DETAILED ACTION
This communication is in response to Application No. 18/327,005 filed on 9/29/2017. The amendment presented on 1/12/2026, which cancels claims 17-20 and adds new claims 21-25, is hereby acknowledged. Claims 1-16 and 21-25 have been examined.
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 .
Election/Restrictions
Applicant’s election without traverse of 1-16 in the reply filed on 1/12/2026 is acknowledged.
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.
Claims 1-7, 9-15, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (hereinafter Li)(US 2021/0400479) in view of Chauhan et al. (hereinafter Chauhan)(US 2021/0084670).
Regarding claims 1, 9, and 21, Li teaches as follows:
A wireless device (interpreted as the mobile wireless device 102 in figure 2) comprising:
wireless circuitry (interpreted as the baseband wireless circuit 110 in figure 2) comprising one or more antennas (the baseband wireless circuitry 110 can include analog hardware components, such as antennas, see, ¶ [0024]); and
one or more processors (processors 104 in figure 2) communicatively coupled to the wireless circuitry and to a memory storing instructions that, when executed by the one or more processors (the mobile wireless device 102 can include processing circuitry, which can include one or more processor(s) 104 and a memory 106, an embedded Universal Integrated Circuit Card (eUICC) 108, and a baseband wireless circuitry 110 used for transmission and reception of cellular wireless radio frequency signals, see, ¶ [0024] and figure 2), configure the wireless device to:
receive, from a mobile network operator (MVNO) entitlement server (interpreted as the eSIM discovery server 306 or the MNO provisioning server 116 in figures 3 and 4), an electronic subscriber identity module (eSIM) installation response including a unique identifier associated with an eSIM assigned to the wireless device (the eSIM discovery server 306 can respond to the message from the secondary mobile wireless device 102B with information regarding the reserved eSIM 208, such as a network address, e.g., a uniform resource locator (URL) name for the MNO provisioning server 116 from which to obtain the eSIM 208, and an identifier for the eSIM 208 reserved for the secondary mobile wireless device 102B (equivalent to applicant’s unique identifier associated with an eSIM assigned to the wireless device), such as an integrated circuit card identifier (ICCID) value or a hashed version thereof, see, ¶ [0029] and figure 4); and
enter an eSIM installation monitor mode (monitor mode state machine for initial activation of an eSIM 208 for a secondary mobile wireless device 102B. At 502, an eSIM 208 is installed and activated for a first time on a secondary mobile wireless device 102B. At 504, the secondary mobile wireless device 102B initiates the monitor mode state machine and configures one or more timers, see, ¶ [0031] and figure 5).
Li further teaches of provisioning of the eSIM downloading from the MNO provision server (the secondary mobile wireless device 102B can, at 434, continue provisioning of the eSIM 208 from the MNO provisioning server 116 to download and install the eSIM 208 on an eUICC 108 of the secondary mobile wireless device 102B. The secondary mobile wireless device 102B can provide an indication upon completion of the eSIM provisioning to the MNO provisioning server 116, which can cause the MNO provisioning server 116 to send an ES12 delete event message 436 to the eSIM discovery server 306 to indicate that successful provisioning and installation of the eSIM 208 to the secondary mobile wireless device 102B has occurred, see, ¶ [0029] and figure 4).
Li teaches the monitor mode for initial activation of an eSIM as presented above not for downloading eSIM.
Chauhan teaches a download management based on a retry configuration as follows:
At Block 810, the download manager 702 determines whether a positive or negative response is received (equivalent to applicant’s entering eSIM monitoring mode)… If the attempt is unsuccessful (i.e., “no” at Block 810), then the response triggers the download manager to begin the RAB process. Thus, at Block 816, the download manager stops polling the RBJIT 128 for the time set in the retry configuration (see, ¶ [0114]-[0115] and figure 8);
at Block 818, the download manager determines whether a retry is permitted by the retry configuration. If so, and assuming that the interval has expired, the process returns to Block 810 and the download manager polls the RBJIT 128 again. If a positive response is received this time at Block 810, then the download manager is connected to the download server 712 at Block 812 and the asset is downloaded at Block 814. However, if a negative response is received, then the process 900 continues at Block 816 and the download manager 702 begins another retry interval (see, ¶ [0116] and figure 8);
at the expiration of the interval, at Block 818, the download manager 702 determines whether another retry is possible according to the retry configuration. If so, then the process 800 returns to Block 810 as before. However, if the retry configuration prohibits further attempts, then the process 800 moves to Block 820 and ends (see, ¶ [0107] and figure 8); and
the retry configuration may specify that the download manager 702 wait a predetermined amount of time (e.g. predetermined backoff time) before re-polling the RBJIT 128 after a failed download attempt (see, ¶ [0105] and figure 7).
Chauhan teaches managing asset download in the user device based on the retry configuration with predetermined backoff time.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li with Chauhan to include the method of managing download based on predetermined backoff time as taught by Chauhan in order to efficiently download eSIM profile from a server.
Regarding claims 2, 10, and 22, Chauhan teaches as follows:
Wherein the server polling criterion is further satisfied based on receipt of a push notification message from a manufacturer-managed, network- based server, the push notification message indicating the eSIM is available to download to the wireless device (at Block 902, the scheduling manager 706 sends a notification to the download manager 702 that a downloadable asset is available, see, ¶ [0119] and figure 9).
Therefore, they are rejected for similar reason as presented above.
Regarding claims 3 and 11, Li teaches as follows:
Wherein the wireless device is further configured to download and install the eSIM from the MNO provisioning server when the eSIM installation response indicates the eSIM is available for download (the secondary mobile wireless device 102B can, at 434, continue provisioning of the eSIM 208 from the MNO provisioning server 116 to download and install the eSIM 208 on an eUICC 108 of the secondary mobile wireless device 102B, see, ¶ [0029] and figure 4).
Regarding claims 4, 12, and 23, Chauhan teaches as follows:
If the download server infrastructure is not sufficient to handle the simultaneous demands of the client devices, the download server infrastructure may crash, which is inconvenient to the user, ties up device resources, and may lead to a corresponding pause or failure of the application of concern due to likely temporary API errors (equivalent to applicant’s software failure)(see, ¶ [0101]); and
at Block 818, the download manager 702 determines whether a retry is permitted by the retry configuration. If so, and assuming that the interval has expired, the process returns to Block 810 and the download manager 702 polls the RBJIT 128 again (see, ¶ [0116] and figure 8)(equivalent to applicant’s restarting downloading).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li with Chauhan to include restarting download after a predetermined backoff time as taught by Chauhan in order to minimize number of failed downloads due to the software failure.
Regarding claims 5, 13, and 24, Li teaches as follows:
Wherein the wireless device is further configured to display an error notification message directing a user to contact the MNO associated with the eSIM when the threshold number of back-off retries is satisfied before the eSIM is installed (when the secondary mobile wireless device 102B has re-attempted attachment to the cellular wireless network of the MNO 114 multiple times, and a maximum number of retry attempts is reached, at 508, the secondary mobile wireless device 102B, at 510, exits the monitor mode with a failure indication. In some embodiments, the secondary mobile wireless device 102B provides an indication of attachment success and/or the attachment failure, such as via a display of the secondary mobile wireless device 102B (or via a message sent to the primary mobile wireless device 102A), see, ¶ [0031] and figure 5).
Regarding claims 6, 14, and 25, Chauhan teaches as follows:
Wherein the wireless device is further configured to update a status of the eSIM to indicate activating while the eSIM installation monitor mode is running and to indicate on or active when eSIM installation and activation completes successfully (with one or more retries, a notification may be sent to the user, based on user profile settings. For example, the settings may reflect the user's preference to suppress such notifications, or to select a subset of notifications (such as success of the download), see, ¶ [0132]).
Therefore, they are rejected for similar reason as presented above.
Regarding claims 7 and 15, Li teaches as follows:
Wherein the unique identifier associated with the eSIM comprises an integrated circuit card identifier (ICCID) value (the eSIM discovery server 306 can respond to the message from the secondary mobile wireless device 102B with information regarding the reserved eSIM 208, such as a network address, e.g., a uniform resource locator (URL) name for the MNO provisioning server 116 from which to obtain the eSIM 208, and an identifier for the eSIM 208 reserved for the secondary mobile wireless device 102B, such as an integrated circuit card identifier (ICCID) value or a hashed version thereof, see, ¶ [0029] and figure 4).
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (hereinafter Li)(US 2021/0400479) in view of Chauhan et al. (hereinafter Chauhan)(US 2021/0084670), and further in view of Chaugule et al. (hereinafter Chaugule)(US 2020/0137558).
Regarding claims 8 and 16, Li in view of Chauhan teaches all limitations as presented above except for indicating the eSIM status.
Chaugule teaches as follows:
The carrier entitlement server 560, at 527, can also indicate to the target device 150 that release of the profile (eSIM) for download to the target device 150 from the SMDP+ 550 is pending and should be triggered based on receipt of a push notification from the push notification server 575 (see, ¶ [0037] and figure 5D).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li in view of Chauhan with Chaugule to include indicating status of release of eSIM profile as taught by Chaugule in order to efficiently determine whether the eSIM profile is available for downloading or not.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeong S Park whose telephone number is (571)270-1597. The examiner can normally be reached Monday through Friday 8:00-4:30 ET.
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/JEONG S PARK/Primary Examiner, Art Unit 2454
January 31, 2026