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
Applicant's amendments filed 06/09/2026 have been fully considered. Claim 1-20 remain pending in the application. The Applicant amended claim language to overcome previous rejection. Applicant’s arguments are fully considered but they are not persuasive. The rejection of claim 1-20 under 35 USC § 103 as unpatentable is maintained.
Regards to remark on page 7, about claims 1, 2, 3, 4, 6, 9, 10, 11, 12, and 14: Applicant argues that, the combination of Chaugule and Yang does not teach or suggest at least the highlighted features of amened claim 1. Amended claim 1 recited:
“receiving, by a user device and from a wireless network, a message indicating that the user device can connect to the wireless network to download an embedded subscriber identity module (eSIM) associated with the wireless network;
based on the user device receiving the message from the wireless network, causing a first connection to be established between the user device and the wireless network;
based on downloading the eSIM via the first connection, causing a second connection to be established between the user device and the wireless network; and
based on the second connection, accessing at least one service provided by the wireless network.”
Applicant state that, Yang does not disclose "based on the user device receiving the message from the wireless network, causing a first connection to be established between the user device and the wireless network," as recited by claim 1.
However, Examiner respectfully disagrees. The combination of Chaugule and Yang does teach all the features on claim 1. Chaugule teaches that. In some embodiments, the wireless device downloads the eSIM profile responsive to receipt of a push notification message from a manufacturer-managed, network-based message notification server, As described in paragraph [0032].
Subsequently the dependent claims 2, 3, 4, 6, 9, 10, 11, 12, and 14 are rejected as stated below in detail.
Regards to remark on page 10, about claims 15: Applicant argues that, the combination of Hassan and Sikes does not teach or suggest at least the highlighted features of amened claim 15. Claim 15 recited, in part:
“receiving, from a user device and via a first connection between the user device and a wireless network, a device identifier associated with the user device;
determining whether the device identifier corresponds to an embedded subscriber identity module (eSIM) associated with the wireless network; and
based on determining whether the device identifier corresponds to the eSIM, causing a second connection to be established between the user device and the wireless network, wherein the user device is configured to access at least one service provided by the wireless network via the second connection.”
Applicant argued that, Hassan does not disclose the feature of claim 15. Applicant argues that, comparing a unique device identifier to a previously stored identifier associated with a user's account is very different from "determining whether the device identifier corresponds to an embedded subscriber identity module (eSIM) associated with the wireless network," as claimed. (Emphasis added).
Secondly applicant argues that, Sikes does not teach "based on determining whether the device identifier corresponds to the eSIM, causing a second connection to be established between the user device and the wireless network, wherein the user device is configured to access at least one service provided by the wireless network via the second connection,"
However, Examiner respectfully disagrees. The combination of Hassan and Sikes does teach all the features on claim 15.
Hassan discloses "determining whether the device identifier corresponds to an embedded subscriber identity module (eSIM) associated with the wireless network,"(i.e., Once obtained, the communications service 206 compares this current unique device identifier to a previously stored identifier associated with the user's account, As described in paragraph [0039]).)
Hassan also discloses that, “The integration of the mobile network 210 with the communications service 206 involves the mobile network operator routing phone calls and text messages (e.g., including SMS message) placed to a subscriber's phone number to a server computer of the communications service 206, in addition to their own mobile network routing. Typically, the communications service 206 maintains a database mapping each subscribers' phone number to their respective user accounts.” As described in paragraph [0032]
Sikes discloses "based on determining whether the device identifier corresponds to the eSIM, causing a second connection to be established between the user device and the wireless network, wherein the user device is configured to access at least one service provided by the wireless network via the second connection," (i.e., When user device 140 initially connected, remote eSIM provisioning platform 310 can be contacted and identifier resource 245A-C can be provisioned from remote eSIM provisioning platform and stored at user device 140 for use establishing connections, As described in paragraph [0041])
And Sikes further discloses in paragraph [0041] and [0043] that, “[0041] In an example based on the foregoing, user device 140 can be established as a subscriber of networks 190A-C. To facilitate the authentication of these subscriptions, provider information devices 420A-C can provide identifier resources 245A-C respectively to remote eSIM provisioning platform 310. When user device 140 initially connected, remote eSIM provisioning platform 310 can be contacted and identifier resource 245A-C can be provisioned from remote eSIM provisioning platform and stored at user device 140 for use establishing connections. In an alternative embodiment, user device 140 can remotely access remote eSIM provisioning platform 310, e.g., to get identifier information for establishing connections.
[0043] After the example setup actions described above, to establish a connection via one of networks 420A-C, user device 140 can receive available network information from remote eSIM provisioning platform 310, e.g., that networks 420A-C are available for connections.”
Subsequently the dependent claims 16, 17, 18, 19 and 20 are rejected as stated below in detail.
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, 2, 3, 4, 6, 9, 10, 11, 12 and 14 are rejected under 35 U.S.C. 103 as obvious over Chaugule et al. (hereinafter “Chaugule”, US2024/0007847) in view of Yang et al. (hereinafter “Yang”, US2020/0178070).
Regarding claim 1, and 10 Chaugule discloses A method comprising:
receiving, by a user device and from a wireless network, a message indicating that the user device can connect to the wireless network to download an embedded subscriber identity module (eSIM) associated with the wireless network; (i.e., During a pre-installation phase, the wireless device receives, from an MNO entitlement server, a message that identifies the eSIM profile and, in some embodiments, indicates whether the eSIM profile is currently available for downloading and installation, As described in paragraph [0032]);
based on the user device receiving the message from the wireless network, causing a first connection to be established between the user device and the wireless network; (i.e., In some embodiments, the wireless device downloads the eSIM profile responsive to receipt of a push notification message from a manufacturer-managed, network-based message notification server, As described in paragraph [0032].)
based on downloading the eSIM via the first connection, causing a second connection to be established between the user device and the wireless network; (i.e., At 412, the wireless device 102 successfully attaches to a cellular wireless network of the MNO 114 and subsequently registers for cellular wireless service access with the cellular wireless network of the MNO 114. As described in paragraph [0042]).
Chaugule discloses all limitations recited within claims as described above, but does not expressly disclose:
based on the second connection, accessing at least one service provided by the wireless network.
In a similar endeavor, Yang discloses
based on the second connection, accessing at least one service provided by the wireless network. (i.e., The provisioning connection, once established, can allow the user to select an MNO 114 and download an eSIM for the selected MNO 114 to the eUICC 108. Upon activation of the eSIM, the mobile wireless device 102 can connect to the cellular wireless network of the MNO 114 to access services provided therefrom. As described in paragraph [0024]);
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Yang into the invention of Chaugule in order to provide an optimal level of services to users.
Regarding claim 2, 11 and 17, Chaugule and Yang disclose all limitations recited within claims as described above.
And Chaugule further discloses wherein the user device is unable to access, via the first connection, the at least one service provided by the wireless network. (i.e., The wireless device may be using a limited functionality, bootstrap provisioning eSIM profile 208 with restricted cellular wireless access before obtaining the fully functional eSIM profile 208. As described in paragraph [0043]).
Regarding claim 3 and 12, Chaugule and Yang disclose all limitations recited within claims as described above.
And Yang further discloses: wherein causing the first connection to be established between the user device and the wireless network comprises sending, to the wireless network, an indication of a request to download the eSIM. (i.e., At 602, the mobile wireless device 102 sends to a network mobility management entity (MME) of a cellular wireless network a request to establish a connection provisioning an eSIM 208 to the mobile wireless device 102, As described in paragraph [0032]).
Regarding claim 4, Chaugule and Yang disclose all limitations recited within claims as described above
And Yang further discloses wherein receiving the message indicating that the user device can connect to the wireless network to download the eSIM is based on scanning, by the user device, for available wireless networks. (i.e., In some embodiments, the mobile wireless device 102 performs a search for cellular wireless networks, such as using a full band scan to search for and locate cellular wireless networks. As described in paragraph [0027]).
Regarding claim 6, Chaugule and Yang disclose all limitations recited within claims as described above.
And Chaugule further discloses wherein the first connection comprises a limited connection, and wherein downloading the eSIM comprises downloading the eSIM from at least one server associated with the wireless network via the limited connection. (i.e., When using the limited functionality, bootstrap eSIM 208, only certain servers can communicate with the wireless device 102…At 528, the wireless device 102 downloads and installs the eSIM profile 208 from the SM-DP+ server. As described in paragraph [0043]).
Regarding claim 9 and 14, Chaugule and Yang disclose all limitations recited within claims as described above.
And Chaugule further discloses wherein the at least one service comprises at least one of a voice communication service, a messaging communication service, or a mobile data service. (i.e., the MNOs 114 can represent different wireless service providers that provide specific cellular wireless services (e.g., voice and data) to which the wireless device 102 can subscribe, As described in paragraph [0036]).
Claims 5, and 13 are rejected under 35 U.S.C. 103 as obvious over Chaugule et al. (hereinafter “Chaugule”, US2024/0007847) in view of Yang et al. (hereinafter “Yang”, US20200178070) and further in view of Huang et al. (hereinafter “Huang”, US2023/0044554).
Regarding claim 5 and 13, Chaugule and Yang disclose all limitations recited within claims as described above, but does not expressly disclose feature of these claims: wherein the message comprises a system information block (SIB) message.
In a similar endeavor, Huang discloses wherein the message comprises a system information block (SIB) message. (i.e., the terminal device may obtain the first parameter set from a synchronization signal and/or a broadcast signal and/or a system information block that are sent by the network device, or the terminal device may receive a message from another device to obtain the first parameter set., As described in paragraph [0165]).
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Huang into the invention of Chaugule and Yang in order to provide an optimal level of services to users.
Claims 7 is rejected under 35 U.S.C. 103 as obvious over Chaugule et al. (hereinafter “Chaugule”, US2024/0007847) in view of Yang et al. (hereinafter “Yang”, US2020/0178070) and further in view of Holla et al. (hereinafter “Holla”, US2024/0048962).
Regarding claim 7, Chaugule and Yang disclose all limitations recited within claims as described above, but does not expressly disclose feature of these claims:
wherein the user device is associated with a device identifier, the method further comprising: based on the device identifier corresponding to the eSIM, receiving an indication of a location associated with the eSIM, wherein downloading the eSIM comprises downloading the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM.
In a similar endeavor, Holla discloses wherein the user device is associated with a device identifier, the method further comprising: based on the device identifier corresponding to the eSIM, receiving an indication of a location associated with the eSIM, wherein downloading the eSIM comprises downloading the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM. (i.e. identify a geographic location associated with the device; identify at least one carrier that provides a network communication service to the geographic location of the device; …and generate for display, on a graphical user interface, a prompt to a user indicating that the eSIM profile stored on the at least one subscription server is available for download, As described in paragraph [0018]).
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Holla into the invention of Chaugule and Yang in order to provide an optimal level of services to users.
Claims 8 is rejected under 35 U.S.C. 103 as obvious over Chaugule et al. (hereinafter “Chaugule”, US2024/0007847) in view of Yang et al. (hereinafter “Yang”, US2020/0178070) and further in view of Somasekhar (hereinafter “Somasekhar”, US2025/0113174).
Regarding claim 8, Chaugule and Yang disclose all limitations recited within claims as described above, but does not expressly disclose feature of these claims:
wherein the user device is associated with a device identifier, the method further comprising:
based on the device identifier not corresponding to the eSIM, receiving an indication to select a subscription associated with the wireless network; and
based on a selected subscription associated with the wireless network, receiving an indication of a location associated with the eSIM, wherein downloading the eSIM comprises downloading the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM.”
In a similar endeavor, Somasekhar discloses wherein the user device is associated with a device identifier, the method further comprising:
based on the device identifier not corresponding to the eSIM, receiving an indication to select a subscription associated with the wireless network; (i.e., If no eSIM subscription is found, the device 201 performs operation 229, which includes a subscription plan signup process, As described in paragraph [0049]).
And based on a selected subscription associated with the wireless network, receiving an indication of a location associated with the eSIM, wherein downloading the eSIM comprises downloading the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM. (i.e., After the device 201 has been communicatively attached to the PDN 212, the device 201 can determine the server address of the SMDP server 214 and check with the SMDP server 214 to determine if there is a pending eSIM subscription for download. If the eSIM subscription is found, the device 201 performs operation 230, which includes an eSIM activation process and an eSIM profile download, As described in paragraph [0049]).
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Somasekhar into the invention of Chaugule and Yang in order to provide an optimal level of services to users.
Claims 15 is rejected under 35 U.S.C. 103 as obvious over Hassan et al. (hereinafter “Hassan”, US2025/0175802) in view of Sikes et al. (hereinafter “Sikes”, US2021/0329717.)
Regarding claim 15, Hassan discloses A method comprising:
receiving, from a user device and via a first connection between the user device and a wireless network, a device identifier associated with the user device; (i.e., Upon receiving the call request, the communications service 206 obtains a unique device identifier associated with the user's mobile computing device 202-B., As described in paragraph [0038]).
determining whether the device identifier corresponds to an embedded subscriber identity module (eSIM) associated with the wireless network; (i.e., Once obtained, the communications service 206 compares this current unique device identifier to a previously stored identifier associated with the user's account, ., As described in paragraph [0039]).
Hassan also discloses that, “The integration of the mobile network 210 with the communications service 206 involves the mobile network operator routing phone calls and text messages (e.g., including SMS message) placed to a subscriber's phone number to a server computer of the communications service 206, in addition to their own mobile network routing. Typically, the communications service 206 maintains a database mapping each subscribers' phone number to their respective user accounts.” As described in paragraph [0032]
Hassan discloses all limitations recited within claims as described above, but does not expressly disclose feature of these claims:
based on determining whether the device identifier corresponds to the eSIM, causing a second connection to be established between the user device and the wireless network, wherein the user device is configured to access at least one service provided by the wireless network via the second connection.
In a similar endeavor, Sikes discloses:
based on determining whether the device identifier corresponds to the eSIM, causing a second connection to be established between the user device and the wireless network, wherein the user device is configured to access at least one service provided by the wireless network via the second connection. (i.e., When user device 140 initially connected, remote eSIM provisioning platform 310 can be contacted and identifier resource 245A-C can be provisioned from remote eSIM provisioning platform and stored at user device 140 for use establishing connections, As described in paragraph [0041]).
And Sikes further discloses in paragraph [0041] and [0043] that, “[0041] In an example based on the foregoing, user device 140 can be established as a subscriber of networks 190A-C. To facilitate the authentication of these subscriptions, provider information devices 420A-C can provide identifier resources 245A-C respectively to remote eSIM provisioning platform 310. When user device 140 initially connected, remote eSIM provisioning platform 310 can be contacted and identifier resource 245A-C can be provisioned from remote eSIM provisioning platform and stored at user device 140 for use establishing connections. In an alternative embodiment, user device 140 can remotely access remote eSIM provisioning platform 310, e.g., to get identifier information for establishing connections.
[0043] After the example setup actions described above, to establish a connection via one of networks 420A-C, user device 140 can receive available network information from remote eSIM provisioning platform 310, e.g., that networks 420A-C are available for connections.”
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Sikes into the invention of Hassan in order to provide an optimal level of services to users.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as obvious over Hassan et al. (hereinafter “Hassan”, US2025/0175802) in view of Sikes et al. (hereinafter “Sikes”, US2021/0329717), and further in view of Yang et al. (hereinafter “Yang”, US2020/0178070.)
Regarding claim 16, Hassan and Sikes disclose all limitations recited within claims as described above, but does not expressly disclose feature of these claims:
wherein the device identifier comprises an embedded universal integrated circuit card identifier.
In a similar endeavor, Yang discloses wherein the device identifier comprises an embedded universal integrated circuit card identifier. (i.e., In some embodiments, the one or more hardware device identifiers include an eUICC identifier (EID) and/or an international mobile equipment identifier (IMEI) of the mobile wireless device 102, As described in paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Yang into the invention of Hassan and Sikes in order to provide an optimal level of services to users.
Regarding claim 17, Hassan, Sikes, and Yang disclose all limitations recited within claims as described above.
And Yang further discloses wherein the user device is not provided access to the at least one service provided by the wireless network based on the first connection. (i.e., At 606, the mobile wireless device 102 establishes a secure connection to the cellular wireless network. In some embodiments, the secure connection between the mobile wireless device 102 and the cellular wireless network is restricted to access to a provisioning server, As described in paragraph [0032]).
Claims 18, 19 and 20 are rejected under 35 U.S.C. 103 as obvious over Hassan et al. (hereinafter “Hassan”, US2025/0175802) in view of Sikes et al. (hereinafter “Sikes”, US2021/0329717), and further in view of PADOVA et al. (hereinafter “Padova”, US2024/0267722) and Holla et al. (hereinafter “Holla”, US20240048962.)
Regarding claim 18, Hassan and Sikes disclose all limitations recited within claims as described above, but does not expressly disclose feature of these claims:
wherein causing the second connection to be established between the user device and the wireless network comprises sending, to the user device, an indication of a location associated with the eSIM, and wherein the user device is configured to download the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM.
In a similar endeavor, Padova discloses wherein causing the second connection to be established between the user device and the wireless network comprises sending, to the user device, an indication of a location associated with the eSIM, (i.e., The bootstrap server forwards the unique device ID, the use case type value, and local cellular wireless network location information, As described in paragraph [0025]),
And Holla further discloses wherein the user device is configured to download the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM. (i.e., identify a geographic location associated with the device; identify at least one carrier that provides a network communication service to the geographic location of the device; …and generate for display, on a graphical user interface, a prompt to a user indicating that the eSIM profile stored on the at least one subscription server is available for download, As described in paragraph [0018]),
Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Padova and Holla into the invention of Hassan and Sikes in order to provide an optimal level of services to users.
Regarding claim 19 Hassan, Sikes, Holla and Padova disclose all limitations recited within claims as described above.
and Hussan further discloses:
wherein determining if the device identifier corresponds to the eSIM comprises determining that the device identifier corresponds to the eSIM, (i.e., Once obtained, the communications service 206 compares this current unique device identifier to a previously stored identifier associated with the user's account, As described in paragraph [0039]).
And Padova further discloses wherein causing the second connection to be established between the user device and the wireless network comprises sending, to the user device, an indication of a location associated with the eSIM, (i.e., The bootstrap server forwards the unique device ID, the use case type value, and local cellular wireless network location information, As described in paragraph [0025]),
And additionally, Holla discloses wherein the user device is configured to download the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM. (i.e., identify a geographic location associated with the device; identify at least one carrier that provides a network communication service to the geographic location of the device; …and generate for display, on a graphical user interface, a prompt to a user indicating that the eSIM profile stored on the at least one subscription server is available for download, As described in paragraph [0018]),
Regarding claim 20, Hassan, Sikes, Holla and Padova disclose all limitations recited within claims as described above.
and Hassan further discloses wherein determining if the device identifier corresponds to the eSIM comprises determining that the device identifier does not correspond to the eSIM, (i.e., A mismatch between the current and stored identifiers could indicate one of at least two possible scenarios. ... In any case, the mismatch triggers the communications service 212 to initiate an authentication process., As described in paragraph [0039]),
And Padova further discloses wherein causing the second connection to be established between the user device and the wireless network comprises:
sending, to the user device, an indication to select a subscription associated with the wireless network, (i.e., The bootstrap server forwards the unique device ID, the use case type value, and local cellular wireless network location information, As described in paragraph [0025]), and
based on a selected subscription associated with the wireless network, sending, to the user device, an indication of a location associated with the eSIM. (i.e., The wireless device 102 selects an i-IMSI value (which in some embodiments can be based on a determined geographic location of the wireless device 102, As described in paragraph [0039].)
And Holla further discloses wherein the user device is configured to download the eSIM from at least one server associated with the wireless network based on the indication of the location associated with the eSIM. (i.e., identify a geographic location associated with the device; identify at least one carrier that provides a network communication service to the geographic location of the device; …and generate for display, on a graphical user interface, a prompt to a user indicating that the eSIM profile stored on the at least one subscription server is available for download., As described in paragraph [0018].)
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 ERIC M. VO whose telephone number is (571)272-9854. The examiner can normally be reached T-F; 7:30 - 5:30.
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, Kathy Wang-Hurst can be reached at 571-270-5371. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric M. Vo/Examiner, Art Unit 2644
/KATHY W WANG-HURST/Supervisory Patent Examiner, Art Unit 2644
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