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 .
Status of the Claims
Claims 11, 13-14, and 17-20, are presented for examination. Applicant filed a request for continued examination (RCE) on 05/01/2026 amending claims 11, 17, and 20; and canceling claims 15 and 16. In light of Applicant’s amendment Examiner has withdrawn the previous § 101 rejection. Examiner has, however, established a new § 101 rejection and maintained the previous and § 103 rejection for claims 11, 13-14, and 17-20, in the instant Office action.
Foreign Priority
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. § 119(a)-(d) or (f), § 365(a) or (b), or § 386(a) based upon Application No. 102021002193.2 filed in Germany (DE) on April 26, 2021. The receipt of the certified copy of this foreign application on October 23, 2023, is acknowledged. The priority claim to the foreign priority document in question was timely made in the application data sheet filed October 23, 2023.
Examiner’s Remarks
Patent eligibility under § 101
Applicant argues in pages 9-12 of Applicant’s Remarks:
Current claim 11 recites a specific machine architecture including a payment card production system having a payment card personalization server, a remote subscriber identification module (SIM) provisioning system having a remote SIM provisioning (RSP) infrastructure and SM-DP/SM-SR or SM-DP+ functionality, a payment card credential transfer interface having a payment-card-production-side section and a remote- SIM-provisioning-side section, a payment card credential storage integral with a data generation system provided in the Data Preparation server or Data Preparation Plus server, and processing of payment card credentials together with a payment card description to generate a payment card package for download to the eUICC.
Current claim 17 likewise recites a particular mobile-device-side architecture including an eUICC and a payment application executed on the mobile device that generates and sends an identifier-based payment card credential download request via the same RSP infrastructure used for subscription profiles, and manages receipt and storage or installation of the requested credentials in the eUICC (see, e.g., paras. [0012]-[0018], [0027]-[0032], Figs. 1-3).
As such, the claims recite concrete machine arrangements and provisioning operations, not a long-standing commercial practice performed by humans, and are not analogous to merely using generic computers as tools. The claims do not recite negotiating a sale, processing a financial settlement, or organizing human behavior. Instead, they recite a particular technical architecture for securely provisioning payment card credentials to an eUICC using the same RSP infrastructure that is otherwise used to provide subscription profiles.
The specification expressly identifies the technical problem and the technical advantages of the claimed architecture. In particular, the disclosure explains that the same payment card credentials can be used identically in a physical payment card and in a digital payment card established in the eUICC, that the card holder can receive the digital payment solution before the physical payment card is received, and even before the physical payment card is produced, that existing RSP infrastructures and their authentication, download, and installation procedures can be reused, and that established RSP profile-download mechanisms can therefore be used to obtain the digital payment solution (para. [0013]).
The disclosure further explains that the payment card credential storage may be provided integrally with the data generation system in the data preparation server or data preparation plus server, and that the data generation system processes stored payment card credentials together with a payment card description to generate a payment card package for download to the eUICC (paras. [0017]-[0018]). On the mobile side, the disclosure explains that the payment application sends a payment card credential download request via the RSP infrastructure and manages receipt and installation of the requested credentials in the eUICC (paras. [0014], [0016], [0031]-[0032], Fig. 3).
Under MPEP § 2106.04(d)(1), a claim reciting a judicial exception is not directed to that exception when the claim as a whole integrates the exception into a practical application, including by improving the functioning of a computer or another technology or technical field. The current claims provide an improvement to the technical field of secure remote provisioning to eUICCs by using the same authenticated RSP infrastructure that provisions subscription profiles, by introducing a production-system-to-RSP credential transfer architecture, and by generating an eUICC-installable payment card package in the data preparation server or data preparation plus server. The claims accordingly impose meaningful technical limits on any alleged abstract idea, and provide a practical application of any recited abstract idea.
Examiner respectfully disagrees. Applicant’s claimed limitations are recited in high level of abstraction lacking details and specifics as to how a technological solution to a problem of technology is carried out. Instead, Applicant’s claims are reciting a use of technology in solving a business problem. Further, the limitations in independent claims 1 and 17, which set forth or describe the recited abstract idea, are not patent eligible either alone or in combination. The additional elements/limitations in independent claims 1 and 17 are not patent eligible either alone or in combination. Further, the combination of these additional elements/limitations and the limitations which set forth or describe the recited abstract idea is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations and the limitations which set forth or describe the recited abstract idea do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As such, instant claims are not patent eligible under § 101. Applicant is invited to set up an interview with Examiner to further discuss this matter.
Prior art under § 103
Applicant argues in page 9 of Applicant’s Remarks:
Huxham clearly begins with a consumer-presented, already-issued portable payment device and a merchant-side point-of-sale reader. In contrast to Huxham, claim 11 begins with a payment card production system comprising a payment card personalization server and a production-side interface section that provides payment card credentials used to produce a physical payment card to a remote SIM provisioning system (paras. [0012], [0028]-[0030], Figs. 1-2). Huxham does not disclose or suggest that production-time card personalization data is transferred from a payment card production system to an RSP system.
The combination of Phillips with Huxham does not cure this deficiency . . . Phillips does not disclose or suggest transferring payment card credentials from a card personalization server to a remote SIM provisioning system, storing them in a credential storage associated with SM-DP/SM-SR or SM-DP+, and then providing those credentials to an eUICC via the same RSP infrastructure used for subscription profiles.
The combination of Chen with Huxham and Phillips is similarly deficient . . . Nothing in Chen teaches or suggests payment card credentials provided from a payment card production system, much less the same payment card credentials being used both for a physical payment card and a digital payment solution.
Examiner respectfully disagrees.
Applicant’s independent claim limitations are not reciting ordered combination of steps. Therefore, whether Huxham begins with a consumer-presented, already-issued portable payment device and a merchant-side point-of-sale reader or a payment card production system is not applicable. Huxham discloses all the other limitations of independent claims 11 and 17 except the following:
having an eUICC as a UICC, and having a remote SIM provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system providing the payment card credentials to the eUICC as a generic remotely accessible server;
having a payment card production system comprising at least a payment card personalization server constructed to personalize physical payment cards as the system providing the payment card credentials to the system providing the payment card credentials instead of a point of sales system; and
the RSP infrastructure comprises profile download means constructed to receive and process profile download requests, and in reply to a received profile download request, to download a subscription profile to a eUICC corresponding to the profile download request; and payment card credential download means constructed to receive payment card credential download requests and in reply to a received payment card credential download request, to download payment card credentials corresponding to the payment card credential download request to a eUICC.
Huxham is modified by Chen disclosing:
Chen: page 1, ¶ 9: “Similar to the traditional SIM, a computing module called an embedded SIM (eSIM) has been developed to control authentication and service access for next generation electronic devices, including machine-to-machine (M2M) devices that may operate without end user interaction (e.g., smart meters, light bulbs, appliances, and/or the like) and consumer devices managed by end users (e.g., smart phones, smart watches, wearables, connected cars, and/or the like). However, unlike a traditional SIM, an eSIM is not removable and is remotely programmable and has a capability to accommodate multiple profiles, each of which may include MNO and subscriber data that would otherwise be stored on a traditional SIM card. For example, the eSIM may be implemented as an embedded Universal Integrated Circuit Card (eUICC) that stores MNO credentials and provides the ability to remotely program (or reprogram) the MNO credentials over-the-air (OTA) through a process called remote SIM provisioning remote SIM provisioning (RSP).”; and
Chen: page 5, ¶ 30: “As further shown in FIG. 1C, and by reference number 130, the onboarding device may communicate with the RSP platform to prepare the derived profile for provisioning to the target device. For example, in implementations in which the target device obtains the derived profile from the RSP platform using business-as-usual (BAU) procedures, the onboarding device may provide the public key of the target device to the RSP platform together with the derived set of credentials that was generated based on the existing set of credentials in the active profile of the onboarding device. In such cases, the RSP platform may use the public key of the target device to generate an encryption key for the profile and create a package that includes the subscription identifier for the target device, the derived set of credentials, the encryption key, and/or the like. The RSP platform may further use the public key of the target device to encrypt the package, which at that time may be prepared and ready for downloading by the target device.”; wherein the recitations of claim 12 merely defines the analogical use of a profile download request well-known in the context of a RSP infrastructure in order to request a payment card credential download.
Further, Huxham is also modified by Phillips disclosing:
Phillips: page 2, ¶ 19: “As suggested above, a function of the personalization system 100 is to personalize the IC payment card indicated at 102 in FIG. 1. The direct, contactless writing of account specific information to the payment card 102 is performed by a mobile device 104, which may be considered part of the personalization system 100. The mobile device 104 is shown in communication with a remote card personalization server computer 106, which is also to be deemed part of the personalization system 100. The communication between the mobile device 104 and the personalization server 106 occurs via a tele-communication/ data communication infrastructure 108, which may be the commonly available infrastructure by which mobile devices are enabled to exchange data communications with remote computers.”; and page 3, ¶ 50: “FIG. 5 is a flow chart that illustrates an example of a payment card personalization process that may be performed in the personalization system 100 of FIG. 1, according to aspects of the present disclosure.”
Therefore, Huxham modified by Chen and Phillips discloses all the elements of independent claims 1 and 17. Applicant is invited to set up an interview with Examiner to further discuss this matter.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 11, 13-14, and 17-20, are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Here, the claimed invention of claims 11 and 13-20 is a system, which is one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 11, 13-14, and 17-20, are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 11, 13-14, and 17-20, however, recite an abstract idea of a payment solution provisioning system. The creation of a payment solution provisioning system, as recited in the independent claims 11 and 17 belongs to certain methods of organizing human activity (i.e., commercial interactions) that are found by the courts to be abstract ideas. The limitations in independent claims 1 and 17, which set forth or describe the recited abstract idea, are found in the following steps:
“personalize physical payment cards” (claim 11);
“process profile download requests” (claim 11);
“download a subscription profile to electronic universal integrated circuit card (eUICC) corresponding to the profile download request in reply to a received profile download request” (claim 11);
“download payment card credentials corresponding to the payment card credential download request to electronic universal integrated circuit card (eUICC) in reply to a received payment card credential download request” (claim 11);
“process payment card credentials stored in the payment card credential storage together with a payment card description, so as to generate a payment card package for download to the eUICC, so as to install in the eUICC a digital payment solution or digital payment card” (claim 11);
“generate a payment card credential download request including an identifier identifying payment card credentials used for production of a physical payment card for a user of the mobile device” (claim 17);
“manage receipt of requested payment card credentials corresponding to the identifier from the SIM provisioning system” (claim 17); and
“install the received payment card credentials to electronic universal integrated circuit card (eUICC)” (claim 17).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 11 and 17 recite additional limitations:
“a payment card production system comprising a payment card personalization server” (claim 11);
“a remote subscriber identification module (SIM) provisioning system comprising a remote SIM provisioning (RSP) infrastructure, subscription management data preparation server and a subscription management secure router server, or alternatively a subscription management data preparation plus server and a link connectable to electronic universal integrated circuit cards (eUICCs)” (claim 11);
“a payment card credential transfer interface means comprising a payment card production side interface section and a remote subscriber identification module (SIM) provisioning system side interface section” (claim 11);
“a payment card credential storage, provided: in the or connected to the or connectable to the remote subscriber identification module (SIM) provisioning system; integrally with a data generation system, and integrally with a data generation system provided in the data preparation server or data preparation plus server” (claim 11);
“the remote SIM provisioning (RSP) infrastructure of the remote SIM provisioning system, wherein the RSP infrastructure comprises profile download means and payment card credential download means, and wherein the RSP infrastructure is the same via which subscription profiles are provided to eUICCs” (claim 11);
“an electronic universal integrated circuit card (eUICC)” (claim 17);
“a payment application executed on a mobile device and comprising a payment card credential interface” (claim 17);
“a remote subscriber identification module (SIM) provisioning system” (claim 17); and
“a remote SIM provisioning (RSP) infrastructure” (claim 17).
These additional elements are recited at a high level of generality (i.e., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components. Also, the following limitations recite insignificant extra solution activity (for example, data gathering):
“provide subscription profiles to eUICCs” (claim 11);
“provide payment card credentials, provided in the payment card production system for production of a physical payment card” (claim 11);
“receive payment card credentials” (claim 11);
“store the payment card credentials, received via the payment card credential transfer interface means, such that the payment card credentials are provided to eUICCs via the RSP infrastructure of the remote SIM provisioning system” (claim 11);
“receive profile download requests” (claim 11);
“receive payment card credential download requests” (claim 11);
“provide the payment card credentials to eUICCs” (claim 11);
“provide subscription profiles to eUICCs” (claim 11);
“send a payment card credential download request including an identifier identifying payment card credentials used for production of a physical payment card for a user of the mobile device” (claim 17); and
“store the received payment card credentials to the eUICC” (claim 17).
These additional limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional limitations of independent claims 11 and 17 here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations).
Conclusion of Step 2A Analysis: The limitations in independent claims 1 and 17, which set forth or describe the recited abstract idea, are not patent eligible either alone or in combination. The additional elements/limitations in independent claims 1 and 17 are not patent eligible either alone or in combination. Further, the combination of these additional elements/limitations and the limitations which set forth or describe the recited abstract idea is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations and the limitations which set forth or describe the recited abstract idea do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, independent claims 11 and 17 are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 1 and 17 are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s Specification describes these additional elements in following terms:
The payment solution provisioning system further comprises a remote SIM provisioning system 2 comprising an RSP infrastructure 7 constructed to provide subscription profiles to eUICCs 5. The SIM provisioning system 2 comprises at least: either (i) a subscription management Data Preparation server SM-DP and a subscription management Secure Router server SM-SR, for example according to GSMA SGP.02, or alternatively a subscription management Data Preparation Plus server SM-DP+, for example according to GSMA SGP.22. The subscription management Data Preparation Plus server SM-DP+ preferably essentially combines both functionalities of a subscription management Data Preparation server and a
subscription management Secure Router server in one server system.
The payment solution provisioning system is characterized by a payment card credential transfer interface means 3 between the payment card production system 1 and the remote SIM provisioning system 2, and by a payment card credential storage 4.
The interface means 3 comprises a payment card production side interface section 31 con- structed to provide payment card credentials CR, provided in the payment card production system 1 for production of a physical payment card 6, to the remote SIM provisioning system 2. The interface means 3 further comprises a remote SIM provisioning system side interface section 32 constructed to receive payment card credentials CR provided by a payment card production system 1 at the payment card production side interface 31.
The payment card credential storage 4 is provided in the or connected to the or connectable to the remote SIM provisioning system 2, and is constructed to store the payment card credentials CR, which are or have been received via the payment card credential transfer interface means 3. The payment card credential storage 4 stores the payment card credentials CR in such a way that the payment card credentials CR can be provided to eUICCs 5 via
the RSP infrastructure 7 of the remote SIM provisioning system 2 via which subscription profiles are provided to eUICCs 5.
This is a description of general-purpose computer. Further, the elements of “providing,” “receiving,” “storing,” and “sending” information amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. The additional elements of “providing,” “receiving,” “storing,” and “sending” information were considered insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), the additional elements of independent claims 11 and 17 “provide,” “receive,” and “send” data over a network in a merely generic manner. Further, similarly to Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, the additional elements of independent claims 11 and 17 “store” information in memory. The courts have recognized “providing,” “receiving,” “storing,” and “sending” information functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional elements of independent claims 11 and 17 are well-understood, routine, and conventional. Further, taken as combination, the additional elements add nothing more than what is present when the elements are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 11 and 17 are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 13-14 and 20 depend on independent claim 11; and dependent claims 18-19 depend on independent claim 17. The elements in dependent claims 13-14 and 18-20, which set forth or describe the abstract idea, are:
“the payment card credentials stored on the payment card credential storage and downloaded to the eUICC are accompanied by a payment card applet also stored on the payment card credential storage and downloaded and installed to the eUICC such that the payment card applet makes use of the payment card credentials in payment transactions” (Claim 13: further narrowing the recited abstract idea);
“the payment card credentials stored in the eUICC are identical to payment card credentials used to produce a physical payment card” (Claim 14: further narrowing the recited abstract idea);
“the received payment card credentials are stored and/or installed in the eUICC in such a way that the payment card credentials stored and/or installed in the eUICC can be used for payments in a similar way to a payment card produced from the payment card credentials” (Claim 18: further narrowing the recited abstract idea);
“the payment card credentials stored and/or installed in the eUICC are identical to payment card credentials used to produce a physical payment card” (Claim 19: further narrowing the recited abstract idea); and
“a mobile device hosting an eUICC, the mobile device comprising a payment application executed on the mobile device and comprising a payment card credential interface constructed to generate and send, from the mobile device to the remote SIM provisioning system, via the RSP infrastructure, a payment card credential download request including an identifier identifying payment card credentials used for production of the physical payment card for a user of the mobile device, and to manage receipt of requested payment card credentials corresponding to the identifier from the remote SIM provisioning system, via the RSP infrastructure, and to store and install the received payment card credentials to the eUICC” (Claim 20: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 13-14 and 18-20 do not correct the deficiencies of independent claims 11 and 17 and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 11, 13-14, and 17-20, are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
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 § 102 of this title, 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.
Claims 11, 13-14, and 17-20, are rejected under 35 U.S.C. § 103 as being unpatentable over Huxham (US 10,198,728 B2) in view of Chen (US 2020/0359212 A1), and further in view of Phillips (US 2019/0354959 A1).
As to Independent Claim 11
Huxham shows:
a point of sales system (Huxham: col. 9, lines 21-24: “The point of sales device (120) may include one or more of various means for retrieving information from a portable payment device including the user placing the portable payment device (114) in physical contact with the point of sales device (120).”);
a remote subscriber identification module (SIM) provisioning system comprising a generic remotely accessible server, and comprising at least: a subscription management data preparation server and a subscription management secure router server, or alternatively a subscription management data preparation plus server and a link connectable to electronic universal integrated circuit cards (eUICCs) (Huxham: col. 9, lines 57-60: “The remotely accessible server (140) may be any appropriate sever computer or distributed server computer system and has a database (142) stored in a digital memory therein and also has a secure memory.”);
a payment card credential transfer interface means comprising: a point of sales system side interface section constructed to provide payment card credentials, provided in the payment card production system for production of a physical payment card, to the remote SIM provisioning system (Huxham: col. 9, lines 39-46: “The point of sales device (120) is further configured to format the payment credentials as well as the identifier into a financial transaction message and . . . to insert a server routing code into the financial transaction message such that the financial transaction message is routed to the remotely accessible server (140).”);
a remote SIM provisioning system side interface section constructed to receive payment card credentials provided by a payment card production system at the payment card production side interface (Huxham: col. 9, lines 62-67: “The remotely accessible server (140) is configured to receive payment credentials from a point of sales device (e.g. 120), where the payment credentials have been obtained from a portable payment device (e.g. 114) presented by a consumer (e.g. 102) at the point of sales device (120).”); and
a payment card credential storage, provided in the or connected to the or connectable to the remote SIM provisioning system, the payment card credential storage constructed to store the payment card credentials, received via the payment card credential transfer interface means, such that the payment card credentials are provided to UICCs via the RSP infrastructure of the remote SIM provisioning system, the RSP infrastructure being the same via which subscription profiles are provided to UICCs (Huxham: col. 8, lines 10-12: “The secure element (113) may be disposed within a communication component of the mobile device, such as a universal integrated circuit card (UICC).”; col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”; col. 11, lines 18-34: “The payment credentials are provisioned to the mobile device (112) from the remotely accessible server (140) and stored in the secure element (113) via over-the-air (OTA) provisioning. This accordingly may enable the user to make contactless payments using his or her mobile device (112) as a contactless portable payment device.”; wherein the fact that the remotely accessible server is configured to receive a financial transaction message comprising the payment card credentials and send the credentials for storage in the UICC of the mobile device implies that payment card credentials are stored in a location which can be labelled as payment card credential storage and that the payment card credentials are provided to UICCs via the RSP infrastructure of the remote SIM provisioning system);
the payment card credential storage is provided integrally with a data generation system provided in the data preparation server or data preparation plus server (Huxham: col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”; wherein the fact that the remotely accessible server is configured to receive a financial transaction message comprising the payment card credentials and send the credentials for storage in the UICC of the mobile device implies that payment card credentials are provided integrally with a data generation system provided in the data preparation server; and col. 11, lines 18-34: “The payment credentials are provisioned to the mobile device (112) from the remotely accessible server (140) and stored in the secure element (113) via over-the-air (OTA) provisioning. This accordingly may enable the user to make contactless payments using his or her mobile device (112) as a contactless portable payment device.”; wherein the recitation of claim 15 merely defines a further detail of the design option of including the remote accessible server of Huxham as part of the RSP infrastructure); and
the data generation system is constructed to process payment card credentials stored in the payment card credential storage together with a payment card description, so as to generate a payment card package for download to the a generic remotely accessible server, so as to install in the a generic remotely accessible server a digital payment solution or digital payment card (Huxham: col. 7, lines 31-33; and col. 8, lines 38 - col. 9, line 7: “The portable payment device (114) has payment credentials, which may be track 2 and/or track 2 equivalent information (such as EMV tag 57 data), stored therein. Track 2 and track 2 equivalent information may include a bank identification number (BIN), a primary account number (PAN), an expiration date, a service code, discretionary data such as card verification values (CVV) as well as any relevant spacing and redundancy checks. In addition to this, embodiments of the invention provide for the portable payment device (114) to contain payment credentials which may include any one or more of a customer name and/or date of birth, a BIN, a PAN, a service coda, an expiration date, CVV1 or CVV2 numbers, a PIN block or offset, a bank account number, a branch code, a loyalty account number or identifier, credit and/or debit card number information, account balance information and/or other consumer information.”; and col. 11, lines 19-26: “The financial transaction message is received at the remotely accessible server (140). The remotely accessible server uses the identifier contained in the financial transaction message to identify a communication address of an associated mobile device (112). The remotely accessible server (140) uses the communication address to communicate the payment credentials or a derivation of the payment credentials to the mobile device (112) for storage in the secure element (113) associated therewith. The payment credentials are then received by the mobile device (112) and stored securely in the secure element (113) of the mobile device (112).”).
Huxham does not show:
having an eUICC as a UICC, and having a remote SIM provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system providing the payment card credentials to the eUICC as a generic remotely accessible server;
having a payment card production system comprising at least a payment card personalization server constructed to personalize physical payment cards as the system providing the payment card credentials to the system providing the payment card credentials instead of a point of sales system; and
the RSP infrastructure comprises profile download means constructed to receive and process profile download requests, and in reply to a received profile download request, to download a subscription profile to a eUICC corresponding to the profile download request; and payment card credential download means constructed to receive payment card credential download requests and in reply to a received payment card credential download request, to download payment card credentials corresponding to the payment card credential download request to a eUICC.
Chen shows:
having an eUICC as a UICC, and having a remote SIM provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system providing the payment card credentials to the eUICC as a generic remotely accessible server (Chen: page 1, ¶ 9: “Similar to the traditional SIM, a computing module called an embedded SIM (eSIM) has been developed to control authentication and service access for next generation electronic devices, including machine-to-machine (M2M) devices that may operate without end user interaction (e.g., smart meters, light bulbs, appliances, and/or the like) and consumer devices managed by end users (e.g., smart phones, smart watches, wearables, connected cars, and/or the like). However, unlike a traditional SIM, an eSIM is not removable and is remotely programmable and has a capability to accommodate multiple profiles, each of which may include MNO and subscriber data that would otherwise be stored on a traditional SIM card. For example, the eSIM may be implemented as an embedded Universal Integrated Circuit Card (eUICC) that stores MNO credentials and provides the ability to remotely program (or reprogram) the MNO credentials over-the-air (OTA) through a process called remote SIM provisioning remote SIM provisioning (RSP).”); and
the RSP infrastructure comprises profile download means constructed to receive and process profile download requests, and in reply to a received profile download request, to download a subscription profile to a eUICC corresponding to the profile download request; and payment card credential download means constructed to receive payment card credential download requests and in reply to a received payment card credential download request, to download payment card credentials corresponding to the payment card credential download request to a eUICC (Chen: page 5, ¶ 30: “As further shown in FIG. 1C, and by reference number 130, the onboarding device may communicate with the RSP platform to prepare the derived profile for provisioning to the target device. For example, in implementations in which the target device obtains the derived profile from the RSP platform using business-as-usual (BAU) procedures, the onboarding device may provide the public key of the target device to the RSP platform together with the derived set of credentials that was generated based on the existing set of credentials in the active profile of the onboarding device. In such cases, the RSP platform may use the public key of the target device to generate an encryption key for the profile and create a package that includes the subscription identifier for the target device, the derived set of credentials, the encryption key, and/or the like. The RSP platform may further use the public key of the target device to encrypt the package, which at that time may be prepared and ready for downloading by the target device.”; wherein the recitations of claim 12 merely defines the analogical use of a profile download request well-known in the context of a RSP infrastructure in order to request a payment card credential download).
Motivation to combine Huxham and Chen:
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Huxham by having an eUICC as a UICC, and having a remote SIM provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system providing the payment card credentials to the eUICC as a generic remotely accessible server; the RSP infrastructure comprising profile download means constructed to receive and process profile download requests, and in reply to a received profile download request, to download a subscription profile to a eUICC corresponding to the profile download request; and payment card credential download means constructed to receive payment card credential download requests and in reply to a received payment card credential download request, to download payment card credentials corresponding to the payment card credential download request to a eUICC of Chen in order to install, enable, disabling, delete, and/or the like of different operator profiles without having to physically swap the eUICC (Chen: page 1, ¶ 1).
Phillips shows:
having a payment card production system comprising at least a payment card personalization server constructed to personalize physical payment cards as the system providing the payment card credentials to the system providing the payment card credentials instead of a point of sales system (Phillips: page 2, ¶ 19: “As suggested above, a function of the personalization system 100 is to personalize the IC payment card indicated at 102 in FIG. 1. The direct, contactless writing of account specific information to the payment card 102 is performed by a mobile device 104, which may be considered part of the personalization system 100. The mobile device 104 is shown in communication with a remote card personalization server computer 106, which is also to be deemed part of the personalization system 100. The communication between the mobile device 104 and the personalization server 106 occurs via a tele-communication/data communication infrastructure 108, which may be the commonly available infrastructure by which mobile devices are enabled to exchange data communications with remote computers.”; and page 3, ¶ 50: “FIG. 5 is a flow chart that illustrates an example of a payment card personalization process that may be performed in the personalization system 100 of FIG. 1, according to aspects of the present disclosure.”).
Motivation to combine Huxham and Phillips:
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Huxham by having a payment card production system comprising at least a payment card personalization server constructed to personalize physical payment cards as the system providing the payment card credentials to the system providing the payment card credentials instead of a point of sales system of Phillips in order to eliminate delay in issuance of the physical payment card so that the account holder has an immediate ability to access the newly issued payment account. (Phillips: page 1, ¶ 10).
As to claim 13: Huxham in view of Chen, and further in view of Phillips, shows all the elements of claim 11. Huxham also shows that the payment card credentials stored on the payment card credential storage and downloaded to the eUICC are accompanied by a payment card applet also stored on the payment card credential storage and downloaded and installed to the eUICC such that the payment card applet makes use of the payment card credentials in payment transactions (Huxham: col. 8, lines 37-40: “Embodiments of the invention provide for an appropriate mobile software application to be resident on the mobile device (112) which allows a user thereof to interface with the secure element (113).”; This is within the customary design options of the skilled person to transmit the application in conjunction with the payment card credentials).
As to claim 14: Huxham in view of Chen, and further in view of Phillips, shows all the elements of claim 11. Huxham also shows that the payment card credentials stored in the eUICC are identical to payment card credentials used to produce a physical payment card (Huxham: col. 7, lines 31-33; and col. 8, lines 38 - col. 9, line 7: “The portable payment device (114) has payment credentials, which may be track 2 and/or track 2 equivalent information (such as EMV tag 57 data), stored therein. Track 2 and track 2 equivalent information may include a bank identification number (BIN), a primary account number (PAN), an expiration date, a service code, discretionary data such as card verification values (CVV) as well as any relevant spacing and redundancy checks. In addition to this, embodiments of the invention provide for the portable payment device (114) to contain payment credentials which may include any one or more of a customer name and/or date of birth, a BIN, a PAN, a service coda, an expiration date, CVV1 or CVV2 numbers, a PIN block or offset, a bank account number, a branch code, a loyalty account number or identifier, credit and/or debit card number information, account balance information and/or other consumer information.”).
As to Independent Claim 17
Huxham shows:
a payment application executed on the mobile device and comprising a payment card credential interface (Huxham: col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”) constructed to:
generate and send from the mobile device to a generic remotely accessible server, a payment card credential download request including an identifier identifying payment card credentials for a user of the mobile device (Huxham: col. 9, lines 39-46: “The point of sales device (120) is further configured to format the payment credentials as well as the identifier into a financial transaction message and . . . to insert a server routing code into the financial transaction message such that the financial transaction message is routed to the remotely accessible server (140).” and col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”);
manage receipt of requested payment card credentials corresponding to the identifier from the generic remotely accessible server (Huxham: col. 9, lines 62-67: “The remotely accessible server (140) is configured to receive payment credentials from a point of sales device (e.g. 120), where the payment credentials have been obtained from a portable payment device (e.g. 114) presented by a consumer (e.g. 102) at the point of sales device (120).”; and col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”); and
store and install the received payment card credentials to the UICC (Huxham: col. 8, lines 10-12: “The secure element (113) may be disposed within a communication component of the mobile device, such as a universal integrated circuit card (UICC).”; col. 10, lines 18-24: “The remotely accessible server (140) is configured to then identify a mobile device (e.g., 112), or a secure element (113) associated with a mobile device (112), corresponding to the identifier and to communicate the payment credentials to the mobile device (112) to be stored in a secure element (113) associated with the mobile device (112).”; col. 11, lines 18-34: “The payment credentials are provisioned to the mobile device (112) from the remotely accessible server (140) and stored in the secure element (113) via over-the-air (OTA) provisioning. This accordingly may enable the user to make contactless payments using his or her mobile device (112) as a contactless portable payment device.”; wherein the fact that the remotely accessible server is configured to receive a financial transaction message comprising the payment card credentials and send the credentials for storage in the UICC of the mobile device implies that payment card credentials are stored in a location which can be labelled as payment card credential storage.).
Huxham does not show:
having a UICC as an electronic universal integrated circuit card (eUICC), and having a subscriber identification module (SIM) provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system via which subscription profiles are provided to eUICCs as a generic remotely accessible server; and
payment card credentials used for production of a physical payment card.
Chen shows:
having a UICC as an electronic universal integrated circuit card (eUICC), and having a subscriber identification module (SIM) provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system via which subscription profiles are provided to eUICCs as a generic remotely accessible server (Chen: page 1, ¶ 9: “Similar to the traditional SIM, a computing module called an embedded SIM (eSIM) has been developed to control authentication and service access for next generation electronic devices, including machine-to-machine (M2M) devices that may operate without end user interaction (e.g., smart meters, light bulbs, appliances, and/or the like) and consumer devices managed by end users (e.g., smart phones, smart watches, wearables, connected cars, and/or the like). However, unlike a traditional SIM, an eSIM is not removable and is remotely programmable and has a capability to accommodate multiple profiles, each of which may include MNO and subscriber data that would otherwise be stored on a traditional SIM card. For example, the eSIM may be implemented as an embedded Universal Integrated Circuit Card (eUICC) that stores MNO credentials and provides the ability to remotely program (or reprogram) the MNO credentials over-the-air (OTA) through a process called remote SIM provisioning (RSP).”).
Motivation to combine Huxham and Chen:
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Huxham by having a UICC as an electronic universal integrated circuit card (eUICC), and having a subscriber identification module (SIM) provisioning system comprising a remote SIM provisioning (RSP) infrastructure as the system via which subscription profiles are provided to eUICCs as a generic remotely accessible server of Chen in order to install, enable, disabling, delete, and/or the like of different operator profiles without having to physically swap the eUICC (Chen: page 1, ¶ 1).
Phillips shows:
Providing payment card credentials used for production of a physical payment card (Phillips: page 2, ¶ 19: “As suggested above, a function of the personalization system 100 is to personalize the IC payment card indicated at 102 in FIG. 1. The direct, contactless writing of account specific information to the payment card 102 is performed by a mobile device 104, which may be considered part of the personalization system 100. The mobile device 104 is shown in communication with a remote card personalization server computer 106, which is also to be deemed part of the personalization system 100. The communication between the mobile device 104 and the personalization server 106 occurs via a tele-communication/data communication infrastructure 108, which may be the commonly available infrastructure by which mobile devices are enabled to exchange data communications with remote computers.”; and page 3, ¶ 50: “FIG. 5 is a flow chart that illustrates an example of a payment card personalization process that may be performed in the personalization system 100 of FIG. 1, according to aspects of the present disclosure.”).
Motivation to combine Huxham and Phillips:
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Huxham by providing payment card credentials used for production of a physical payment card of Phillips in order to eliminate delay in issuance of the physical payment card so that the account holder has an immediate ability to access the newly issued payment account. (Phillips: page 1, ¶ 10).
As to claim 18: Huxham in view of Chen, and further in view of Phillips, shows all the elements of claim 17. Huxham also shows that the received payment card credentials are stored and/or installed in the eUICC in such a way that the payment card credentials stored and/or installed in the eUICC can be used for payments in a similar way to a payment card produced from the payment card credentials (Huxham: col. 11, lines 18-34: “The payment credentials are provisioned to the mobile device (112) from the remotely accessible server (140) and stored in the secure element (113) via over-the-air (OTA) provisioning. This accordingly may enable the user to make contactless payments using his or her mobile device (112) as a contactless portable payment device.”).
As to claim 19: Huxham in view of Chen, and further in view of Phillips, shows all the elements of claim 17. Huxham also shows that the payment card credentials stored and/or installed in the eUICC are identical to payment card credentials used to produce a physical payment card (Huxham: col. 7, lines 31-33; and col. 8, lines 38 - col. 9, line 7: “The portable payment device (114) has payment credentials, which may be track 2 and/or track 2 equivalent information (such as EMV tag 57 data), stored therein. Track 2 and track 2 equivalent information may include a bank identification number (BIN), a primary account number (PAN), an expiration date, a service code, discretionary data such as card verification values (CVV) as well as any relevant spacing and redundancy checks. In addition to this, embodiments of the invention provide for the portable payment device (114) to contain payment credentials which may include any one or more of a customer name and/or date of birth, a BIN, a PAN, a service coda, an expiration date, CVV1 or CVV2 numbers, a PIN block or offset, a bank account number, a branch code, a loyalty account number or identifier, credit and/or debit card number information, account balance information and/or other consumer information.”).
As to claim 20: Huxham in view of Chen, and further in view of Phillips, shows all the elements of claim 11. Huxham does not show a mobile device hosting an eUICC, the mobile device comprising a payment application executed on the mobile device and comprising a payment card credential interface constructed to generate and send, from the mobile device to the remote SIM provisioning system, via the RSP infrastructure, a payment card credential download request including an identifier identifying payment card credentials used for production of the physical payment card for a user of the mobile device, and to manage receipt of requested payment card credentials corresponding to the identifier from the remote SIM provisioning system, via the RSP infrastructure, and to store and install the received payment card credentials to the eUICC. Chen shows a mobile device hosting an eUICC, the mobile device comprising a payment application executed on the mobile device and comprising a payment card credential interface constructed to generate and send, from the mobile device to the remote SIM provisioning system, via the RSP infrastructure, a payment card credential download request including an identifier identifying payment card credentials used for production of the physical payment card for a user of the mobile device, and to manage receipt of requested payment card credentials corresponding to the identifier from the remote SIM provisioning system, via the RSP infrastructure, and to store and install the received payment card credentials to the eUICC (Chen: page 1, ¶ 9; and page 5, ¶ 30; where claim 20 merely define a system as defined in claims 1-6 further comprising the mobile device as defined in claims 7-9.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Huxham by a mobile device hosting an eUICC, the mobile device comprising a payment application executed on the mobile device and comprising a payment card credential interface constructed to generate and send, from the mobile device to the remote SIM provisioning system, via the RSP infrastructure, a payment card credential download request including an identifier identifying payment card credentials used for production of the physical payment card for a user of the mobile device, and managing receipt of requested payment card credentials corresponding to the identifier from the remote SIM provisioning system, via the RSP infrastructure, and storing and installing the received payment card credentials to the eUICC of Chen in order to install, enable, disabling, delete, and/or the like of different operator profiles without having to physically swap the eUICC (Chen: page 1, ¶ 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Goncalves (US 20150020160 A1) discloses: “The present invention concerns the field of the emulation of contactless payment cards and more particularly the routing of the contactless communication within a device comprising several contactless payment card emulation circuits. The invention proposes a method for routing messages within an NFC controller. This controller has a table of the various applications hosted by the various secure elements. When the controller receives a request for the list of applications contained in the virtual payment card, it intercepts this request and responds with the list of the various applications accessible on the various secure elements. When a request aimed at selecting an application is received, the controller stores the secure element concerned and redirects all the messages to this element as long as it does not receive any new selection request.”
Li (CN 110351346 A) discloses: “The method involves receiving an authentication server in a first switching request sent by a terminal device, where the first card request includes a user account number, password, a user number and Embedded Universal Integrated Circuit Card (eUICC) chip identification. The authentication server is verified in a user identity of the terminal device according to a user account and the password, if the verification is passed. The authentication server is sent a second switching request to an operator business support system BSS, where the second switching request comprises a user number and an eUICC chip identification. An eSIM server is notified to generate an eSIM configuration file. The eSIM configuration file is associated with the eUICC chip identification.”
Pourghomi, Pardis, Pierre E. Abi-Char, and Gheorghita Ghinea. "Towards a mobile payment market: A comparative analysis of host card emulation and secure element." International Journal of Computer Science and Information Security 13.12 (2015): 156.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691
