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
Applicant's election with traverse of Group 1 (claims 44-51) in the reply filed on 08/04/2026 is acknowledged. The traversal is on the ground(s) that the Claims in Groups I, II, and III share a single general inventive concept. This is not found persuasive because the claims in Group 1 and the non-elected group are directed to patentably distinct inventions with separate operational features/structures, and examining both together would require a distinct search across separate classification fields, creating an undue burden.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 44-46 and 48-51 are rejected under 35 U.S.C. 103 as being unpatentable over Thakker (US 2003/0064723 A1) in view of AHMED ABU SHOHEL et al. (WO 2017/220154 A1).
Regarding claim 44, Thakker teaches a method performed by network equipment in a first wireless communication network (see fig. 2A), the method comprising: receiving, from a second wireless communication network, subscription data for a subscription to the second wireless communication network (see par. 0023: The local operator 34 creates a local subscription 204 for the subscriber 32 using the LMSISDN and the subscriber 32 IMSI and any additional service parameters provided by the home operator); creating, based on the received subscription data, a subscription to the first wireless communication network (see par. 0023: The local operator 34 creates a local subscription 204 for the subscriber 32 using the LMSISDN and the subscriber 32 IMSI and any additional service parameters provided by the home operator). Thakker is silent to mention transmitting information associated with the created subscription to wireless communication equipment that is to be provided wireless communication service from the first wireless communication network according to the created subscription. However, AHMED ABU SHOHEL et al. teach transmitting information associated with the created subscription to wireless communication equipment that is to be provided wireless communication service from the first wireless communication network according to the created subscription (see page 6, lines 11-14: At purchase of a subscription for an eUICC device the mobile network operator provides an activation code for enabling the user to download a profile to the eUICC of the device. The subscription comprises credentials which are loaded into the operator's network (e.g. HSS thereof) and into the eUICC enabling the device to obtain access to the mobile network. The profile may be seen as subscription parameters and credentials packaged for eUICC or installed on ISD-P in eUICC).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective the filling date of claimed invention (AIA ) to modify the limitation “transmitting information associated with the created subscription to wireless communication equipment that is to be provided wireless communication service from the first wireless communication network according to the created subscription” of AHMED ABU SHOHEL et al. to the method of Thakker in order for the device owner obtains a subscription for the device from the operator by providing the operator with relevant information about the device to be provisioned, optionally including eUICC ID (EID) and International Mobile Station Equipment Identity (IMEI).
Regarding claim 45, Thakker also teaches according to the subscription to the second wireless communication network, the second wireless communication network is a home network and the first wireless communication network is a visited network (see figs. 2A and 2B and par. 0023, par. 0025: With reference to FIG. 2A, an example of a handshake between two wireless network operators using the invention is shown. This must occur prior to the local operator providing service to the non-local subscriber. A home network operator 30 is illustrated requesting a Local MSISDN (LMSISDN) 200 for a particular subscriber 32, identified by a unique IMSI. A local operator 34 provides a LMSISDN 202 uniquely identifying the subscriber 32. Preferably, the provision of a LMSISDN is performed according to prearrangements between network operators including billing arrangements and specification of service parameters. The local operator 34 creates a local subscription 204 for the subscriber 32 using the LMSISDN and the subscriber 32 IMSI and any additional service parameters provided by the home operator 30. At a minimum, the local subscription, in addition to providing a LMSISDN, includes one or more purge conditions for triggering the termination of the local subscription for the non-local subscriber 32).
Regarding claim 46, Thakker also teaches wherein the subscription data includes: an equipment identifier that identifies the wireless communication equipment; and/or an identifier of, or a pointer to, the subscription to the second wireless communication network (see par. 0023: the subscriber 32 IMSI).
Regarding claim 48, AHMED ABU SHOHEL et al. also teaches wherein said creating comprises forming subscription data for the subscription to the first wireless communication network and storing the formed subscription data in a subscription data store for the first wireless communication network, wherein the subscription data for the subscription to the first wireless communication network includes at least some of the received subscription data for the subscription to the second wireless communication network (see page 13, lines 21-28: At arrow 102, the MNO migration service 21a asks for the eUICC Information Set (EIS) and the ICCID of the profile that is to be migrated from the migration application 23. The EIS comprises a certificate of the eUICC 34 of the source device 10. The certificate also includes the EID of the eUICC. Using this certificate the migration service 21a verifies the EID of the eUICC and matches the received ICCID of the profile to be migrated. This verification may use an internal database of the MNO (if it stores all the ICCID) or the migration service 21a may simply store the ICCID for future matching).
Regarding claim 49, AHMED ABU SHOHEL et al. also teaches wherein said creating comprises transmitting, to subscription manager data preparation equipment, an order for a profile for the subscription to the first wireless communication network, wherein the information associated with the created subscription includes information usable to retrieve the profile from the subscription manager data preparation equipment (see page 6, lines 11-14: Generally, a subscription describes a commercial relationship between an end user and a service provider (the mobile network operator). At purchase of a subscription for an eUICC device the mobile network operator provides an activation code for enabling the user to download a profile to the eUICC of the device. The subscription comprises credentials which are loaded into the operator's network (e.g. HSS thereof) and into the eUICC enabling the device to obtain access to the mobile network. The profile may be seen as subscription parameters and credentials packaged for eUICC or installed on ISD-P in eUICC).
Regarding claim 50, Thakker also teaches receiving information indicating a subscription plan to be associated with the subscription to the first wireless communication network, wherein the subscription plan defines one or more of: one or more services to be provided under the subscription to the first wireless communication network; and a billing policy according to which the subscription to the first wireless communication network is to be billed; wherein the subscription to the first wireless communication network is created according to the indicated subscription plan (see par. 0023: Preferably, the provision of a LMSISDN is performed according to prearrangements between network operators including billing arrangements and specification of service parameters. The local operator 34 creates a local subscription 204 for the subscriber 32 using the LMSISDN and the subscriber 32 IMSI and any additional service parameters provided by the home operator 30. At a minimum, the local subscription, in addition to providing a LMSISDN, includes one or more purge conditions for triggering the termination of the local subscription for the non-local subscriber 32. Examples of purge conditions include a selected expiration time and date, or usage of a selected number of air time minutes. The home operator 30 provisions a new Local MSISDN service in the home HLR 40, step 206. The service parameters typically include the LMSISDN and purge conditions. Typically, the network operators 30 and 34 maintain billing systems 208, 210 related to providing services using the invention).
Regarding claim 51, Thakker also teaches and shows transmitting a request from the network equipment in the first wireless communication network to the second wireless communication network, wherein the request is a request for the subscription data for the subscription to the second wireless communication network or is a request for assistance with creating the subscription to the first wireless communication network, wherein the request includes a subscription identifier that identifies the subscription to the second wireless communication network, and wherein the subscription data for the subscription to the second wireless communication network is received in response to transmitting the request (see fig. 2A and par, 0023).
Claim(s) 47 is rejected under 35 U.S.C. 103 as being unpatentable over Thakker (US 2003/0064723 A1) in view of AHMED ABU SHOHEL et al. (WO 2017/220154 A1) and further in view of Document D (ERICSSON: "Update to key issue #2.3, and a new solution on identifiers demonstrating the proposed terms", 3GPP DRAFT; S3-170285, 3RD GENERATION PARTNERSHIP PROJECT (3GPP), MOBILE COMPETENCE CENTRE ; 650, ROUTE DES LUCIOLES ; F-06921 SOPHIA-ANTIPOLIS CEDEX ; FRANCE, vol. SA WG3, no. Sophia Antipolis, France; 20170206 - 20170210 2 February 2017 (2017-02-02), XP051217633, Retrieved from the Internet: URL:http://www.3gpp.org/ftp/Meetings_3GPP_SYNC/SA3/Docs/ [retrieved on 2017-02-02])
Regarding claim 47, Thakker and AHMED ABU SHOHEL et al. do not mention wherein the subscription data excludes personally identifiable information of a subscriber that owns the subscription to the second wireless communication network, wherein the personally identifiable information includes: billing information usable to directly bill a subscriber for the subscription to the second wireless communication network; and/or a name of and/or address of a subscriber that owns the subscription to the second wireless communication network. Document D teaches wherein the subscription data excludes personally identifiable information of a subscriber that owns the subscription to the second wireless communication network, wherein the personally identifiable information includes: billing information usable to directly bill a subscriber for the subscription to the second wireless communication network; and/or a name of and/or address of a subscriber that owns the subscription to the second wireless communication network (see page 2, lines 60-80: Personally identifiable information (PII): Any information that (a) can be used to identify a subscription to whom such information relates, or (b) is or might be directly or indirectly linked to a subscription. Privacy: The right to the protection to any information that (a) can be used to identify a subscription to whom such information relates, or (b) is or might be directly or indirectly linked to a subscription. Privacy impact assessment: Overall process of privacy risk identification, risk analysis and risk evaluation with regard to the processing of personally identifiable information (PII).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective the filling date of claimed invention (AIA ) to modify the limitation “wherein the subscription data excludes personally identifiable information of a subscriber that owns the subscription to the second wireless communication network, wherein the personally identifiable information includes: billing information usable to directly bill a subscriber for the subscription to the second wireless communication network; and/or a name of and/or address of a subscriber that owns the subscription to the second wireless communication network” of Document D to the method of Thakker in order for the privacy protection of personally identifiable information (PII) when processed in information and communication technology systems.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID Q NGUYEN whose telephone number is (571)272-7844. The examiner can normally be reached Monday-Friday 7:00 AM - 3:00 PM.
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/DAVID Q NGUYEN/Primary Examiner, Art Unit 2643
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