DETAILED ACTION
This is in response to applicant's communication filed on 03/22/2024, wherein:
Claim 1-20 are pending.
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.
Claim 1-2, 8-13, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (US 20230079902 A1).
Regarding claim 1, Jin discloses a first device (Fig. 1-2: device 102; Fig 3A and Fig. 4A-4C: source mobile wireless device 102A), comprising: a first embedded subscriber identity module (eSIM) chip (Fig. 1 and Fig. 2– eUICC; ¶0029 – “The eUICC 108 can be configured to store multiple electronic SIMs (eSIMs)”); at least one processor (Fig. 1 and Fig. 2 – processor 104); and a memory coupled to the at least one processor (Fig. 1 and Fig. 2 – memory 106 coupled to processor 104 for performing the method in Fig. 4A-C), the memory storing instructions which, when executed by the at least one processor, cause the at least one processor to perform operations including:
determining, while an eSIM profile associated with a user is activated on the first eSIM chip (Fig. 4A step 412 and ¶0034 – “At 412, the source mobile wireless device 102A can have completed installation and activation of the eSIM 208 on an eUICC 108 of the source mobile wireless device 102A”), that the user is transitioning from using the first device to using a second device (Fig. 4A step 430-442-444 and ¶0035 – “At 430, the target mobile wireless device 102B, responsive to the eSIM 208 selection, can send a message to the source mobile wireless device 102A requesting transfer of the eSIM 208 from the source mobile wireless device 102A to the target mobile wireless device 102B. In some embodiments, the target mobile wireless device 102B communicates the transfer request directly to the source mobile wireless device 102A, e.g., via direct inter-device communication path 306, which can be securely encrypted in some scenarios. In some embodiments, the target mobile wireless device 102B communicates the transfer request indirectly to the source mobile wireless device 102A, e.g., via the cloud network services server 362. At 442, the source mobile wireless device 102A presents a notification of the eSIM transfer request to the user 402, who at 444 provides acceptance of the eSIM transfer request”); and
initiating, in response to the determining, a transfer of the eSIM profile from the first device to the second device, the transfer causing deactivation of the eSIM profile on the first eSIM chip (Fig. 4B step 454 and ¶0035-0036) and activation of the eSIM profile on a second eSIM chip of the second device (Fig. 4C step 476-482 and ¶0037-0038).
Regarding claim 2, Jin discloses the first device of claim 1, wherein the determining includes determining that the user is transitioning from using the first device to using the second device based on the user being proximate to the second device (Fig. 4A step 420,426, and 428 and ¶0035 disclose interaction between user and device 102B, which indicated that the user is within a threshold distance with the device) while the first device is at least a threshold distance from the second device (Fig. 3A, ¶0032, Fig. 4A step 430, and ¶0035 disclose device 102A and 102B communicating transfer request via direct inter-device communication path 306 which include near-field communication or Bluetooth, or peer to peer local network – i.e. the first device is at least at a threshold distance from the second device for short range communication).
Regarding claim 8, Jin discloses the first device of claim 1, the operations further comprising displaying, via a display screen of the first device and in response to the determining, a user interface element selectable to initiate the transfer, wherein the transfer is initiated responsive to receiving a user selection of the user interface element (Fig. 4B step 442-444 and ¶0035 – “At 442, the source mobile wireless device 102A presents a notification of the eSIM transfer request to the user 402, who at 444 provides acceptance of the eSIM transfer request”).
Regarding claim 9, Jin discloses the first device of claim 1, wherein initiating the transfer includes initiating an authentication of the user at the second device, the activation of the eSIM profile on the second eSIM chip occurring in response to a successful authentication of the user at the second device (Fig. 4A step 420-422-424 and ¶0035 – “At a subsequent time 420, a user 402 of the source mobile wireless device 102A can acquire and perform a device activation process for a target mobile wireless device 102B. The user 402 can associate the target mobile wireless device 102B with a common user account of the device manufacturer cloud network service 302 as associated with the source mobile wireless device 102A. The user 402 of the source and target mobile wireless devices 102A, 102B can seek to transfer an eSIM 208 from the eUICC 108 of the source mobile wireless device 102A to the target mobile wireless device 102B. At 422, the target mobile wireless device 102B can securely login with multi-factor authentication to the cloud network services server 362 and obtain, at 424 from the device manufacturer cloud network services server 362, eSIM subscription information 424 for the source mobile wireless device 102A. At 426, the target mobile wireless device 102B can present to the user 402, e.g., via a display of the target mobile wireless device 102B, a list of eSIMs 208 that are transferrable from the source mobile wireless device 102A to the target mobile wireless device 102B, and at 428, the user 402 can select an eSIM 208 to transfer”).
Regarding claim 10, Jin discloses the first device of claim 9, wherein the first device and the second device are communicatively coupled (Fig. 3A, ¶0032, Fig. 4A step 430, and ¶0035 disclose device 102A and 102B communicating transfer request directly via direct inter-device communication path 306 which include near-field communication or Bluetooth, or peer to peer local network), and initiating the authentication of the user includes selecting an authentication method for the user that differs based on a type of communicative coupling between the first device and the second device (Fig. 4A step 420-422-424 and ¶0035 disclose authentication method for device 102B with server 362 being different with the link between 102A and 102B).
Regarding claim 11, Jin discloses the first device of claim 1, the operations further including: determining, while the eSIM profile is activated on the second eSIM chip (Fig. 4A step 412 and ¶0034 – “At 412, the source mobile wireless device 102A can have completed installation and activation of the eSIM 208 on an eUICC 108 of the source mobile wireless device 102A”), that the user is transitioning from using the second device to using the first device (Fig. 4A step 430-442-444 and ¶0035 – “At 430, the target mobile wireless device 102B, responsive to the eSIM 208 selection, can send a message to the source mobile wireless device 102A requesting transfer of the eSIM 208 from the source mobile wireless device 102A to the target mobile wireless device 102B. In some embodiments, the target mobile wireless device 102B communicates the transfer request directly to the source mobile wireless device 102A, e.g., via direct inter-device communication path 306, which can be securely encrypted in some scenarios. In some embodiments, the target mobile wireless device 102B communicates the transfer request indirectly to the source mobile wireless device 102A, e.g., via the cloud network services server 362. At 442, the source mobile wireless device 102A presents a notification of the eSIM transfer request to the user 402, who at 444 provides acceptance of the eSIM transfer request”); and
initiating, in response to determining that the user is transitioning from using the second device to using the first device, an additional transfer of the eSIM profile from the second device to the first device (Fig. 4C step 476-482 and ¶0037-0038) (Examiner note: claim 11 describes the steps for transferring of eSIM from a device with active eSIM to another device without the active eSIM, which is similar to the procedure described in claim 1 – The role of device 102A and 102B in Jim teaching are corresponding to the second device and first device for addressing claim 11).
Regarding claim 12, Jin discloses a method, comprising:
receiving, by a device (Fig. 1-2: device 102; Fig 3A and Fig. 4A-4C: target mobile wireless device 102B) and while an embedded subscriber identity module (eSIM) profile associated with a user is activated on a first eSIM chip of an additional device (Fig. 4A step 412 and ¶0034 – “At 412, the source mobile wireless device 102A can have completed installation and activation of the eSIM 208 on an eUICC 108 of the source mobile wireless device 102A”), a transfer notification requesting to transfer the eSIM profile from the additional device to the device (Fig. 4C step 478 and ¶0038) based on a determination that the user is transitioning from using the additional device to using the device (Fig. 4A step 430-442-444 and ¶0035), the transfer notification indicating that the eSIM profile has been deactivated on the first eSIM chip (Fig. 4B step 448-450-454 disclose the step of deactivation before the SIM transfer); and
activating, by the device and in response to receiving the transfer notification, the eSIM profile on a second eSIM chip of the device (Fig. 4C step 482 and ¶0038 – “at 482, installs the eSIM 208 on the eUICC 108 of the target mobile wireless device 102B”).
Regarding claim 13, Jin discloses the method of claim 12, wherein the receiving includes receiving the transfer notification responsive to detecting that the user is proximate to the device (Fig. 4A step 420,426, and 428 and ¶0035 disclose interaction between user and device 102B for transferring e-SIM, which indicated that the user is within a threshold distance with the device) while the additional device is at least a threshold distance from the device (Fig. 3A, ¶0032, Fig. 4A step 430, and ¶0035 disclose device 102A and 102B communicating transfer request directly via direct inter-device communication path 306 which include near-field communication or Bluetooth, or peer to peer local network – i.e. the first device is at least at a threshold distance from the second device for short range communication).
Regarding claim 18, Jin discloses the method of claim 12, wherein the device and the additional device are communicatively coupled (Fig. 3A, ¶0032, Fig. 4A step 430, and ¶0035 disclose device 102A and 102B communicating transfer request directly via direct inter-device communication path 306 which include near-field communication or Bluetooth, or peer to peer local network), activating the eSIM profile includes authenticating the user at the device (Fig. 4A step 420-422-424 and ¶0035), and an authentication method used to authenticate the user differs based on a type of communicative coupling between the device and the additional device (Fig. 4A step 420-422-424 and ¶0035 disclose authentication method for device 102B with server 362 being different with the link between 102A and 102B).
Regarding claim 19, Jin discloses the method of claim 12, further comprising:
receiving, by the device (Fig. 1-2: device 102; Fig 3A and Fig. 4A-4C: Source mobile wireless device 102A) and while the eSIM profile is activated on the second eSIM chip (Fig. 4A step 412 and ¶0034), an additional transfer notification requesting to transfer the eSIM profile from the device to the additional device (Fig. 4C step 430 and ¶0035) based on an additional determination that the user is transitioning from using the device to using the additional device (Fig. 4A-4B step 430-442-444 and ¶0035); and
deactivating, in response to receiving the additional transfer notification, the eSIM profile on the second eSIM chip of the device (Fig. 4B step 454 and ¶0035-0036), thereby enabling activation of the eSIM profile on the first eSIM chip of the additional device (Fig. 4C step 476-482 and ¶0037-0038) (Examiner note: in claim 19, the device is corresponding to the device 102A in Jin teaching and additional device is corresponding to device 102B in Jin teaching).
Regarding claim 20, Jin discloses a method (Fig. 4A-4C), comprising:
determining, by a first device (Fig. 4A-4C: target mobile wireless device 102B) and while an embedded subscriber identity module (eSIM) profile associated with a user is activated on a second device (Fig. 4A step 412 and ¶0034 – “At 412, the source mobile wireless device 102A can have completed installation and activation of the eSIM 208 on an eUICC 108 of the source mobile wireless device 102A”), that the user is transitioning from using the second device to using the first device (Fig. 4A step 420-430-442-444 and ¶0035 – “At 430, the target mobile wireless device 102B, responsive to the eSIM 208 selection, can send a message to the source mobile wireless device 102A requesting transfer of the eSIM 208 from the source mobile wireless device 102A to the target mobile wireless device 102B. In some embodiments, the target mobile wireless device 102B communicates the transfer request directly to the source mobile wireless device 102A, e.g., via direct inter-device communication path 306, which can be securely encrypted in some scenarios. In some embodiments, the target mobile wireless device 102B communicates the transfer request indirectly to the source mobile wireless device 102A, e.g., via the cloud network services server 362. At 442, the source mobile wireless device 102A presents a notification of the eSIM transfer request to the user 402, who at 444 provides acceptance of the eSIM transfer request”); and
automatically initiating, by the first device and in response to the determining, a transfer of the eSIM profile from the second device to the first device (Fig. 4A step 430 and ¶0035 – “At 430, the target mobile wireless device 102B, responsive to the eSIM 208 selection, can send a message to the source mobile wireless device 102A requesting transfer of the eSIM 208 from the source mobile wireless device 102A to the target mobile wireless device 102B”), the transfer causing deactivation of the eSIM profile on the second device (Fig. 4B step 454 and ¶0036 –“At 454, the source mobile wireless device 102A performs an eSIM deletion procedure to delete the eSIM 208 from the eUICC 108 of the source mobile wireless device 102A”) and activation of the eSIM profile on the first device (Fig. 4C step 482 and ¶0038 – “at 482, installs the eSIM 208 on the eUICC 108 of the target mobile wireless device 102B”).
Allowable Subject Matter
Claim 3-7, and 14-17 are 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUNG HONG whose telephone number is (571)270-7928. The examiner can normally be reached on Monday-Friday from 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, JINSONG HU, can be reached on (571) 272-3965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUNG HONG/
Primary Examiner, Art Unit 2643