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 .
Election/Restrictions
In the response dated 12/08/2025 an election was made without traverse to prosecute the invention of group 1, claim(s) 1-15 and 21-25. Affirmation of this election was made by applicant in replying to the Office action dated 10/08/2025. Claim(s) 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 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.
Claim(s) 1-5, 7-9, and 14, is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (US 2014/0228039 A1), in view of Akdim et al. (US 2023/0396977 A1).
Regarding claim 1, Zhao discloses:
a method of communication management (par.[0006] describes method for wireless network management) comprising:
receiving, at a user device (fig.1 depicts a user using a mobile device element 106) programmed to communicate with a macro core network via a baseband processing unit of the user device (fig.1 depicts a base station which is representative of a Mobile Network Operator (MNO). The Office notes that the MNO can correspond to a Macro Core Network) according to a first subscriber identity module (SIM), a traveling SIM (tSIM) (par.[0006] describes an inserted SIM which corresponds to a wireless carrier);
receiving, at the user device, an instruction to initiate the tSIM (par.[0009] describes a physical SIM inserted into the UE, which initiates the SIM);
responsive to the instruction, programming, on the user device, a second SIM based on the tSIM (par.[0009] describes a second SIM (i.e. an eSIM) which is based on the first SIM, par.[0076 – 0077]); and
communicating with a mobile core network via the baseband processing unit a according to the second SIM (fig.7 wherein the different SIMs allow for communication with a first network using the first SIM and a second network using the second SIM).
While the disclosure of Zhao teaches generation of an eSIM based on a physical SIM it does not disclose:
the second SIM including multiple profiles programmed according to the programming, wherein the multiple profiles control communication of the user device via the baseband processing unit.
In an analogous art, the disclosure Akdim discloses:
the second SIM including multiple profiles programmed according to the programming (fig.2 depicts the first eUICC with a first and second SIM see i.e. element 208, wherein each eSIM of the eUICC comprises multiple applets 212 which are considered profiles, see par.[0035] which recites, in part, “For example, one or more of the applets 212, when implemented in conjunction with baseband wireless circuitry 110 and the eUICC 108, can be configured to enable the mobile wireless device 102 to communicate with an MNO 114 and provide useful features (e.g., phone calls and internet access) to a user of the mobile wireless device 102.”), wherein the multiple profiles control communication of the user device via the baseband processing unit (par.[0035] as discussed above the applet 212 when implemented in conjunction with based circuitry allow for phone calls and internet access).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Zhao with the disclosure of Akdim. The motivation/suggestion would have been to allow for flexibility in wireless communications by providing a one or more eSIM in the device.
Regarding claim 2, Akdim discloses:
wherein the second SIM is an electronic SIM (eSIM) (fig.2 depicts a eUICC with a plurality of eSIMs).
Regarding claim 3, Akdim discloses:
wherein the tSIM is received in an application executable by the user device, and wherein the instruction is received via the application (par.[0034] which recites, in part, “The eUICC 108 can be configured to store multiple electronic SIMs (eSIMs) for accessing cellular wireless services provided by different MNOs 114 by connecting to their respective cellular wireless networks through base stations 112-1 to 112-N. For example, the eUICC 108 can be configured to store and manage one or more eSIMs for one or more MNOs 114 for different subscriptions to which the mobile wireless device 102 is associated. To be able to access services provided by an MNO 114, an eSIM is downloaded and installed to the eUICC 108 or a user installs a UICC 118 that stores a physical SIM (pSIM).”. As discussed above, the eSIM which can be a tSIM is associated with a particular wireless cellular service subscription (i.e. an application). Additionally par.[0053] recites, in part, “At 1202, the wireless circuitry 110 receives, from an application processor of the wireless device 102, an early entry notification message predicting entry to a frequent location that has a private cellular wireless network. The notification message can be received prior to entry to the frequent location. At 1204, the wireless circuitry 110 activates a SIM or eSIM 208 associated with the private cellular wireless network.” That is, the UE is configured to receive from an application a notice of entry into a particular network MNO, which corresponds to a particular tSIM/eSIM which is activated or deactivated based upon entry or exit from a location associated with the particular network).
Regarding claim 4, Akdim discloses:
receiving an instruction to operate according to the first SIM responsive to determining a first location of the user device to be within a first geographic region; and
receiving an instruction to operate according to the second SIM responsive to determining a second location of the user device to be within a second geographic region (as discussed above with regard to par.[0053] the location can initiate the activation and use of a first or second SIM based upon the location of the UE and the MNO which corresponds to the particular location).
Regarding claim 5, Akdim discloses:
wherein the multiple profiles include at least a first profile that permits the user device to access a local network via the mobile core network, and a second profile that permits the user device to access the macro core network via the mobile core network operating as a relay between the user device and the macro core network (par.[0035] which recites, in part, “For example, one or more of the applets 212, when implemented in conjunction with baseband wireless circuitry 110 and the eUICC 108, can be configured to enable the mobile wireless device 102 to communicate with an MNO 114 and provide useful features (e.g., phone calls and internet access) to a user of the mobile wireless device 102.” And par.[0036] which recites, in part, “The baseband manager 216 can be configured to implement services 218, which represents a collection of software modules that are instantiated by way of the various applets 212 of enabled eSIMs 208 that are included in the eUICC 108. For example, services 218 can be configured to manage different connections between the mobile wireless device 102 and MNOs 114 according to the different eSIMs 208 that are enabled within the eUICC 108.”. As discussed the Applet allows for communications with an MNO, the MNO corresponding to a Macro Core or a Mobile Core network type. That is the MNO correspond to different network operators).
Regarding claim 7, Akdim discloses:
wherein the second SIM controls the baseband processing unit to prioritize establishing a connection with the mobile core network greater than establishing a connection with the macro core network (as discussed above the eSIM correspond to a particular MNO, e.g. a (Macro Core or a Mobile Core Network), thus, the SIM prioritize establishing a connection with the MNO it corresponds with, par.[0034]).
Regarding claim 8, Zhao discloses:
a user device (fig.4 depicts a user using a mobile device element 106), comprising:
a memory storing computer-executable instructions (fig.4 memory element 306); and
a processor coupled to the memory (fig.4 the processor element 302), the processor configured to execute the instructions (fig.4 processor coupled to the memory) to:
communicate, at a first time, with a macro core network via a baseband processing unit of the user device (fig.1 depicts a base station which is representative of a Mobile Network Operator (MNO). The Office notes that the MNO can correspond to a Macro Core Network) according to a first subscriber identity module (SIM), a traveling SIM (tSIM) (par.[0006] describes an inserted SIM which corresponds to a wireless carrier);
based on a traveling subscriber identity module (SIM) create and electronic SIM (eSIM) (par.[0009] describes a second SIM (i.e. an eSIM) which is based on the first SIM, par.[0076 – 0077]); and
and responsive to creating the eSIM and based on a first profile of the eSIM, communicate with a mobile core network at a second time (fig.7 wherein the different SIMs allow for communication with a first network using the first SIM and a second network using the second SIM).
While the disclosure of Zhao teaches generation of an eSIM based on a physical SIM it does not disclose:
the second SIM including multiple profiles programmed according to the tSIM and, some profiles disable the functionality of the user device..
In an analogous art, the disclosure Akdim discloses:
the second SIM including multiple profiles programmed according to the tSIM and, some profiles disable the functionality of the user device (fig.2 depicts the first eUICC with a first and second SIM see i.e. element 208, wherein each eSIM of the eUICC comprises multiple applets 212 which are considered profiles, see par.[0035] which recites, in part, “For example, one or more of the applets 212, when implemented in conjunction with baseband wireless circuitry 110 and the eUICC 108, can be configured to enable the mobile wireless device 102 to communicate with an MNO 114 and provide useful features (e.g., phone calls and internet access) to a user of the mobile wireless device 102.” As discussed above the applets provide and/or disable functionality within the MNO).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Zhao with the disclosure of Akdim. The motivation/suggestion would have been to allow for flexibility in wireless communications by providing a one or more eSIM in the device.
Regarding claim 9, Akdim discloses:
wherein executing the instructions further causes the processor to access, based on the first profile, local content available via the mobile core network (par.[0035] as discussed above the UE is capable of download an eSIM which comprises a plurality of applets, the applets allowing for the UE to communicate via the applet/profile with the base station of the MNO).
Regarding claim 14, Zhao discloses:
wherein responsive to receipt of a command from a user, the user device creates the eSIM (par.[0078] which describes a user command which causes the UE to create the eSIM).
Regarding claim 23, Zhao discloses:
wherein the second SIM disables functionality of the user device to communicate with the macro core network without using the mobile core network as a relay (fig.7 wherein the different SIM correspond to different networks. Thus, a SIM would configured to operate on a network which would relay communications with the core network).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao in view of Akdim in view of Park et al. (US 2015/0382178 A1).
Regarding claim 6, the disclosure of Zhao and Akdim teaches a eSIM with multiple profiles/applets, but does not disclose:
receiving an instruction from the mobile core network to operate according to a first of the multiple profiles at a first time; and
receiving an instruction from the mobile core network to operate according to a second of the multiple profiles at a second time.
In an analogous art, the disclosure of Kim teaches:
receiving an instruction from the mobile core network to operate according to a first of the multiple profiles at a first time; and
receiving an instruction from the mobile core network to operate according to a second of the multiple profiles at a second time (par.[0046 – 0047] describes a network issuing a profile change to the mobile device).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Akdim, with the disclosure of Park for profile switching. The motivation/suggestion would have been to modify the profile of the UE based on changes of the network state at the MNO (Kim: par.[0046 – 0047]).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao in view of Akdim, and further in view of Obiadi et al. (US 2021/0076194 A1).
Regarding claim 13,the disclosure of Zhao Akdim discloses the method of claim 8, but does not disclose:
wherein responsive to the user device communicating with an access point on a moving platform, the user device creates the eSIM.
In an analogous art, the disclosure of Obiadi teaches:
wherein responsive to the user device communicating with an access point on a moving platform, the user device creates the eSIM (par.[0035] which recites, in part, “Similar to the first SIM-OTA message, the second SIM-OTA message can cause the car 120 to generate a virtual SIM that can receive the service according to the service details. At 255, the service provider 130 can receive confirmation that the virtual SIM has been successfully provisioned from the car 120”.).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Akdim with the disclosure of Obiadi. The motivation/suggestion would have been to provide a service of the service provider to the UE while it is in the vehicle.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao in view of Akdim, and further in view of Li et al. (US 2022/0225448 A1).
Regarding claim 21, the disclosure of Zhao in view of Akdim teaches generating a plurality of SIM cards, but does not disclose:
wherein the mobile core network comprises a subset of functionality of the macro core network.
In an analogous art, the disclosure of Velev teaches:
wherein the mobile core network comprises a subset of functionality of the macro core network (fig.1d which comprises the 3GPP and non-3GPP access, wherein the non-3GPP access comprises a subset of the functionality).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Zhao and Akdim, with the disclosure of Li. The motivation/suggestion would have been to provide more robust access so that the UE can gain network access in different locations.
Regarding claim 22, the disclosure of Li teaches:
wherein the subset of functionality comprises base band functionality, a user plane function (UPF), an access and mobility management function (AMF), and a session management function (SMF) (fig.1d which teaches that the non-3GPP access comprises the UPF, AMF, and SMF).
Regarding claim 25, the disclosure of Li teaches:
wherein the mobile core network comprises a subset of functionality of the macro core network including base band functionality, a user plane function (UPF), an access and mobility management function (AMF), and a session management function (SMF) (fig.1d which teaches that the non-3GPP access comprises the UPF, AMF, and SMF).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao and Akdim in view of Kim et al. (US 2024/0147216 A1).
Regarding claim 24, the disclosure of Zhao in view of Kim teaches creating an eSIM for a second network, but does not disclose:
wherein the user device switches from the first profile to the second profile responsive to the user device being in a geographic region in which a signal strength between the user device and the macro core network is greater than a threshold amount.
In an analogous art, the disclosure of Kim teaches:
wherein the user device switches from the first profile to the second profile responsive to the user device being in a geographic region in which a signal strength between the user device and the macro core network is greater than a threshold amount (par.[0104] which recites, in part, “the policy is reactive and the rules engine is configured to cause the UE to switch to the different SIM or SIM profile based on a drop in signal strength below a minimum threshold, detection that a RAN for a carrier of the current SIM or SIM profile has gone down, a change in a location of the UE, detection that an antenna of the UE is no longer working such that a band can no longer be used, or any combination thereof.” The minimum threshold for signal strength is greater than a minimum threshold and thus the UE is configured to switch profiles).
It would have been obvious to one of ordinary skill in the art prior to the effective filing of the instant application to combine the teachings of Zhao and Akdim, with the disclosure of Kim. The motivation/suggestion would have been to provide some reflexive autonomy to the switching of the SIM or SIM profiles when conditions change at the UE which would improve the functioning in the UE.
Allowable Subject Matter
Claim 10-12, 15, are 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chen et al. (US 2012/0106443 A1)
Park et al. (US 2014/0031012 A1)
Li et al. (US 2015/0350878 A1)
Chaugule et al. (US 2022/0038887 A1)
Li et al. (US 2016/0361356 A1)
Li et al. (US 2016/0246611 A1)
Wane (US 2016/0007190 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMAAL HENSON whose telephone number is (571)272-5339. The examiner can normally be reached M-Thu: 7:30 am - 6:30 pm.
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JAMAAL HENSON
Primary Examiner
Art Unit 2411
/JAMAAL HENSON/ Primary Examiner, Art Unit 2411