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 .
Specification
The disclosure is objected to because of the following informalities: 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
“pro-files” [004]; “de-vices”, “network-able” [006]; “pro-file” [008]; “serv-er” [011]; “re-mote” [013], etc.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the method of claim 1 including each step as well as the details of each dependent claim must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1 recites the limitation “for later transferring… and installing” however provides no guidance (meets or bounds) of how to interpret “later” rendering the claim indefinite.
Further to 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 “profile container (T_ISD-P][])” on at least lines 4, 7, & 10, “profile (P1) on at least lines 7 & 9, “description file (D-XML) on at least line 8, “dynamic profile data (EDP-P1)” on lines 13-15, etc. See MPEP § 2173.05(d).
Claim 1 further recites the term “IFPP Dynamic Converter” and claim 4 recites “IFPP Controller” however such terms while recited in the instant specification are not defined and therefore the meets and bounds of such is unclear.
Claim 13 further recites the phrase “particularly TCA compliant profile” rendering the claim indefinite as “TCA” is not defined and “particularly” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Objections
Claim 1 is objected to because of the following informalities:
“S2) generaing” should read -- S2) generating --. Appropriate correction is required.
Claim 2 is objected to because of the following informalities:
On line 2, “pro-file” should read --profile--.
Claim 12 is objected to because of the following informalities:
On line 2, “plat-form” should read --platform--.
Claim 14 is objected to because of the following informalities:
On line 1, “ex-tracts” should read --extracts--.
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.
Claim(s) 1-3, 8, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (2022/0360978) hereinafter “Li” and Long (2019/0053040).
As to claim 1, Li discloses A method for generating at least one profile, for provisioning the profile to an eUICC designed to be hosted in a device, including the steps:
S1) providing profile generation data, including static profile data for generating a profile container (T_ISD-P[]) and dynamic profile data, from a wireless network operator, MNO, or virtual wireless network operator, MVNO, to a data generation platform (see [0021]: “The BPP aggregator server 306… to obtain… BPP for an eUICC… a provisioning profile for a specific MNO…”;
S2) generating, from the profile generation data, including the static profile data for generating a profile container (T_ISD-P[]) and the dynamic profile data, a profile (P1), and a dynamic-data description file (D-XML) indicating content and storage location of at least the dynamic profile data in the profile (P1) (see [0021]: “308 servers can generate and return encrypted BPPs… some metadata from the BPP can be provided by the SM-DP+ 308…”);
S3-1) creating, in the eUICC at least one profile container (T_ISD-P[]) (see [0014]: “load bootstrap eSIM profiles and/or mobile network operator (MNO) eSIM profiles during manufacture… multiple sets of transaction credentials can be preloaded to the eUICC…”, [0018]: “applets 212 that define the manner in which the eSIM 208 operates…”;
S3-2) providing the profile (P1) and the dynamic-data description file (D-XML) to a IFPP Dynamic Converter, and at the IFPP Dynamic Converter, with support of the dynamic-data description file (D-XML), extracting the dynamic profile data (EDP-P1) from the profile (P1), (see [0023]: “The local provisioning server 310 can select one or more of the xID values and return one or more encrypted BPPs…”.
for later transferring 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) see [0023]-[0024]. Note that these steps are recited as an intended use not carrying patentable weight but addressed for compact prosecution.
Li fails to explicitly recite yet in an analogous art Long discloses in S1 the profile generation data, including static profile data (MSISDN) for generating a profile container (T_ISD-P[]) and dynamic profile data (IMSI), from a wireless network operator, MNO, or virtual wireless network operator, MVNO, see [0075]-[0077]. Before the effective filing date of the instant invention it would have been obvious to one of ordinary skill in the art to modify Li such that the profile generation data, including static profile data (MSISDN) for generating a profile container (T_ISD-P[]) and dynamic profile data (IMSI), from a wireless network operator, MNO, or virtual wireless network operator, MVNO, to a data generation platform for the purpose of enabling use with a specific operator.
As to claim 2, the combination of Li and Long discloses The method according to claim 1, Li discloses wherein two or more profiles, corresponding dynamic-data description files (D-XML) and corresponding extracted dynamic pro-file data are created. See [0014].
As to claim 3, the combination of Li and Long discloses The method according to claim 1, Li discloses further comprising provisioning the generated profile to an eUICC, by performing the steps: S4) transferring the extracted dynamic profile data (EDP-P1) extracted in step S3-2) to the eUICC, and install the transferred extracted dynamic profile data (EDP-P1) into the profile container (T_ISD-P[]) created in step S3-1). See [0014].
As to claim 8, the combination of Li and Long discloses 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. (IMSI)
As to claims 12-15, the combination of Li and Long discloses The method according to claim 1, however the limitations of claims 12-15 fail to interact with or affect any of the steps of the method and are thus considered nonfunctional limitations and/or intended uses not carrying patentable weight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee et al. (2015/0281198) provides for [0011]: a remotely installed profile for the eUICC.
Stahl et al. (2022/0295288) provide for [0053]-[0083] profile installation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESTER KINCAID whose telephone number is (571)272-7922. The examiner can normally be reached M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yuwen Pan can be reached at 571-272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LESTER G. KINCAID
Primary Patent Examiner
Art Unit 2649
/LESTER G KINCAID/Primary Examiner, Art Unit 2649