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 Arguments
The examiner notes that the traversal of the OFFICAL NOTICE filed on 05/11/2026 was improper, as per the MPEP 2144.03(C) which recites “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” Further See examiners response as filed on 02/10/2026. Applicant did not state why the subject matter of the OFFICIAL NOTICE was not common knowledge or well known in the art. A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. Further, a mere statement stating that a reference should be provided is not adequate.
Hence, the OFFICIAL NOTICE taken on 02/10/2026 will be established as Applicants Admitted Prior Art.
Applicant contends that Barry merely resolves the address of a single target discovery server from a proxy EID prefix and therefore fails to teach the amended claim limitation “determining, by the discovery server management engine, a discovery server corresponding to the UE from a plurality of discovery servers corresponding to different original equipment manufacturers (OEMs), the discovery server based on an original equipment manufacturer (OEM) of the UE”
Examiner respectfully disagrees. Barry expressly teaches that OEMs operate their own discovery servers and that the service provider is responsible for determining which OEM discovery server corresponds to the UE (Par. 3; "Industry trends, however, are moving toward the original equipment manufacturers (OEMs) of eSIM-enabled devices using their own discovery servers, leaving the service providers with the responsibility of determining which discovery server they need to register available eSIM profiles with so that the appropriate discovery server can redirect the eSIM-enabled devices to their SM server to obtain the eSIM profile."; that is, Barry teaches that multiple OEM-operated discovery servers exist and that the service provider determines the appropriate discovery server corresponding to the UE based on the OEM). Barry further teaches identifying the appropriate OEM-based discovery server using the proxy EID (Par. 21; "Implementations herein are directed toward assigning new eSIM-enabled telephony devices with proxy EIDs for use by service providers in identifying appropriate OEM-based discovery servers to contact... The proxy EID additionally functions as a discovery service-based identifier that a service provider server uses to identify the appropriate target discovery server..."; that is, Barry teaches using information associated with the UE to identify the appropriate discovery server from the available OEM-specific discovery servers). Barry additionally discloses multiple sets of proxy EID prefixes, each associated with a corresponding target discovery server operated by a manufacturer (Par. 31; "An OEM may generate a set of unique PEPs associated with a target discovery server operated by the OEM... The table may thus include multiple sets of unique PEPs with each set associated with a corresponding target discovery server... The PEP key indicates a manufacturer of the device that can be used to identify a corresponding target discovery server operated by the manufacturer."; that is, Barry teaches a plurality of discovery servers corresponding to different OEMs, wherein manufacturer-specific information is used to determine the corresponding discovery server). Thus, Barry teaches determining the appropriate discovery server from a plurality of OEM-specific discovery servers based on the OEM of the UE. The amended claim does not recite centrally managing, maintaining, or otherwise administering the plurality of discovery servers, as argued by Applicant, but merely requires determining one discovery server from the plurality, which Barry teaches.
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 1,2,3,9,11,14,15,17,20 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu)
Regarding claim 1, Barry discloses one or more computer-readable media having computer-executable instructions embodied thereon that, when executed, perform a method for intelligent discovery server management, the method comprising:
receiving, at a discovery server management engine (Par. 26: Lines 26-34; The service provider server 110 (i.e. discovery server management engine) receives information identifying a user device and, in response, processes that information by executing discovery-server resolution logic), a request for a service corresponding to a user equipment (UE) (Par. 4: Lines 4-6; A request to provision an eSIM profile to an eSIM-enabled device is received);
determining, by the discovery server management engine, a discovery server corresponding to the UE from a plurality of discovery servers corresponding to different original equipment manufacturers (OEMs), the discovery server based on an original equipment manufacturer (OEM) of the UE (Par 3: Lines 18-25; Multiple OEM-operated discovery servers exist and the service provider determines the appropriate discovery server corresponding to the UE based on the OEM; Par. 21; Information associated with the UE is used to identify the appropriate discovery server from the available OEM-specific discovery servers; Par. 31: Lines 16-28; A plurality of discovery servers correspond to different OEMs, wherein manufacturer-specific information is used to determine the corresponding discovery server).
and communicating, by the discovery server management engine, a push notification or a pull request to the discovery server corresponding to the UE (Par. 41: The service provider server contacts the target discovery server to register an event (i.e. pull request to the discovery server)).
Barry does not disclose storing, at a database of the discovery server management engine, information corresponding to the service in association with the UE.
Liu, however, discloses disclose storing, at a database, information corresponding to the service in association with the UE (Par. 67: Lines 4-13; Provisional data (e.g., full subscription data), default configurations (including identity of the UE), etc. can be stored).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Barry to further store, at a database of the discovery server management engine, information corresponding to the service in association with the UE, as taught by Liu, in order to maintain provisioning and configuration information associated with the UE for subsequent discovery and service management operations, thereby improving management of discovery server interactions and service provisioning.
Regarding claim 2 as applied to claim 1, Barry discloses receiving a service name for the service defined by a mobile virtual network operator corresponding to the UE (Par. 4: Lines 4-6; A request to provision an eSIM profile to an eSIM-enabled device is received; Par. 6; The target discovery server may be operated by the manufacturer of the eSIM-enabled device. The service provider may include a mobile virtual network operator; The received eSIM profile inherently identifies the service defined by the MVNO).
Regarding claim 3 as applied to claim 2, Barry discloses wherein the service name is based on one or more of the discovery server (Par. 24: Lines 14-29; The service provider server determines the specific discovery server associated with the UE and uses that identified discovery server to perform service provisioning actions, such that the service delivered to the UE is defined and executed based on the discovery server corresponding to the UE), a model of the UE, a brand of the UE, stock keeping unit (SKU) information corresponding to the UE, or subscriber activity (No patentable weight given to the remaining limitations due to the optional language “or”).
Regarding claim 9 as applied to claim 1, Barry discloses wherein the request for the service is initiated by the UE (Par. 27: Lines 1-4; A device is unboxed and used to initiate the activation process; Par. 28: Lines 5-8; The device is powered on to initiate the activation procedure).
Regarding claim 11 as applied to claim 1, Barry discloses wherein the service comprises a digital subscriber identity module (eSIM) for the UE (Par. 4: Lines 4-6; A request to provision an eSIM profile to an eSIM-enabled device is received).
Regarding claim 14, the rejection of claim 1 addresses the limitations presented in claim 14. Therefore, all the limitations of claim 14 have been addressed.
Regarding claim 15, the rejection of claim 1 addresses the limitations presented in claim 15. Therefore, all the limitations of claim 15 have been addressed.
Regarding claim 17, the rejection of claim 9 addresses the limitations presented in claim 17. Therefore, all the limitations of claim 17 have been addressed.
Regarding claim 20, the rejection of claim 1 addresses the limitations presented in claim 20. Therefore, all the limitations of claim 20 have been addressed.
Claims 4,5,16 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu) in further view of Choi et al. (US 20120254390, hereinafter Choi)
Regarding claim 4 as applied to claim 1, Barry in view of Liu discloses a server associated with the OEM of the UE (as detailed in the rejection of claim 1) but does not disclose receiving an OEM request from a server associated with the OEM of the UE to not allow push notifications for the UE, the OEM request associated with a brand of the UE, stock keeping unit (SKU) information corresponding to the UE, or subscriber activity.
Choi, however, discloses receiving a request for non-subscription of a push notification message at a third server which provides a push notification service, thereby not allowing push notifications for the UE (Par. 74; The server receives a request to prevent push notifications from being provided to the UE based on subscriber activity, namely the mobile terminal continuously failing to receive push notification messages).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the intelligent discovery server management system of Barry in view of Liu to further receive a request to not allow push notifications for the UE, as taught by Choi, in order to selectively suppress unnecessary push notifications, thereby preventing unnecessary network signaling, conserving network resources, and improving the efficiency of discovery server management.
Regarding claim 5 as applied to claim 1, the rejection of claim 4 addresses the limitations presented in claim 5. Therefore, the limitations of claim 5 have been addressed. Under BRI, preventing push notifications is the most restrictive form of restricting push notifications.
Regarding claim 16 as applied to claim 14, the rejection of claim 4 and 5 address the limitations presented in claim 16. Therefore, the limitations of claim 16 have been addressed.
Claims 6,7,8 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu) in further view of Applicant Admitted Prior Art
Regarding claim 6 as applied to claim 1, Barry in view of Liu does not disclose storing a UE type, a model of the UE, information corresponding to the discovery server, service names associated with the UE, a brand of the UE, billing information corresponding to a subscriber associated with the UE, stock keeping unit (SKU) information corresponding to the UE, subscriber activity, and restrictions for the UE.
Applicant’s Admitted Prior Art (AAPA) evidences that it is well known the art of telecommunications systems and device provisioning platforms to store, in a database or memory, information including a UE type, a model of the UE, information corresponding to a discovery server, service names associated with the UE, a brand of the UE, billing information corresponding to a subscriber associated with the UE, stock keeping unit (SKU) information corresponding to the UE, subscriber activity, and restrictions for the UE, as such information is routinely maintained to support device identification, service provisioning, billing, policy enforcement, and network management functions.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to store such information in a database or memory of the system, as the storage of device, subscriber, and service-related information is a well-known and routine practice in telecommunications and provisioning systems.
Regarding claim 7 as applied to claim 6, Barry in view of Liu does not disclose wherein the information corresponding to the discovery server comprises a configuration of the discovery server.
Applicant’s Admitted Prior Art (AAPA) evidences that it is well known in the art to maintain configuration information for network servers, including discovery servers, in order to control server behavior and service handling.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to store information corresponding to the discovery server comprising a configuration of the discovery server, in order to enable proper selection, management, and communication with the discovery server when providing services to a UE, as such configuration information is routinely used to ensure correct server operation and interoperability within telecommunications provisioning systems.
Regarding claim 8 as applied to claim 6, Barry in view of Liu does not disclose storing a mapping, at the database of the discovery server, between the SKU information, the brand of the UE, and the information corresponding to the discovery server.
Applicant’s Admitted Prior Art (AAPA) evidences that it is well known in the art to store mappings between device identifiers (such as SKU and brand) and corresponding network or service components in order to support device differentiation and service routing.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to store, at a database of the discovery server, a mapping between SKU information, a brand of the UE, and information corresponding to the discovery server, to enable efficient identification of the appropriate discovery server and correct handling of device-specific provisioning and services.
Claims 10,18 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu) in further view of Samdanis et al. (US 20180227768, hereinafter Samdanis)
Regarding claim 10 as applied to claim 1, Barry in view of Liu does not disclose wherein the request for the service is initiated by a mobile network operator or a mobile virtual network operator corresponding to the UE.
Samdanis, however, discloses wherein the request for the service is initiated by a mobile network operator or a mobile virtual network operator corresponding to the UE (Par. 36: Lines 7-10; A new service is requested by an MVNO).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Barry in view of Liu to allow the request for the service to be initiated by a mobile network operator or a mobile virtual network operator corresponding to the UE, as taught by Samdanis, in order to enable operator-controlled service provisioning and centralized network resource management for UEs, thereby improving scalability and operational efficiency in multi-operator environments.
Regarding claim 18, the rejection of claim 10 addresses the limitations presented in claim 18. Therefore, all the limitations of claim 18 have been addressed.
Claims 12,19 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu) in further view of Kleiba (US 11489725)
Regarding claim 12 as applied to claim 1, Barry discloses communicating with a discovery server corresponding to a UE as part of a provisioning process (detailed in the rejection of claim 1). Barry in view of Liu does not disclose communicating to the UE a configuration for a discovery server that has an update available for the UE.
Klieba, however, discloses configuring a user device to determine availability of a configuration file including updates and configuring the user to obtain the configuration file based on determining that the updates are available (e.g., configuring the user device to obtain configuration information when an update is available) (Col. 1: Lines 43-44; A user device determined availability of a configuration files including updates; Col. 1: Lines 46-48; A user device obtains the configuration file is an update is available; Col. 1: Lines 57-60; The UE checks a database to determine if the configuration file including the update is available).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Barry in view of Liu to communicate configuration information to the UE for a discovery server based on update availability, as taught by Klieba, in order to allow the UE to determine when updates are available and obtain the appropriate configuration without requiring manual intervention or continuous polling, thereby improving update efficiency and reliability in the discovery server provisioning system of Barry.
Regarding claim 19, the rejection of claim 12 addresses the limitations presented in claim 19. Therefore, all the limitations of claim 19 have been addressed.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US 20210392488, hereinafter Barry) in view of Liu et al. (US 20230156457, hereinafter Liu) in further view of Shah et al. (US 20220141644, hereinafter Shah)
Regarding claim 13 as applied to claim 1, Barry in view of Liu does not disclose receiving an indication from a mobile network operator (MNO) that an update is available for the UE.
Shah, however, discloses receiving an indication from a mobile network operator (MNO) that an update is available for the UE (Par. 6: Lines 1-3; An indication of a SIM profile update is received from a mobile network operator server).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Barry in view of Liu to further receive an indication from a mobile network operator that an update is available for the UE, as taught by Shah, in order to enable operator-controlled notification of subscription or configuration updates to the UE and to ensure timely and coordinated update management by the network, which represents a predictable use of known operator signaling techniques in a similar provisioning and update context.
Conclusion
THIS ACTION IS MADE FINAL. 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 FABIAN BOTELLO whose telephone number is (571)272-4439. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wesley Kim can be reached at (571) 272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FABIAN BOTELLO/Examiner, Art Unit 2648
/WESLEY L KIM/Supervisory Patent Examiner, Art Unit 2648
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