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 .
DETAILED ACTION
The present office action is responsive to communications received on 06/04/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/04/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
Claims 1-20 are pending.
Claim Objections
Claim 7 is objected to because of the following informalities: the claim recites “the processor s configured” there is a typo of “s”. Appropriate correction is required.
Allowable Subject Matter
Claims 4 and 12 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.
The following is a statement of reasons for the indication of allowable subject matter:
In interpreting the currently amended claims, in light of the specification, the Examiner finds the claimed invention to be patentably distinct from the prior art of record.
Yoon et a. (US 20250150830 A1) ¶70 "“profile management credentials (PMC)” may be a means used for performing mutual authentication between the profile management server and the eUICC, encrypting a profile, and signing. The PMC may include one or more of a symmetric key, an RSA authentication certificate and a private key, an ECC authentication certificate and a private key, and a root CA and an authentication certificate chain. Further, when the number of profile management servers is plural, different PMCs for the plurality of respective profile management servers may be stored in the eUICC and used."
Baek et al. (US 20180176768 A1) ¶8 "installing, updating, and deleting an application in the UICC using an over the air (OTA) technology." and ¶93 "The UE 410 may include a market application 411 for managing a display/selection of subscription plans through communication with the market server 430, an eUICC 414, a local profile assistant (LPA) 413 for assisting communication with the network in the process of eSIM profile provisioning into the eUICC 414, and a modem 412. For example, at least one processor in the UE 410 may execute the market application 411 and the LPA 413, and a communication unit may execute the modem 412."
The prior art of record fails to teach or suggest, individually or in combination, each and every limitation of the claimed invention as a whole. For example, the prior art above individually or in combination do not disclose claims 4 and 12 “acquire at least the applet after update from the second server in a case where the applet is updated, and stores the applet after update in the eUICC, start the applet after update, and cause the applet after update to newly generate the first authentication information, and acquire the first electronic certificate from the predetermined certificate authority in relation to the first authentication information that is newly generated, and store, in the eUICC, the first authentication information that is newly generated and the first electronic certificate that is newly acquired.” within the context of the claimed invention as a whole.
Thus, the Examiner finds that the prior art does not provide sufficient teaching or motivation for anticipating or rendering obvious, within the claimed invention as a whole, without the usage of impermissible hindsight reasoning.
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.
Claim(s) 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US 20200092711 A1) hereinafter referred to as Chen.
With respect to claim 16, Chen discloses: An information processing apparatus comprising: an eUICC (Embedded Universal Integrated Circuit Card) capable of holding a plurality of pieces of profile information that are used for connection to a communication network; (Chen Abstract “a device that includes an embedded universal integrated circuit card (eUICC) may enable a first subscriber identity module (SIM) profile. The first SIM profile may be installed in memory of the eUICC and associated with a first integrated circuit card identifier (ICCID). The device may request a second SIM profile based on enabling the first SIM profile. The second SIM profile may be associated with a second ICCID that is different from the first ICCID. The device may receive the second SIM profile based on requesting the second SIM profile, and may install the second SIM profile in memory of the eUICC”).
and a processor configured to enable one of the plurality of pieces of profile information, and connect to the communication network by using profile information that is enabled, (Chen ¶10 “new SIM profile, associated with the new user, to be downloaded from a remote SIM provisioning system, installed on the eUICC, and enabled to permit the new user to use wireless network services”).
wherein the eUICC holds, at a time of shipping of the information processing apparatus from a factory, default profile information that is used for connection to a first communication system, and the processor is configured to enable the default profile information at the time of shipping of the information processing apparatus from the factory, and connect to the first communication system by using the default profile information, (Chen ¶12 “enable a first SIM profile on the eUICC device 310 … eUICC device referred to as a front seat SIM, which may store information for managing subscriptions associated with a manufacturer of the vehicle for wireless services such as providing telematics data, maintenance data, navigation services, and/or the like.” Additionally, Chen ¶15 teaches “MNO1-profile1” which is the default profile).
and disable the default profile information and enable first profile information corresponding to a first owner of the information processing apparatus in a case where the first profile information is stored in the eUICC, and connect to the first communication system by using the first profile information. (Chen ¶15 “these other SIM profiles may be installed on the eUICC device 310 in a disabled state when only one SIM profile is permitted to be enabled at a time.” Which means the default is disabled to enable another profile in order to connect to an “MNO” (Mobile Network Operator) for the vehicle).
With respect to claim 17, Chen discloses: The information processing apparatus according to claim 16, wherein that a communication fee is billed to a predetermined operator is set in the default profile information. (Chen ¶31 “As shown by reference number 255, the first user may cancel a subscription (e.g., by using the user device 305, by interacting with a customer service representative of the first MNO, by failing to pay a bill, and/or the like), and the eUICC device 310 may receive a notification of such cancellation (e.g., from the user device 305, from the subscription management device 325, from the RSP system 330, and/or the like).” Which means a bill is issued by, and owed to, an MNO).
With respect to claim 18, Chen discloses: The information processing apparatus according to claim 16, wherein, in a case where a predetermined secondhand dealer sells the information processing apparatus second hand, the processor is configured to disable or delete the first profile information, enable the default profile information, and connect to the first communication system by using the default profile information. (Chen ¶15 teaches the system can “MNO1-profile1 [default profile]. As shown by reference number 115, the eUICC device 310 may store one or more other SIM profiles associated with other MNOs (e.g., shown as MNO2-profile1 [first profile information] and MNO3-profile1). As shown, these other SIM profiles may be installed on the eUICC device 310 in a disabled state when only one SIM profile is permitted to be enabled at a time.” Which means that MNO2-profile1 would need to be disabled in order to allow MNO1-profile1. Furthermore the “dealer selling …” is not mapped since the prior art performs the intended purpose; MPEP 2144.07 Art Recognized Suitability for an Intended Purpose [R-08.2012]. If the prior art discloses obtaining, authenticating or deleting/disabling a profile for purpose of selling or buying or exchanging a device then the transaction is intended purpose).
With respect to claim 19, Chen discloses: The information processing apparatus according to claim 16,
Chen does not explicitly disclose the rest of the claim.
However, Li in an analogous art discloses: wherein the processor is further configured to acquire, from a predetermined certificate authority, a first electronic certificate that certifies that first authentication information is for the first owner, (Li ¶22 teaches steps of “installation of a new provisioning eSIM profile 208 on the eUICC 108 of the wireless device 102 and subsequent deletion of a previously installed (old) provisioning eSIM profile 208 from the eUICC 108 of the wireless device 102. … [which comprises] The server key pair can be associated with a certificate, e.g., APPLE.CA.ECDSA, provided by a CA [certificate authority] that is specific to an OEM manufacturer of the wireless device 102, e.g., Apple Inc. Separately, at 314, a certificate and an associated server public key, PKserver, can be installed on the eUICC 108 of the wireless device 102” the certificate is used to certify eUICC first authentication formation of the first owner “asymmetric key pair including an eUICC public key, PKeUICC, and an eUICC private (secret) key, SKeUICC”. Note that the server also installs a corresponding CA certificate to authenticate communication received from the wireless device as will be mapped below. The first authentication information can be interpreted as the PKI key pair or the signature given BRI).
the first authentication information used for authentication by a first server trusted by the first communication system and corresponding to the first profile information, (Li ¶22 “At 316, an eUICC cryptographic asymmetric key pair including an eUICC public key, PKeUICC, and an eUICC private (secret) key, SKeUICC, along with an associated certificate, e.g., CERT.EUICC.ECDSA, can be installed on the eUICC 108 of the wireless device 102. The eUICC private key SKeUICC can be used to generate signatures to allow the profile management server 302 to verify [authentication by a first server] signed messages sent by the eUICC 108 to the profile management server 302.”)
store the first authentication information and the first electronic certificate in the eUICC, (as can be understood from the mapping above the CA certificate and eUICC key pair and signature are stored on the eUICC).
and receive authentication by the first server by using the first authentication information and the first electronic certificate. (Li ¶24 teaches receiving authentication by a server based on the eUICC PKI key(s) and signature in addition “At 352, the profile management server 302 verifies authenticity of the profile message received from the wireless device 102 using a previously installed certificate” which is the certificate installed by the CA on the server side corresponding to the CA certificate of the eUICC or can also be interpreted as the fact that the authentication steps use the eUICC CA certificate at one point).
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 Chen wherein the processor is further configured to acquire, from a predetermined certificate authority, a first electronic certificate that certifies that first authentication information is for the first owner … as disclosed by Li to allow for a more secure verification using a certificate authority (see Li ¶22 and 24).
With respect to claim 20, Chen discloses: A system comprising: the information processing apparatus according to claim 16; and a third server that holds information indicating whether profile information used for connection to the first communication system by the information processing apparatus is the default profile information or not. (Chen ¶14 teaches “a remote SIM provisioning (RSP) system 330 that the eUICC device 310 has been associated with a subscription of the first MNO” wherein system 330 (Chen Fig. 1) is one of multiple servers therefore interpreted as third server holding profile information indicating that eUICC device 310 holds MNO1-profile1 for access or if it disabled [not] as disclosed by Chen ¶15).
(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.
Claim(s) 1-2, 6, 8-10, 15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li et al. (US 20230354040 A1) hereinafter referred to as Li.
With respect to claim 1, Li discloses: An information processing apparatus comprising: an eUICC (Embedded Universal Integrated Circuit Card) that holds first profile information that is used for connection to a first communication system and that is associated with a first owner of the information processing apparatus; (Li ¶16 teaches “management of one or more provisioning eSIM profiles [associated with owner(s)], on the eUICC” to connect to mobile service(s), see last sentence in Li ¶18).
and a processor configured to connect to the first communication system by using the first profile information, (Li ¶19 “the mobile wireless device 102 can include processing circuitry, which can include one or more processor(s) 104 and a memory 106, an embedded Universal Integrated Circuit Card (eUICC) 108, and a baseband wireless circuitry 110 used for transmission and reception of cellular wireless radio frequency signals.” That uses the profile(s) to connect to the mobile service(s)).
wherein the processor is further configured to acquire, from a predetermined certificate authority, a first electronic certificate that certifies that first authentication information is for the first owner, (Li ¶22 teaches steps of “installation of a new provisioning eSIM profile 208 on the eUICC 108 of the wireless device 102 and subsequent deletion of a previously installed (old) provisioning eSIM profile 208 from the eUICC 108 of the wireless device 102. … [which comprises] The server key pair can be associated with a certificate, e.g., APPLE.CA.ECDSA, provided by a CA [certificate authority] that is specific to an OEM manufacturer of the wireless device 102, e.g., Apple Inc. Separately, at 314, a certificate and an associated server public key, PKserver, can be installed on the eUICC 108 of the wireless device 102” the certificate is used to certify eUICC first authentication formation of the first owner “asymmetric key pair including an eUICC public key, PKeUICC, and an eUICC private (secret) key, SKeUICC”. Note that the server also installs a corresponding CA certificate to authenticate communication received from the wireless device as will be mapped below. The first authentication information can be interpreted as the PKI key pair or the signature given BRI).
the first authentication information being used for authentication by a first server trusted by the first communication system and corresponding to the first profile information, (Li ¶22 “At 316, an eUICC cryptographic asymmetric key pair including an eUICC public key, PKeUICC, and an eUICC private (secret) key, SKeUICC, along with an associated certificate, e.g., CERT.EUICC.ECDSA, can be installed on the eUICC 108 of the wireless device 102. The eUICC private key SKeUICC can be used to generate signatures to allow the profile management server 302 to verify [authentication by a first server] signed messages sent by the eUICC 108 to the profile management server 302.”)
store the first authentication information and the first electronic certificate in the eUICC, (as can be understood from the mapping above the CA certificate and eUICC key pair and signature are stored on the eUICC).
and receive authentication by the first server by using the first authentication information and the first electronic certificate. (Li ¶24 teaches receiving authentication by a server based on the eUICC PKI key(s) and signature in addition “At 352, the profile management server 302 verifies authenticity of the profile message received from the wireless device 102 using a previously installed certificate” which is the certificate installed by the CA on the server side corresponding to the CA certificate of the eUICC or can also be interpreted as the fact that the authentication steps use the eUICC CA certificate at one point).
Claim 9 recites a method of the claim limitations recited in claim 1 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
With respect to claim 2, Li discloses: The information processing apparatus according to claim 1, further including an applet configured to generate the first authentication information with the first profile information as a key, wherein the processor is configured to start the applet, and cause the applet to generate the first authentication information. (Li ¶20 “the processor(s) 104, in conjunction with memory 106, can implement a main operating system (OS) 202 that is configured to execute applications 204 (e.g., native OS applications and user applications). As also shown in FIG. 2, the eUICC 108 can be configured to implement an eUICC OS 206 that is configured to manage hardware resources of the eUICC 108 (e.g., a processor and a memory embedded in the eUICC 108). The eUICC OS 206 can also be configured to manage eSIMs 208 that are stored by the eUICC 108 … one or more of the applets 212, when implemented in conjunction with baseband wireless circuitry 110 and the eUICC 108, can be configured to enable the mobile wireless device 102 to communicate with an MNO 114 and provide useful features (e.g., phone calls and internet access) to a user of the mobile wireless device 102.” Which comprise generating the wireless device PKI public/private key pair and signature as taught by Li ¶22).
Claim 10 recites a method of the claim limitations recited in claim 2 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
With respect to claim 6, Li discloses: The information processing apparatus according to claim 1, wherein, after authentication by the first server, the first owner is identified by the first server based on the first electronic certificate, and the processor is configured to receive provision of a service with contents matching the first owner from the first server. (Li ¶27 teaches after authentication in following step 358 of provisioning new profile [provision of a service with contents matching the first owner] by profile management server and installing on eUICC to allow the user with matching profile to access wireless services as understood by the examiner).
With respect to claim 8, Li discloses: The information processing apparatus according to claim 1, wherein the information processing apparatus is mounted on a vehicle, (Li ¶2 suggests that the mobile wireless device includes “cellular wireless equipped vehicles”).
the first communication system is a system that is managed by a manufacturer of the vehicle, (Li ¶4 “Public key infrastructure (PKI) information for an original equipment manufacturer (OEM) profile management server is installed in an embedded universal integrated circuit card (eUICC) of a wireless device at a time of manufacture and used subsequently by the wireless device to conduct an eSIM profile management session and verify authorization of the OEM profile management server to manage, e.g., update and/or replace, one or more eSIM profiles on the eUICC of the wireless device.”).
and the first profile information is issued by the first communication system in a case where the vehicle is purchased by the first owner. (Li ¶4 teaches the profile is issued by the manufacturer, while “vehicle is purchased” is intended purpose; MPEP 2144.07 Art Recognized Suitability for an Intended Purpose [R-08.2012]. If the prior art discloses obtaining, authenticating or deleting/disabling a profile for purpose of selling or buying or exchanging a device then the transaction is intended purpose).
Claim 15 recites a method of the claim limitations recited in claim 8 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
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.
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.
Claim(s) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claims 1-2, 6, 8-10, 15 above, and further in view of Lee et al. (US 11039298 B2) hereinafter referred to as Lee.
With respect to claim 3, Li discloses: The information processing apparatus according to claim 2, wherein the processor is further configured to acquire the first profile information from a server that manages profile information, and store the first profile information in the eUICC. (Li ¶25 teaches step 358 of Fig. 3C where the “profile management server” sends the profile to the eUICC to be stored).
Li does not explicitly disclose: acquire the first profile information and the applet from a second server that manages profile information, and store the first profile information and the applet in the eUICC.
However, Lee in an analogous art discloses: acquire the first profile information and the applet from a second server that manages profile information, and store the first profile information and the applet in the eUICC. (Lee col 9 line 59 to col 10 line 21 teach “in a case of a new subscription [to obtain profile and applet] to a communication operator, a subscription application [applet] and a profile [first profile] download request may be proceed by the new subscription server 31c (201). [second server]” which is downloaded to the eSIM in communication with the UE (see Lee col 10 line 59 to col 11 line 11) which is also used interchangeably in the art with eUICC or UICC).
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 Li with acquire the first profile information and the applet from a second server that manages profile information, and store the first profile information and the applet in the eUICC as disclosed by Lee because different service(s) or profile(s) could be obtained from different servers not the same server (see Lee col 9 line 59 to col 10 line 21).
Claim 11 recites a method of the claim limitations recited in claim 3 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
Claim(s) 5, 7 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claims 1-2, 6, 8-10, 15 above, and further in view of Kang et al. (US 20230209340 A1) hereinafter referred to as Kang.
With respect to claim 5, Li discloses: The information processing apparatus according to claim 1,
Li does not explicitly disclose the rest of the claim.
However, Kang in an analogous art discloses: wherein the processor is configured to acquire, from the predetermined certificate authority, in a case where second profile information that is newly held in the eUICC is enabled, a second electronic certificate that certifies that second authentication information corresponding to the second profile information is for a second owner, the second profile information being used for connection to the first communication system, and being associated with the second owner of the information processing apparatus, (Kang ¶98-99 teach concept of transmitting second (new) user profile from one terminal to new terminal to be held in the eUICC, to access a service [first communication system] and acquire certificate from certificate authority (CA), which is understood to be predetermined since it is a trusted).
store the second authentication information and the second electronic certificate in the eUICC, and receive authentication by the first server by using the second authentication information and the second electronic certificate, (Kang ¶98-99 teach the profile and certificate are stored on the eUICC and performing authentication with secondary servers such as “SM-DP+” or “ECS” or other recited servers).
and the first profile information and the first electronic certificate are disabled or deleted. (Kang ¶102 teaches an embodiment of “the first terminal 300 may delete the previously installed profile when moving the profile,” wherein the profile comprises the certificate associated with the first profile therefore implicitly the certificate is deleted).
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 Li wherein the processor is configured to acquire … as disclosed by Kang to allow new user to transmit a new profile to a new terminal (see Kang ¶98-99).
Claim 13 recites a method of the claim limitations recited in claim 5 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
With respect to claim 7, Li discloses: The information processing apparatus according to claim 1, wherein the eUICC does not hold the first profile information and holds default profile information that is used for connection to the first communication system, at a time of shipping from a factory, (Li ¶4 “Public key infrastructure (PKI) information for an original equipment manufacturer (OEM) profile management server is installed in an embedded universal integrated circuit card (eUICC) of a wireless device at a time of manufacture and used subsequently by the wireless device to conduct an eSIM profile management session and verify authorization of the OEM profile management server to manage, e.g., update and/or replace, one or more eSIM profiles on the eUICC of the wireless device.”)
Li does not explicitly disclose the rest of the claim.
However, Kang in an analogous art discloses: and the processor s configured to connect to the first communication system by enabling the default profile information, disable the default profile information and enables the first profile information, in a case where the first profile information is acquired from a second server that manages profile information and is stored in the eUICC, (Kang ¶86 teach transfer of a user profile to replace a default profile to new owned terminal which is stored on the eUICC to connect to a service [first communication system] wherein the system can “In case of approval, by temporarily changing the profile state from a disabled state to an enabled state (step 5a-90) with the eUICC, the LPA1 510 may acquire user consent to enable EAP-AKA authentication and then in the case that the user permits,”. Additionally, in Kang ¶102 teaches the old [default] profile data can be deleted [disabled]. Therefore, the default profile is interpreted as enabled and then it is deleted/disabled and a new profile is activated in its place).
and disable or delete the first profile information and enable the default profile information, in a case where a predetermined secondhand dealer sells the information processing apparatus second hand. (Kang ¶102 teaches an embodiment of “the first terminal 300 may delete the previously installed profile when moving the profile,” wherein the profile comprises the certificate associated with the first profile therefore implicitly the certificate is deleted. While “dealer sells …” portion is intended Purpose; MPEP 2144.07 Art Recognized Suitability for an Intended Purpose [R-08.2012]. If the prior art discloses obtaining, authenticating or deleting/disabling a profile for purpose of selling or buying or exchanging a device then the transaction is intended purpose).
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 Li disable or delete the first profile information and enable the default profile information, … as disclosed by Kang to allow new user to transmit a new profile to a new terminal (see Kang ¶98-99).
Claim 14 recites a method of the claim limitations recited in claim 7 and while there might be differences in language, they recite the same limitation and therefore the claim is rejection based on the same rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANY S GADALLA whose telephone number is (571)272-2322. The examiner can normally be reached Mon to Fri 8:00AM - 4:00PM.
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/HANY S. GADALLA/Primary Examiner, Art Unit 2493