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 .
DETAILED ACTION
Applicant’s amendment filed on 01/12/2026 has been entered. Applicant has amended claims 1, 3, 10, 12 and 19. Currently claims 1-20 are pending in this application.
Response to Arguments
Applicant’s arguments, see pages 9-11, filed 01/12/2026, with respect to 35 U.S.C. 103 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of claims 1-20 has been withdrawn. Examiner has also withdrawn the non-statutory double patenting rejection in view of additional limitations introduced in the amendments filed on 01/12/2026. However, applicant should note that the amendments have necessitated a new ground of rejection under 35 U.S.C. 112(a).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Please note that applicant has amended claim 1 to recite, “performing a verification of the signed version of the device DLOA, including determining, based on device information corresponding to the signed device DLOA, a compliance level of the device with respect to one or more remote subscriber identity module (SIM) provisioning (RSP) requirements for the application; when the verification indicates that the signed version of the device DLOA was signed with a key of an embedded universal integrated circuit card (eUICC) included in the device and that the compliance level of the device meets the one or more RSP requirements for the application: proceeding with provisioning of the application from the SM server to the eUICC or to the device; and when the verification indicates that the signed version of the device DLOA was not signed with a key of the eUICC or that the compliance level of the device does not meet the one or more RSP requirements for the application: not proceeding with provisioning of the application from the SM server to the eUICC”. Claims 10 and 19 requires similar amendments.
Amended claim now requires verification of the singed version of the device DLOA to include determining the compliance level with respect to RSP requirements and provisioning of the application requires both verification of the signature as well as the compliance level check and when the verification of the signature fails or the compliance level check fails, the system refuse the provisioning of the application.
Applicant should note that while specification provide a provision for RSP compliance check throughout the specification, there are two separate embodiments disclosed in the specification. In the first embodiment, system determines if the DLOA is linked to an EUICC known to be included in the device by using a database as depicted in Figs. 3, 5 and 6 and disclosed at paragraphs 0033-0035 and 0042 and 0043. In the second embodiment, signature verification is performed on the DLOA and provisioning or non-provisioning of the application is only dependent on the verification of the signature and is not relied upon to check the compliance level as depicted by Fig. 7A and described in Paragraph 0044. As a result, examiner is unable to find support for a single embodiment which recites, “performing a verification of the signed version of the device DLOA, including determining, based on device information corresponding to the signed device DLOA, a compliance level of the device with respect to one or more remote subscriber identity module (SIM) provisioning (RSP) requirements for the application; when the verification indicates that the signed version of the device DLOA was signed with a key of an embedded universal integrated circuit card (eUICC) included in the device and that the compliance level of the device meets the one or more RSP requirements for the application: proceeding with provisioning of the application from the SM server to the eUICC or to the device; and when the verification indicates that the signed version of the device DLOA was not signed with a key of the eUICC or that the compliance level of the device does not meet the one or more RSP requirements for the application: not proceeding with provisioning of the application from the SM server to the eUICC”, as required by claims 1 and similarly by claims 10 and 19. Furthermore, claims 3 and 12 further limit the RSP requirements and since the disclosure fails RSP compliance check with the signature validation, further limiting RSP is also not supported by the embodiment that validates DLOA signature prior to provisioning the application to the eUICC.
Correction/Clarification is required.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action.
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 YOGESH PALIWAL whose telephone number is (571)270-1807. The examiner can normally be reached M-F 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at (571)270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOGESH PALIWAL/Primary Examiner, Art Unit 2435