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
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive.
Applicant argues that Shah does not teach or suggest disconnecting the first wearable device and connecting the second wearable device to the mobile device, including performing a SIM swap, and that Shah is silent with respect to this feature.
The Examiner respectfully disagrees. Shah clearly discloses disconnecting and connecting between different wearable devices with the mobile device (0024, the MSISDN is transferred to the shared ICCID and the personal ICCID is moved to standby state, the MSISDN is moved back after the sharing period). Shah further discloses including performing a SIM swap (0029, the MSISDN can be transferred from one ICCID and be associated with another ICCID).
Thus, all the claimed and argued limitations have been met.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 6, 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0048645 A1 herein Yerra in view of US 2020/0413234 A1 herein Shah and further in view of US 2015/0031288 A1 herein Tubbesing.
Claim 1, Yerra discloses A non-transitory, computer-readable storage medium comprising instructions to manage connections between a mobile device and wearable devices (Abstract, primary wireless device and secondary wireless device),wherein the instructions, when executed by at least one data processor of a system, cause the system to (0194, a non-transitory computer-readable memory medium stores program instructions that, if executed by a computer system, cause the computer system to perform a method):
receive a first request from a user to connect a first wearable device of the wearable devices to the mobile device (0149, the primary device may receive an input from the user, indicating a request to initiate cellular functionality for the secondary device), wherein the first wearable device is associated with a first embedded subscriber identity module (e-SIM) (0012, an elCCID associated with an eSIM of the second mobile device), wherein the mobile device is associated with a unique mobile station international subscriber directory number (MSISDN) (0079, a carrier network may map a SIM of each of the two devices to the same Mobile Directory Number, each device maintaining unique SIM information while sharing a common MON), wherein the mobile device is associated with the wearable devices (0061, the UE may be a smart phone carried by a user and the secondary wireless device may be a smart watch worn by that same user), wherein the first wearable device is requested to be connected to the mobile device via a telecommunications network (0156, the primary device may transmit to the access server an initiation request to initiate cellular signup for the secondary device), and wherein the system is associated with a backend of an application for managing the connections between the mobile device and the wearable devices (0113, the client portal server may include one or more server devices configured to facilitate interaction between a wireless device and the carrier);
determine if the first wearable device is currently connected to the mobile device (0154, the primary device may determine whether the response indicates that the secondary device is already configured for multi-SIM functionality with the primary device);
connect the first wearable device to the mobile device via the telecommunications network by associating the MSISDN of the mobile device with the first e-SIM of the first wearable device (0170, the HSS/TAS/billing system may map the IMSI of each of the primary device and the secondary device to the same MDN).
Yerra may not explicitly disclose upon determining the first wearable device is not connected to the mobile device, determine compatibility of the first wearable device; upon determining that the first wearable device is compatible with the mobile device; receive a second request from the user to connect a second wearable device to the mobile device via the telecommunications network, wherein the second wearable device is associated with a second e-SIM different from the first e-SIM; determine compatibility of the second wearable device; and upon determining that the second wearable device is compatible with the mobile device, disconnect the first wearable device and connect the second wearable device to the mobile device, including performing a SIM swap by disassociating the MSISDN of the mobile device from the first e-SIM of the first wearable device and associating the MSISDN of the mobile device with the second e-SIM of the second wearable device.
Shah discloses receive a second request from the user to connect a second wearable device to the mobile device via the telecommunications network (0021, the user may transfer the secondary subscription to the ICCID on the shared vehicle), wherein the second wearable device is associated with a second e-SIM different from the first e-SIM (0020, the shared vehicle may have a shared SIM profile installed on the shared vehicle); and
disconnect the first wearable device and connect the second wearable device to the mobile device, including performing a SIM swap by disassociating the MSISDN of the mobile device from the first e-SIM of the first wearable device and associating the MSISDN of the mobile device with the second e-SIM of the second wearable device (0024, the MSISDN may be transferred to the shared ICCID, the personal ICCID is moved to the standby state, and once the sharing period is over the MSISDN may be moved back to and associated with the personal ICCID). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include transferring the number from one device's card identifier to another device's card identifier and moving the first to standby, as taught by Shah, so as to re-use profiles across users rather than downloading a new profile for every user, thereby eliminating profile wastage (0013).
Yerra may not explicitly disclose upon determining the first wearable device is not connected to the mobile device, determine compatibility of the first wearable device; upon determining that the first wearable device is compatible with the mobile device; and determine compatibility of the second wearable device.
Tubbesing discloses determining compatibility of a second device and conditioning the switchover on that determination (0010, communicate with a second Bluetooth device via the NFC transceiver and determine if the at least one Bluetooth profile is also supported by the second Bluetooth device, and when the at least one Bluetooth profile is also supported by the second Bluetooth device, cease using it with the first Bluetooth device and begin using it with the second Bluetooth device). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include determining whether a second device supports what the first device is using before switching to the second device, as taught by Tubbesing, so as to provide a seamless switchover without the user having to manually disconnect the first device and reconnect the second device (0021).
Claim 6, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose upon disconnecting the first wearable device and connecting the second wearable device to the mobile device, send a notification to the user of the new connection.
Tubbesing discloses upon disconnecting the first wearable device and connecting the second wearable device to the mobile device, send a notification to the user of the new connection (0024, the controller displays a toast confirming successful connection to the second Bluetooth device, namely that audio playback is now being switched from the first device to the second device). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include displaying a confirmation of the connection to the second device, as taught by Tubbesing, so as to provide a seamless switchover without the user having to manually disconnect the first device and reconnect the second device (0021).
Claim 7, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose wherein the first e-SIM is installed in the first wearable device.
Shah discloses wherein the first e-SIM is installed in the first wearable device (0020, the SIM profile may be pre-installed already when the user checks out the shared vehicle or may be installed during the checkout process). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include transferring the number from one device's card identifier to another device's card identifier and moving the first to standby, as taught by Shah, so as to re-use profiles across users rather than downloading a new profile for every user, thereby eliminating profile wastage (0013).
Claim 8, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose upon disconnecting the first wearable device and connecting the second wearable device to the mobile device, update data of the second wearable device, wherein the updated data includes at least one of: usage data associated with the first wearable device, emergency contact information, SMS messages, or status of the wearable devices associated with the mobile device.
Shah discloses upon disconnecting the first wearable device and connecting the second wearable device to the mobile device, update data of the second wearable device, wherein the updated data includes at least one of: usage data associated with the first wearable device, emergency contact information, SMS messages, or status of the wearable devices associated with the mobile device (0026, the status of the MSISDN may be marked appropriately, e.g., the standby state, to avoid any billing cost as it is not active on the network). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include transferring the number from one device's card identifier to another device's card identifier and moving the first to standby, as taught by Shah, so as to re-use profiles across users rather than downloading a new profile for every user, thereby eliminating profile wastage (0013).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Tubbesing, and further in view of US 2022/0394436 A1 herein Jain.
Claim 2, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose upon connecting the first wearable device to the mobile device, start forwarding messages from the mobile device to the first wearable device, wherein the messages include at least one of: short messaging service (SMS) messages, system messages, or voice messages; upon disconnecting the first wearable device from the mobile device, stop forwarding the messages to the first wearable device; and upon connecting the second wearable device to the mobile device, start forwarding the messages from the mobile device to the second wearable device.
Jain discloses forwarding messages to a device according to its current status and switching that forwarding to another device (0060, if the phone is not with the user and the headset is not in ear or not connected, then stream the call over the watch; 0061, SMS or other text messages can be handled in a similar manner), and
discontinuing the forwarding at the first device upon the switch (0094, the forwarding is performed as part of switching away from an application executing on the first mobile device to using the application executing on the second mobile device, and the first mobile device may discontinue or interrupt processing). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include starting and stopping the forwarding of messages according to which device is currently connected, as taught by Jain, so as to maintain continuity of audio output when switching from one device to another (0085).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Tubbesing, US 2021/0256833 A1 herein Daoura, and further in view of Jain.
Claim 3, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose store, in a memory, a list of wearable devices associated with the mobile device; track location of the wearable devices in the list of wearable devices; receive an indication that the location of a wearable device is outside of a geofence associated with the user's household; upon receiving the indication, identify, from the list of wearable devices associated with the mobile device, the wearable device that is located outside of the geofence associated with the user's household; and automatically start forwarding messages from the mobile device to the wearable device, wherein the messages include at least one of: SMS messages, system messages, or voice messages.
Daoura discloses store, in a memory, a list of wearable devices associated with the mobile device (0286, each radiotag is registered in a user profile on a cloud host; 0287, the user profile is stored in computer readable media in the cloud host), track location of the wearable devices in the list of wearable devices (0292, the cloud host looks up any geofence definition associated with each radiotag in a user profile), receive an indication that the location of a wearable device is outside of a geofence associated with the user's household (0289, any report of radiotags at a location not within the expected boundary conditions of a geofence will trigger an exception notification to the owner), and upon receiving the indication, identify, from the list of wearable devices associated with the mobile device, the wearable device that is located outside of the geofence associated with the user's household (0292, the cloud host will issue a notification indicating the time and location that the errant radiotag was detected outside the safe zone). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include registering devices in a user profile and detecting when one is located outside a geofence, as taught by Daoura, so as to monitor the location of the assets and issue an alert to the registered owner if a detected location is not within the geofence (0289).
Jain discloses automatically start forwarding messages from the mobile device to the wearable device, wherein the messages include at least one of: SMS messages, system messages, or voice messages (0060, if the phone is not with the user and the headset is not in ear or not connected, then stream the call over the watch; 0061, SMS or other text messages can be handled in a similar manner). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include forwarding messages to a device according to the status of that device, as taught by Jain, so as to determine which mobile device is the most appropriate consumer for the data (0005).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Tubbesing, and further in view of US 2020/0128594 A1 herein Kaha.
Claim 4, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose wherein the first request from the user comprises the user selecting the first wearable device on a mobile application of the mobile device, and wherein the second request from the user comprises the user selecting the second wearable device on the mobile application of the mobile device.
Kaha discloses wherein the first request from the user comprises the user selecting the first wearable device on a mobile application of the mobile device, and wherein the second request from the user comprises the user selecting the second wearable device on the mobile application of the mobile device (0031, if the user would like to connect to the second watch, the user shall select the second watch in the mobile device, then the user connects and pairs to that second watch, and all other watches which are already connected are automatically disconnected; 0026, the first device is a mobile phone having a graphical user interface and a first application). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include the user selecting a particular wearable device from a list displayed on the mobile device, as taught by Kaha, so as to enable the user to realize the difference between a plurality of smart devices and connect faster to the selected device (0043).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Tubbesing, and further in view of US 2020/0059778 A1 herein Li.
Claim 5, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose upon receiving the second request from the user, send a request to the mobile device for authentication of the second request.
Li discloses upon receiving the second request from the user, send a request to the mobile device for authentication of the second request (0075, the MNO randomly generates a verification code and sends an SMS message to the mobile phone number used by the first device, and the user enters the verification code to perform secondary verification). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include sending a verification code to the mobile device for the user to enter, as taught by Li, so as to ensure subscriber identity correctness (0075).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Tubbesing, and further in view of Daoura.
Claim 9, Yerra in view of Shah and further in view of Tubbesing discloses the non-transitory, computer-readable storage medium of claim 1.
Yerra may not explicitly disclose when a wearable device is no longer associated with the mobile device, send a notification to the user of the disassociation.
Daoura discloses when a wearable device is no longer associated with the mobile device, send a notification to the user of the disassociation (0309, whitelisted radiotags are expected on return to the safe zone, and if a device is missing on return home that exception can give rise to a CALL HOME notification to the user via smartphone). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yerra to include notifying the user when a registered device is no longer present, as taught by Daoura, so as to identify missing items before the owner suspects they are missing (0309).
Claims 10, 16, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah.
Claim 10, as analyzed with respect to the limitations as discussed in claim 1.
Yerra discloses A system comprising: at least one hardware processor (0195, a device may be configured to include a processor and a memory medium); and at least one non-transitory memory storing instructions to manage connections between a mobile device and wearable devices, which, when executed by the at least one hardware processor, cause the system to (0194, a non-transitory computer-readable memory medium stores program instructions that, if executed by a computer system, cause the computer system to perform a method):
wherein the mobile device is associated with a unique number (0079, a carrier network may map a SIM of each of the two devices to the same Mobile Directory Number);
upon determining that the first wearable device is not connected to the mobile device, connect the first wearable device to the mobile device via the telecommunications network by associating the unique number of the mobile device with the first e-SIM of the first wearable device (0156, if the primary device determines that the secondary device is not already configured for multi-SIM functionality, the primary device transmits an initiation request to initiate cellular signup for the secondary device).
Claim 16, as analyzed with respect to the limitations as discussed in claim 7.
Claim 17, as analyzed with respect to the limitations as discussed in claim 8.
Claim 18, as analyzed with respect to the limitations as discussed in claim 10.
Yerra discloses A method performed by a system, the method comprising (0194, a computer system performs a method):
wherein the mobile device is associated with one or more wearable devices (0061, the UE may be a smart phone carried by a user and the secondary wireless device may be a smart watch worn by that same user).
Claims 11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah and further in view of Jain.
Claim 11, as analyzed with respect to the limitations as discussed in claim 2.
Claim 19, as analyzed with respect to the limitations as discussed in claim 2.
Claims 12 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah, Daoura, and further in view of Jain.
Claim 12, as analyzed with respect to the limitations as discussed in claim 3.
Claim 20, as analyzed with respect to the limitations as discussed in claim 3.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah and further in view of Kaha.
Claim 13, as analyzed with respect to the limitations as discussed in claim 4.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah and further in view of Li.
Claim 14, as analyzed with respect to the limitations as discussed in claim 5.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Yerra in view of Shah and further in view of Tubbesing.
Claim 15, as analyzed with respect to the limitations as discussed in claim 6.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20160294965 A1 - A method for selecting an information pushed-to terminal, including determining, by a first terminal, a service type of received service information according to a preset terminal service type table, acquiring, by the first terminal from a terminal status table configured in the first terminal, characteristic information of second terminals connected to the first terminal, and determining working statuses of the second terminals according to the characteristic information, selecting, by the first terminal from the second terminals according to a preset information push rule, the service type of the service information and the working statuses of the second terminals, a target terminal of information push, and sending a prompt message of having received the service information to the target terminal.
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 Mehmood B. Khan whose telephone number is (571)272-9277. The examiner can normally be reached M-F 9:30 am-6:30 pm.
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, Asad Nawaz can be reached at (571) 272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mehmood B. Khan/Primary Examiner, Art Unit 2463
Prosecution Insights