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 Amendment
Applicant’s remarks have been given full consideration, as such this Office Action has been modified in view of Amendments filed on 05/12/2026.
Response to Arguments
Applicant's arguments filed "Remarks" on 05/12/2026 have been fully considered but they are not persuasive.
Applicant alleges that: regarding independent claim 1, “the network regions of Lalwaney do not disclose or contemplate ‘a user equipment (UE) connected to a guest network operated by a mobile virtual network operator (MVNO) of the cellular network.’” However, Lalwaney teaches that networks/service providers described herein may be an MVNO, [0059] specifically describes “as used herein, service provider may refer to various mobile service providers and mobile virtual network operators (MVNO).”
Applicant’s additional arguments with respect to claims 1 and 4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claims 29-30 are objected to because of the following informalities: Claims 29 and 30 recite “the non-transitory, computer-readable medium of claim 21…”. However, said “non-transitory, computer-readable medium” should refer to the independent claim 28. Whereas independent claim 21 refers to “a subscriber-identity-module (SIM) management system”. Instead of said “non-transitory, computer-readable medium of claim 21” in claims 29 and 30, claims 29 and 30 should rewrite “The non-transitory, computer-readable medium of claim 28” to be corrected. Appropriate correction is required.
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.
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 1-3, 5-9, 21-23 and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over by Lalwaney et. al (US 2016/0029204 A1, hereinafter Lalwaney) in view of LI et al. (US 2016/0246585 A1, hereinafter Li).
Regarding claim 1, Lalwaney teaches an automated process ([0002] describes device auto configuration) comprising: generating a plurality of subscriber-identity-module (SIM) configurations to dynamically configure a plurality of user devices in communication with a cellular network ([Figure 7] and [00162-0166] FIG. 7 depicts receiving a plurality of SIM configurations in block B710, to compare the received SIM configurations with the generated SIM configurations needed to access the network as shown in block B720-B730, in block B740 a generated SIM configuration is selected to dynamically configure the needed changes on a plurality of user devices in communication with a cellular network); receiving a communication from a user equipment (UE) connected to a guest network operated by a mobile virtual network operator (MVNO) (networks/service providers described herein may be an MVNO, [0059] specifically describes “as used herein, service provider may refer to various mobile service providers and mobile virtual network operators (MVNO)) of the cellular network ([Figure 1] and [0057-0062] FIG. 1 depicts network region 130, read as guest network, and UE 110 connecting to network region 160, read as network of the cellular network), wherein the communication comprises an identifier associated with the guest network and the UE ([0041] FIG. 4 illustrates an example of an indicator table containing examples of indicators associated with configuration routines according to some embodiments, which contains network information, i.e. the identifier may be associated with the guest network); wherein the SIM configuration includes branding for the MVNO to display on the UE ([0090] the configuration routines may include (but is not limited to) UE settings (e.g., model name, brand, etc.) and operator name display settings, i.e. branding for the guest network with the ability to be displayed on the UE), wherein the SIM configuration includes network access settings to control communication by the UE with the cellular network ([0170] FIG. 9 illustrates the touchscreen display 226 of the UE 200 may be configured to display the target configuration selection screen 900, i.e. the ability for the user to see network access settings to control communication by the UE with the cellular network).
Lalwaney is not relied on for the claim language retrieving a SIM configuration from the SIM configurations stored in a SIM database using the identifier associated with the guest network and the UE; and updating an eSIM of the UE with the SIM configuration from the SIM database by transmitting the SIM configuration to the UE and overwriting a current configuration of the eSIM. However, Li teaches [abstract] a technique for updating firmware of an embedded Universal Integrated Circuit Card (eUICC) included in a mobile device, wherein some eUICCs include a rewritable memory that can facilitate eSIM updates for accessing extended features provided by MNOs, according to [0002]. Li also teaches retrieving a SIM configuration from the SIM configurations stored in a SIM database using the identifier associated with the guest network and the UE (referring to FIG. 3, operation 360 depicts receiving update information, which may be for updating an eSIM profile, from the Firmware Provider 116, Firmware Provider 116 read as database. Additionally, [0032] and operation 304, describe a how a plurality of identifiers may be used to aid in the Firmware Provider 116 performing security checks. [0032] specifically describes “firmware update checker 204 (i) a unique identifier of the eUICC 108 (“EUICC ID” in FIG. 3), and (ii) a nonce value (“NONCE” in FIG. 3). The unique identifier can take any form that can be used to uniquely identify the eUICC 108 (e.g., an alphanumeric serial number) and enables the firmware provider 116 to at least partially identify that the mobile device 102 is authentic,” i.e. using the identifiers associated with the UE itself and the network); and updating an eSIM of the UE with the SIM configuration from the SIM database by transmitting the SIM configuration to the UE and overwriting a current configuration of the eSIM (Figure 3, operation 306 and 314, the Firmware Provider 116 transmits the update information to the Mobile device 102, wherein Mobile device 102/EUICC 108 updates the eSIM information in operation 314. [0035] describes “at step 314, the firmware loader 210 replaces the primary eUICC firmware 212 with the updated primary firmware included in the primary firmware update package, thereby rendering a new primary eUICC firmware 212 within the eUICC 108,” wherein the update may be for an eSIM as described in [0002] and above).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify Lalwaney to include using a SIM database to overwrite an eSIM profile, as taught by Li, in order to [0004] carry out a primary firmware updates and therefore [0002] increase the flexibility of mobile devices, simplify their design, and free up space for other components.
Regarding claim 2, Lalwaney teaches the identifier included in the communication comprises a field stored on the SIM card in a previous SIM configuration ([0124] the identifier may be based on one or more parameters such as Mobile Network Code (MNC), Mobile Country Code (MCC), Service Provider Name (SPN), Group Identifier (GID), and other suitable parameters of the like, and the values for these parameters may be stored on a SIM or other suitable devices, i.e. the ability for the identifier to include previous SIM configurations).
Regarding claim 3, Lalwaney teaches the SIM configuration is transmitted to the UE over a cellular connection to the cellular network ([0175] The UE 1000 may have one or more cellular network transceivers 1008a, 1008b coupled to the processor 1002 and to two or more antennae 1010 and configured for sending and receiving cellular communications, and FIG. 1 depicts communications over a cellular connection, i.e. the SIM configuration is transmitted to the UE over a cellular connection).
Regarding claim 5, Lalwaney teaches the SIM configuration instructs the UE to connect to a cell site of the cellular network using a predetermined interface of the cell site ([0171] describes how different SIM configurations may instruct the UE to connect to different areas/regions, countries, service providers and/or the like, areas/regions read as cell sites, with predetermined configurations, i.e. an instruction to use a predetermined interface of a cell site).
Regarding claim 6, Lalwaney teaches the SIM configuration instructs the UE to display a brand of the guest network in a status bar ([0090] the configuration routines may include (but is not limited to) UE settings (e.g., model name, brand, etc.) and operator name display settings, i.e. branding for the guest network with the ability to be displayed on the UE).
Regarding claim 7, Lalwaney teaches the SIM configuration instructs the UE to use a predetermined roaming priority ([0080] the configuration routines may include data roaming settings, i.e. the ability for a predetermined roaming priority).
Regarding claim 8, Lalwaney teaches receiving a selection of services from an operator of the guest network through a SIM management portal ([0059] the base stations may comprise of various mobile service providers and mobile virtual network operators (MVNO), and FIG. 8/9 show a display asking the user to make configuration setting selections, i.e. a management portal for SIM configurations), wherein the SIM configurations are generated to implement the selection of services for the user devices in response to the user devices being subscribed to the guest network ([Figure 1] depicts the user device 110 being previously subscribed to region network 130, i.e. the user device is subscribed to the guest network).
Regarding claim 9, Lalwaney teaches updating the SIM card of the UE further comprises transmitting the SIM configuration to the UE through a SIM over-the-air (OTA) service ([0108] additional content or data corresponding to one or more configuration routine may be stored in repositories or a hidden partition and/or in a remote server (e.g., the cloud) and accessible through the network, and [0085] retrieving configurations from a database, i.e. the ability to transmit SIM configurations through a OTA service).
Clam 21 recites the similar claimed limitations as recited in claim 1, except claim 15 is directed to a subscriber-identity-module (SIM) management system comprising a processor in communication with a non-transitory, computer readable medium. However, it is notoriously well known in the art of implementing the method of claim 1 by a SIM management system with a processor in communication with a non-transitory computer-readable medium. Thus, the claimed limitations of claim 21 are rejected as the same reasons as set forth in claim 1.
Regarding claim 22, the claimed limitations of claim are rejected as the same reasons as set forth in claim 2.
Regarding claim 23, the claimed limitations of claim are rejected as the same reasons as set forth in claim 3.
Regarding claim 25, the claimed limitations of claim are rejected as the same reasons as set forth in claim 5.
Regarding claim 26, the claimed limitations of claim are rejected as the same reasons as set forth in claim 6.
Regarding claim 27, the claimed limitations of claim are rejected as the same reasons as set forth in claim 7.
Clam 28 recites the similar claimed limitations as recited in claim 1, except claim 28 is directed to a non-transitory computer-readable medium. However, it is notoriously well known in the art of implementing the method of claim 1 by a non-transitory computer-readable medium. Thus, the claimed limitations of claim 28 are rejected as the same reasons as set forth in claim 1.
Regarding claim 29, the claimed limitations of claim are rejected as the same reasons as set forth in claim 3.
Claims 4, 24, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over by Lalwaney et. al (US 2016/0029204 A1, hereinafter Lalwaney) and LI et al. (US 2016/0246585 A1, hereinafter Li) as applied in claims above, and further in view of Padova et al. (US 2023/0171585 A1, hereinafter Padova).
Regarding claim 4, Lalwaney is not relied on for the claimed language teaches determining a first hash of the retrieved SIM configuration differs from a second hash of the current configuration of the eSIM installed on the UE; and updating the eSIM of the UE with the retrieved SIM configuration from the SIM database in response to the first hash differing from the second hash. However, Li teaches -updating the eSIM of the UE with the retrieved SIM configuration from the SIM database- (described in claim 1 above and depicted in Figure 3, operation 305/314).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify Lalwaney to include a SIM database, as taught by Li, in order to [0004] carry out a primary firmware updates and therefore [0002] increase the flexibility of mobile devices, simplify their design, and free up space for other components.
The combination of Lalwaney and Li is not relied on for the claim language determining a first hash of the retrieved SIM configuration differs from a second hash of the current configuration of the eSIM installed on the UE and- -in response to the first hash differing from the second hash. However, Padova teaches (abstract) methods for facilitating transfer of an eSIM subscription from a source device to a target device. Padova also teaches determining a first hash of the retrieved SIM configuration differs from a second hash of the current configuration of the eSIM installed on the UE and- -in response to the first hash differing from the second hash ([0074] describes the ability to compare two hash values in association with eSIMs, specifically “the eSIM subscription manager server 306 may compare the hash of the confirmation code (or pseudo-random data) received from the source device at 354 (i.e., a first hash or first pseudo-random data) to the hash of the confirmation code (or pseudo-random data) received from the target device at 376 (i.e., a second hash or second pseudo-random data,” i.e. the ability to compare eSIM hash values, confirmation codes, or pseudo-random data, in order aid in triggering an eSIM update, and to ensure the eSIM update was successful).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify the combination of Lalwaney and Li to include the ability to compare eSIM hashes, as taught by Padova, in order to [0022] allow a cellular carrier to issue a new eSIM/ICCID to the target device and then transfer an eSIM subscription associated with an eSIM of the source device to the eSIM of the target device, and therefore [0113] enable the base station to communicate with other equipment in a core network, and/or enable the base station to communicate with an external network.
Regarding claim 24, the claimed limitations of claim are rejected as the same reasons as set forth in claim 4.
Regarding claim 30, the claimed limitations of claim are rejected as the same reasons as set forth in claim 4.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vasudevan, Chandiramohan et al. (2018). Updating profiles for secondary wireless devices (US 10149150 B1). Filed 2018-04-16. Discloses techniques to manage updates for eSIMs of a secondary wireless device. (abstract )
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 MATTHEW JAMES DWYER whose telephone number is (571)272-5121. The examiner can normally be reached M-F 6 a.m. - 3 p.m. EST.
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, Yuwen Pan can be reached at (571) 272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW JAMES DWYER/Examiner, Art Unit 2649
/GEORGE ENG/Supervisory Patent Examiner, Art Unit 2699
Prosecution Insights