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 .
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 recites “UICC: which is not defined, and should recite “Universal Integrated Chip Card (UICC)”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because claim 11 recites “a computer program product installed as an executable”. A computer program product installed as an executable is merely software which is not considered a process, machine, manufacture, or composition of matter.
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 at least one profile of a 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. In addition, claim 17 recites “at least one profile of a UICC” and “on a profile”. Are these the same UICC and profile as recited in claim 11? This further makes the claim dependency unclear. Is claim 17 further limiting claim 1? The metes and bounds of claim 17 are unclear. Similarly, claim 20 recites “a computer program product installed as an executable in a UICC and having means to carry out the method steps of the method according to claim 17”. Claim 20 recites “a UICC”. Therefore, it is unclear if claim 20 is further limiting claim 17, claim 11, etc. which already recite a UICC.
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 at least one profile of a 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. In addition, claim 17 recites “at least one profile of a UICC” and “on a profile”. Are these the same UICC and profile as recited in claim 11? This further makes the claim dependency unclear. Is claim 17 further limiting claim 11? Similarly, claim 20 recites “a computer program product installed as an executable in a UICC and having means to carry out the method steps of the method according to claim 17”. Claim 20 recites “a UICC”. Therefore, it is unclear if claim 20 is further limiting claim 17, claim 11, etc. which already recite a UICC. 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 § 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)(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 11 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Del Giudice et al. (US 2019/0034662).
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).
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 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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Del Giudice et al. (US 2019/0034662) 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 does 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 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 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 does 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 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 Wane (US 2016/0007190), and further in view of 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 does 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 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 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 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
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/LISA C LEWIS/Primary Examiner, Art Unit 2495