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 .
DETAILED ACTION
Claims 1-2, 5-7 are presented for examination. Claims 3-4 and 8-10 are canceled.
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
In the remark, applicant argued (1) Park does not teach a second receiver that accesses the push server in accordance with the download notification and receives the profile form the push server.
Examiner traverse the argument:
As to point (1), the amendment changes the scope of the invention and requires a different interpretation that the download notification and the profile are both from the push server. After further consideration, Park’s profile providing server 220 meet the claims as it provides the function to transfer a download notification (transfer profile information) via the profile information transfer server to the terminal (see steps 270 and 275); and also provides the profile for downloading by the terminal (see steps 280 and 285). This is according to the instant application specification paragraph 0066-0067 that the push server 400-3 is a function included in the SM server 400. The claims can only be interpreted according to this embodiment of the push server as a function included within SM server 400 to support the limitation of “and receive the profile from the push server”. While the applicant directed to paragraphs 0027-0028, 0048, 0052-0058 for support of the amended language, these paragraphs do not fully support that the profile is received from the push server.
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 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al (Park), EP3284274B1, published on July 31, 2019.
As per claim 1, Park teaches the invention including a terminal comprising:
A first receiver that receives from a push server (figure 2, profile providing server 220) a download notification of a profile configured in an embedded subscriber identification module (pp. 0002, 0006, 0032, 0059-0060, 0066, 0069-0075; figure 2, steps 270 and 275 where the transfer profile information is transmitted form the profile providing server 220 to the terminal 240 via profile information transfer server 230);
A second receiver that accesses the push server in accordance with the download notification and receives the profile from the push server (pp. 0075-0080, 0082-0085, 0094; figure 2 steps 280 and 285); and
A processor that configures the profile to the embedded subscriber identification module (pp. 0095-0096; figure 2 step 290).
As per claim 2, Park teaches the invention as claimed in claim 1. Park further teaches to comprise a transmission unit that transmits terminal information to the push server (pp. 0061, 0067, 0077-0080).
As per claim 5, Park teaches the invention including a push server comprising:
A transmitter that transmits a download notification of a profile configured in an embedded subscriber identifier module to a terminal (pp. 0002, 0006, 0032, 0059-0060, 0066, 0069-0074); and
Wherein the transmitter transmits the profile to the terminal when the terminal accesses the push server in accordance with the download notification (pp. 0075-0080, 0082-0085, 0094).
As per claim 6, Park teaches the invention including a method for controlling a terminal, the method comprising:
Receiving a download notification of a profile configured in an embedded subscriber identification module from a push server (pp. 0002, 0006, 0032, 0059-0060, 0066, 0069-0074);
Accessing the push server in accordance with the download notification and receiving the profile from the push server (pp. 0075-0080, 0082-0085, 0094); and
Configuring the profile to the embedded subscriber identification module (pp. 0095-0096).
As per claim 7, Park teaches the invention including a method for controlling a push server, the method comprising:
Transmitting a download notification of a profile configured in an embedded subscriber identifier module to a terminal (pp. 0002, 0006, 0032, 0059-0060, 0066, 0069-0074); and
Transmitting the profile to the terminal when the terminal accesses the push server in accordance with the download notification (pp. 0075-0080, 0082-0085, 0094).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yeoum et al, US 2016/0157085
Park et al, US 2019/0268765
Lalwaney, US 2017/0289788
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 KENNY S LIN whose telephone number is (571) 272-3968.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Noel Beharry can be reached on 571-270-5630. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
KENNY S. LIN
Examiner
Art Unit 2416
/Kenny S Lin/
Primary Examiner, Art Unit 2416
March 10, 2026
Prosecution Insights