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 Amendment
Applicant’s remarks have been given full consideration, as such this Office Action has been modified in view of Amendments filed on 07/07/2026.
Response to Arguments
Applicant's arguments filed "REMARKS" on 07/07/2026 have been fully considered but they are not persuasive.
Applicant alleges that: Regarding independent claims 1, 9, and 20, “Bharadwaj fails to disclose a device comprising a processor configured to "detect provisioning or deprovisioning of a carrier profile for a User Equipment (UE) device,"”. However, Bharadwaj teaches as such in [0100] and in block 524, see FIG. 5B. [0100] describes the method is capable of detecting any changes to the carrier profiles and notifying the user. A user may be notified of the “detection” of any new, unapproved, or inactive carrier profiles, i.e. the provisioning of a carrier profile is detected.
Applicant alleges that: Regarding independent claims 1, 9, and 20, “although Bharadwaj mentions carrier profiles and an eUICC, Bharadwaj does not disclose identifiers for an eUICC and a carrier profile”, “They do not disclose a first identifier identifying an eUICC included in the UE”, and “Bharadwaj's disclosure of IMSI, MCC, MNC, SID/NID, HPLMN, ICCID, or other SIM/network/carrier-related information does not disclose a first identifier identifying an eUICC included in the UE”. However, Bharadwaj teaches as such, [0069] describes “One or more of the first SIM 304a and any additional SIMs may further store home identifiers (e.g., a System Identification Number (SID)…” and [0021] describes “the eSIM may be an eUICC or a multiple enabled profile (MEP) SIM,” i.e. the SIMs may include identifiers such as a SID, and the SIMs may also be an eSIM or eUICC according to [0021], SID read as “identifier for an eUICC”.
Applicant alleges that: Regarding independent claims 1, 9, and 20, “These disclosures relate to checking, activating, or deactivating carrier profiles already stored on an MEP SIM. They do not disclose, "generate a third identifier based on the first identifier and the second identifier, wherein the third identifier associates the first identifier and the second identifier"” and “A "Yes" or "No" result of such a determination is not an identifier, is not generated based on a first identifier identifying an eUICC included in the UE and a second identifier identifying the carrier profile, and does not associate the first identifier and the second identifier”. However, Bharadwaj teaches the generated “Yes” or “No” identifier is based on the identifiers described throughout the office action (the first and second identifiers, see claim 1 below), and the generated identifier is saved in memory and used to make determinations about the carrier profile (activate, disable, etc.) as described in the previous office action, see [0094-0095] and FIG. 5B. The generated “Yes” or “No” is an identifier and is used to make decisions about a carrier profile or a carrier profile device.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
Claims 1, 3-6, 9, 11-14, 17, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by BHARADWAJ et al. (US 2024/0388916 A1, hereinafter Bharadwaj).
Regarding claim 1, Bharadwaj teaches a device comprising: a processor ([0059] FIG. 2 is a component block diagram illustrating an example computing and wireless modem system 200 suitable for implementing any of the various embodiments. Various embodiments may be implemented on a number of single processor and multiprocessor computer systems) configured to: detect provisioning or deprovisioning of a carrier profile for a User Equipment (UE) device ([0060] with reference to FIGS. 1A-2, the illustrated example computing system 200 (which may be a SIP in some embodiments) is suitable for use of a UE (e.g., 120a-120e), wherein modem system 200 works in association with the SMO Framework 166, which is configured to support provisioning of non-virtualized and virtualized network elements for UEs as described in [0056]. Additionally, [0100] describes the method is capable of detecting any changes to the carrier profiles and notifying the user. A user may be notified of the “detection” of any new, unapproved, or inactive carrier profiles, i.e. the provisioning of a carrier profile is detected); obtain, in response to detecting the provisioning or deprovisioning of the carrier profile, a first identifier identifying an embedded Universal Integrated Circuit Card (eUICC) included in the UE ([0069] describes “One or more of the first SIM 304a and any additional SIMs may further store home identifiers (e.g., a System Identification Number (SID)…” and [0021] describes “the eSIM may be an eUICC or a multiple enabled profile (MEP) SIM,” i.e. the SIMs may include identifiers such as a SID, and the SIMs may also be an eSIM or eUICC according to [0021], SID read as “identifier for an eUICC”) and a second identifier identifying the carrier profile ([0021] carrier profile satisfies or violates the carrier personalization policy and comparing one or more attributes of each carrier profile with the carrier personalization policy, the one or more attributes including one or more of: an international mobile subscriber identity (IMSI), a mobile country code (MCC), a mobile network code (MNC), a carrier identifier, or a subscriber identifier. The eSIM may be an eUICC or a multiple enabled profile (MEP) SIM, i.e. a plurality of other identifiers that may indicate carrier identifier, also partially described in [0069]); generate a third identifier based on the first identifier and the second identifier, wherein the third identifier associates the first identifier and the second identifier ([Figure 5B, 512/516] determination blocks 512 and 516 make a determination based on the carrier profile identifiers on a specific MEP SIM, such as a combination of the identifiers described above, and [0094-0095] describes how determination block 512 may raise a third identifier, wherein determination block 512="Yes" or "No," additionally, another identifier is described in [0097-0098] wherein determination block 516=“Yes” or "No," i.e. a third identifier is generated based on the eUICC/eSIM identifier (first identifier) and a carrier profile identifier (second identifier)); and perform one of: store the third identifier via a network device included in the network; or revoke the third identifier ([0077] describes "the electronic storage 420 may store software algorithms, information determined by processor(s) 422," i.e. the determination (third identifier) derived from determination block 512/516 may be stored in memory, FIG. 5 also depicts the ability to revoke a device and therefore revoke the third identifier in steps 514 or 518).
Regarding claim 3, Bharadwaj teaches the processor stores the third identifier ([0077] describes "the electronic storage 420 may store software algorithms, information determined by processor(s) 422," i.e. the determination (third identifier) derived from determination block 512/516 may be stored in memory), the processor is configured to: transmit the third identifier to the network device (FIG. 1 depicts a number of network devices 110a, 110b, 110c, and 110d, which may be the modem system 200 described in claim 1, in communication with Core Network 140, and [0036] the network device (modem system 200) 110a-110d may communicate with the core network 140 over a wired or wireless communication link 126. The UEs 120a-120e may communicate with the network node 110a-110d over a wireless communication link 122, i.e. as an example UE device 120a, modem/BS 110a, and CN 140 may transmit/share associated identifiers).
Regarding claim 4, Bharadwaj teaches the device includes a core network device included in the network ([Figure 1A, 140] Core Network 140), wherein the device is configured to: receive, from another device in the network, an indication that the UE is provisioned ([0100] referring to FIG. 5 in block 524, the computing device may notify the user, such as via a graphical user interface (GUI) (e.g., user notification module 438), of the changes made to the carrier profiles in block 504, i.e. the CN has received an indication from the modem that the UE is provisioned in the case of 520, and is now notifying the user via a transmission to the UE device, i.e. an indication that the UE is provisioned has been received at the CN).
Regarding claim 5, Bharadwaj teaches the processor obtains the first identifier and the second identifier ([Figure 5B, 512/516] depicts determination blocks 512/516 obtaining the first and second identifiers to make a determination about provisioning, as described in claim 1), the processor is configured to: receive, from a system included in the network, one or more parameters that identify the UE or a subscriber associated with the UE ([0026] a UE may include digital or electronic SIMs (or eUICC) that store codes and parameters for different wireless carriers that allow for connection to the networks of wireless carriers. The eSIM may be scanned or read as part of the boot process to detect active profiles and determine whether the UE is locked or personalized by a particular carrier, i.e. the receivers in the modem system 200 or CN 140 are configured to receive UE parameters for provisioning decisions).
Regarding claim 6, Bharadwaj teaches encrypt one or both of the first identifier and the second identifier ([0104] the UE 700 may include a processor 202 coupled to a touchscreen controller and an internal memory (e.g., 314, 420). The processor 202 may be one or more multicore integrated circuits designated for general or specific processing tasks. The internal memory may be volatile or non-volatile memory and may also be secure and/or encrypted memory, or unsecure and/or unencrypted memory, or any combination thereof, i.e. the first and second identifiers, which are stored in memory, may be encrypted); and concatenate one or more of the parameters with the first identifier or the second identifier to generate the third identifier ([Figure 5, 512/516] depicts determination blocks 512/516 obtaining the first and second identifiers to make a determination about provisioning, as described in claim 1, i.e. parameters from the first and second identifiers are combined/concatenated to generate a "Yes" or "No" identifier (the third identifier)).
Regarding claim 9, the claimed limitations of claim are rejected as the same reasons as set forth in claim 1.
Regarding claim 11, the claimed limitations of claim are rejected as the same reasons as set forth in claim 3.
Regarding claim 12, the claimed limitations of claim are rejected as the same reasons as set forth in claim 4.
Regarding claim 13, the claimed limitations of claim are rejected as the same reasons as set forth in claim 5.
Regarding claim 14, the claimed limitations of claim are rejected as the same reasons as set forth in claim 6.
Regarding claim 17, Bharadwaj teaches provisioning the carrier profile to the UE or deprovisioning the carrier profile from the UE ([0056] the SMO Framework 166 (which is used through CN 140, or a network device 110a) may be configured to support RAN deployment and provisioning of non-virtualized and virtualized network elements, partially based on the carrier profile as described in claim 1. Additionally, a carrier profile may be activated/provisioned, see FIG. 5B).
Regarding claim 20, the claimed limitations of claim are rejected as the same reasons as set forth in claim 1, further in view of Bharadwaj teaches a non-transitory computer-readable medium comprising processor-executable instructions, which when executed by a processor included in a device, cause the processor to- ([0070] the computing device 300 may include at least one controller, such as a general-purpose processor 306, which may also be coupled to at least one memory 314. The memory 314 may be a non-transitory tangible computer readable storage medium that stores processor-executable instructions, able to execute instructions causing the processor to perform the operations of claim 1).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7, 8, 15, 16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over BHARADWAJ et al. (US 2024/0388916 A1, hereinafter Bharadwaj) in view of O'LEARY (US 2014/0004827 A1, hereinafter O’Leary).
Regarding claim 7, Bharadwaj is not relied on for the claim language the processor indicates, in a record that includes the third identifier, that the first identifier and the second identifier are bound to one another. However, O’Leary teaches [abstract] a method for provisioning embedded universal integrated circuit cards (EUICCs), in association with a certification server that may store records for each EUICC containing provisioned profile data. O’Leary also teaches the processor indicates, in a record that includes the third identifier, that the first identifier and the second identifier are bound to one another ([0048] the certification server 14 maintains a record of all provisioning for the EUICC 12, thereby enabling the certification server 14 to play a role in authenticating or authorizing provisioning/re-provisioning requests and/or managing the re-provisioning process, and [0038] further describes the provisioning server updates the certification server 14 with the profile data. That is, the certification server 14 maintains a record specific to the EUICC 12 that reflects the current provisioned profile information and, in some embodiments, a hierarchy of provisioned profile information. In the latter case, the certification server 14 maintains profile information at the certification or SIM vendor level, the device level, the regulatory domain level, and/or the MNO level, if any such profiles have been provisioned to the EUICC 12, i.e. a certification server which contains a record(s) including identifiers such as at the device level (first identifier), SIM vendor level (second identifier), and certification (third identifier), wherein all three identifiers are bounded together per UE 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 Bharadwaj to include a record that works in association with the plurality of identifiers, as taught by O’Leary, in order to [0005] provide a registration/provisioning system with a record that enables the ability to verify authenticity and the services of a device, and therefore help [0021] enable access and authentication for an eUICC/eSIM on a wireless network.
Regarding claim 8, Bharadwaj is not relied on for the claim language modify a record that includes the third identifier to indicate that the first identifier and the second identifier are not bound and are in an idle state; or delete the record. However, O’Leary teaches as such ([0031] the certification server 14 may, in some implementations, remove expired or de-authorized profile data from the record for an EUICC 12, i.e. modifying/deleting the record based on expired or de-authorized data).
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 Bharadwaj to include a record that works in association with the plurality of identifiers, as taught by O’Leary, in order to [0005] provide a registration/provisioning system with a record that enables the ability to verify authenticity and the services of a device, and therefore help [0021] enable access and authentication for an eUICC/eSIM on a wireless network.
Regarding claim 15, the claimed limitations of claim are rejected as the same reasons as set forth in claim 7.
Regarding claim 16, the claimed limitations of claim are rejected as the same reasons as set forth in claim 8.
Regarding claim 18, Bharadwaj is not relied on for the claim language generating the carrier profile; and installing the carrier profile on the UE via the Internet. However, O’Leary teaches generating the carrier profile ([0040-0041] describes a donor mobile network operator (MNO) profile, MNO profile read as carrier profile, wherein said MNO profile is temporary and is created/generated for a UE device for the provisioning process, a donor MNO may also be called a "provisioning profile"); and installing the carrier profile on the UE via the Internet ([0053] the certification server 110 itself, or a proxy, may have been provided with the active MNO profile that is intended to be associated with and installed on the EUICC 12, and the certification server 110 may itself (or through a proxy) install the profile on the EUICC 12).
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 Bharadwaj to include the ability to generate and install a carrier profile onto a UE, as taught by O’Leary, in order to help improve and [0021] enable access and authentication for an eUICC/eSIM on a wireless network.
Regarding claim 19, Bharadwaj teaches receiving the first identifier from the UE; transmitting the first identifier to a circuit card management system that is external to the network (referring to FIG. 5, determination blocks 512 and 516 receive the first and second identifiers from the UE to make provisioning decisions as described in claim 1, which may be transmitted to the SMO Framework 166 (a circuit card management system external to the network as shown in FIG. 1), and said SMO Framework 166 may include one or more interfaces or be coupled to one or more interfaces configured to receive or transmit signals, data, or information as described in [0052]); receiving the second identifier from the circuit card management system; and using the second identifier to establish a secure connection with a component in the UE (depicted in FIG. 1B, the SMO Framework 166 described above may connect to a plurality of UE devices 120, the connection may be based on the identifiers received from the UE 120, represented in determination blocks 512 and 516 in FIG. 5B);
Bharadwaj is not relied on for the claim language have the component install the carrier profile on the component. However, O’Leary teaches as such ([0053] the certification server 110 itself, or a proxy, may have been provided with the active MNO profile that is intended to be associated with and installed on the EUICC 12, and the certification server 110 may itself (or through a proxy) install the profile on the EUICC 1).
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 Bharadwaj to include the ability to generate and install a carrier profile onto a UE, as taught by O’Leary, in order to help improve and [0021] enable access and authentication for an eUICC/eSIM on a wireless network.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over BHARADWAJ et al. (US 2024/0388916 A1, hereinafter Bharadwaj) and O'LEARY (US 2014/0004827 A1, hereinafter O’Leary) as applied in claims above, and further in view of CHAUGULE et al. (US 2024/0147219 A1, hereinafter Chaugule).
Regarding claim 2, Bharadwaj teaches the first identifier includes- ([0025] the term eSIM used to describe the first identifier in claim 1 may include an embedded universal integrated circuit card (eUICC), a multiple enabled profile (MEP)-capable embedded circuit, or related hardware, software, and firmware);
Bharadwaj is not relied on for the claim language the second identifier includes a Vendor Unique Integrated Circuit Card Identifier (VUICCID) that identifies the carrier profile. However, O’Leary teaches as such ([0027] reference is first made to FIG. 1, which diagrammatically shows an example provisioning system 50 for an example wireless device 10 containing an EUICC 12. The provisioning system 50 may include at least one certification server 14 and one or more SIM vendor servers 20 (although "SIM" refers generally to the software on the EUICC, the manufacturers/vendors of EUICC devices are referred to herein as SIM vendors). Each authorized or certified SIM vendor may have one or more of its own servers 20 for communicating with the certification server 14 in order to certify EUICCs that it has manufactured, i.e. a Vendor Unique Integrated Circuit Card may be used to represent the carrier profile (second identifier) to aid in provisioning determinations).
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 Bharadwaj to include the ability to use a vendor unique identifier as the second identifier, as taught by O’Leary, in order to help improve and [0021] enable access and authentication for an eUICC/eSIM on a wireless network.
The combination of Bharadwaj and O’Leary is not relied on for the claim language -an embedded Universal Integrated Circuit Card Identifier (EID)-. However, Chaugule teaches [abstract] a method for provisioning secondary eSIM profiles in a cellular wireless network in association with the ability for a mobile virtual network operator (MVNO) to supplement and offload from a cellular wireless network of a mobile network operator (MNO) that provides cellular wireless services to users of the MVNO. Chaugule also teaches the use of -an embedded Universal Integrated Circuit Card Identifier (EID)- ([0031] the MVNO provisioning system can maintain a database of EID values with indications of whether a secondary eSIM is installed on an eUICC identified by an EID value, When i) the wireless device attached to the MNO cellular wireless network includes the primary SIM/eSIM (for access to the MVNO cellular wireless services via the MNO cellular wireless network) and ii) the eUICC of the wireless device identified by the EID value does not include a secondary eSIM (for access to all or a portion of MVNO cellular wireless services via the MVNO cellular wireless network), the provisioning system of the MVNO cellular wireless network triggers provisioning of the secondary eSIM to the wireless device, i.e. an EID may be used as the identification of the UE (first identifier) to aid in provisioning determinations).
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 the combination of Bharadwaj and O’Leary to include using an EID as an identifier, as taught by Chaugule, in order to [0025] allow MVNO subscribers to access cellular wireless services of the MVNO via the cellular wireless network of the MNO, and [0027] therefore allow for extensive geographic regional and/or national coverage in a wireless network.
Regarding claim 10, the claimed limitations of claim are rejected as the same reasons as set forth in claim 2.
Conclusion
THIS ACTION IS MADE FINAL. 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 MATTHEW J DWYER whose telephone number is (571)272-5121. The examiner can normally be reached M-F 6 a.m. - 3 p.m. EST.
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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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/MATTHEW JAMES DWYER/Examiner, Art Unit 2649 /GEORGE ENG/Supervisory Patent Examiner, Art Unit 2699
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