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 .
Response to Arguments
Applicant's arguments filed 4/6/2026 have been fully considered but they are not persuasive.
With respect to the amended claims, applicant argues that Velusamy fails to teach or suggest “receiving a communication from a mobile communication device; in response to receiving the communication, retrieving eSIM (embedded Subscriber Identification Module) information associated with the mobile communication device, the eSIM information supporting subsequent wireless connectivity of the mobile communication device with a network; and communicating the eSIM information to the mobile communication device, a portion of the eSIM information being a monitor application for installation on the mobile communication device in a manner as recited by the claimed invention”. Examiner respectfully traverses this argument.
Examiner first notes that Velusamy teaches authenticating with a given wireless carrier before actively communicating through it (see column 3, lines 61-63). Examiner further notes that claim 1 doesn’t specify a particular network entity performing all the recited steps, and that claim 13 only states that those steps are performed by communication management hardware comprised within a system. Therefor the entirety of the system as disclosed by Velusamy, including even hardware elements within the mobile communication devices, could map to said communication management hardware. Which entities it is in Velusamy that send the eSIM and comparison application can be considered part of said communication management hardware.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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, 6-8, 10-13, 16, 18-20, 22-23 and 25-26, 31-32 and 35-36 are rejected under 35 U.S.C. 102a1 as being anticipated by US 10,716,019 (Velusamy).
As to claims 1 and 13, Velusamy teaches a system (100, figure 1) comprising: communication management hardware (hardware in the various devices in system 100 such as those disclosed in figures 2 and 3) operative to:
receive a communication from a mobile communication device (see column 3, lines 61-63, user device authenticates with a given network);
in response to receiving the communication, retrieve subscriber information associated with the mobile communication device, the subscriber information supporting subsequent wireless connectivity of the mobile communication device with a network, the subscriber information being eSIM (embedded subscriber identification module) (see column 4, lines 2-4 and lines 50-62, UE downloads updated eSIMs and associated comparison application from network it has authenticated with); and
communicate the subscriber information to the mobile communication device, the subscriber information including a monitor application for installation on the mobile communication device (see column 4, lines 2-4 and lines 38-62, UE downloads and installs updated eSIMs and associated comparison application from network it has authenticated with).
As to claim 2, Velusamy further teaches wherein the mobile communication device is configured with an eSIM (embedded Subscriber Identification Module) device to store the eSIM information (see column 3, line 47-column 4, line 20).
As to claim 3, Velusamy further teaches wherein the monitor application is operative to monitor a state of the eSIM (embedded Subscriber Identification Module) device (see column 4, line 50-column 6, line 52).
As to claims 4 and 16, Velusamy further teaches wherein the communication management hardware is further operative to: obtain a unique identifier value from the communication, wherein the unique identifier value is a unique network address assigned to the mobile communication device; and map the unique identifier value associated with the mobile communication device to the subscriber information (see column 3, lines 61-63, user device authenticates with a given network using an IMSI).
As to claims 6 and 18, Velusamy further teaches wherein the communication management hardware is further operative to: communicate the subscriber/eSIM information over a first communication path to install the subscriber/eSIM information on the mobile communication device (see column 3, lines 61-63 and column 4, lines 2-4 and lines 50-62, user device authenticates with a given network before downloading updated eSIM and comparison application).
As to claims 7 and 19, Velusamy further teaches wherein the monitor application is executed on the mobile communication device to monitor changes to the subscriber/eSIM information stored on the mobile communication device (see column 4, line 50-column 6, line 52).
As to claims 8 and 20, Velusamy further teaches wherein the communication management hardware is further operative to: communicate over a second communication path with the executed monitor application to retrieve status information associated with the subscriber information stored on the mobile communication device, the second communication path being a bypass path with respect to the first communication path (see column 4, lines 2-4 and lines 50-column 6, line 52, the updated eSIM and comparison application downloaded from the network, results associated with the monitored activity data is communicated by the comparison application to processing entities within the user device), wherein the status information indicates an operation applied to the subscriber information by a user of the mobile communication device, the status information generated by the executed monitor application (see column 4, line 50-column 6, line 52, upon user selection to change networks, in response to the monitored activity data, the comparison application sends instruction to change baseband processor indicative of that user selection).
As to claim 10, Velusamy further teaches wherein the communicated eSIM information is installed on the mobile communication device; wherein the monitor application is executed on the mobile communication device, the method further comprising: in response to receiving status information from the monitor application executed on the mobile communication device, communicating a message to a user of the mobile communication device, the status information indicating a status of the eSIM information installed on the mobile communication device (see column 4, line 38-column 6, line 52, in response to the monitored activity data, the comparison application sends instruction to processing elements inside user device to display recommendation based on that monitored activity data).
As to claim 11, Velusamy further teaches wherein the executed monitor application is supplemental with respect to a SIM (Subscriber Identification Module) management application installed on the mobile communication device, the monitor application operative to monitor the status of the eSIM information installed on the mobile communication device and provide notification of the status over a primary wireless connection (see column 3, lines 47-column 4, line 62 and column 12, lines 23-41, comparison application is supplemental to the software managing the eSIM and may send monitored call log information to a network comparison engine on the network side over a wireless connection).
As to claim 12, Velusamy further teaches wherein the monitor application is executed by the mobile communication device based on the communicated eSIM information, the method further comprising: from the executed monitor application, receiving location information indicating a location of the mobile communication device, the location information generated by the monitor application executed on the mobile communication device. (see column 6, lines 18-40 and column 11, lines 48-59, comparison app sends request indicating location to element 300/124 so that it may receive location based information such as KPIs and recommendations).
As to claim 22, Velusamy further teaches wherein the monitor application is executed on the mobile communication device; wherein the communication management hardware is further operative to: in response to receiving status information from the monitor application executed on the mobile communication device, communicate a message to a user of the mobile communication device (see column 4, line 50-column 6, line 52, in response to the monitored activity data, the comparison application sends instruction to processing elements inside user device to display recommendation based on that monitored activity data).
As to claim 23, Velusamy further teaches wherein the executed monitor application is supplemental with respect to a SIM (Subscriber Identification Module) management application installed on the mobile communication device, the monitor application operative to monitor a status of the subscriber information and provide notification of the status over a primary wireless connection (see column 3, lines 47-column 4, line 62 and column 12, lines 23-41, comparison application is supplemental to the software managing the eSIM and may send monitored call log information to a network comparison engine on the network side over a wireless connection).
As to claim 25, Velusamy further teaches wherein the mobile communication device is operative to: i) retrieve the monitor application from the eSIM information, ii) install the monitor application on the mobile communication device, iii) via execution of the monitor application, monitor a status of the eSIM information (see column 4, lines 2-4 and lines 38-62, UE downloads and installs updated eSIMs and associated comparison application from network it has authenticated with); and iv) communicate the status of the eSIM information over the network to a remote communication management resource (see column 11, line 16-column 12, line 42, various information associated with the eSIMs sent by comparison application to remote element 300/124).
As to claim 26, Velusamy further teaches wherein the status indicates an operation applied by a user of the mobile communication device to the eSIM information (see column 4, line 50-column 6, line 52, upon user selection to change networks, in response to the monitored activity data, the comparison application sends instruction to change baseband processor indicative of that user selection).
As to claim 31, Velusamy further teaches wherein the mobile communication device is operative to download the monitor application to programmable hardware on the mobile communication device (see column 4, lines 2-4 and lines 38-62, UE downloads and installs updated eSIMs and associated comparison application from network it has authenticated with), the monitor application executed by the mobile communication device, the method further comprising: receiving status information generated by the monitor application executed on the mobile communication device, the status information indicating a location of the mobile communication device; and in response to receiving the status information indicating the location: i) generating a notification based on the location of the mobile communication device, and ii) transmitting the notification to the mobile communication device for display on a display screen of the mobile communication device (see column 5, lines 2-9 and column 6, lines 18-52 and column 11, line 16-column 12, line 42, location based information sent by comparison app to remote element 300/124, which in turns sends information to comparison app that may be displayed on user device).
As to claim 32, Velusamy further teaches wherein the mobile communication device includes an eSIM device, the eSIM device operative to install the eSIM information including the monitor application on the mobile communication device (see column 3, line 47-column 4, line 62).
As to claim 35, Velusamy further teaches wherein the mobile communication device is operative to execute the monitor application, the method further comprising: receiving status information from the monitor application executed on the mobile communication device, the status information indicating a location of the mobile communication device (see column 6, lines 18-40 and column 11, lines 48-59, comparison app sends request indicating location to element 300/124 so that it may receive location based information such as KPIs and recommendations).
As to claim 36, Velusamy further teaches where the mobile communication device is operative execute the monitor application, the method further comprising: communicating a message to the monitor application executed on the mobile communication device, the message including a notification for display on the display screen of the mobile communication device (see column 5, lines 2-9 and column 6, lines 18-52 and column 11, line 16-column 12, line 42, information sent by comparison app to remote element 300/124, which in turns sends information to comparison app that may be displayed on user device).
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.
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 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Velusamy in view of Well Known Prior Art (Official Notice).
As to claim 27, Velusamy further teaches wherein the communication management hardware disparately located with respect to the mobile communication device, the method further comprising: receiving a communication from the mobile communication device over a primary wireless connection from the mobile communication device (see column 11, line 16-column 12, line 42, various information associated with the eSIMs sent by comparison application to remote element 300/124).
What is lacking from Velusamy is wherein the monitor application is configured to include a network address assigned to communication management hardware disparately located with respect to the mobile communication device, the communication including the network address assigned to the communication management hardware.
Examiner takes Official Notice that it was well known in the arts for a disparately located network element to have an assigned network address that is sent in communications intended for said network element.
It would have been obvious before the effective filing date of the claimed invention to apply this teaching to Velusamy so as to ensure that information intended for the communication management hardware reaches the correct destination.
As to claim 28, Velusamy further teaches wherein the mobile communication device is operative to install the eSIM information including the monitor application on the mobile communication device and execute the monitor application to produce first status information indicating a first status of the eSIM information installed on the mobile communication device; and wherein the communication received over the primary wireless connection includes the first status information (see column 4, lines 2-4 and lines 38-62, UE downloads and installs updated eSIMs and associated comparison application from network it has authenticated with, and see column 11, line 16-column 12, line 42, various information associated with the eSIMs sent by comparison application to remote element 300/124).
Claims 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Velusamy in view US 2023/0074288 (Filippou et al.).
As to claim 33, Velusamy further teaches wherein the mobile communication device is operative to install the eSIM information on the mobile communication device and execute the monitor application, the method further comprising: in response to communicating the eSIM information to the mobile communication device, receiving a notification of an event detected by the monitor application executed by the mobile communication device (see column 4, line 38-column 6, line 52 and column 11, line 16-column 12, line 42, upon user selection to change networks, in response to the monitored activity data, various information related to events associated with the eSIMs sent by comparison application to baseband processor 108/110 and remote element 300/124).
What is explicitly lacking from Velusamy is the notification of the event including a timestamp indicating a time at which the event occurred.
In analogous art, Filippou teaches software in a mobile device timestamping diagnostic information (see Filippou, paragraph 81).
It would have been obvious before the effective filing date of the claimed invention to apply this teaching to Velusamy so as to provide better context to the eSIM related data.
As to claim 34, Velusamy further teaches wherein the event is a modification of the eSIM information installed on the mobile communication device (see column 4, line 38-column 6, line 52 and column 11, line 16-column 12, line 42, upon user selection to change networks, in response to the monitored activity data, various information related to events associated with the eSIMs, including changes to the operation of eSIMs, sent by comparison application to baseband processor 108/110 and remote element 300/124).
Allowable Subject Matter
Claims 29-30 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MAZDA SABOURI whose telephone number is (571)272-8892. The examiner can normally be reached 10 am-7 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, Charles Appiah can be reached at 571-272-7904. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAZDA SABOURI/Primary Examiner, Art Unit 2641
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