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 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.
(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) 1-3 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated Chaugule et al (U.S. Pub. 2025/0080970).
Regarding Claim 1, Chaugule et al teaches
A non-transitory computer-readable media storing computer instructions which
when executed by one or more processors of a device cause the device to: (see [0214] non-transitory computer readable storage medium.)
receive, by a third party, (Manufacturer of the UE) a request to transfer a subscription to a carrier service of a service provider from a first mobile device having a first operating system to a second mobile device having a second operating system; ([0028]- [0029] in which Chaugule et al discloses transferring an eSIM profile (which is the recited ‘Subscription to a carrier’) from a ‘source’ device executing a ‘First OS’ to ‘target’ device executing a ‘Second OS’. Figure 4,
(Also see Figure 4, Paragraphs [0048]- [0052]: the source (First device) communicates with the entitlement server which receives the token request, (Flow of transfer) executing a transfer of the eSIM subscription (carrier service) from source (First OS) to target (second OS)).
perform, by the third party, a flow for transferring the subscription from the first mobile device having the first operating system to the second mobile device having the second operating system. (Chaugule et al describes in Figure 4 and 18 and paragraph [0048]- [0052] and [0172] [0196], the entitlement server (third party) performing each step of the eSIM profile transfer flow.)
Regarding Claim 2,
The non-transitory computer-readable media of claim 1, wherein the request is
initiated at the second mobile device. (Chaugule et al discloses, in [0049] - [0048] Figure 4 In step 414, the target 404 (second/new device) transmits/initiates the request, as recited.
Regarding Claim 3,
The non-transitory computer-readable media of claim 2, wherein the request is
initiated by a user of the second mobile device. (Chaugule et al discloses, in [0115] Figure 11 In step 1110, the OS 1107 of the target 1106 (second/new device) generates a random personal identification number (PIN), PK/SK pair (Public and Private key pair) and displays the PIN to the user, so the user may enter the PIN at a later time. Claim 3 is anticipated as (second/new device) initiates the request, as recited.
Regarding Claim 5,
The non-transitory computer-readable media of claim 1, wherein the request is
received from the second mobile device by an entitlement server of the third party. (Chaugule et al, Figure 3 Paragraphs [0043] and [0049])
Regarding Claim 6;
The non-transitory computer-readable media of claim 5, wherein the flow for
transferring the subscription is performed by the entitlement server of the third party. (Chaugule et al, Figure 4 and Paragraphs [0053] [0060] [0069] [0049] [0062] [0066] [0070] [0086-0090]: The entitlement server is the central place where the entire eSIM transfer flow happens.)
Regarding Claim 7;
The non-transitory computer-readable media of claim 5, wherein the entitlement
server of the third party is used by the service provider. (Section 0043: Chaugule et al discloses, in Figure 4 Paragraphs that the entitle server may be ‘implemented by carrier’;
(Also Paragraphs [0044]-[0063] addresses the limitation above)
Claim 17 recites that
The non-transitory computer-readable media of claim 1, wherein the first mobile
device and the second mobile device are smartphones. Chaugule et al Paragraph [0029] reference ‘iOS distributed by Apple Inc.’ and ‘Android distributed by Google Inc.’ as OS examples both are smartphone operating systems because they include eUICC configuration See para 0037.)
Claim18 recites that
The non-transitory computer-readable media of claim 1, wherein the first mobile
device has a first digital Subscriber Identity Module (eSIM) and the second mobile device
has a second eSIM and wherein the subscription is transferred from the first eSIM to the
second eSIM. Chaugule et al Paragraph [0037]: ‘eUICC) 240 may be a hardware component embedded into the UE 110 configured to store a number of carrier profiles, e.g., eSIM profiles.’ The entire purpose of Chaugule et al is the transfer of an eSIM profile from source eUICC (First device) to the target device’s eUICC (second device), Paragraphs [0051], [0058], [0101], [0132]. Claim 18 is anticipated.
Regarding Claim 19; It has been rejected for the same reasons as claim 1.
A method, comprising:
at a computer system (includes memory and processor):
receiving, by a third party, a request to transfer a subscription to a carrier service
of a service provider from a first mobile device having a first operating system to a
second mobile device having a second operating system;
performing, by the third party, a flow for transferring the subscription from the
first mobile device having the first operating system to the second mobile device having the second operating system. ([0028] - [0029] in which Chaugule et al discloses transferring an eSIM profile (which is the recited ‘Subscription to a carrier’) from a ‘source’ device executing a ‘First OS’ to ‘target’ device executing a ‘Second OS’. Figure 4,)
Regarding Claim 20; It has been rejected for the same reasons as claim 1 and further teaches:
A system, comprising:
a non-transitory memory storing instructions; and
one or more processors in communication with the non-transitory memory that execute the instructions to:
Regarding Claim 19(method) and claim 20 (system) recite independent claim structure with the same operative limitation as Claim 1. They are anticipated for the same reasons articulated for Claim 1 and its dependents.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8-16 are rejected under 35 U.S.C 103 as being unpatentable over Chaugule et al. (US 20250080970 A1), in view of (Gupta et al.) (US 20250193668 A1).
Regarding claim 8, Chaugule et al. discloses all the limitation of claim1.
Chaugule et al. does teach the identifier of the carrier service: (Para [0056], Fig.5, “In 524, the target 502 transmits a manage subscription (transfer) message to the entitlement server 506, including the temporary token and the old Integrated Circuit Card Identification Number (ICCID)” and (Para [0030] - [0031], “GSMA TS.43 standard protocol for service entitlement configuration”)).
Chaugule et al. does not explicitly disclose all the request includes an identifier of the third party, a MSISDN, and an identifier of the carrier service; as discrete element of the same request.
However, Gupta et al. discloses the request includes an identifier of the third party, a MSISDN; (Para [0046], Fig. 5B, step 554, explicitly disclose the MSISDN in the activation request “At 554, the target wireless device 102B sends to an OEM activation server 452 an activation request message, which can include: an MSISDN value the cellular wireless service that is associated with the eSIM 208 of the source wireless device 102A and is being transferred to the target wireless device 102B”)
(i.e., the ICCID identifies the carrier subscription being transferred, the MSISDN identifies the cellular wireless service in the transfer request, and the transfer token together with the GSMA TS.43 Service Entitlement Entity Identifier identifies the third-party entitlement server in the transfer request; Therefore, it would have been obvious to one of ordinary skilled in the art, to combine the references to provide all claimed identifiers within the subscription transfer flow).
Regarding claim 9, Chaugule et al. discloses all the limitation of claim1.
However, Chaugule et al. does not disclose the flow including: sending a one-time password (OTP) request to the service provider, wherein the OTP request causes the service provider to send an OTP to the first mobile device, and receiving an OTP response from the service provider indicating that the OTP was sent to the first mobile device.
Gupta et al. discloses the flow sending a one-time password (OTP) request to the service provider, wherein the OTP request causes the service provider to send an OTP to the first mobile device, and receiving an OTP response (Para [0043], Fig. 4B, step 460-462, “the OEM activation server 452 can send a message to the MNO backend system for a one-time passcode (OTP) to be sent for confirmation of transfer of cellular wireless service from the source wireless device 102A. At 462, the MNO backend system 402 sends the OTP to the source wireless device 102A”)
(i.e., the entitlement server/activation server acting as the third party, sends an OPT request to the service provider (MNO backend system), which cause the service provider to transmit the OPT directly to the fist/source mobile device, and the third party receives an OPT response confirming that the OTP was sent to first device));
from the service provider indicating that the OTP was sent to the first mobile device and (Para [0044]- [0045], Fig 5A, step 520-526, “At 520, the target wireless device 102B sends a message to the MNO entitlement server 304 requesting transmission of the OTP (or PIN code).
(i.e., the entitlement server operating as the third party, sends the OTP request to the MNO backend (service provider), the service provider sends the OTP result from the service provider, confirming the OTP was sent to the first device and completing the OTP request/response cycle)).
Chaugule et al. and Gupta et al. are considered to be analogous to the claimed invention because they are in the same field of cross-platform eSIM subscription transfer with authentication mechanism for verifying user authorization. Therefore, it would have been obvious to one of ordinary skilled in the art, before the effective filing date of the claimed invention, to have modified Chaugule et al. to implement the OTP authentication mechanism of Gupta et al. because it is desirable to verify that the user of the subscription transfer, and Gupta et al. provides a reliable carrier-issued OTP mechanism that enables the service provider to confirm the identity of the existing subscription holder on the first device before completing the transfer, thereby preventing unauthorized subscription transfer and improving overall transfer security (Gupta et al., Para [0005], “In some embodiments, an MNO uses a one-time passcode (or requires entry of a personal identification number, PIN, value) to further confirm authorization to transfer the cellular wireless service”).
Regarding claim 10, Chaugule et al. in view of Gupta et al: wherein the flow further includes verifying entry of the OTP on the first mobile device by communicating with the service provider (Gupta et al: Para [0043], Fig. 4B, steps 464-468, “the source wireless device 102A… provides the OTP to the target wireless device 102B at 464. At 466, a user of the target wireless device 102B can be required to manually enter the OTP, which is sent to the MNO backend system 402 at 468 for confirmation of authority to transfer the cellular wireless service to the target wireless device 102B”; and (Para [0045], Fig. 5A, steps 528-534, “At 530, the OTP (or PIN code) is forwarded to the MNO OTP URL. At 532, the OTP (or PIN code) is forwarded to the target wireless device 102B… At 534-536, the MNO backend system 402 returns to the target wireless device 102B a result (e.g., success, failure, or retry) responsive to receipt of the OTP (or PIN code) from the target wireless device 102B”).
(i.e., the OTP received by the first mobile device is forwarded to the second device and then to the service provider (MNO backend) via the MNO OTP URL, which verifies the OTP and returns a success/failure result to the entitlement server/third party which corresponds to verifying the OTP entry on the first device by communicating with the service provider).
The proposed combination as well as the motivations for combining the references presented in the rejection of the claim 9 apply to this claim and are incorporate herein by reference.
Regarding claim 11, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 10.
However, Chaugule et al. does not disclose the flow further including: Causing the second mobile device to present to the user an option to reconfirm the transfer of the subscription to the second mobile device, and receiving from the second mobile device an indication of a selection by the user of the option to reconfirm the transfer of the subscription to the second mobile device.
Gupta et al. disclose the flow further including: Causing the second mobile device to present to the user an option to reconfirm (Para [0044], Fig. 5A, steps 512-518, “At 512, the target wireless device 102B obtains and presents the terms and conditions content via a native operating system user interface (UI) of the target wireless device 102B. This feature allows for presenting the terms and conditions information of different MNOs in a consistent manner at the target wireless device 102B. At 514, the target wireless device 102B obtains consent of the target wireless device 102B user, which is also the MNO account owner, as indicated previously at 506 and recognized at 508. At 516, the target wireless device 102B sends to an MNO backend system 402 an indication of consent (agreement) of the MNO account owner for transfer of the cellular wireless service to the target wireless device 102B. At 518, the MNO backend system 402 provides to the target wireless device 102B a message indicating acknowledgment of receipt of the MNO account owner consent.”
(i.e., the entitlement server/third party causes the second/target device to present the transfer terms and conditions as a reconfirmation option to the user via the native OS UI, and receives the user’s indication of consent; the user’s selection of the reconfirmation option before proceeding with the eSIM profile download, which constitutes the second device presenting a reconfirmation option and the third party receiving the reconfirmation from the second device)).
The proposed combination as well as the motivations for combining the references presented in the rejection of the claim 9 apply to this claim and are incorporate herein by reference.
Regarding claim 12, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 11.
Chaugule et al further disclose, wherein the flow further includes, after receiving reconfirmation of transfer of the subscription to the second mobile device, providing a profile activation code to the second mobile device, wherein the second mobile device uses the profile activation code to download from a Subscription Manager Data Preparation (SMDP) device a profile associated with the subscription (Para [0058], Fig. 5, “In 528, the entitlement server 506 transmits an activation code or a push notification to the target 502 to use to activate the eSIM profile when it is received from the SM-DP+ 508. In 530, the SM-DP+ 508 transmits the eSIM profile to the target 502. In 532, the target 502 installs and activates the eSIM profile”; and (Para [0051], Fig. 4, “In 426, the entitlement server 406 transmits a prepare profile message to the SM-DP+ 408. In 428, the SM-DP+ 408 prepares an eSIM profile. In 430, the SM-DP+ transmits the eSIM profile to the target 404. In 432, the target 404 installs the eSIM profile.”
(i.e., after the user’s reconfirmation/consent is received, the entitlement server provides the profile activation code to the second/target device, which the second device uses to download the eSIM profile from SM-DP+ (Subscription Manager Data Preparation device) thereby completes the profile association subscription download).
The proposed combination as well as the motivations for combining the references presented in the rejection of the claim 9 apply to this claim and are incorporate herein by reference.
Regarding claim 13, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 12.
Chaugule et al further disclose, wherein the third party monitors the downloading of the profile by communicating with the SMDP device (Para [0051], Fig. 4, “In 426, the entitlement server 406 transmits a prepare profile message to the SM-DP+ 408. In 428, the SM-DP+ 408 prepares an eSIM profile”; and (Para [0099], Fig.9, “In 920, the entitlement server 906 and SM-DP+ 908 perform an ES2+ profile order process. In 922, the SM-DP+ 908 binds the eSIM profile to the EID_t… In In 926, the target 902 transmits a profile download request message to the SM-DP+ 908. In 922, the SM-DP+ 908 binds the eSIM profile to the EID_t.” (i.e., the entitlement server the third party actively communicates with the SM-DP+ (SMDP device) throughout the profile ordering, binding and download process, monitoring the eSIM profile download by coordinating each step of the ES2+ profile order operation with the SMDP device)).
The proposed combination as well as the motivations for combining the references presented in the rejection of the claim 9 apply to this claim and are incorporate herein by reference.
Regarding claim 14, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 12.
Chaugule et al further disclose, wherein the carrier service is enabled on the second mobile device after the profile is downloaded to the second mobile device. (Para [0058], Fig. 5, “In 532, the target 502 installs and activates the eSIM profile.” and Para [0130], Fig.13, “In 1328, the target 1106 attaches to the MNO network.” (i.e., after the eSIM profile is downloaded and installed on the second/target device, the device activates the eSIM profile and attaches to the carrier network, thereby enabling the carrier service on the second mobile device)).
The proposed combination as well as the motivations for combining the references presented in the rejection of the claim 9 apply to this claim and are incorporate herein by reference.
Regarding claim 15, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 14; which recites “wherein the device is further caused to: receive by the third party a request from the second mobile device for a new token”, see (Para [0049], Fig. 4, of Chaugule et al. which teaches the third-party server issuing tokens and see (Para [0044]- [0045], step 518 and step 538 of Gupta et al. which teach the second mobile device and the MNO entitlement infrastructure exchange post-transfer acknowledgment message, confirming that the second device maintains an active communication channel with the third-party entitlement infrastructure.
Therefore, the combination of Chaugule et al. modified by Gupta would teach and/or render obvious claim 15.
Regarding claim 16, Chaugule et al. in view of Gupta et al. discloses all the limitation of claim 15.
Chaugule et al further disclose, wherein a new token is assigned to the third party (entitlement server) for use by the second mobile device, following the same token transfer assignment mechanism; the entitlement server is the third party who assigns new tokens to requesting devices as the standard function of token transfer management architecture (Para [0049], Fig. 4, “ In 418, the entitlement server 406 sends a token response, including a transfer token, to the source 402.” and Para [0062], Fig. 6, “In 620, the entitlement server 606 transmits a transfer token to the source 604, including an expiration time of the transfer token.”))
The proposed combination as well as the motivations presented in the rejection of the claim 15 apply to this claim and are incorporate herein by reference.
Allowable Subject Matter
Claim 4 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIKSHYA KANDEL whose telephone number is (571)270-0959. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Akwasi M Sarpong can be reached at (571) 270-3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIKSHYA KANDEL/Examiner, Art Unit 2648
/AKWASI M SARPONG/SPE, Art Unit 2681
Prosecution Insights