DETAILED ACTION
This Office Action is with regard to the most recent papers filed 12/9/2025.
Response to Arguments
Applicant's arguments filed 12/9/2025 have been fully considered but they are not persuasive.
Applicant’s sole argument is that Jin fails to disclose or suggest the claimed security credentials, much less storing the security credentials in a secure portion of the circuitry. In support of this, Applicant argues that Jin does not describe that pre-configured security credentials are stored on the mobile wireless device are used to secure/encrypt the connection. However, the instant claim fails to provide any detail of what the security credentials are used for. Rather, the credentials are just pre-configured, assigned to the SIM, and stored in a secured portion. If the credentials are meant to have some functionality, this should be provided in the instant claim. As currently presented, the credentials appear to be able to be the SIM, itself, as this would provide security credentials for accessing the mobile network, where Jin is cited as it specifically provides that credentials from the eSIM can be used, thus providing the presence of such credentials as part of the SIM.
Accordingly, the instant claims stand rejected for the reasons provided below, where it is recommended that if Applicant intends specific functions to be performed (such as the use of the security credentials for securing the communication of the SIM-blob), the instant claims should be amended to include these details.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0311402 (Srinivasan) in view of US 2023/0081421 (Jin).
With regard to claim 1, Srinivasan discloses an edge device, comprising: a memory; and circuitry (Srinivasan: Figure 2. The edge device, as in the instant specification page 7, lines 25-29, would appear to cover any device that is capable of communicating over a network.), configured to:
communicate over a communication network, including serving as a Subscriber Identity Module (SIM) of the edge device (Srinivasan: Abstract. Srinivasan presents the concept of a VSIM, where such would cause the at least some of the circuitry of the device to serve as a SIM of the device.);
be pre-configured with information assigned to the SIM (Srinivasan: Paragraphs [0136] to [0139], Figures 17-18, Abstract. The VSIM allows for the switching of the SIM as needed in accordance with rules, which would involve a pre-configured VSIM (The SIM would be preconfigured at least with relation to the switching process) and a switch to a new VSIM.), the information being stored in a secure portion of the circuitry (Srinivasan: Paragraph [0081]. A secured file system can be used.);
receive, over the communication network or over an alternative communication channel, at least a portion of a SIM-blob, and store the SIM-blob in the memory (Srinivasan: Paragraph [0131]. At least a portion of the VSIM may be downloaded to the device. The instant specification discusses a SIM-blob on page 4, lines 14-19, which provides that the SIM-OS and the MNO profile are referred to jointly as a SIM-blob, then provides that the SIM-blob may include other items. Thus, the term “SIM-blob” appears to be broad enough to encompass any information associated with the SIM.);
provision the SIM-OS using the information (Srinivasan: Abstract); and
carry out SIM tasks for the edge device using the SIM-OS (Srinivasan: Abstract. SIM-OS is considered to cover the software that performs the functionality of the SIM.).
Srinivasan fails to disclose, but Jin teaches that the information is security credentials (Jin: Paragraph [0006]), and that the portion (of the received at least a portion of a SIM-blob) comprising at least part of a SIM Operating System (SIM-OS) for operating the SIM (Jin: Paragraph [0033]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the information of Srinivasan include security credentials to have the VSIM perform the appropriate functions of the SIM, thus ensuring that the SIM would operate properly with different network operators. Further, by allowing updates to the SIM-OS (software that performs the functionality of the SIM), the VSIM of Srinivasan would be able to be updated to ensure proper operability with the different network providers and ensure that any discovered security vulnerabilities can be patched.
With regard to claim 2, Srinivasan in view of Jin teaches the portion of the SIM-blob, received over the communication network or over the alternative channel, further comprises a profile of a network operator associated with the SIM (Srinivasan: Paragraph [0003]. The provisioning data of Srinivasan is considered to be within the scope the claimed profile.).
With regard to claim 3, Srinivasan fails to teach, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches that the portion of the SIM-blob, received over the communication network or over the alternative channel, further comprises a certificate for subsequent changing of the profile (More specifically, Official Notice is taken that the use of certificates for the protection of data was well-known to one of ordinary skill in the art at the time of filing.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the well-known and ordinary technology of certificates to ensure the security of the different VSIMs of Srinivasan.
With regard to claim 4, Srinivasan in view of Jin teaches that to obtain at least the portion of the SIM-blob, the circuitry is configured to: establish a connection with the communication network using a dedicated SIM that is designated for SIM-blob provisioning and is running in a non-secure software environment; and request and receiving at least the portion of the SIM-blob over the established connection (Srinivasan: Figure 3. Srinivasan does not appear to provide for a secure environment, and thus would be a non-secure software environment. Further, lacking detail of how or to what the SIM is specifically dedicated to, it would be designated for any functions performed, including the provisioning of any new VSIM. For clarity, it is recommended that the instant claim provides details of the dedicated SIM, such that it is clear that the SIM is the only SIM used for provisioning and it is only used for the provisioning.).
With regard to claim 5, Srinivasan fails to teach, but Jin teaches the circuitry is configured to receive at least the portion of the SIM-blob by communicating over a non-cellular wireless network (Jin: Paragraph [0036]. Jin allows for the use of Wi-Fi networks.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize a non-cellular wireless network to enable the acquiring of a VSIM even in situations where a current network provider may be unavailable at a location.
With regard to claim 6, Srinivasan fails to teach, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches wherein the SIM-blob is pre-stored in the memory in encrypted form using a unique key, wherein the portion of the SIM-blob, received over the communication network or over the alternative channel, comprises the unique key, and wherein the circuitry is configured to provision the SIM-OS by decrypting the pre-stored SIM-blob using the received unique key (Specifically, Official Notice is taken that the use of encryption keys to access pre-stored information was well-known to one of ordinary skill in the art at the time of filing.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to acquire a key to decrypt a pre-stored SIM-blob to allow the server to control access to the SIM-blob information, such as by ensuring that a user should have access, even in situations where the user previously stored the SIM (e.g. ensuring a user’s subscription has not expired.).
With regard to claim 7, Srinivasan fails to teach, but Jin teaches wherein the SIM-blob comprises a generic portion and a device-specific portion, wherein the generic portion of the SIM-blob is pre-stored in the memory, wherein the portion of the SIM-blob, received over the communication network or over the alternative channel, comprises the device-specific portion of the SIM-blob, and wherein the circuitry is configured to provision the SIM-OS by combining the generic portion and the device-specific portion (Jin: Figure 4A. Jin allows for the changing of a SIM from one device to another, where some information is downloaded to the SIM for the new device.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to allow for the pre-storing of a generic portion and the downloading of a device-specific portion to allow for the transfer of the SIM (e.g. the VSIM memory of Srinivasan) to a new device to simplify the activation of the new device for use by the user.
With regard to claims 8-9, the instant claim are similar to claim 1-2, but are claimed from the server’s perspective, and are thus rejected for similar reasons.
With regard to claim 10, Srinivasan in view of Jin teaches wherein the one or more processors are configured as an isolated network enclave dedicated only for provisioning of SIMs (Jin: Figure 5. Lacking detail of how the network is “isolated,” but still has a connection to other devices, it would appear that the network, itself, is dedicated to the provisioning of SIMs, and would have controlled access to the network. In Srinivasan, the server 102 is presented as being connected to the cellular network, but has one point of entry shown, and thus would be “isolated” in as much detail as provided in the instant claim.).
With regard to claim 10, Srinivasan in view of Jin teaches wherein the one or more processors are configured to identify the server from among multiple servers of multiple SIM vendors (Srinivasan: Figure 1 and Paragraph [0073]).
With regard to claim 11, Srinivasan in view of Jin teaches wherein the one or more processors are configured to verify an authenticity of the request before establishing the communication connection between the edge device and the server (Srinivasan: Paragraph [0095]. A user logs into the server.).
With regard to claims 12-14, the instant claims include subject matter similar to that of claims 8 (and claim 1, which claim 8 is similar to), 2, and 3, and are rejected for similar reasons.
With regard to claims 15-20, the instant claims are within the scope of claims 1-6, and are rejected for similar reasons.
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 SCOTT B CHRISTENSEN whose telephone number is (571)270-1144. The examiner can normally be reached Monday through Friday, 6AM to 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, John Follansbee can be reached at (571) 272-3964. 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.
SCOTT B. CHRISTENSEN
Examiner
Art Unit 2444
/SCOTT B CHRISTENSEN/Primary Examiner, Art Unit 2444