Detailed Office 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 .
This office action is in response to the communication dated 5/31/24.
Original claims 1-19 are pending.
Claims 6 and 15 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.
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.
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.
Claims 1-5, 7-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al U.S. Patent Application Publication No. US 20190191298 A1[hereinafter Kim] in view of CHUGHTA et al. U.S. Patent Application Publication No. 20220322069 [hereinafter CHUGHTA].
As per claim 1, Kim discloses a method, comprising:
storing records for a plurality of embedded subscriber identity module (eSIM) (120) profiles, wherein a record for each eSIM profile comprises a state of the eSIM profile(see par. 0081, 0085-0086, where secure element 120 may represent an embedded SIM (eSIM) where when a profile state of the eUICC 320 installed in the electronic device 300 is changed due to a profile management operation, the ReDM 330 may store the profile state in a memory (e.g., a memory 130 as shown in FIG. 1) (or a profile list database (DM)) and may deliver the profile state to the eUICC device management server 410.);
receiving, from a first user equipment (UE), a message indicating a first eSIM profile has been deleted from the first UE(see par. 0075, 0080, 0198, 0253 A where the profile management operation may include at least one of, for example, downloading, installing, enabling, disabling, or deleting a profile, retrieving or modifying profile information such as a profile list, or transferring or keeping a profile);
changing the state of the first eSIM profile from installed to available(see par. 0253, wherein the profile may fail to be included and transferred in a profile list);
receiving a message requesting the first eSIM profile be allocated to a second UE(see par. 0193, the electronic device 300 may transfer a profile of the electronic device 300 to the external electronic device 1400);
changing the state of the first eSIM profile to a state allowing the eSIM profile to be downloaded to the second UE(see par. 0194, For example, the electronic device 300 may obtain a drag (drag and drop) operation to the external electronic device 1400 of the specific profile or may obtain a selection for a transfer menu provided for a profile, and may explicitly trigger transmission.; and
downloading the first eSIM profile to the second UE(see fig. 8, par. 0075, 0120-0125).
Kim is silent regarding: storing records for a plurality of embedded subscriber identity module (eSIM) profiles and wherein a record for each eSIM profile comprises a state of the eSIM profile.
CHUGHTA discloses storing records for a plurality of embedded subscriber identity module (eSIM) profiles and wherein a record for each eSIM profile comprises a state of the eSIM profile(see par. 0147, where the eSIM profile lookup table may also record a status field to show the current status of an eSIM profile, whether it is in use or available to be used). Therefore, it would have been obvious to one having ordinary skill in the art prior to effective filing date of the claimed invention to incorporate the teaching of CHUGHTA into the system of Kim in this way the profile lookup table may contain record a status field to show the current status of an eSIM profile, whether it is in use or available to be used).
As per claim 2, Kim discloses the method of claim 1, further comprising:
receiving a message from the second UE indicating the first eSIM profile has been installed on the second UE(se par. 0134); and changing the state of the first eSIM profile to installed(see par. 0086, where when a profile state of the eUICC 320 installed in the electronic device 300 is changed due to a profile management operation, ).
As per claim 3, Kim discloses he method of claim 1, wherein the message requesting the first eSIM profile be allocated to a second UE is received from an entitlement server(see par. 0086).
As per claim 4, Kim discloses the method of claim 1, wherein the message requesting the first eSIM profile be allocated to a second UE is received from
a mobile network operator (MNO) server(see par. 0071,0091).
as per claim 5. Kim discloses an apparatus comprising a processor and memory coupled to the processor, the processor configured to:
prepare a delete plan request, to be sent to a source user equipment (UE), to request deletion of an embedded subscriber identity module (eSIM) profile on the source UE(see par. 0181);
prepare an entitlement server request for the eSIM profile(see par. 0216);
receive, in response to transmission of the entitlement server request, a response comprising information to retrieve the eSIM profile see par. 0064, 0121);
obtain the eSIM profile from a subscription manager – data preparation+ (SM-DP+) (see par. 0064, 0121);
install the eSIM profile(se par. 0121); and
prepare a confirmation to be sent to the SM-DP+ that indicates that the eSIM profile was installed(see par. 0121, 0125).
As per claim 7. Kim discloses the apparatus of claim 5, wherein the processor is further
configured to: receive, from the source UE, a delete plan response indicating the eSIM profile has been deleted, wherein the request for the eSIM profile is a transfer SIM service request and the response from the entitlement server is a transfer SIM
response(see par. 0181).
As per claim 8, Kim discloses the apparatus of claim 5, wherein the processor is further
configured to: process a scan of a quick response (QR) code displayed by
the source UE; (see par. 0007, 0064, 0080);and determine QR code information from the scanned QR code, wherein the QR code information is related to a transfer of the
eSIM from the source UE to the target UE(see par. 0079-0080).
As per claim 9, Kim discloses the apparatus of claim 8, wherein the QR code information comprises one or more of an Integrated Circuit Card
Identification (ICCID), a mobile country code (MCC), a mobile
network code (MNC), a group 1 identifier (GID1), a group 2
identifier (GID2), an international mobile subscriber identity
(IMSI), the Transfer Token, an indication of Is Plan Active, an
International Mobile Equipment Identity (IMEI), an embedded
identity document (EID), a Serial Number, Label, a Phone Number. (see par. 0081, 0085-0086, where secure element 120 may represent an embedded SIM (eSIM) where when a profile state of the eUICC 320 installed in the electronic device 300 is changed due to a profile management operation, the ReDM 330 may store the profile state in a memory (e.g., a memory 130 as shown in FIG. 1) (or a profile list database (DM)) and may deliver the profile state to the eUICC device management server 410).
As per claim 11, Kim discloses The apparatus of claim 8, wherein the request for the eSIM profile is an install eSIM request and the response from the entitlement server comprises a universal resource locator (URL) of the SM-DP+(see par. 0083)..
Claim 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al U.S. Patent Application Publication No. US 20190191298 A1[hereinafter Kim] in view of CHUGHTA et al. U.S. Patent Application Publication No. 20220322069 [hereinafter CHUGHTA] and further in view of Indurkar et al. U.S. Patent N[hereinafter Indurkar].
As per claim the system of Kim and CHUGHTA discloses substantial features of the claimed as discussed above with respect to claim 1,
The system of Kim and CHUGHTA does not explicitly disclose
prepare a phone number list request to be sent to another equipment manufacturer (OEM) cloud server; receive, from the OEM cloud server, a phone number list
response comprising a list of devices are associated with a phone number of the eSIM profile, wherein the target UE sends the delete plan request to the source UE based on at least information included in the list of devices(see fig. 5a-5b and col. 12, line 61 to col. 13, line 57). Therefore, it would have been obvious to one having ordinary skill in the art prior to effective filing date of the claimed invention to incorporate the teaching of Indurkar into the system of Kim- CHUGHTA into the system of Kim in this way the association provides provisioning one of the first plurality of wireless communication devices by a corresponding one of the plurality of telephone numbers, and transmitting an eSIM provisioning data bundle in a short message service (SMS) message to each of the first plurality of wireless communication devices based on the corresponding one of the plurality of telephone numbers and he activation management application 104 may instruct the SMS routing node 116 to delete the association of the telephone number to the identity of the IoT device 112, may delete the association between the telephone number and the identity of the IoT device 112 in the data store 106, and may add the deallocated telephone number to a list or table of free telephone numbers (e.g., available for reallocation).
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.
Claims 12-14, and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al U.S. Patent Application Publication No. US 20190191298 A1[hereinafter Kim].
As per claim 12, Kim discloses an apparatus comprising a processor and memory coupled to the processor, the processor configured to:
receive, from a target user equipment (UE), a delete plan request to delete an embedded subscriber identity module (eSIM) profile from a source UE(see par. 0181, receiving the “transfer profile” command, the eUICC 320 may delete the profile )
delete the eSIM profile (see par. 0253 the eUICC 320 may delete the profile ; and prepare an indication that the eSIM profile has been deleted from the source UE(see par. 0253-0256).
As per claim 13, Kim discloses The apparatus of claim 12, wherein the indication that the eSIM profile has been deleted from the source UE is sent to a subscription manager - data preparation+ (SM-DP+)(see par. 0083).
As per claim 14, Kim discloses The apparatus of claim 12, wherein the indication that the eSIM profile has been deleted from the source UE is sent to the target UE(see par. 0253-0255)
As per claim 16 Kim the apparatus of claim 12, wherein the processor is further
configured to: prepare, for sending to the target UE, a delete plan response indicating the eSIM profile has been deleted(see pars. 0253-0256)
as per claim 17, Kim discloses the apparatus of claim 12, wherein the processor is further configured to: generate a quick response (QR) code comprising QR code
information to be displayed by the source UE, wherein the QR code information is related to a transfer of the eSIM from the source UE to the target UE (see par. 0081, 0085-0086
As per claim 18, Kim disclose the apparatus of claim 17, wherein the QR code information comprises one or more of an Integrated Circuit Card
Identification (ICCID), a mobile country code (MCC), a mobile
network code (MNC), a group 1 identifier (GID1), a group 2
identifier (GID2), an international mobile subscriber identity
(IMSI), the Transfer Token, an indication of Is Plan Active, an
International Mobile Equipment Identity (IMEI), an embedded
identity document (EID), a Serial Number, Label, a Phone Number,
a UE software version, and a Product Class (see par. 0081, 0085-0086, where secure element 120 may represent an embedded SIM (eSIM) where when a profile state of the eUICC 320 installed in the electronic device 300 is changed due to a profile management operation, the ReDM 330 may store the profile state in a memory (e.g., a memory 130 as shown in FIG. 1) (or a profile list database (DM)) and may deliver the profile state to the eUICC device management server 410).
as per claim 19, Kim discloses the apparatus of claim 12, wherein the processor is further configured to: prepare, for sending to an entitlement server, a transfer
token request; and receive, from the entitlement server, a transfer token
response comprising a transfer token indicating the eSIM profile installed on the source UE can be transferred to another UE(see figs 17-20 and par. 0253, 0228-0230).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULLAHI ELMI SALAD whose telephone number is (571)272-4009. The examiner can normally be reached 9:30AM-6:PM.
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/ABDULLAHI E SALAD/Primary Examiner, Art Unit 2466
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