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 Amendment:
The amendment filed March 11, 2026 has been entered. Claims 1-20 remain pending in the application. Applicant’s amendment to claim 7 overcomes the 112(b) rejection previously set forth in the Non-Final Office Action mailed on December 23, 2025. Regarding claim interpretation the Examiner acknowledges the distinction between "upgrade data" (claim 1) and "purchase order" (claim 8) in reference to the triggering event/data initiating the provisioning process (in this case being the trigger indication of upgraded model device purchase) as opposed to the "subscription data" in reference to the MSISDN and authentication credentials content being transferred between devices.
Response to Arguments:
Applicant’s arguments, see pages 13-16, filed March 10, 2026, with respect to the rejection(s) of claims 1-20 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chaugule’761.
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.
Claims 1-3, 6-9, 10-11, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 10966080 B1 and Chen hereinafter) in view of Uehling (US 11146948 B1 and Uehling hereinafter) and in view of Li et al. (US 12003969 B2 and Li hereinafter) and further in view of Chaugule (US 20230020761 A1 and Chaugule’761 hereinafter).
Regarding Claim 1, Chen discloses a method performed by a core network to automatically transfer a subscription to a next user equipment (UE) (Col. 10, lns. 48-51, “UE 210 includes one or more devices capable of receiving, storing, generating, processing, and/or providing information associated with activating and/or configuring an embedded SIM (eSIM)…”) (Col. 2, lns. 20-25, “from the carrier platform, an activation response that includes an activation code that may be used to activate the eSIM of the UE. The activation code may include the eSIM profile identifier and location information that is to be used to identify the eSIM profile configuration data.”) using an electronic subscriber identity module (eSIM) profile, comprising:
receiving, by a billing system of the core network, upgrade data describing the next UE (Col. 4, lns. 56-59, “carrier platform 104 may provide billing server 106 with an account information request that includes the account identifier of the user (and/or any other authentication information that may be needed)”) associated with a line of service in a subscription account of a subscriber (Col. 4, lns. 40-41, “may obtain, from billing server 106, the account information for the account that the user has with the service provider” and Col. 11, lns. 22-26“billing server 220 may receive new account information for the account of the user. In some implementations, billing server 220 may have access to a data structure that is used to store account information for the account of the user.”),
wherein the upgrade data comprises an electronic identifier (eID) identifying an embedded universal integrated circuit card (eUICC) in the next UE and an identifier of the next UE (Col. 5, lns. 11-12, “eSIM may include an embedded universal integrated circuit card (EUICC)” and Col. 8, lns. 9-12,“where the eSIM profile identifier is…an eUICCID (shown as eID) may be used as the eSIM component identifier to identify the eSIM of UE 102”);
obtaining, by a provisioning application of a remote subscriber identity module (SIM) provisioning (RSP) system of the core network from a data store in the core network, subscription data associated with at least one of the line of service or the subscription account in response to receiving an indication of the upgrade data from the billing system (Col. 7, lns. 20-23,”RSP platform 112 may process the account information to obtain and/or identify services package data for the services package that may be used as part of the eSIM profile configuration file.” And Col. 11, lns. 27-28, ”billing server 220 may provide the account information”),
wherein the first UE comprises a first eSIM profile storing the subscription data (Col. 1, lns. 8-10, “subscriber identity module (SIM) card is an integrated circuit that is capable of securely storing an international mobile subscriber identity (IMSI) and a related key.” and Col. 3, lns. 60-61, “a device information application that stores the device information locally on UE 102”);
reserving, by the provisioning application of the RSP system, the eSIM profile for the next UE in association with the line of service, wherein the eSIM profile also comprises the subscription data (Col. 2, lns. 31-33, ”data structure associated with the RSP platform may store the eSIM profile configuration data,” and Col. 6, lns. 47-50, “carrier platform 104 may provide, to RSP platform 112, a set of instructions to cause RSP platform 112 to perform one or more actions to make eSIM profile configuration data available to UE 102.”);
Chen does not explicitly disclose
wherein the subscription data comprises a mobile station integrated services digital network (MSISDN) of a first UE associated with the line of service and network credentials used to authenticate the first UE to a carrier network associated with the core network;
However in a similar field of endeavor Uehling teaches
wherein the subscription data comprises a mobile station integrated services digital network (MSISDN) of a first UE associated with the line of service and network credentials used to authenticate the first UE to a carrier network associated with the core network (Col. 6, lns. 56-60 “a set of eSIM credentials 112, 132 comprises one or more of a universal integrated circuit card identity (UICCID), an international mobile subscriber identity (IMSI), mobile station integrated service digital network identity (MSISDN), and/or mobile dialing number (MDN).”).
Therefore, it would have been obvious to combine the subscription data of Chen with the credentials used to authenticate as suggested by Uehling. The motivation would be “to authenticate into a RAN and to receive cellular wireless communication service from the cell site 140 and/or other cell sites. Part of the authentication process comprises the UEs 102, 122 providing at least some of the eSIM credentials”, Uehling Col. 6, lns. 51-55.
Chen in view of Uehling, hereinafter Chen-Uehling, does not explicitly disclose
transmitting, by the provisioning application of the RSP system, the eSIM profile to the next UE while the first UE is still activated in association with the line of service; and
receiving, by the provisioning application of the RSP system from the next UE, a notification that downloading or installing of eSIM profile to the next UE is incomplete or failed,
wherein the first UE remains activated in association with the line of service using the first eSIM profile.
However in a similar field of endeavor Li teaches
transmitting, by the provisioning application of the RSP system, the eSIM profile to the next UE while the first UE is still activated in association with the line of service (Col. 9, lns. 25-36 “At 436, the primary mobile wireless device 102A sends a message to the secondary mobile wireless device 102B, via the wireless connection 310, the message notifying the secondary mobile wireless device 102B about the reserved eSIM 208 to cause the secondary mobile wireless device 102B to fetch the eSIM 208 from the MNO provisioning server 116. Responsive to receipt of the message to initiate eSIM provisioning, the secondary mobile wireless device 102B, at 438, establishes a secure connection to the MNO provisioning server 116 and downloads and installs the eSIM 208 from the MNO provisioning server 116”); and
receiving, by the provisioning application of the RSP system from the next UE, a notification that downloading or installing of eSIM profile to the next UE is incomplete or failed (Col. 9, lns. 13-16 and lns. 47-54, “a check SIM status message (being the recited notification), to the MNO entitlement server 306 to obtain information about the eSIM 208 reserved for the secondary mobile wireless device…when checks do not succeed(incomplete or failed), the MNO infrastructure servers 308 provide a message about the check failure to the push notification server 304, which provides a push notification to the primary mobile wireless device 102A indicating the check failure. The primary mobile wireless device 102A can provide an error indication, e.g., an update to a user interface display and/or a pop-up notification message indicating the check failure.”),
wherein the first UE remains activated in association with the line of service using the first eSIM profile (Col.4, lns. 40-43 “primary mobile wireless device and the secondary mobile wireless device can continue to be used for other activities while the MNO processes the subscription information.” and Col. 9 lns. 61-64, ”a primary mobile wireless device 102A for a portion of a cellular wireless service subscription process to provision an eSIM 208 with delayed delivery to a secondary mobile wireless device 102B.” and Col. 10, lns. 61-67 – Col. 11, lns. 1-3, “At 612, the primary mobile wireless device 102A can initiate a background monitoring process to check for a push notification message regarding status of the subscription information checking. While the cellular wireless service subscription process is paused, a user of the primary mobile wireless device 102A and a user of the secondary mobile wireless device 102B can continue to use their respective mobile wireless devices 102A, 102B for other tasks while awaiting the pending subscription information checking to complete.”).
Therefore, it would’ve been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling with transmitting the eSIM profile to the next UE and notification of download failure to next UE causing the first UE to remain activated as suggested by Li. The motivation being the primary mobile wireless device 102A provides an indication, e.g., via updating a user interface display and/or with a pop-up notification message, that cellular wireless service for the secondary mobile wireless device 102B has completed successfully and is ready for use…pop-up notification message indicating the check failure”, see Li Col. 9, lns. 41-46 and ln. 54).
Chen-Uehling in view of Li, hereinafter Chen-Uehling-Li do not explicitly teach
deactivating, by the billing system, the first eSIM profile at the first UE after the provisioning application receives a confirmation notification that the eSIM profile has been successfully activated at the next UE, wherein deactivation of the first UE is prevented until the confirmation notification is received.
However in a similar field of endeavor Chaugule’761 suggests
deactivating, by the billing system, the first eSIM profile at the first UE after the provisioning application receives a confirmation notification that the eSIM profile has been successfully activated at the next UE (“At 632, the mobile wireless device 102 downloads from the MNO provisioning server 116 to the eUICC 108 of the mobile wireless device 102 one or more eSIMs 208 reserved for the mobile wireless device 102 previously. At 634, the mobile wireless device 102 provides an acknowledgment receipt indicating successful installation of the eSIM(s) 208 on the eUICC 108 of the mobile wireless device 102.”[0041] FIG 4, elements 486 and 488 and FIG 6B elements 632 and 634), wherein deactivation of the first UE is prevented until the confirmation notification is received (“At 644, the MNO infrastructure server(s) 438 complete activation of the new eSIM 208 and deactivation of the previous SIM/eSIM 208 propagating the activation through applicable entities of the MNO cellular wireless network 602. After completion of the eSIM 208 activation, the MNO infrastructure server 438 provides a response to the device manufacturer MNO services server 436 to indicate cellular wireless service subscription for the eSIM 208 has been successfully completed. ”[0041] FIG 4, elements 486 and 488 and FIG 6, element 644).
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Chen-Uehling-Li with the method suggested by Chaugule’761. The motivation would be for provisioning and activating electronic subscriber identity modules (eSIMs) for mobile wireless devices, see Chaugule’761 at [0002].
Regarding Claim 2, Chen-Uehling-Li in view of Chaugule’761, hereinafter Chen-Uehling-Li-Chaugule’761, teaches the method of claim 1, as discussed above. Further Chen discloses
wherein the first eSIM profile is stored in an eUICC of the first UE (Col. 5, lns. 11-12 “The eSIM may include an embedded universal integrated circuit card (EUICC)”).
Regarding Claim 3, Chen-Uehling-Li-Chaugule’761 teaches the method of claim 1, as discussed above. Further Chen discloses
transmitting, by the billing system to the RSP system, the indication of the upgrade data prior to reserving the eSIM profile for the next UE in association with the line of service (Col. 4, lns. 40-44 “obtain, from billing server 106, the account information for the account that the user has with the service provider. For example, carrier platform 104 may obtain the account information that may be used to configure the eSIM” and Col. 7, lns.20-23 and lns. 32-33 “RSP platform 112 may process the account information to obtain and/or identify services package data for the services package that may be used as part of the eSIM profile configuration file… RSP platform 112 may obtain services package data…”),
wherein the indication of the upgrade data comprises at least one of an identification of the subscription account (Col. 4, lns. 31-34 “account information, such as login information, address information, billing information, user preferences information, and/or the like”),
an identification of the line of service (Col. 4, lns. 42-45 “account information that may be used to configure the eSIM in a manner that provides UE 102 with access to a services package that is linked to the account of the user”),
the eID identifying the eUICC of the next UE (Col. 8, lns. 28-29 “UE 102 may provide RSP platform 112 with a configuration request that includes an eICCID (shown as eID).”), or
an international mobile equipment identity (IMEI) identifying the next UE (Col. 10, lns. 31-35 “unique device identifier may include an international mobile equipment identity (IMEI) and/or any other identifier capable of uniquely identifying UE 102.”).
Regarding Claim 6, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 1, as discussed above. Further Li discloses
detecting, by a client application of the next UE, that downloading or installation of the eSIM profile at the next UE has failed, resulting in an inability to download the eSIM profile at the next UE (Col . 9, lns. 14-16 and lns. 47-51 “a check SIM status message (being the recited notification), to the MNO entitlement server 306 to obtain information about the eSIM 208 reserved for the secondary mobile wireless device…when checks do not succeed(incomplete or failed), the MNO infrastructure servers 308 provide a message about the check failure to the push notification server 304, which provides a push notification to the primary mobile wireless device 102A indicating the check failure.”); and
displaying, by the client application, a notification at the next UE indicating that the eSIM profile was not able to be downloaded (Col. 9, lns. 51-54 “The primary mobile wireless device 102A can provide an error indication, e.g., an update to a user interface display and/or a pop-up notification message indicating the check failure.”).
Regarding Claim 7, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 1, as discussed above. Further Uehling suggests
wherein the next UE is an upgraded model of the first UE. (Col. 6, lns. 23-26 “the source UE 102 may be an older model phone and the destination UE 122 may a newer model of phone the user has received as part of an upgrade cycle.”).
Regarding Claim 8, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 1 in system form rather than method form. Chen also discloses systems (Col. 19, lns. 42-44 “it being understood that software and hardware can be used to implement the systems and/or methods based on the description herein.”) Therefore, the rejection of claim 1 applies equally as well to the limitations of claim 8. Further Chen teaches a communication system, comprising:
an activation application, stored in a first non-transitory memory associated with a billing system, which when executed by a first processor(Col. 15, lns. 2-4 “Device 300 may perform these processes based on processor 320 executing software instructions stored by a non-transitory computer-readable medium, such as memory 330 and/or storage component 340”),receive a confirmation from the next UE indicating that the eSIM profile has been successfully activated at the next UE (“At 634, the mobile wireless device 102 (i.e. next UE) provides an acknowledgment receipt (i.e. confirmation) indicating successful installation of the eSIM(s) 208 on the eUICC 108 of the mobile wireless device 102.”[0041] FIG 4, elements 486 and 488 and FIG 6B elements 632 and 634); and
transmit a message to the billing system indicating that the eSIM profile is has been activated at the next UE and that the first eSIM profile is authorized for deactivation at the first UE, wherein the activation application further causes the first processor of the billing system to be configured to deactivate the first eSIM profile at the first UE only after receiving the message indicating successful activation at the next UE (“At 644, the MNO infrastructure server(s) 438 complete activation of the new eSIM 208 and deactivation of the previous SIM/eSIM 208 propagating the activation through applicable entities of the MNO cellular wireless network 602. After completion of the eSIM 208 activation, the MNO infrastructure server 438 provides a response to the device manufacturer MNO services server 436 to indicate cellular wireless service subscription for the eSIM 208 has been successfully completed. ”[0041] FIG 4, elements 486 and 488 and FIG 6, element 644).
Regarding Claims 9 and 16, Chen-Uehling-Li-Chaugule’761 teaches the communication system of claims 8 and 15, respectively, as discussed above.
Further Chaugule’761 suggests
wherein the activation application further causes the first processor of the billing system to be configured to:
activate the eSIM profile at the next UE in association with the line of service (FIG 4 element 486); and
deactivate the first eSIM profile at the first UE (FIG 4 element 488).
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Chen-Uehling-Li with the method suggested by Chaugule’761. The motivation would be for provisioning and activating electronic subscriber identity modules (eSIMs) for mobile wireless devices, see Chaugule’761 at [0002].
Regarding Claim 10 and Claim 17, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claims 8 and 15 respectively, as discussed herein. Further Chen teaches
wherein the first eSIM profile comprises a first integrated circuit card identification (ICCID) (Col. 8, lns. 9-10 “the eSIM profile identifier is an ICCID that identifies the eSIM profile”, Col. 18, lns. 43-47 and Fig. 1E element 144, which describes “Identify unique device identifier of UE 102 based on eSIM component identifier”), and
Li teaches wherein the eSIM profile comprises a second ICCID different from the first ICCID Col. 9, lns. 23-25 “an identifier for the eSIM 208 reserved for the secondary mobile wireless device 102B, such as an integrated circuit card identifier (ICCID) (where the reserved ICCID is specifically for the next UE” and Col. 8, lns. 61-63 “a cellular wireless service account is established for the secondary mobile wireless device 102B, and the cellular wireless service account is bound to a separate cellular wireless service account maintained for the primary mobile wireless device 102A” and “RSP platform 112 may use the eSIM profile identifier (e.g., the ICCID) to identify the eSIM profile configuration data”, Chen Col. 8, lns. 33-35 .
Regarding Claim 11, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claims 10, as discussed above. Further Chen teaches
wherein the provisioning application further causes the second processor of the RSP system to be configured to transmit, in the message, the second ICCID to the billing system (Col. 17, lns. 30-32 “receiving (“transmitting”), from the second server device (RSP system), a configuration response (“message”) that includes the eSIM profile configuration data” (Fig. 4 block 450) (where the eSIM profile is the recited ICCID)).
Regarding Claim 15, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 1. Therefore, the rejection of claim 1 applies equally as well to the limitations of claim 15.
Further Chen teaches
receiving, by the provisioning application of the RSP system from the next UE, a confirmation indicating that the eSIM profile has been successfully activated at the next UE (“At 632, the mobile wireless device 102 downloads from the MNO provisioning server 116 to the eUICC 108 of the mobile wireless device 102 one or more eSIMs 208 reserved for the mobile wireless device 102 previously. At 634, the mobile wireless device 102 provides an acknowledgment receipt indicating successful installation of the eSIM(s) 208 on the eUICC 108 of the mobile wireless device 102.”[0041] FIG 4, elements 486 and 488 and FIG 6B elements 632 and 634); and
transmitting, by the provisioning application of the RSP system to the billing system, a message indicating that the eSIM profile is ready for activation at the next UE while the first eSIM profile is ready for deactivation at the first UE (“At 644, the MNO infrastructure server(s) 438 complete activation of the new eSIM 208 and deactivation of the previous SIM/eSIM 208 propagating the activation through applicable entities of the MNO cellular wireless network 602. After completion of the eSIM 208 activation, the MNO infrastructure server 438 provides a response to the device manufacturer MNO services server 436 to indicate cellular wireless service subscription for the eSIM 208 has been successfully completed. ”[0041] FIG 4, elements 486 and 488 and FIG 6, element 644).
Regarding Claim 18, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claims 17, as discussed above. Further Chen teaches
wherein the message further comprises the second ICCID ( Col. 17, lns. 30-32 “receiving (“transmitting”), from the second server device (RSP system), a configuration response (“message”) that includes the eSIM profile configuration data” (Fig. 4 block 450) (where the eSIM profile is the recited ICCID)).
Claims 4-5, 12-14, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen-Uehling-Li-Chaugule’761 as disclosed in claims 1, 8 and 15 and further in view of Chaugule (US 20240406709 A1 and Chaugule’709 hereinafter).
Regarding Claim 4, Chen-Uehling-Li-Chaugule’761 and further in view of Chaugule’709, hereinafter Chen-Uehling-Li-Chaugule’761-Chaugule’709, teaches all the limitations of claims 1, as discussed above.
However, Chen-Uehling-Li-Chaugule’761 does not explicitly disclose
displaying, by a client application of the next UE, a notification that downloading the eSIM profile at the next UE triggers deactivation of the line of service at the first UE.
In a similar field of endeavor, Chaugule’709 teaches
displaying, by a client application of the next UE, a notification that downloading the eSIM profile at the next UE triggers deactivation of the line of service at the first UE (“from a target UE, a delete plan request to delete an embedded subscriber identity module (eSIM) profile” and [0006] “(eSIM) profile installed on the source UE, receiving, from a target UE, a request to install the eSIM on the target UE, sending, to the source UE, a push notification indicating the source UE is to delete the eSIM profile”[0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling-Li-Chaugule’761, with the notification suggested by Chaugule’709. The motivation would be “sending an indication that the eSIM profile has been deleted from the source UE.” See Chaugule’709 at [0005-6].
Regarding Claim 5, Chen-Uehling-Li-Chaugule’761-Chaugule’709 teaches all the limitations of claims 4, as discussed above. Further Chaugule’709 teaches
receiving, by the client application, a selection indicating to proceed with downloading the eSIM profile at the next UE to trigger deactivation of the first UE in association with the line of service (“receiving, from the SM-DP+, a response (selection) indicating the eSIM profile is to be transferred to the target UE…sending, to the target UE, a response to the request to install the eSIM on the target UE” and [0098] “the UE 110 transmits a delete notification to the SM-DP+ 602. In 638, the SM-DP+(subscription manager-data preparation+) 602 updates the Profile1 state from installed to available. The eSIM Profile1 is now available for a future user.”[0006])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling-Li-Chaugule’761, with the selection (response) suggested by Chaugule’709. The motivation would be “to retrieve the eSIM profile.” See Chaugule’709 at [0007].
Regarding Claim 12, Chen-Uehling-Li-Chaugule’761-Chaugule’709 teaches all the limitations of claim 8, as discussed above.
Further Li teaches
wherein a client application stored in a third non-transitory memory associated with the next UE (“See Fig. 2 and 3 (element 102B), Col. 6, lns. 31-34 “the processor(s) 104, in conjunction with memory 106, can implement a main operating system (OS) 202 that is configured to execute applications” and Col. 15, lns. 52-56, “The non-transitory computer readable medium is any data storage device that can store data which can thereafter be read by a computer system. Examples of the non-transitory computer readable medium include read-only memory…”),
Chen teaches
which when executed by a third processor (Chen Col. 14, lns. 17-25 “Processor 320 is implemented in hardware, firmware, and/or a combination of hardware and software. Processor 320 includes a central processing unit (CPU), a graphics processing unit (GPU), an accelerated processing unit (APU), a microprocessor, a microcontroller, a digital signal processor (DSP), a field-programmable gate array (FPGA), an application-specific integrated circuit (ASIC), and/or another type of processing component. In some implementations, processor 320 includes one or more processors capable of being programmed to perform a function.”).
However, Chen-Uehling-Li-Chaugule’761 does not explicitly disclose
causes the third processor to be configured to display a notification that downloading the eSIM profile at the next UE triggers deactivation of the first UE in association with the line of service.
Chaugule’709 teaches
causes the third processor to be configured to display a notification that downloading the eSIM profile at the next UE triggers deactivation of the first UE in association with the line of service ([0005] “from a target UE, a delete plan request to delete an embedded subscriber identity module (eSIM) profile” and [0006] “(eSIM) profile installed on the source UE, receiving, from a target UE, a request to install the eSIM on the target UE, sending, to the source UE, a push notification indicating the source UE is to delete the eSIM profile”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling-Li-Chaugule’761, with the notification suggested by Chaugule’709. The motivation would be “sending an indication that the eSIM profile has been deleted from the source UE.” See Chaugule’709 at [0005-6].
Regarding Claim 13, Chen-Uehling-Li-Chaugule’761-Chaugule’709 teaches all the limitations of claim 12, as discussed above. Further Chen teaches
the communication system of claim 12, wherein the client application further causes the third processor (Chen Col. 14, lns. 25-27 “processor 320 includes one or more processors capable of being programmed to perform a function.”)
Chaugule’709 teaches
of the next UE to be configured to receive a selection indicating to proceed with downloading the eSIM profile at the next UE and deactivating the line of service at the first UE (“receiving, from the SM-DP+, a response (selection) indicating the eSIM profile is to be transferred to the target UE…sending, to the target UE, a response to the request to install the eSIM on the target UE” and [0098] “the UE 110 transmits a delete notification to the SM-DP+ 602. In 638, the SM-DP+(subscription manager-data preparation+) 602 updates the Profile1 state from installed to available. The eSIM Profile1 is now available for a future user.” [0006]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling-Li-Chaugule’761, with the selection (response) suggested by Chaugule’709. The motivation would be “to retrieve the eSIM profile.” See Chaugule’709 at [0007].
Regarding Claim 14, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 8, as discussed above.
Chen-Uehling-Li-Chaugule’761 does not explicitly disclose
wherein the first eSIM profile remains activated at the first UE until the billing system receives the message indicating that the first eSIM profile is ready for deactivation at the first UE.
In a similar field of endeavor, Chaugule’709 teaches
wherein the first eSIM profile remains activated at the first UE until the billing system receives the message indicating that the first eSIM profile is ready for deactivation at the first UE (“from a target UE, a delete plan request to delete an embedded subscriber identity module (eSIM) profile” and [0006] “(eSIM) profile installed on the source UE, receiving, from a target UE, a request to install the eSIM on the target UE, sending, to the source UE, a push notification indicating the source UE is to delete the eSIM profile”[0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Chen-Uehling-Li-Chaugule’761, with the eSIM at first UE remaining active until notification that first UE is ready to be deactivated. suggested by Chaugule’709. The motivation would be “a response to the request to install the eSIM on the target UE.” See Chaugule’709 at [0006].
Regarding Claim 19, Chen-Uehling-Li-Chaugule’761 teaches all the limitations of claim 15, as discussed above. Further Chen teaches
wherein prior to the eSIM profile being transmitted to the next UE, the method further comprises:
transmitting, by the client application of the next UE, to the provisioning application of the RSP system, a confirmation that the eSIM profile is to be sent to the next UE (Chen Col. 9, lns. 22-25 “RSP platform 112 may provide the eSIM component identifier to carrier platform 104 as part of a notification that indicates that the eSIM profile has been activated on the eSIM of UE 102”).
However, Chen-Uehling-Li-Chaugule’761 does not explicitly disclose
displaying, by a client application of the next UE, a notification that downloading the eSIM profile at the next UE triggers deactivation of the line of service at the first UE;
receiving, by the client application of the next UE, a selection indicating to proceed with downloading the eSIM profile at the next UE to trigger deactivation of the line of service at the first UE.
In a similar field of endeavor, Chaugule’709 suggests
displaying, by a client application of the next UE, a notification that downloading the eSIM profile at the next UE triggers deactivation of the line of service at the first UE (“from a target UE, a delete plan request to delete an embedded subscriber identity module (eSIM) profile” and [0006] “(eSIM) profile installed on the source UE, receiving, from a target UE, a request to install the eSIM on the target UE, sending, to the source UE, a push notification indicating the source UE is to delete the eSIM profile”[0005]);
receiving, by the client application of the next UE, a selection indicating to proceed with downloading the eSIM profile at the next UE to trigger deactivation of the line of service at the first UE (“receiving, from the SM-DP+, a response (selection) indicating the eSIM profile is to be transferred to the target UE…sending, to the target UE, a response to the request to install the eSIM on the target UE” and [0098] “the UE 110 transmits a delete notification to the SM-DP+ 602. In 638, the SM-DP+(subscription manager-data preparation+) 602 updates the Profile1 state from installed to available. The eSIM Profile1 is now available for a future user.”[0006]).
Therefore, it would have been obvious to combine the eSIM activation method of Chen-Uehling-Li-Chaugule’761 with the delete (deactivation) plan of the first UE as suggested by Chaugule’709. The motivation would be for “a first eSIM profile has been deleted from the first UE, changing the state of the first eSIM profile from installed to available, receiving a message requesting the first eSIM profile be allocated to a second UE, changing the state of the first eSIM profile to a state allowing the eSIM profile to be downloaded to the second UE and downloading the first eSIM profile to the second UE”, see Chaugule’709 [0003].
Regarding Claim 20, Chen-Uehling-Li-Chaugule’761-Chaugule’709 teaches all the limitations of claim 19, as discussed above.
Further Chen teaches
wherein the transmitting, by the provisioning application of the RSP system, the eSIM profile to the next UE is only performed in response to the confirmation being received (Col. 9, lns. 22-25 “RSP platform 112 may provide the eSIM component identifier to carrier platform 104 as part of a notification that indicates that the eSIM profile has been activated on the eSIM of UE 102”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chaugule (US 20230199471 A1) which discloses a target user equipment (UE) is configured to receive an embedded subscriber identity module (eSIM) subscription transferred from a source UE. Including transmitting, to a cellular carrier, a request to activate the UE with the cellular carrier in response to validation of the verification information by the cellular carrier.
Namiranian (US 20190028884 A1) discloses provisioning the eUICC of a user device with a reused or new eSIM profile.
Golla (US 20160088465 A1) which suggests “the mobile network service provider 310 verifies the activated subscription in the smart watch and enables access to mobile network services in the smart watch (i.e. second UE) such that data transfer may occur. If the optional request to disassociate the smartphone was made at 406, then the mobile network service provider 310 will also deactivate the subscription or otherwise disable the smartphone's (i.e. first UE) access to the mobile network services.” [0089]
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.
/IYONDA L LEWIS/Examiner, Art Unit 2647
/Alison Slater/Supervisory Patent Examiner, Art Unit 2647
Prosecution Insights