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 filed "REMARKS" on 07/14/2026 have been fully considered but they are not persuasive.
Applicant alleges that: Regarding independent claims 1, 7, and 13, “Salkinzis does not disclose generating a signal to a network management entity of a first mobile communication network serving the terminal device based on a subscription applied by the terminal device, the signal comprising data indicative to the network management entity to cause a generation of a network initiated attach request to the terminal device”. More specifically, “Salkinzis does not disclose a network-initiated attach request to the terminal device” and “Salkinzis does not disclose a management entity that communicates both with a network entity of a first mobile communication network and a terminal device”. However, Salkinzis teaches as such as previously described in the office action below. Additionally, Salkinzis teaches a similar embodiment represented in FIG. 8B, which depicts a procedure for re-provisioning a mobile unit continuing from the operations of either FIG. 6A or FIG. 7, see [0155] – [0156]. Firstly, according to FIG. 7 each of the mobile networks depicted in FIG. 2 (BIF 224, 234, 244) communicates directly with the Smart Contract 162 (which communicates directly to the Provisioning Function 150, see FIG. 6A. Provisioning Function 150 (which includes smart contract 162) read as a management entity). Next, according to FIG. 8B, the Device X 640 (which is being reprovisioned) is communicating directly with the Smart Contact 162 and each of the mobile networks (BIF 224, 234, 244), i.e. a management entity (Provisioning Function 150 which includes Smart Contract 162) that communicates both with a network entity of a first mobile communication network (BIF 224) and a terminal device (Device X 640). Regarding “Salkinzis does not disclose a network-initiated attach request to the terminal device,” according to FIG. 8A, after the payment is confirmed from Network A (808), the Smart Contract 162 starts a provisioning request event (814) and transmits Device X data to additional mobile networks B and C (BIF 234 and 244). Next, as shown in FIG. 8B Network B and BIF 234 may receive Device X information and the attach request initiated by the Smart Contract 162, wherein Network B will respond to the Device X with an attach request in operation 818, i.e. a network-initiated attach request (FIG. 8B operation 818) to the terminal device which may be a Subscription Offer Request originating from the Smart Contract 162/Provisioning Function 150, Smart Contract 162/Provisioning Function 150 read as a management entity.
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 1-5, 7-11, and 13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Salkinzis (US 2023/0156455 A1, hereinafter Salkinzis).
Regarding claim 1, Salkinzis teaches a method for a network-controlled management of a subscription applied by a terminal device ([0051] the Provisioning Function 150 is a function that creates the smart contract 162 in the blockchain, stores information in the smart contract 162 about a plurality of IoT devices (UEs) and enables devices owners (e.g., via a web interface) to request and buy subscriptions for the IoT devices they own, i.e. subscription applied by a IoT/UE, IoT/UE read as a terminal device), the method, performed by a management entity ([0058] referring to FIG. 2 each Blockchain Interface Function 224, 234, 244 interfaces to the blockchain via the API 217 (which is conducted through the Provisioning Function 150, Provisioning Function 150 read as management entity) and interfaces also with other functions in the mobile network such as a Network Exposure Function (“NEF”), a Service Capability Exposure Function (“SCEF”), a Unified Data Management (“UDM”), a Home Subscriber Server (“HSS”), and other mobile network functions, i.e. a management entity performing said method. Also see explanation given in “Response to Arguments” section), generating a signal to a network management entity of a first mobile communication network serving the terminal device based on a subscription applied by the terminal device ([Figure 6A, signaling 602] and [0119] at FIG. 6A, the network procedure 600 begins with the provisioning function 150 sending a “Subscription Offer Request” message to the smart contract 162 (smart contract 162 directly connected to Provisioning Function 150, shown in FIG. 2), e.g., at Address-S on the blockchain network (see signaling 602). Also see explanation given in “Response to Arguments” section, including FIG. 7/8A/8B), the signal comprising data indicative to the network management entity to cause a generation of a network initiated attach request to the terminal device ([0060] the UE 205 is equipped with a eUICC that initially contains only a bootstrap profile. The UE 205 can establish communication via the wireless communication link 115 with any available mobile network (such as mobile network A 220) and can use its bootstrap profile to register with a mobile network, i.e. after the initial signal 602 described above, the UE/IoT may connect directly to BSs , i.e. an attach request would be performed. Also see explanation given in “Response to Arguments” section, including FIG. 7/8A/8B), receiving, upon a completion of an attachment to the first mobile communication network by the terminal device, a signal from the terminal device (referring to FIG. 8B the Device X 640, Device X 640 read as terminal device, which is the UE (remote unit) being provisioned (which may be an IoT according to [0040]), sends signal 816, i.e. a signal from the terminal device), establishing, in response to the receipt of the signal from the terminal device, a communication channel on a user plane with the terminal device (referring to FIG. 8B the Device X 640, receives signal 818/820, wherein said UE may obtain a new eUICC operational profile (see signaling 818 and 820), described in [0167], i.e. a communication channel on a user plane with the terminal device(s)/BSs/networks), transmitting data to the terminal device ([Figure 8B, signaling 818], data is transmitted from a network to Device X 640, Device X 640 read as terminal device), the data comprising at least part of a definition of a subscription requested to be applied by the terminal device in order to re-provisioning of the subscription applied by the terminal device to cause an attachment to a second mobile communication network ([0021 and 0022] describes FIG. 8A/8B represent a network procedure for re-provisioning a mobile unit, referring to FIG. 8B, Device X 640, read as terminal device, is communicating through Network A 224 (with the current provisioning subscription) to Network B 234 to request re-provisioning to cause an attachment to said Network B 234 (see signals 816/818/820), and [0070] describes "in response to the processor 305 identifying the first blockchain message as a subscription offer request (and in response to the processor 305 verifying that the first blockchain message is received from the first address), the processor 305 controls the transceiver 325 to emit a first event, such as a Subscription Offer Request Event." That is, signaling 816, 818, and 820 in FIG. 8B (also referring to signaling 642, 644, and 646 in FIG. 6C) include information such as a subscription request and a provisioning of the subscription).
Regarding claim 2, Salkinzis teaches the signal to the network management entity of the first mobile communication network is delivered from the management entity ([Figure 6C, signaling 642] and [Figure 8B, signaling 816] signals derived from the UE and sent through smart contract 162 (smart contract 162 working in association with the Provisioning Function 150, Provisioning Function 150 read as network management entity) being delivered to the first communication network Mobile Network A 220) over at least one of: Service Capability Exposure Function (SCEF), Network Exposure Function (NEF) ([0164] the blockchain interface function 224 instructs another network function in the mobile network A 220 (e.g., the SCEF or the HSS in an EPC network, or the NEF or the UDM in a 5GC network) to create a new subscription for Device X 640 (see block 810). This new subscription includes all or part of the device information received before in the “Subscription Offer Request Event”).
Regarding claim 3, Salkinzis teaches data identifying at least one entity in a communication channel to reach the management entity by the terminal device is delivered to the terminal device ([Figure 6C, signaling 644], [Figure 8B, signaling 818] and [0142] the mobile network A 220 will provide the received “provisioning data” to the Device X 640 (see signaling 644), or to re-provision (see signaling 818) as described in [0167], said signals 644 and 818 will identify at least one entity (blockchain interface function 224/234) in the communication channel while transmitting to the terminal device (Device X 640)).
Regarding claim 4, Salkinzis teaches the data identifying the at least one entity in the communication channel comprises a definition for at least one of: an access point name of the management entity from the first mobile communication network, a data network name of the management entity from the first mobile communication network ([0042] the access network 120 contains one or more WLAN (e.g., WI-FITM) access points, referring to FIG. 6C access network 120 may be (or be connected to) Mobile Network A 220, i.e. the identifying information in the communication channel between Device X 640 and Mobile Network A (signaling 642, 644, and 646) may include an access point name of the first mobile communication network (Mobile Network A 220)).
Regarding claim 5, Salkinzis teaches the data identifying the at least one entity in the communication channel (as described in claim 3) is delivered in one of: the signal to a network management entity of the first mobile communication network; a dedicated signal after the generation of the signal to the network management entity of the first mobile communication network ([Figure 6C, signaling 644], i.e. a dedicated signal after the generation of the signal (642) to the network management entity (BIF 224) of the first mobile communication network (Mobile Network A 220)).
Regarding claim 7, the claimed limitations of claim are rejected as the same reasons as set forth in claim 1, further in view of Salkinzis teaches an apparatus for a network-controlled management of a subscription applied by a terminal device ([0066] FIG. 3 depicts one embodiment of a blockchain apparatus 300 that may be used for network access, which may include the Provisioning Function 150, which performs the method described in claim 1).
Regarding claim 8, the claimed limitations of claim are rejected as the same reasons as set forth in claim 2.
Regarding claim 9, the claimed limitations of claim are rejected as the same reasons as set forth in claim 3.
Regarding claim 10, the claimed limitations of claim are rejected as the same reasons as set forth in claim 4.
Regarding claim 11, the claimed limitations of claim are rejected as the same reasons as set forth in claim 5.
Regarding claim 13, the claimed limitations of claim are rejected as the same reasons as set forth in claim 1, further in view of Salkinzis teaches a computer program product comprising at least one non-transitory computer-readable storage medium having computer-executable program code instructions stored therein, the program code instructions being configured, when the computer program product is executed on a computer, to cause the computer to at least- ([0028] embodiments may take the form of a program product embodied in one or more computer readable storage devices storing machine readable code, computer readable code, and/or program code, referred hereafter as code. The storage devices may be tangible, non-transitory, and/or non-transmission, i.e. apparatus 300, described in claim 7 and [0066], may be a computer program product as described above, and may also include Processor 305 and Memory 310, and is capable of executing instructions to perform the method described in 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 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Salkinzis (US 2023/0156455 A1, hereinafter Salkinzis) in view of Foti (US 2023/0164194 A1, hereinafter Foti).
Regarding claim 6, Salkinzis is not relied on for the claim language the data comprising at least part of a definition of a subscription corresponds to a digitally implemented embedded subscriber identity module. However, Foti teaches [abstract] a method where Network nodes in the SNPN, such as a Session Management Function (SMF) (24) and a Unified Data Management (UDM) function (26) are configured to support the onboarding of the credentials to the UEs. In particular, a UE receives remote provisioning information from a SMF. Upon receipt, the UE initiates a remote provisioning procedure and receives the Internet access IMS subscription data needed to establish a Packet Data Unit (PDU) session with an IMS network. Foti also teaches the data comprising at least part of a definition of a subscription ([0126] FIGS. 7A-7B are flow diagrams illustrating a method 100, implemented at a UE 18, for acquiring configuration/subscription data over an access/core network, specifically FIG. 7A box 110 describes receiving UE configuration/subscription data as described in [0131]) corresponds to a digitally implemented embedded subscriber identity module (the UE configuration/subscription information described above includes "enhanced Subscriber Identity Module (eSIM) entitlement server information, one or more eSIM Information Elements (IE), NPN subscription information for the UE, authentication credentials for authenticating the UE with the remote provisioning system, and a link to an eSIM manager associated with the IMS provider" stated in [0128], i.e. UE configuration/subscription information used for registering/provisioning or re-registering/re-provisioning in a network, as shown in FIG. 7B, includes information corresponding to an eSIM, eSIM read as digitally implemented embedded subscriber identity module).
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 Salkinzis to include transmission information corresponding to an eSIM, as taught by Foti, in order to [0005] enable the UEs access to a remote provisioning system, and therefore [0003] enable users to be able to fully utilize the services provided by the 5G public networks.
Regarding claim 12, the claimed limitations of claim are rejected as the same reasons as set forth in claim 6.
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.
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.
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.
/MATTHEW JAMES DWYER/Examiner, Art Unit 2649
/GEORGE ENG/ Supervisory Patent Examiner, Art Unit 2699
Prosecution Insights