Notice of Pre-AIA or AIA Status
1. 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 Election/Restrictions
2. Applicant’s election with traverse of claims 1-14 in the reply filed on 07/14/2026 is acknowledged. In response to the applicant’s arguments with respect to restriction requirement and in view of the current amendment to claim 15, all the claims now belong to one invention, thus claims 1-20 are pending in the current Office Action.
Claim Rejections - 35 USC § 103
3. 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.
A) Claims 1, 3, 5, 8-10, 12-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwick (GB 2571294 A) in view of Larsson (EP 4114056 A1).
As per claim 1, Chadwick teaches a method performed by a core network for proactively updating and providing an electronic subscriber identity module (eSIM) profile to a user equipment (UE) (¶0008-12, method performed by core network for adding or modifying (i.e. updating) and providing SIM profile to the UE), comprising: associating, by an activation application of a billing system of the core network, an integrated circuit card identification (ICCID) of a base eSIM profile with a mobile station international subscriber directory number (MSISDN) of the UE to register the UE with the base eSIM profile in a carrier network associated with the core network (¶0008-12 and ¶0021, pairing and associating by activating of subscriber system of the core network and ICCID of base SIM profile with MSISDN of the UE to provision the UE with the base SIM profile with a wireless network associated with the core network).
However, Chadwick does not explicitly teach storing, in an over-the-air (OTA) system in the core network, an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data; transmitting, by the OTA system, the update to the base eSIM profile to a remote subscriber identity module provisioning (RSP) system of the core network in response to receiving a request for the update to the base eSIM profile from a request application in the RSP system; updating, by an update application of the RSP system, the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile by adding the one or more files to the base eSIM profile, modifying the one or more files in the base eSIM profile, or updating the file in the base eSIM profile to include the additional or modified data; and downloading, by a download application of the UE, the updated eSIM profile to an embedded universal integrated circuit card (EUICC) of the UE.
In the same field of endeavor, Larsson teaches storing, in an over-the-air (OTA) system in the core network, an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data (¶0050-53 and ¶0065, storing in OTA system update to the profile including adding new profiles to the list of profiles in the eSIM profile); transmitting, by the OTA system, the update to the base eSIM profile to a remote subscriber identity module provisioning (RSP) system of the core network in response to receiving a request for the update to the base eSIM profile from a request application in the RSP system (¶0050-53 and ¶0046, sending by OTA system the update to the profile to remote management system (i.e. RSP, ¶0003) in response to receiving a request to update the profile); updating, by an update application of the RSP system, the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile by adding the one or more files to the base eSIM profile, modifying the one or more files in the base eSIM profile, or updating the file in the base eSIM profile to include the additional or modified data (¶0050-53 and ¶0065, updating by remote management system the eSIM profile by adding new profiles to the list of profiles in the eSIM profile and updating or modifying files in the profiles); and downloading, by a download application of the UE, the updated eSIM profile to an embedded universal integrated circuit card (EUICC) of the UE (¶0056, downloading (i.e. downloading application) the updated profile onto eUICC 130).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 3 as applied to claim 1 above, Chadwick further teaches transmitting, by the activation application of the billing system to the OTA system, activation data indicating the ICCID of the eSIM profile and the MSISDN of the UE (¶0021-22, transmitting instruction to activate (i.e. activation data) indicating ICCID on the SIM card and IMSI of the UE).
As per claim 5 as applied to claim 1 above, Chadwick does not explicitly teach transmitting, by the RSP system, a notification to the OTA system indicating that the base eSIM profile has been updated at the RSP system; and in response to receiving the notification, deleting, from a data store in the OTA system, the update to the base eSIM profile.
In the same field of endeavor, Larsson teaches transmitting, by the RSP system, a notification to the OTA system indicating that the base eSIM profile has been updated at the RSP system (¶0059-61, transmitting by the server 110 of provisioning system 100 a notification to the OTA system 121 indicating the profile updates); and in response to receiving the notification, deleting, from a data store in the OTA system, the update to the base eSIM profile (¶0059-61, in response to the notification deleting from the storage in the OTA system 121 the updated profile).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 8, Chadwick teaches communication system, comprising: an activation application (¶0095-96, an application), stored in a first non-transitory memory associated with a billing system (¶0095-96, stored in the memory associated with of subscriber (i.e. billing) system), which when executed by a first processor (¶0095-96, executed by the processor), causes the first processor to be configured to associate an integrated circuit card identification (ICCID) of a base electronic subscriber identity module (eSIM) profile with a mobile station international subscriber directory number (MSISDN) of a user equipment (UE) to register the UE with the base eSIM profile in a carrier network (¶0008-12 and ¶0021, pairing and associating by activating of subscriber system of the core network and ICCID of base SIM profile with MSISDN of the UE to provision or register the UE with the base SIM profile in a wireless network).
However, Chadwick does not explicitly teach a second non-transitory memory associated with an over-the-air (OTA) system, wherein the second non-transitory memory is configured to store an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data; a request application, stored in a third non-transitory memory associated with a remote subscriber identity module provisioning (RSP) system, which when executed by a third processor, causes the third processor to be configured to receive, from the OTA system, the update to the base eSIM profile; an update application, stored in the third non-transitory memory associated with the RSP system, which when executed by the third processor, causes the third processor to be configured to update the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile; a download application, stored in a fourth non-transitory memory associated with the UE, which when executed by a fourth processor, causes the fourth processor to be configured to: transmit, to the RSP system, request for the updated eSIM profile registered with the UE; and download the updated eSIM profile to the UE.
In the same field of endeavor, Larsson teaches a second non-transitory memory associated with an over-the-air (OTA) system, wherein the second non-transitory memory is configured to store an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data (¶0050-53 and ¶0065, storing (i.e. memory) in OTA system update to the profile including adding new profiles to the list of profiles in the eSIM profile); a request application, stored in a third non-transitory memory associated with a remote subscriber identity module provisioning (RSP) system, which when executed by a third processor, causes the third processor to be configured to receive, from the OTA system, the update to the base eSIM profile (¶0050-53 and ¶0046, sending by OTA system the update to the profile to remote management system (i.e. RSP, ¶0003) in response to receiving a request to update the profile); an update application, stored in the third non-transitory memory associated with the RSP system, which when executed by the third processor, causes the third processor to be configured to update the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile (¶0050-53 and ¶0065, updating by remote management system the eSIM profile by adding new profiles to the list of profiles in the eSIM profile and updating or modifying files in the profiles); a download application, stored in a fourth non-transitory memory associated with the UE, which when executed by a fourth processor, causes the fourth processor to be configured to: transmit, to the RSP system, request for the updated eSIM profile registered with the UE (¶0050-53 and ¶0046, request for the updated SIM profile provisioned or registered with the UE); and download the updated eSIM profile to the UE (¶0056, downloading (i.e. downloading application) the updated profile onto eUICC 130).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 9 as applied to claim 8 above, Chadwick does not explicitly teach wherein to update the base eSIM profile, the update application is further configured to: add the one or more files to the base eSIM profile; modify the one or more files in the base eSIM profile; or update the file already in the base eSIM profile to include the additional or modified data.
In the same field of endeavor, Larsson teaches wherein to update the base eSIM profile, the update application is further configured to: add the one or more files to the base eSIM profile; modify the one or more files in the base eSIM profile; or update the file already in the base eSIM profile to include the additional or modified data (¶0050-53 and ¶0065, updating by remote management system the eSIM profile by adding new profiles to the list of profiles in the eSIM profile and updating or modifying files in the profiles
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 10 as applied to claim 8 above, Chadwick further teaches wherein the update to the base eSIM profile is stored in association with the ICCID of the base eSIM profile and the MSISDN of the UE at the OTA system (¶0012 and ¶0021, base SIM profile is stored associated with ICCID on the base SIM card and IMSI of the UE at the OTA system).
As per claim 12 as applied to claim 8 above, Chadwick does not explicitly teach wherein the update application of the RSP system is configured to transmit a notification to the OTA system indicating that the updated eSIM profile has been created.
In the same field of endeavor, Larsson teaches wherein the update application of the RSP system is configured to transmit a notification to the OTA system indicating that the updated eSIM profile has been created (¶0003 and ¶0059-61, transmitting a notification to the OTA system 121 indicating the updated profile is created).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 13 as applied to claim 8 above, Chadwick does not explicitly teach, delete the update to the base eSIM profile from the second non-transitory memory.
In the same field of endeavor, Larsson teaches delete the update to the base eSIM profile from the second non-transitory memory (¶0059-61, delete the updated profile form the storage or memory).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 15, Chadwick teaches a method performed by a core network for proactively updating and providing an electronic subscriber identity module (eSIM) profile to a user equipment (UE) (¶0008-12, method performed by core network for adding or modifying (i.e. updating) and providing SIM profile to the UE), comprising:
receiving, by remote subscriber identity module provisioning (RSP) system from a download application of the UE, a request for the eSIM profile registered with the UE (¶0011-12 and ¶0047-48, receiving by RSP system from LPA application of the UE to download request for SIM profile provisioned or registered with the UE).
However, Chadwick does not explicitly teach storing, in an over-the-air (OTA) system in the core network, an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data; transmitting, by the OTA system, the update to the base eSIM profile to a remote subscriber identity module provisioning (RSP) system of the core network in response to receiving a request for the update to the base eSIM profile from a request application in the RSP system; updating, by an update application of the RSP system, the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile by adding the one or more files to the base eSIM profile, modifying the one or more files in the base eSIM profile, or updating the file in the base eSIM profile to include the additional or modified data; and downloading, by a download application of the UE, the eSIM profile to an embedded universal integrated circuit card (EUICC) of the UE.
In the same field of endeavor, Larsson teaches storing, in an over-the-air (OTA) system in the core network, an update to the base eSIM profile, wherein the update comprises at least one of an addition or modification of one or more files in the base eSIM profile or an update to a file in the base eSIM profile to include additional or modified data (¶0050-53 and ¶0065, storing in OTA system update to the profile including adding new profiles to the list of profiles in the eSIM profile); transmitting, by the OTA system, the update to the base eSIM profile to a remote subscriber identity module provisioning (RSP) system of the core network in response to receiving a request for the update to the base eSIM profile from a request application in the RSP system (¶0050-53 and ¶0046, sending by OTA system the update to the profile to remote management system (i.e. RSP, ¶0003) in response to receiving a request to update the profile); updating, by an update application of the RSP system, the base eSIM profile based on the update received from the OTA system to obtain an updated eSIM profile by adding the one or more files to the base eSIM profile, modifying the one or more files in the base eSIM profile, or updating the file in the base eSIM profile to include the additional or modified data (¶0050-53 and ¶0065, updating by remote management system the eSIM profile by adding new profiles to the list of profiles in the eSIM profile and updating or modifying files in the profiles); and downloading, by a download application of the UE, the eSIM profile to an embedded universal integrated circuit card (EUICC) of the UE (¶0056, downloading (i.e. downloading application) the updated profile onto eUICC 130).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Larsson into invention of Chadwick in order to efficiently keep all profile settings up to date when re-downloading eSIM profiles, especially when switching phones, or when a factory reset is performed.
As per claim 16 as applied to claim 15 above, Chadwick further teaches associating, by an activation application of a billing system of the core network, an integrated circuit card identification (ICCID) of a base eSIM profile with a mobile station international subscriber directory number (MSISDN) of the UE to register the UE with the base eSIM profile in a carrier network associated with the core network (¶0008-12 and ¶0021, pairing and associating by activating of subscriber system of the core network and ICCID of base SIM profile with MSISDN of the UE to provision the UE with the base SIM profile with a wireless network associated with the core network).
B) Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over
Chadwick (GB 2571294 A) in view of Larsson (EP 4114056 A1) and further in view of Roy (US 2021/0084485 A1).
As per claim 2 as applied to claim 1 above, Chadwick in view of Larsson does not explicitly teach receiving, by an activation application of a billing system in the core network, a request to register the UE with a carrier network associated with the core network, wherein the request comprises the MSISDN of the UE; and in response to receiving the request, transmitting, by the activation application of the billing system, a request for the ICCID of the eSIM profile to the RSP system.
In the same field of endeavor, Roy teaches receiving, by an activation application of a billing system in the core network, a request to register the UE with a carrier network associated with the core network (¶0043 and ¶0056, receiving by an application of billing function in the core network 100 a request to register the UE with network), wherein the request comprises the MSISDN of the UE (¶0043 and ¶0056, request may include a device identifier of the user device (i.e. MSISDN), an identifier of the eSIM); and in response to receiving the request, transmitting, by the activation application of the billing system, a request for the ICCID of the eSIM profile to the RSP system (¶0043 and ¶0056, based on receiving the request sending a request including an identifier of the eSIM (i.e. ICCID) to the RSP platform).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Roy into invention of Chadwick and Larsson in order to use Remote SIM provisioning (RSP) platforms that are operated by third parties to provision the eSIM profiles to the eUICCs of user devices to obtain telecommunication services from the partner MNO while the user device is in a geographical area.
C) Claims 4, 11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwick (GB 2571294 A) in view of Larsson (EP 4114056 A1) and further in view of Cormier (US 2012/0252424 A1).
As per claim 4 as applied to claim 1 above, Chadwick in view of Larsson does not explicitly teach, wherein the update to the base eSIM profile is stored in association with the ICCID of the base eSIM profile and the MSISDN of the UE at the OTA system, and wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update.
In the same field of endeavor, Cormier teaches wherein the update to the base eSIM profile is stored in association with the ICCID of the base eSIM profile and the MSISDN of the UE at the OTA system, and wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update (¶0041 and ¶0048, stored in association with the UICC/ICCID of the USIM profile and the MSISDN of the UE at the OTA system to update the MSISDN elementary file on the SIM card to the appropriate value).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Cormier into invention of Chadwick and Larsson in order to disable calling line identification restriction at the mobile communication device and enable calling line identification restriction override at the SMP for maintaining an accurate Mobile Subscriber Integrated Digital Services Network (MSISDN) identity.
As per claim 11 as applied to claim 8 above, Chadwick in view of Larsson does not explicitly teach, wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update.
In the same field of endeavor, Cormier teaches wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update (¶0041 and ¶0048, stored in association with the UICC/ICCID of the USIM profile and the MSISDN of the UE at the OTA system to update the MSISDN elementary file on the SIM card to the appropriate value).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Cormier into invention of Chadwick and Larsson in order to disable calling line identification restriction at the mobile communication device and enable calling line identification restriction override at the SMP for maintaining an accurate Mobile Subscriber Integrated Digital Services Network (MSISDN) identity.
As per claim 20 as applied to claim 15 above, Chadwick in view of Larsson does not explicitly teach, wherein the update to the base eSIM profile is stored in association with the ICCID of the base eSIM profile and the MSISDN of the UE at the OTA system, and wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update.
In the same field of endeavor, Cormier teaches wherein the update to the base eSIM profile is stored in association with the ICCID of the base eSIM profile and the MSISDN of the UE at the OTA system, and wherein the update comprises at least one of an updated MSISDN, a preferred roaming list, or an Internet Protocol (IP) multimedia public identity (IMPU) file update (¶0041 and ¶0048, stored in association with the UICC/ICCID of the USIM profile and the MSISDN of the UE at the OTA system to update the MSISDN elementary file on the SIM card to the appropriate value).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filling date of applicant’s claimed invention to have incorporated the teaching of
Cormier into invention of Chadwick and Larsson in order to disable calling line identification restriction at the mobile communication device and enable calling line identification restriction override at the SMP for maintaining an accurate Mobile Subscriber Integrated Digital Services Network (MSISDN) identity.
Allowable Subject Matter
4. Claims 6-7, 14, and 17-19 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
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARIDEH MADANI whose telephone number is (571)272-1249. The examiner can normally be reached Monday through Friday; 9 AM to 5 PM EST.
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/FARIDEH MADANI/Examiner, Art Unit 2643
/JINSONG HU/ Supervisory Patent Examiner, Art Unit 2643
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