Pang teaches wherein the geofencing data comprise at least one of: a latitude, a longitude, and a radius (see paragraph [0020], The geofence information can include latitude information and longitude information of the geofence, and radius information of the geofence. This reads on wherein the geofencing data comprise at least one of: a latitude, a longitude, and a radius).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the geofencing data in the Gundavelli and Drexel combination adapt to include at least one of: a latitude, a longitude, and a radius because such location data is well-known to be included in geofencing data.
Regarding claim 8 Gundavelli and Drexel teach the method of claim 21 except for wherein the geofencing data comprises: a plurality of geofencing locations.
Pang teaches wherein the geofencing data comprises: a plurality of geofencing locations (see paragraph [0032], The geo-fences can correspond to one or more geo-fences with corresponding fence information (see paragraph [0020]) stored locally at the mobile device. This reads on wherein the geofencing data comprises: a plurality of geofencing locations).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the geofencing data in the Gundavelli and Drexel combination adapt to include wherein the geofencing data comprises: a plurality of geofencing locations because such location data is well-known to be included in geofencing data.
Regarding claim 9 Pang teaches wherein each geofencing location comprises a latitude, a longitude, and a radius (see paragraph [0020], The geofence information can include latitude information and longitude information of the geofence, and radius information of the geofence. This reads on wherein each geofencing location comprises a latitude, a longitude, and a radius).
Regarding claim 15 Gundavelli, Drexel, and Pang teach limitations as recited in claim 3 and therefore claim 15 is rejected for the same reasons given above.
Regarding claim 17 Gundavelli, Drexel, and Pang teach limitations as recited in claim 7 and therefore claim 17 is rejected for the same reasons given above.
Regarding claim 18 Gundavelli, Drexel, and Pang teach limitations as recited in claim 8 and therefore claim 18 is rejected for the same reasons given above.
Regarding claim 20 Gundavelli, Drexel, and Pang teach limitations as recited in claim 5 and therefore claim 20 is rejected for the same reasons given above.
VI. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1) and Bluestein et al. (US 2023/0104718).
Regarding claim 4 Gundavelli and Drexel teach the method of claim 1 including receiving the eSIM (see Gundavelli, paragraph [0038], When the UE receives the new locale-specific eSIM profile, the UE loads the new locale-specific eSIM profile into its eSIM. This reads on receiving the eSIM) and except for scanning, by the UE, a QR code to cause the download of the eSIM.
Bluestein teaches scanning, by the UE, a QR code to cause the download of the eSIM (see paragraph [0057], The mobile device downloads an application that will configure the mobile device to identify when the mobile device has entered a geofence area. The geofence application presented to a user for download through a link such as a Quick (QR) code. This reads on scanning, by the UE, a QR code to cause the download of the eSIM because the application facilitates geofencing of the mobile device in the same way as the eSIm and is downloaded via QR code).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the eSIM in the Gundavelli and Drexel combination adapt to include scanning, by the UE, a QR code to cause the download of the eSIM because the application in Bluestein facilitates geofencing of the mobile device in the same way as the eSIm in the Gundavelli and Pang combination and is downloaded via QR code. The combination would allow for a well-known and efficient mechanism for downloading the eSIM geofence information (see Bluestein above).
VII. Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1) and Chen et al. (US 2023/0047213 A1).
Regarding claim 6 Gundavelli and Drexel teach the method of claim 1 except for wherein the eSIM is one of two active eSIMs, the other active eSIM providing access to a Public Land Mobile Network (PLMN).
Chen teaches one of two active eSIMs, the other active eSIM providing access to a Public Land Mobile Network (PLMN) (see paragraphs [0049] – [0050], A USIM may be a physical SIM or eSIM. The eSIMs of the UE may belong to the same operator or different operators. An operator may be a public network operator (e.g., PLMN operator) or a non-public network. This reads on one of two active eSIMs, the other active eSIM providing access to a Public Land Mobile Network (PLMN)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the Gundavelli and Drexel combination adapt to include wherein the eSIM is one of two active eSIMs, the other active eSIM providing access to a Public Land Mobile Network (PLMN) because multi-sim device and operation is well known and it would provide for a more flexible communication (see Chen, paragraph [0004]).
Regarding claim 16 Gundavelli, Drexel, and Chen teach limitations as recited in claim 6 and therefore claim 16 is rejected for the same reasons given above.
VIII. Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Gundavelli et al. (US 2023/0011447 A1) in view of Drexel et al. (US 2016/0261980 A1) and Chu et al. (US 2020/0245160 A1).
Regarding claim 10 Gundavelli and Drexel teach the method of claim 1 except for wherein the UE operates in a Bring Your Own Device (BYOD) device management model.
Chu teaches wherein the UE operates in a Bring Your Own Device (BYOD) device management model (see paragraph [0068], An enterprise mobility architecture for use in a Bring Your Own Device (BYOD) environment reads on wherein the UE operates in a Bring Your Own Device (BYOD) device management model).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the Gundavelli and Drexel combination adapt to include wherein the UE operates in a Bring Your Own Device (BYOD) device management model because it would allow for a more user friendly mobile architecture for users of an enterprise network (see Chu above).
Regarding claim 12 Gundavelli and Drexel teach the method of claim 1 including updating geofencing data (see Drexel, paragraphs [0022] & [0033], GPS location data including geofences is gathered. The GPS location data including geofences can be updated each time the SIM determines GPS location. This reads on updating geofencing data) except for updating via Mobile Device Management (MDM) operations.
Chu teaches updating via Mobile Device Management (MDM) operations (see paragraphs [0068] – [0069], A mobile device may be managed through the application of mobile device management policies. Applications such as resource restrictions and/or other access controls may be enforced by the mobile device management. This reads on updating via Mobile Device Management (MDM) operations).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the Gundavelli and Drexel combination adapt to include updating via Mobile Device Management (MDM) operations because it would allow for a more user friendly mobile architecture for users of an enterprise network (see Chu above).
Conclusion
IX. 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 BRANDON J MILLER whose telephone number is (571)272-7869. The examiner can normally be reached M-F.
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, Alison Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON J MILLER/Primary Examiner, Art Unit 2647
June 29, 2026
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