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
Regarding claims 15 and 20, the Applicant’s submits that the specification provides support for the structure, material, or acts to perform the claimed function in paragraph [0041] of the specification. The 35 U.S.C. 112 rejections of claims 15 and 20 are withdrawn.
Regarding claims 22-24, the 35 U.S.C. 112 rejections are withdrawn in response to the amendments.
Regarding claim 21, the 35 U.S.C. 112 rejections is maintained, see rejection below.
Regarding 35 U.S.C. 103 rejections of claims 13-15 and 22-24, Applicant’s arguments have been fully considered but they are not persuasive.
The Applicant argues:
“The rejection acknowledges that Lee and Li do not disclose the requirement of claim 13 of "each non-personalized profile image comprising at least one functionality identifier specific for the respective device" and relies on Baek to remedy this deficiency.
However, the Applicant respectfully submits that Baek does not remedy this deficiency of Lee and Li. Baek describes a "user data repository" that "user's subscription information, for example, an ID (i.e., EID) of an eUICC of a subscribed user terminal and address information of a SM-DP+ that stores a SIM profile for the corresponding EID (para. [0099] of Baek). The user data repository also "stores therein EID information of an eUICC that is provided in a terminal 2b-100 subscribed by the user." (para. [0102] of Baek; see also para. [0129] of Baek).
Thus, in Baek, once the user data repository receives the EID information, the user has already subscribed, and profile has already been created and personalized. (paras. [0099]-[0103], particularly para. [0101] of Baek). Thus, the EID information is not comprised within the profile and is not included in a non-personalized profile. Instead, the EID in Baek is used by an entity outside of the SM-DP+ server to direct the User Equipment (UE) to the SM-DP+ server where the personalized profile has already been created. (para. [0097] of Baek).
Because Baek only discloses the use of EID information to point a UE to the SM-DP+ server where an already generated (and personalized) profile may be downloaded, Baek fails to disclose or suggest the generation of a non-personalized profile that comprises a functionality identifier as required by claim 13. Baek thus fails to remedy the deficiencies of Lee and Li regarding this requirement.”
The Examiner respectfully disagrees. Baek discloses the SM-DP stores SIM profile for the corresponding SIM profile (i.e., profile image) and providing SIM profile information based on EID information included in a request (p. [0129]). Therefore, profile image/information stored with at least one functionality identifier is well-known in the art, and one of ordinary skill in the art would have been motivated to include such identifier to retrieve non-personalized profile images since it is an effective way to select and retrieve specific profile information from multiple sets of profile information.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 21, the claim is directed to “a system comprising a data generation server method”…”the method comprising the steps:”. The claim introduces a new statutory class “data generation server method” within a system claim. The claim is indefinite because it fails to particularly point out the invention, the claim creates ambiguity given that is not clear whether it is claiming “a system” or “a method”.
MPEP 2173.05(p)(II) states:
II. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).[AltContent: rect]
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.
Claims 13-15 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. (EP 2 975 872) in views of LI et al. (US 2016/0337780), and BAEK et al. (US 2018/0014178).
Regarding claim 13, Lee discloses a method, on a data generation server, for preparing generating a profile image for download from a profile server to an eUICC hosted in a device, for the purpose of in-stalling a profile corresponding to the profile image in the eUICC, the method comprising the steps:
a) at a data generation server (Fig. 2, i.e., profile generation server 220), generate, profile images (p. [0056], [0122]; the profile generation server may create a profile to be installed on the eSIM (i.e., eUICC)), and store the generated profile images for providing to the profile server (p. [0057]-[0058], [0123]-[0124]; the profile generation server transmits a plurality of packets associated with the profile to the provisioning support server (i.e., profile server));
b) at the data generation server, generate at least one profile-data image (p. [0056], [0122]; the profile generation server may create a profile to be installed on the eSIM (i.e., eUICC)), and store the generated at least one profile-data image for providing to the profile server (p. [0057]-[0058], [0123]-[0124]; the profile generation server transmits a plurality of packets associated with the profile to the provisioning support server (i.e., profile server)).
But, Lee does not particularly disclose wherein the data generation server generates for multiple devices, multiple non-personalized profile images, each non-personalized profile image comprising at least one functionality identifier specific for the respective device, and each non-personalized profile image not comprising any individual global identifier specific of an individual eUICC, and
profile-data image comprising at least one individual global identifier of an individual eUICC.
However, Li teaches a server that generates for multiple devices, multiple non-personalized profile images, each non-personalized profile image not comprising any individual global identifier specific of an individual eUICC (p. [0011], lines 1-5; [0078], [0084]; common SIM information (i.e., non-personalized profile) may be configured for provisioning to the eSIM, the common SIM information includes files and other data that might be common among some or all types of SIMs according to various types or classes such as based on service provider, device hardware, a server may provide the common SIM information to the UE device – p. [0017],[0089], note that the common SIM information does not comprise any individual global identifier), and
profile-data image comprising at least one individual global identifier of an individual eUICC (p. [0078], [0079], [0093]-[0095]; the UE may request personalized SIM information (i.e., profile), the server may generate the personalized SIM information in response to the request, the personalized SIM information may include user (subscriber) specific information such as IMSI, and one or more authorization keys (i.e., global identifier)).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Lee with the teachings of Li, since such a modification would separate the profile images provisioning into two portions (e.g., common SIM information and personalized SIM information), thus reducing the amount of network bandwidth required during downloading for each portion.
The combination of Lee and Li does not particularly disclose the non-personalized profile image comprising at least one functionality identifier specific for the respective device.
However, Baek teaches wherein a data generation server generates a profile for an electronic device and includes functionality identifier specific for the respective device (p. [0099], [0103], [0129]; SM-DP stores SIM profile corresponding to the EID (i.e., functionality identifier)). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Lee and Li with the teachings of Baek, since such a modification would allow the server to store the profiles with their corresponding functionality identifier (i.e., EID) and provide the terminal with provisioning information (e.g., profile) that corresponds to the functionality identifier (i.e., EID) of the terminal.
Regarding claim 14, the combination of Lee and Li disclose the method of claim 13, Li discloses further comprising: a-1) providing the multiple non-personalized profile images to the profile server (p. [0101]); and b-1) providing the generated at least one profile-data image to the profile server (p. [0095]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Lee with the teachings of Li, since such a modification would separate the profile images provisioning into two portions (e.g., common SIM information and personalized SIM information), thus reducing the amount of network bandwidth required during downloading for each portion.
Regarding claim 15, data generation server implemented to perform a profile preparing generating method according to claim 13, the data generation server comprising:
a) means implemented to generate profile images (p. [0056], [0122]; the profile generation server may create a profile to be installed on the eSIM (i.e., eUICC)), and store the generated profile images for providing to the profile server (p. [0057]-[0058], [0123]-[0124]; the profile generation server transmits a plurality of packets associated with the profile to the provisioning support server (i.e., profile server));
b) means implemented to generate at least one profile-data image (p. [0056], [0122]; the profile generation server may create a profile to be installed on the eSIM (i.e., eUICC)), and store the generated at least one profile-data image for providing to the profile server (p. [0057]-[0058], [0123]-[0124]; the profile generation server transmits a plurality of packets associated with the profile to the provisioning support server (i.e., profile server)).
But, Lee does not particularly disclose wherein the means generates for multiple devices, multiple non-personalized profile images, each non-personalized profile image not comprising any individual global identifier specific of an individual eUICC, and
profile-data image comprising at least one individual global identifier of an individual eUICC.
However, Li teaches a server that generates for multiple devices, multiple non-personalized profile images, each non-personalized profile image comprising at least one functionality identifier specific for the respective device, and each non-personalized profile image not comprising any individual global identifier specific of an individual eUICC (p. [0011], lines 1-5; [0078], [0084]; common SIM information (i.e., non-personalized profile) may be configured for provisioning to the eSIM, the common SIM information includes files and other data that might be common among some or all types of SIMs according to various types or classes such as based on service provider, device hardware (i.e., functionality identifier), a server may provide the common SIM information to the UE device – p. [0017],[0089], note that the common SIM information does not comprise any individual global identifier), and
profile-data image comprising at least one individual global identifier of an individual eUICC (p. [0078], [0079], [0093]-[0095]; the UE may request personalized SIM information (i.e., profile), the server may generate the personalized SIM information in response to the request, the personalized SIM information may include user (subscriber) specific information such as IMSI, and one or more authorization keys (i.e., global identifier)).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Lee with the teachings of Li, since such a modification would separate the profile images provisioning into two portions (e.g., common SIM information and personalized SIM information), thus reducing the amount of network bandwidth required during downloading for each portion.
The combination of Lee and Li does not particularly disclose the non-personalized profile image comprising at least one functionality identifier specific for the respective device.
However, Baek teaches wherein a data generation server generates a profile for an electronic device and includes functionality identifier specific for the respective device (p. [0099], [0103], [0129]; SM-DP stores SIM profile corresponding to the EID (i.e., functionality identifier)). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Lee and Li with the teachings of Baek, since such a modification would allow the server to store the profiles with their corresponding functionality identifier (i.e., EID) and provide the terminal with provisioning information (e.g., profile) that corresponds to the functionality identifier (i.e., EID) of the terminal.
Regarding claim 22, the combination of Lee, Li, and Baek disclose the method according to claim 13, Li discloses wherein the at least one same global identifier is either one or several of, or a part thereof: international mobile subscriber identity IMSI (p. [0094]); authentication key Ki (p. [0094]); profile number ICCID. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify Lee with the teachings of Li, since the IMSI and Ki values are subscriber specific information.
Regarding claim 23, the combination of Lee, Li, and Baek disclose the method according to claim 13, Baek discloses wherein the at least one different functionality identifier is either one or several of, or a part thereof: chip hardware identifier EID of the eUICC; international mobile equipment identifier IMEI of the device; type allocation code TAC of the device; identifier of network technology being either one of the group including following net-work technologies: 2G technology, 3G technology, 4G technology, 5G technology, GSM, UMTS, CMDA, LTE; a device capability indicator according to GSMA SGP.22; a UICC capability indicator according to GSMA SGP.22 (p. [0099], [0103], [0129]; SM-DP stores SIM profile corresponding to the EID (i.e., functionality identifier)). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Lee and Li with the teachings of Baek, since such a modification would allow the server to store the profiles with their corresponding functionality identifier (i.e., EID) and provide the terminal with provisioning information (e.g., profile) that corresponds to the functionality identifier (i.e., EID) of the terminal.
Regarding claim 24, the combination of Lee, Li, and Baek disclose the method according to claim 13, Lee discloses wherein the data generation server and the profile server are: either a SGP.02 SM-DP server and SGP.02 SM-SR server or a similar server infrastructure; or a SGP.22 SM-DP+ or a similar server infrastructure (p. [0056], [0065]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. in views of LI et al., BAEK et al., and KHANDURI (US 2022/0167146).
Regarding claim 25, the combination of Lee, Li, and Baek disclose the method according to claim 13, but does not particularly disclose wherein at least two of the functionality identifiers are different.
However, Khanduri teaches wherein at least two of the functionality identifiers are different (p. [0031], [0039]; Khanduri teaches a system to generate a SIM profile for an UE, an SM-DP+ may store different functionality identifiers such an equipment ID (EID) and IMEI on a SIM profile for the UE device). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the combination of Lee, Li, and Baek with the teachings of Khanduri, since such a modification would allow a single SIM profile to be identified by multiple different identifiers associated with the UE such that it simplifies the process of identifying and retrieving a SIM profile for download to the UE.
Allowable Subject Matter
Claims 16-20 are allowed. The claims are allowed because the prior art of record, fails to
anticipate or render obvious the features of independent claims 16 and 21:
“the request including at least one functionality requirement indicator and at least one global identifier;
d) at the profile server, select a non-personalized profile image having a functionality identifier matching with the received functionality requirement indicator;
e) at the profile server, select a profile-data image matching with the received global identifier;
f) at the profile server, combine the selected non-personalized profile image and the selected profile-data image to generate the profile image for download to the eUICC”.
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MARISOL FIGUEROA whose telephone number is (571)272-7840. The examiner can normally be reached Mon-Thurs 8:00am-4:30pm.
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/MARISOL FIGUEROA/
Primary Examiner
Art Unit 2643
Prosecution Insights