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 .
Claim Objections
Claims 1-15 are objected to because of the following informalities: Applicant uses the term “eUICC, IFPP, MNO, MVNO, HSM, ISD-P AID, and ICCID" throughout the claimed set 1-15 which need to be spell out properly. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-15 are 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.
In claim 1 (and most others), the use of parenthetical expressions after limitations renders the claim indefinite because it is unclear whether the limitation contained therein is exemplary or further limiting and/or are part of the claimed invention. For example, claim 1 recites “dynamic profile data (EDP-P1)” on lines 6, 9, and 11, “profile container (T_ISD-P[])” on lines 8 and 13. In claim 2 recites “eUICC information (EID), lines 2 and 6, etc. See MPEP § 2173.05(d).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of co-pending Application No. 18/596,972. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-15 of co-pending Application No. 18/596,972 encompasses the limitations of claims 1-15 of instant application. Moreover, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art. It is well settled that the omission of an element and its functions is an obvious expedient if the remaining elements performs the same function as before In re Karison, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 uspq 375 (Bd. App. 1969).
More specifically, the independent claim 1 of the present application are same scope, same function and same results as claims 1-15 of the co-pending Application No. 18/596,972. In addition, even though the claims of present application omitted or simply rearranged claimed structure, or added the limitation using similar claimed elements, the function and results of claimed invention of the co-pending Application No. 18/596,972 is same as claimed invention of the present application.
In addition, the independent claim 1 of the present application is the same invention as the independent claim 1 of the co-pending Application No. 18/596,972. The subject matter claimed in the instant application is fully disclosed in the co-pending Application and is covered by the co-pending Application since the co-pending Application and the instant application are claiming common subject matter, as follows, and the difference of the limitations are wordings differently.
Instant Application
U.S. Co-pending Application #18/596,972
1. A method for provisioning a profile to an eUICC designed to be hosted in a device, including the steps:
S0-1) providing an eUICC production machine comprising or having connected thereto an eUICC read/write facility, and being installed in a secure production environment;
S0-2) providing an IFPP Controller installed in said secure production environment; S4-1) providing dynamic profile data (EDP-P1) to said IFPP Controller;
S4-3) by the IFPP Controller, providing the dynamic profile data (EDP-P1) to the eUICC production machine;
S4-4) by the eUICC production machine, downloading the dynamic profile data (EDP-P1) via the eUICC read/write facility to the eUICC, and writing the dynamic profile data (EDP-P1) into the profile container (T_ISD-P[]), so as to install the profile and thereby provision the profile to the eUICC.
S4-2) providing the eUICC, with at least one already present created profile container (T_ISD-P[]) created from static profile data, at said eUICC production machine;
4. The method according to claim 3, wherein step S4) is performed as a sequence of sub-steps:
S4-2) providing the eUICC with the created profile container (ISD-P) at an eUICC read/write facility connected to or integrated into an eUICC production machine installed in said eUICC production environment;
S4-1) providing the extracted dynamic profile data (EDP-P1) extracted in step S3-2) to an IFPP Controller installed in an eUICC production environment;
S4-3) by the IFPP Controller, providing the extracted dynamic profile data (EDP-P1) to the eUICC production machine;
S4-4) by the eUICC production machine, downloading the extracted dynamic profile data (EDP-P1) to the eUICC, and installing the transferred extracted dynamic profile data (EDP-P1) into the profile container (T_ISD-P[ ]) created in step S3-1), so as to create and thereby provision the profile to the eUICC.
5. The method according to claim 4, wherein, in step S3-1), two or more profile containers (T_ISD-P[ ]) are created from static profile data of different profiles
6. The method according to claim 1, wherein the eUICC provided in step S4-2) is provided with two or more already present created profile containers created from static profile data of different profiles, and wherein step S4-3) further comprises: select the correct profile container (T_ISD-P[]) corresponding to the dynamic profile data (EDP-P1) provided in step S4-1).
5. The method according to claim 4, wherein, in step S3-1), two or more profile containers (T_ISD-P[ ]) are created from static profile data of different profiles, and wherein step S4-3) further comprises: select the correct profile container (T_ISD-P[ ]) corresponding to the dynamic profile data (EDP-P1) provided in step S4-1).
7. The method according to claim 6, wherein in steps S4-1 and S4-3), a profile identifier is provided along with the provided dynamic profile data (EDP-P1), and the profile identifier is also provided along with the correct already present created profile container (T_ISD-P[]), and wherein the correct profile container (T_ISD-P[]) is selected based on the provided profile identifier.
6. The method according to claim 5, wherein in steps S4-1 and S4-3), a profile identifier is provided along with the provided dynamic profile data (EDP-P1), and the profile identifier is also provided along with the correct already present created profile container (T_ISD-P[ ]), and wherein the correct profile container (T_ISD-P[ ]) is selected based on the provided profile identifier.
8. The method according to claim 7, wherein the profile identifier is or comprises: a profile container identifier, ISD-P AID; or a profile number, ICCID; or a profile name; or a combination of one or several or all of a profile container identifier, ISD-P AID a profile number, ICCID, and a profile name.
7. The method according to claim 6, wherein the profile identifier is or comprises: a profile container identifier, ISD-P AID; a profile number, ICCID; or a profile name; or a combination of one or several or all of a profile container identifier, ISD-P AID a profile number, ICCID, and a profile name.
10. The method according to claim 1, wherein the dynamic profile data (EDP-P1) comprise one or several or all of the following: International Mobile Subscriber Identity IMSI; Authentication Key Ki; Further Authentication parameters (OP(c)) Profile number ICCID; Access Control Conditions ACC; one or several Personal Identification Number PIN; one or several Personal Unblocking Keys, PUKs; Default-Issuer-Security-Domain-Profile, Default-ISD-P; other dynamic parameters for the MNO or MVNO, including Roaming Partners.
8. The method according to claim 1, wherein the dynamic profile data (EDP-P1) comprise one or several or all of the following: International Mobile Subscriber Identity IMSI; Authentication Key Ki; Further Authentication parameters (OP(c)) Profile number ICCID; Access Control Conditions ACC; one or several Personal Identification Numbers, PINs; one or several Personal Unblocking Keys, PUKs; Default-Issuer-Security-Domain-Profile, Default-ISD-P; other dynamic parameters for the MNO or MVNO, including Roaming Partners.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gupta (US 2024/0251230), Li et al. (US 2023/0199662), Gamishev et al. (US 2023/0044937), Cheng et al. (US 2022/0196846), Salmela et al. (US 2020/0084610), Li (US 2019/0335319), Chen et al. (US Patent #10,334,428), D’Alessandro (US 2019/0190451), Khan et al. (US 2019/0124616), Nix (US 2016/0097794), Nix (US 2018/0330109), Li et al. (US 2018/0060199), Yang et al. (US 2017/0338954), Larignon et al. (US 2017/0325084), Sinning et al. (US 2017/0311152), Cha et al. (US 2016/0150400), Nix (US 2015/0163056), and Shi et al. (US 2013/0041982).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC E REGO whose telephone number is (571)272-8132. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wesley Kim can be reached at 571-272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC E REGO/Primary Examiner, Art Unit 2648 Tel 571-272-8132
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