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 § 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) 1, 2, 4, 8, 9, and 11 is/are rejected und1er 35 U.S.C. 103 as being
unpatentable over Gao et al. (US-20150237496-A1, hereinafter “Gao”) in view of Fan et al. (US-20230308861-A1, hereinafter “Fan”).
Claim(s) 5-7, and 12-14 is/are rejected und1er 35 U.S.C. 103 as being
unpatentable over Gao et al. (US-20150237496-A1, hereinafter “Gao”) in view of Fan et al. (US-20230308861-A1, hereinafter “Fan”) in further view of Li et al. (US-10856137-B2, hereinafter “Li”).
Regarding claim 1, Gao discloses a method for transferring an embedded Subscriber Identity Module (e-SIM) profile from a first communication device to a second communication device (Gao, Claim1, “A subscription transfer method, comprising:… and transferring the eUICC subscription from the second UE to the first UE according to the subscription transfer request message”; Fig.1, step S102, PARA[0059], “the ICCID of the second UE in an OP used for access to the operator network may be replaced with the ICCID of the first UE, and then the updated OP is sent to the first UE to implement transfer of the eUICC subscription from the second UE to the first UE.”) (i.e., the object transferred is an operational profile, or OP, which is claims e-SIM profile because it is what the receiving UE activated to obtain network access, Fig.6B, step S618, PARA [0147], “The new UE activates the OP, and accesses the MNO network”).
Examiner’s note: Before turning to the individual limitations, one-point oof vocabulary should be noted, because Gao numbers its two devices in the reverse of the claim. Gao calls device that receives the subscription its “First UE,” and the device that gives up the subscription its “second UE” (Fig. 1, step S101, PARA[0054], “the first UE is a target UE to which an eUICC subscription is transferred, and the second UE is a source UE from which the eUICC subscription is transferred”), and refers to the same two device elsewhere as the “new UE” or “new terminal” and the “old UE” or “old terminal”. Read against the claim, then the claimed a first communication device which holds the profile and sends the request, is Gao’s second UE or old terminal; and the claimed second communication device, which receives the profile, is Gao’s first UE or new terminal. The citation below quote Gao in its own terms, and the explanations identify the corresponding claim element.
receiving, at a server from the first communication device, an e-SIM transfer request message(Fig.1, step S101, PARA [0054], “Receive a subscription transfer request message sent by a first UE or a second UE”; PARA[0060], “An entity executing the foregoing steps may be an SM-SR module”; PARA[0185], Step2, “ The old terminal sends a subscription transfer request message to an SM-SR module”; Fig. 15, PARA [0249], “The network interface 152 is configured to receive a subscription transfer request message sent by a first UE or a second UE”) i.e., Gao recites the receiving step at S101 and names either device as the sender, and at PARA [0185] gives the case in which the sender is the old terminal, which is the claimed first communication device; the receiving entity is the SM-SR module, which is the claimed server because PARA [0060] identifies it as the entity performing the recited steps and Fig.15 shows it comparing processor 151, network interface 152 configured to receive the very message, and memory 154.
including an e-SIM identifier (EID) corresponding to each of the first communication device and the second communication device (PARA [0185], Step 2, “he request message includes the eID and IMEI of the new terminal, an eID and an IMEI of the old terminal, and a subscription transfer indication”; PARA [0184], Step1, “A user or an SP employee enters an eID and an IMEI of a new UE in an old terminal”; PARA [0056], “The eID may be a globally unique identity of an eUICC”) i.e., the one message the old terminal sends carries an eID for itself and an eID for the new terminal, the old terminal having obtained the new terminal’s eID at Step 1 beforehand, and Gao’s eID is the claimed EID because it is defined as the globally unique identity of n eUICC.
wherein the received e-SIM transfer request message corresponds to a request for transferring the e-SIM profile from the first communication device to the second communication device (PARA [0185], Step2, the message including “subscription transfer indication”; PARA [0091], “a subscription transfer indication used to indicate that subscription transfer will be performed between the first UE and the second UE”) i.e., the message expressly identifies itself as a request to transfer the subscription between the two device it names.
performing a mapping process to map the e-SIM profile associated with the EID of the first communication device with the EID of the second communication device based on the received e-SIM transfer request message (Fig. 6B, PARA [0143], Step S6161, “The SM-DP module changes the ICCID of the old UE corresponding to an OP into the ICCID of the new UE”; Gao, Claim 6, “the SM-DP module replaces the identity information of the second UE corresponding to an OP with the identity information of the first UE to obtain an updated OP”; Fig. 6A, PARA [0127], Step S607, “the eID conversion request message carries the eID of the new UE and the eID of the old UE”; Fig. 6A, PARA [0128], Step S608, “The SM-DP module converts the eID of the new UE and the eID of the old UE into an ICCID of the new UE and an ICCID of the old UE.”). i.e., the existing profile persists and only it associated device identify changes, form that of the old terminal to that of the new terminal, and the change proceeds from the two eIDs the server received in the request, which are converted at step S608 for the limited purpose Gao states at PARA [0129], “to recognize the corresponding eUICC.”
and transmitting, to the second communication device, the e-SIM profile mapped with the EID of the second communication device (Fig. 6B, PARA [0144], step S6162, “The SM-DP module sends the OP of the new UE to the SM-SR module”; Fig. 6B, PARA [0145], step S617, “The SM-SR module sends the OP of the new UE to the new UE”; PARA [0146], “the SM-DP module changes the ICCID of the old UE corresponding to the OP into the ICCID of the new UE, and sends the OP of the new UE to the SM-SR module”). i.e., what reaches the new terminal is the updated OP produced at step S6161, the change thus preceding the delivery.
Each step cited above from FIGS. 6A and 6B belongs to the same embodiment in which the old terminal sends the dual-eID request, Gao stating that in Embodiment 9 “Step 3 to step 21 are similar to S704-723 in the embodiment shown in FIG. 7A and FIG. 7B” (PARA [0186], and that “S704-S723 are similar to S607-S626 in the embodiment shown in FIG. 6A and FIG. 6B, PARA [0181]”)
However, Gao doesn’t disclose that the mapping is performed with respect to the EID of each device; at the point of replacement Gao operates on ICCIDs derived from the two eIDs (Fig. 6A, PARA [0128], step S608). Accordingly, Fan is added.
Fan performs that same re-association in the identifier the claim recites (PARA [0282], “ the profile server may update the relationship between the identifier (for example, an EID) of the first electronic device and the identifier (for example, an ICCID) of the to-be-transferred profile to a relationship between the identifier (for example, an EID) of the second electronic device and the identifier (for example, an ICCID) of the to-be-transferred profile”; PARA [0333], “the server re-binds a relationship between the EID and the ICCID”; Fig.3c, PARA [0219], StepS306b, the profile server will “associate the profile with the EID2 according to the identifier of the second electronic device”; PARA [0115], “An identifier used to identify an eSIM may be referred to as an embedded universal integrated circuit card identifier (Embedded UICC Identifier, EID)”). i.e., Fan changes the association of an existing profile from the source device’s EID to the target device’s EID, and likewise does so before delivering the profile; Fan numbers its devices in the same direction as the claim, its first electronic device begins the source.
Therefore, in the combined system, Gao’s SM-DP module performs its replacement upon the EIDs the old terminal supplied in the transfer request, and all limitations of Claim 1 are met.
Gao and Fan are analogous art because both transfer an eSIM profile to a replacement device by changing the device identity associated with an existing profile rather than by issuing a new one, and both are classified in the same CPC. Fan states the rationale Gao’s method implements (Fan, PARA [0210], “each time a device is changed, a server needs to generate a new profile, which wastes an operator code number resource”) and recites the same problem and object as the instant specification (Fan, PARA [0126], “A user takes a new eSIM electronic device to a customer service center of an operator… The user waits for the attendant to process the eSIM card number transfer request”; PARA [0005], “to simplify the complexity of an eSIM card switching process of a user”).
It would have been obvious to one of ordinary skill; in the art, before the effective filing date of then claimed invention, to perform Gao’s replacement upon the EIDs as Fan teaches, for two reasons. First, Gao treats the eID and the ICCID as interchangeable representation of the same eUICC identity and expressly discloses carrying the eIDs forward without conversion (PARA [0136], “the subscription transfer notification message carries the eID and/or IMEI of the new UE, the eID and/or IMEI of the old UE… S608 is not required in this implementation manner”), so the modification selects between two alternatives Go itself sets out. Second, the eIDs re already at the server, having in the request (PARA [0185]) and been forwarded to the SM-DP module (PARA [0127]), so using them directly dispenses with a step Gao calls optional.
There would have been a reasonable expectation of success because both references perform the identical operation, changing the eUICC identity with which an existing profile is associated at a subscription-management server, and because Gao discloses the conversion-free variant at (Gao, PARA [0136]).
Regarding claim 2, Gao in view of Fan discloses all the limitations of Claim 1.
Gao further discloses transmitting, to a Mobile Network Operator (MNO), a configuration request message to configure a transfer of the mapped e-SIM profile from the EID of the first communication device to the EID of the second communication device (Fig. 6A, step S612, PARA [0135], “The SM-SR module sends a subscription transfer notification to a device in an MNO network, notifying the device in the MNO network that the subscription of the old UE will be transferred to the new UE, where the subscription transfer notification carries the ICCID and/or IMEI of the new UE, the ICCID and/or IMEI of the old UE, and a subscription transfer indication”; Fig. 6A, Step S613, PARA [0137], “the device in the MNO network replaces the ICCID and/or IMEI of the old UE in the subscription data with the ICCID and/or IMEI of the new UE”; PARA [0136], the alternative in which that notification carries “the eID and/or IMEI of the new UE, the eID and/or IMEI of the old UE”; Gao Claim 6). i.e., the message sent to the operator network identifies both devices and directs the operator network to reconfigure its subscription data from the old terminal’s identity to the new terminal identity, Gao stating the purpose at (PARA [0138]) as ensuring “that after the subscription transfer, the MNO network can recognize the new UE and provide services for the new UE”.
Gao further discloses and receiving, from the MNO in response to the transmitted configuration request message, a confirmation message indicating a confirmation of the configuration of the e-SIM profile from the EID of the first communication device to the EID of the second communication device (Fig. 6A, step S614, PARA [0140], “The device in the MNO network feeds back a subscription transfer confirmation message to the SM-SR module”; PARA [0141], the alternative in which the acknowledgement “carries the eID of the new UE and the eID of the old UE”; Gao Claim 6, “receiving a subscription transfer acknowledgement message fed back by the device in the MNO network”) i.e., the operator network returns a confirmation to the server, responsive to the notification and after performing the reconfiguration, and Gao discloses that acknowledgement carrying the eID of each device.
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Regarding claim 4, Gao in view of Fan discloses all the limitations of Claim 1.
Gao further discloses where the e-SIM profile comprises at least one of subscription-related information, one or more authentication credentials, and one or more network identifiers (PARA [0105], “the new network access authentication parameters such as an international mobile subscriber identity (IMSI) and authentication key K”; Fig.1, step S102, PARA [0059], the OP being “ used for access to the operator network”; Gao, Claim 1, “ transferred eUICC subscription data”). i.e., the IMSI is a network identifier, the authentication key K is an authentication credential, and the transferred subscription data is subscription-related information; the limitation is recited in the alternative, and each alternative is satisfied.
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Regarding claim 8, Claim 8 is the system counterpart of Claim 1, reciting the same three server operations together with two communication devices and the processing structure of the server. Gao’s device labeling is as set out in the rejection of Claim 1: the claimed first communication device is Gao’s second UE or old terminal, and the claimed second communication device is Gao’s first UE or new terminal.
a first communication device comprising communication circuitry;
a second communication device comprising communication circuitry; and
(PARA[0057], “The first UE and second UE may be UEs using the eUICC, for example, mobile phones, tablet personal computers, personal digital assistants, and electricity meters”; Embodiment 9, Step 2, PARA[0185], the old terminal sending the request to the SM-SR module; Fan, Fig. 2a, PARA [0141], the electronic device 200 comprising “a processor 210… an antenna 1, an antenna 2, a mobile communication module 251, a wireless communication module 252”) i.e., each of Gao’s two UEs transmits and receives over network during the transfer, and Fan sets out the circuitry by which such a device does so, stating at PARA [0192] that electronic device 200 “may be the first electronic device or the second electronic device” of its transfer system.
server communicably coupled to the first communication device and the second communication device, the server comprising: (PARA [0060], “An entity executing the foregoing steps may be an SM-SR module”; Embodiment 9, Step 2, PARA [0185], “The old terminal sends a subscription transfer request message to an SM-SR module”; Fig. 6B, step S617, PARA [0145], “The SM-SR module sends the OP of the new UE to the new UE”). i.e., the SM-SR module is the claimed server, receiving the request from the old terminal and delivering the profile to the new terminal.
one or more processing units comprising at least one processor, comprising processing circuitry, individually and/or collectively, configured to: (Fig. 15, PARA [0248], the SM-SR module including “at least one processor 151, for example, a central processing unit (CPU), at least one of a network interface 152… a memory 154”; PARA[0259], “the message may be generated by the processor 151 of the subscription transfer apparatus, or another component/module, or the processor 151 in combination with another component/ module”) i.e., the server comprises at least one processor, and PARA [02590] contemplates the processor acting alone or together with another component, which answers the recited “individually and/or collectively”.
receive, from the first communication device, an e-SIM transfer request message including an e-SIM identifier (EID) corresponding to each of the first communication device and the second communication device, wherein the received e-SIM transfer request message corresponds to a request for transferring the e-SIM profile from the first communication device to the second communication device (Fig. 15, PARA [0249], “The network interface 152 is configured to receive a subscription transfer request message sent by a first UE or a second UE”; Embodiment 9, Step 2, PARA [0185], “ the request message includes the eID and IMEI of the new terminal, an eID and an IMEI of the old terminal, and a subscription transfer indication”; Step 1, PARA[0184], “A user or an SP employee enters an eID and an IMEI of a new UE in an old terminal”; PARA[0056], “The eID may be a globally unique identity of an eUICC”; PARA[0091], “a subscription transfer indication used to indicate that subscription transfer will be performed between the first UE and the second UE”). (i.e., the server’s network interface is configured to receive this message, the sender is the old terminal, the message carries an eID for each device, and its transfer indication identifies it as a request to move the subscription between them).
perform a mapping process to map the e-SIM profile associated with the EID of the first communication device with the EID of the second communication device based on the received e-SIM transfer request message; and (Fig. 15. PARA [0257], the processor 151 configured to “send an OP request message that includes the identity information of the first UE and the identity information of the second UE to an SM-DP module, so that the SM-DP module replaces the identity information of the second UE corresponding to an OP”; Gao, Claim 11; Fig. 6B, step S6161, PARA[0143], “The SM-DP module changes the ICCID of the old UE corresponding to an OP into the ICCID of the new UE”) i.e., processor 151 brings about the change by which the existing profile’s associated device identity moves from the old terminal to the new terminal, proceeding from the two eIDs received in the request.
and perform control to transmit, to the second communication device, the e-SIM profile that is mapped with the… second communication device (Fig. 15, PARA [0257], the processor 151 further configured to “receive the updated OP sent by the SM-DP module, and send the updated OP to the first UE”; Fig. 6B, step S617, PARA [0145], “The SM-SR module sends the OP of the new UE to the new UE”) (i.e., processor 151 controls delivery of the updated OP to the new terminal, and because the change at step S6161 precedes that delivery, what is sent is the profile already mapped to the new terminal’s identity).
As in Claim 1, the steps cited above from the FIGS. 6A and 6B belong to the embodiment in which the old terminal sends the dual-eID request (PARA [0186]; [0181], and [0260] confirm that the structure of Fig. 15 executes those steps.)
However, Gao does not disclose that the mapping is performed with respect to the EID of each device; at the point of replacement Gao operates on ICCIDs derived from the two eIDs (Fig. 6A, step S608, PARA [0128]). Accordingly, Fan is added.
Fan performs that same re-association in the identifier the claim recites (PARA [0282], “ the profile server may update the relationship between the identifier (for example, an EID) of the first electronic device and the identifier (for example, an ICCID) of the to-be-transferred profile to a relationship between the identifier (for example, an EID) of the second electronic device and the identifier (for example, an ICCID) of the to-be-transferred profile”; PARA [0333], “the profile server verifies the activation request. For a specific verification process, refer to the verification process in the foregoing embodiments. Details are not described herein again. Further, the server re-binds a relationship between the EID and the ICCID”; PARA [0115], “An identifier used to identify an eSIM may be referred to as an embedded universal integrated circuit card identifier (Embedded UICC Identifier, EID)”) (i.e., Fan changes the association of an existing profile from the source device’s EID to the target device’s EID, and likewise does so before delivering the profile).
Therefore, in the combined system, processor 151 of Gao’s SM-SR module performs its replacement upon the EIDs the old terminal supplied in the transfer request, and limitations of claim 8 are met.
The analogues art analysis, the motivations for combining Gao and Fan, and the reasonable expectation of success set forth in the rejection of Claim 1 apply to this Claim and are incorporated herein by reference.
Regarding claim 9, Gao in view of Fan discloses all the limitations of Claim 8. Claim 9 is the system counterpart of Claim 2 and recites limitations similar in scope, performed by at least one processor.
Gao further discloses perform control to transmit, to a Mobile Network Operator (MNO), a configuration request message to configure a transfer of the mapped e-SIM profile from the EID of the first communication device to the EID of the second communication device; and receive, from the MNO in response to the transmitted configuration request message, a confirmation message (PARA [0257], the first processing module configured to “send a subscription transfer notification message to a device in an MNO network, where the subscription transfer notification message includes identity information of the first UE and identity information of the second UE, so that the device in the MNO network replaces the identity information of the second UE in the subscription data with the identity information of the first UE; receive a subscription transfer acknowledgement message fed back by the device in the MNO”; Gao, Clim 11; Fig.6A, step S612 to S614, PARA [0135], [0137], and [0140]). i.e., the processing module performs both the notification to the operator network and the receipt of the acknowledgement, as set forth in the rejection of Claim 2.
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Regarding claim 11, Gao in view of Fan discloses all the limitations of Claim 8. Claim 11 is the system counterpart of Claim 4 and recites a limitation similar in scope.
Gao further discloses the e-SIM profile comprises at least one of subscription-related information, one or more authentication credentials, and one or more network identifiers (PARA [0105]; Fig. 1, step S102, PARA [0059]; Gao, Claim 1) (i.e., as set forth in the rejection of Claim 4).
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Claim(s) 5-7, and 12-14 is/are rejected und1er 35 U.S.C. 103 as being unpatentable over Gao et al. (US-20150237496-A1, hereinafter “Gao”) in view of Fan et al. (US-20230308861-A1, hereinafter “Fan”) in further view of Li (US-10856137-B2, hereinafter “Li”).
Regarding claim 5, Gao in view of Fan discloses all the limitations of Claim 1.
However, Gao does not disclose transmitting to the second communication device, a notification message including a request to install the e-SIM profile transmitted to the second communication device. In Go the server sends the operational profile itself to the new terminal (Fig. 6B, step S617, PARA [0145]) and the new terminal thereafter activates it of its own accord (Fig. 6B, step S618, PARA [0147]), without any message to the new terminal requesting installation. Accordingly, Li is added.
Li discloses that limitation (Li, col 14, step S614, “eSM 300 requests PMA 110b to download network subscription profile 130 from eSM 300. PMA 110b downloads network subscription profile 130 and installs it on eUICC 120b”; Li, col. 10 step S312, “The subscription manager node 300 enables download of the network subscription profile 130 from the subscription manager node 300 to the second subscriber device 200b”; Li, Claim 16, “enabling the second subscriber device to download from the subscription manager node the network subscription profile containing the subscription identifier”). i.e., Li’s subscription manager node sends the target device a message requiring that it obtain the profile, in response to which the target device downloads and installs it.
Therefore, in the combined system, Gao’s SM-SR module sends the new terminal a request to download and install the transmitted profile, and all limitations of Claim 5 are met.
Gao and Li are analogues art because both concern a subscription management server that transfer an existing eSIM profile from a source device to a target device by changing the eUICC identity with which the profile is associated and then delivering it (Li, col. 14, step S615, “ eSM 300 re-binds the profile for network subscription profile 130… being bound to the eUICC 120b denoted ‘eUICC1’ instead of the eUICC 120a denoted ‘eUICC1’”; compare Gao, Fig. 6B, step S6161, PARA [0143], and both are classified in same CPC).
It would have been obvious to one of ordinary skills in the art, before the effective filing date of the claimed invention, to have Gao’s server send the new terminal an express request to download and install the profile, as Li teaches. Doing so lets the server control when installation occurs rather than relying on the target device to act on a delivered profile, which in turn allows the server to know when installation has completed. That knowledge is something Gao’s own flow depends upon, because Gao conditions the later deletion of the source profile on the transfer having occurred (Gao, Claim 5). There would have been a reasonable expectation of success because both references deliver the profile from a subscription management server to the target device’s eUICC over the same provisioning signaling.
Regarding claim 6, Gao in view of Fan discloses all the limitations of Claim 1.
Gao further discloses detecting whether the transmitted e-SIM profile is installed on the second communication device (Fig. 6B, step S618, PARA [0147], “The new UE activates the OP, and accesses the MNO network”; Fig. 6B, step S619, PARA [0148], “The new UE confirms with the SM-SR module that the subscription is established successfully”). i.e., the server receives confirmation from the new terminal that the transferred profile has been successfully established on it.
Gao further discloses deleting the e-SIM profile from the first communication device (Fig. 6B, step S624, PRA [0158], “The SM-SR module sends a deletion command to the old UE.”; Fig. 6B, step S625, PARA [0159], “The old UE deletes the subscription data in the eUICC and related services”; Gao, Claim 5, “after transferring the eUICC subscription from the second UE to the first UE, the method further comprises sending a data deletion command to the second UE such that the second UE deletes the subscription data stored in the eUICC”). i.e., the server commands the old terminal to delete the profile after the transfer, Gao stating purpose at PARA [0081] as ensuring “the second UE that has transferred the user data out cannot access the network anymore,” and the new terminal’s confirmation at step S619 precedes the deletion command at step S624 in Gao’s own sequence.
However, Gao does not expressly disclose that the deletion is performed based on detecting that the transmitted e-SIM profile is installed on the second communication device. Accordingly, Li is added.
Li discloses that conditional relationship (Li, col. 12, step S411, “PMA 110b installs network subscription profile 130 on eUICC 120b. The second subscriber device 200b can successfully attach to a mobile network and obtain cellular network connectivity. PMA 110b then sends a notification to eSM 300”; Li, col.11, step S314, “The subscription manager node 300 obtains a notification from the second subscriber device 200b for re-binding the network subscription profile 130 to the second subscriber device 200b”; Li, col.11, step S318, “The subscription manager node 300 requests the first subscriber device 200a to delete the network subscription profile 130 from the first subscriber device 200a”; Li, Claim 1, “deleting the network subscription profile from the first subscriber device as a result of a transfer of the network subscription profile to the second subscriber device”; Li, Claim 20). i.e., the server obtains the notification only after the target device has installed the profile, and the request that the source device deletes is made as a result of that transfer.
Therefore, in the combined system, Gao’s deletion command to the old terminal is issued as a result of the new terminal’s confirmation of successful installation, and limitations of Claim 6 are met.
Gao and Li are analogous art for the reason set forth in the rejection of Claim 5.
It would have been obvious to one of ordinary skills in the art, before the effective filing date of the claimed invention, to condition Gao’s deletion command on the new terminal’s confirmation, as Li teaches. Gao already receives that confirmation and already places it before the deletion command in its sequence (PARA [0148] and [0158]) and states the purpose of the deletion as preventing continued network access by the old terminal (PARA [0081]). Making the relationship conditional prevents the intermediate state in which the profile has been removed from the source device but has not been successfully installed on the target device, leaving the subscriber without service, which is the same concern Li addresses by obtaining a post installation notification before requesting deletion. There would have been a reasonable expectation of success because Gao already receives the confirmation upon which the deletion would be conditioned.
Regarding claim 7, Gao in view of Fan discloses all the limitations of Claim 1.
Gao discloses embodiments in which no verification of the target device’s manufacturer or model is performed (PARA [0177], embodiment 8, “authentication is not performed by an SP device”; PARA [0183], Embodiment 9, “authentication is not performed by an SP device”), and in those embodiments the replacement is carried out upon the ICCIDs converted from the eIDs carried in the transfer request (Fig. 6B, step S6161, PARA [0143]; Fig. 6A, steps S607 and S608, PARA [0127] and [0128]).
However, Gao does not disclose that the mapping process to map the e-SIM profile with the EID of the second communication device is performed independently of original equipment manufacturer (OEM) IDs associated with each of the first communication device and the second communication device. Gao contemplates conditioning the transfer on device manufacturer information (PARA [0065] and [0123], “a binding relationship may exist between the subscription and a brand and model of a UE. If the first UE, that is, the target UE to which the subscription is transferred, does not meet requirements of the subscription on the brand and model of the UE, it is possible that transfer of the subscription to the first UE is not allowed”). Accordingly, Li is added.
Li discloses a mapping performed upon eUICC identifier alone, no manufacturer or model information participating in the operation (Li, col. 14, step S615, “The subscription manager node 300 re-binds the network subscription profile 130 to the second subscriber device 200b in response thereto”; Li, Figs. 8, 9, and 10, depicting the biding as a two-entry table associating an eUICC identifier with a profile identity; Li, Claim 19). i.e., the operation takes as its inputs only the identifiers of the two eUICCs and the identity of the profile. Li applies that mechanism across a heterogenous device population (Li, col.6, the subscriber devices including mobile phones, laptop computers, tablet computers, sensors, meters, and IoT devices).
Therefore, in the combined system, the mapping is performed independently of any OEM ID associated with either device, and all limitations of Claim 7 are met.
Gao and Li are analogous art for the reason set forth in the rejection of Clim 5.
It would have been obvious to one of ordinary skills in the art, before the effective filing date of the claimed invention, to perform Gao’s mapping using only the eUICC identifiers, as Li teaches. Doing so allows the transfer to proceed between devices whatever their manufacturer, which is the predictable consequence of removing a dependence on manufacturer-specific information from the operation, and it is consistent with Gao’s own embodiments in which no brand or model is verified (PARA [0177] and [0183]). There would have been reasonable expectations of success because both references perform the same operation, changing the eUICC identity with which an existing profile is associated, and Li performs it on eUICC identifiers alone.
Regarding claim 12, Gao in view of Fan and further in view of Li discloses all the limitations of Claim 8. Claim 12 is the system counterpart of Claim 5 and recites and recites a limitation similar in scope, performed by at least one processor.
The combination discloses perform control to transmit to the second communication device, a notification message including a request to install the e-SIM profile transmitted to the second communication device (Go, Fig. 15, PARA [0248] and [0250], processor 151 configured to transfer the subscription; Li, col. 14, step S614; Li, Claim 25, the subscription manager node comprising “processing circuitry” and a storage medium storing instruction causing it to “enable the second subscriber device to download from the subscription manager node the network subscription profile”). i.e., in the combined system Gao’s processor 151 sends the new terminal the request to download and install, as set forth in the rejection of Claim 5.
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Regarding claim 13, Gao in view of Fan and further in view of Li discloses all the limitations of Claim 8. Claim 13 is the system counterpart of Claim 6 and recites a limitation similar in scope, performed by at least one processor.
The combination discloses detect whether the transmitted e-SIM profile is installed on the second communication device; and delete the e-SIM profile from the first communication device based on detecting that the transmitted e-SIM profile is installed on the second communication device (Gao, Fig.6B, step S619, PARA [0148]; Gao, Fig. 6B, steps S624 and S625, PARA [0158] and [0159]; Gao, Fig. 15, PARA [0250], processor 151; Li, col. 11, step S314 and S318; Li, Claim 25) (i.e., in the combined system Gao’s processor 151 detects the new terminal’s confirmation and issues the detection command as a result, as set forth in the rejection of Claim 6).
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Regarding claim 14, Gao in view of Fan and further in view of Li discloses all the limitations of Claim 8. Claim 14 is the system counterpart of Claim 7 and recites a limitation similar in scope.
The combination discloses wherein the mapping process to map the e-SIM profile with the EID of the second communication device is performed independently of original equipment manufacturer (OEM) IDs associated with each of the first communication device and the second communication device
The proposed combination and the motivation for combining the references presented in the rejection of the parent claim apply to this Claim and are incorporated herein by reference.
Claim Objections
Allowable Subject Matter
Claim 3 and 10 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. This indication is limited to the references of record.
The References of record do not disclose or suggest updating the current state of the e-SIM profile to a released state based on successful mapping of the e-SIM profile with the EID of the second communication device, as recited in Claim 3 and in corresponding form in Claim 10. Gao discloses no server-side profile state model, and Li discloses none. Fan disclose a profile status having polarity of defined values (PARA[0272], “an activated state…, a deactivated state…, a to-be-transferred state, a transfer preparation completed state, a transfer success state, a transfer failure state, a deleted state, a configuring state (Provisioning), an operational state (Operational), a test state”) and discloses updating that status during the transfer (PARA[0283] and [0397]), but does not disclose a released state.
Conclusion
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/DIKSHYA KANDEL/Examiner, Art Unit 2648 /AKWASI M SARPONG/SPE, Art Unit 2681 10/12/2026
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