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 regarding the 102/103 rejections are moot in view of the new grounds of rejection presented below.
Applicant’s arguments regarding the 112 dependency rejections have been carefully considered and are not deemed persuasive. Applicant argues: “Claim 17 was rejected as being allegedly unclear regarding which parts of claim 11are being pulled into claim 17 and that it was allegedly unclear whether it was the same UICC and profile as recited in claim 11. The Applicant respectfully submits that claim 17 as amended is sufficiently clear to one having ordinary skill in the art and that claim 17 properly depends from 11. Specifically, because claim 17 is amended to recite "the at least one profile" of "the UICC according to claim 11," it is clear that claim 17 incorporates the requirements of the UICC and the at least one profile as recited in claim 11. Furthermore, claim 17 specifies a method for managing the at least one profile of the UICC of claim 11, including receiving a command corresponding a performance of one or more profile management operations, determining the state of the at least one profile, and calling a function of the shareable interface object to perform the one or more profile management operations when the state of the at least one profile is inactive. Because claim 17 recites "the shareable interface object," "the at least one profile," and "the state of the at least one profile", claim 17 finds antecedent basis in claim 11. Moreover, claim 17 expressly incorporates all of the limitations of claim 11 by requiring "the UICC according to claim 11." Claim 17 thus properly depends from claim 11 and is sufficiently clear. Claims 18-20 depend from claim 17 and are clear and properly dependent for at least similar reasons.
The Examiner respectfully disagrees. While the Examiner recognizes that changing “a profile” and “a UICC” to “the profile” and “the UICC” does overcome antecedent basis issues, the fact remains that the metes and bounds of the claims are unclear. It is unclear which portions of claim 11 are brought into claims 17 and 20. The Examiner suggests reciting claims 17 and 20 as independent claims are reciting exactly what the metes and bounds of the claims are. For example, would claim 17 (a method claim) require the details of the UICC as well as the details of the profile? Claim 17 states “a method for managing the at least one profile of the UICC according to claim 11”, but does not say that it is managing the UICC. The exact method steps need to be recited in independent form so that the metes and bounds are clear. Similarly, claim 20 depends from both 11 and 17, so it has the same issues.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 is a method claim which recites: a method for managing the at least one profile of the UICC according to claim 11, comprising the steps of:…” Claim 11, from which claim 17 depends comprises a UICC comprising a profile and a subscription manager. Claim 17 is a method claim. It is unclear which parts of claim 11 are being pulled into claim 17. Is claim 17 further limiting claim 1? The metes and bounds of claim 17 are unclear. Similarly, claim 20 recites “a non-transitory storage medium storing one or more instructions that are executable by one or more processors to cause the one or more processors to carry out the method steps of the method according to claim 17”. Therefore, it is unclear if claim 20 is further limiting claim 17, which is further limiting claim 11, etc.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 17 is a method claim which recites: a method for managing the at least one profile of the UICC according to claim 11, comprising the steps of:...:” Claim 11, from which claim 17 depends comprises a UICC comprising a profile and a subscription manager. Claim 17 is a method claim. It is unclear which parts of claim 1 are being pulled into claim 17. Is claim 17 further limiting claim 11? Similarly, claim 20 recites ““a non-transitory storage medium storing one or more instructions that are executable by one or more processors to cause the one or more processors to carry out the method steps of the method according to claim 17”. Therefore, it is unclear if claim 20 is further limiting claim 17, claim 11, etc. It is unclear how claim 17 limits claim 11, from which it depends, and how claim 20 limits claim 17 (and therefore claim 11) from which it depends.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
Claims 11 and 16-20 are rejected under 35 U.S.C. 103 as being obvious over Del Giudice et al. (US 2019/0034662) in view of KR 102173534.
Regarding claim 11, Del Giudice teaches a UICC comprising at least one profile and a subscription manager (eUICC with various profiles and multi-operator SIM – see [0025]. The use profiles PA and PB are used in the context of the smartcard eUICC and that the smartcard eUICC is a SIM card – see [0047]. The software firewall FW thus allows managing multiprofile situations, namely when a plurality of use profiles coexist in the same electronic card of the eUICC type – see [0044]).
wherein each profile has a state which is active or inactive (The profile that was active until then becomes inactive – see [0045]).
wherein the at least one profile further has a shareable interface object which enables the subscription manager to access each profile regardless of the state of the respective profile (The software firewall FW then checks the targeted applet that the targeted applet provides a shareable interface and that said targeted applet thus enables access from another applet. The profile PS thus has access to the ordinary profiles PA and PB – see [0070]. Only one context and only one profile are active at the same time – see [0045]. Thus, even though only one profile is active at the same time, the manager has access to both PA and PB).
Del Giudice does not teach that the profile is configured to authenticate the UICC or a device wherein the UICC is operated in relation to a communication network
KR 102173534 teaches a UICC which downloads a profile package including at least one profile, unlocks the security of the profile package to obtain a profile including an authentication key for authenticating a subscriber or a universal integrated circuit card (UICC), and stores the obtained profile in the UICC, and control to authenticate the subscriber or the UICC to a mobile communication network based on an authentication key included in the profile,
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 teachings of Del Guidice by using the profile to authenticate the UICC, in order to authenticate the subscriber for mobile communications, based upon the beneficial teachings provided by KR 102173534. These modifications would result in better security and efficiency to the system.
Regarding claims 17 and 20, the claims refer to the function of the SIO is called to perform the operation on the profile when the state of the profile is inactive, which is intrinsic to Del Giudice since there are only two states: active and inactive. Therefore, Del Giudice teaches claims 17 and 20.
Similarly, regarding claim 18, the claim refers to the function of the SIO is called to perform the operation on the profile when the state of the profile is active, which is intrinsic to Del Giudice since there are only two states: active and inactive. Therefore, Del Giudice teaches claim 18.
Regarding claim 19, Del Giudice teaches that the operation comprises activating the profile, deactivating the profile, etc. – see [0045].
Regarding claim 16, Del Giudice teaches that the at least one profile comprises a Issuer Security Domain Profile (This profile manager may comprise an Issuer Security Domain-Registry – see [0089]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Del Giudice et al. (US 2019/0034662) in view of KR 102173534, and further in view of Zhang et al. (US 2020/0374686).
The teachings of claim 11 are relied upon for the reasons set forth above.
Regarding claim 12, Del Giudice and KR 102173534 do not teach that the subscription manager is a Root Issuer Security Domain.
Zhang teaches using an issuer security domain root associated with a subscription manager in order to establish communications channels between an eUICC and a subscription manager – see [0067].
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 teachings of Del Guidice and KR 102173534 by using a Root Issuer Security Domain for the subscription manager, in order to establish communications, based upon the beneficial teachings provided by Zhang. These modifications would result in better communication and security to the system.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Del Giudice et al. (US 2019/0034662) in view of KR 102173534, and further in view of Lipovkov et al. (US 2018/0109942).
The teachings of claim 11 are relied upon for the reasons set forth above.
Regarding claim 13, Del Giudice and KR 102173534 do not teach that the SIO is a Bootstrap ISD-P within the profile.
Lipovkov teaches an eSIM module which provides and implements an ISD-profile bootstrap profile to establish a first connection – see [0086] – [0090].
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 teachings of Del Guidice and KR 102173534 by using a bootstrap ISD-P in order to establish a first connection, based upon the beneficial teachings provided by Lipvkov. These modifications would result in better communication and security to the system.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Del Giudice et al. (US 2019/0034662) in view of KR 102173534, and further in view of Wane (US 2016/0007190), and Goodridge et al. (US 2019/0163458).
The teachings of claim 11 are relied upon for the reasons set forth above.
Regarding claims 14 and 15, Del Giudice and KR 102173534 do not teach that the profile comprises an installer or a deletion manager, although Del Giudice does teach using the SIO for various functions regarding the profile, as discussed above.
Wane teaches a profile manager which is configured to perform INSTALL PROFILE, DELETE PROFILE, etc. – see [0069] and [0088].
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 teachings of Del Guidice and KR 102173534 by allowing the profile to include an installer and a deletion manager, in order to set up and establish profile management, based upon the beneficial teachings provided by Wane. These modifications would result in better profile management.
Giudice, KR 102173534, and Wane do not teach that the installer and manager are registrable in a system registry.
Goodridge teaches that installers may set up values in the system registry which specify information about the publisher, install location, program version, modify path, uninstall path, and uninstall key.
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 teachings of Del Guidice, KR 102173534, and Wane by registering the installer and manager to a system registry, in order to maintain the configurations and metadata of the programs, based upon the beneficial teachings provided by Goodridge. These modifications would result in a more secure system.
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 LISA C LEWIS whose telephone number is (571)270-7724. The examiner can normally be reached Monday - Thursday 7am-2pm.
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, Farid Homayounmehr can be reached at 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LISA C LEWIS/Primary Examiner, Art Unit 2495
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