Detailed Action
1. The Office Action is in response to the Applicant’s communication filed on 06/18/2024. In virtue of this communication, claims 1-17 are currently pending in this Office Action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Applicant' s claim for the benefit of provisional application as ADS filed on 06/18/2024 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78 is acknowledged.
Claim Rejections - 35 USC § 103
4. 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.
5. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
6. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. Pub. No.: US 2023/0030914 A1 in view of Touati et al. Pub. No.: US 2020/0137557 A1 and Sharma et al. Pub. No.: US 2016/0295550 A1.
Claim 1
Jung discloses a method (activating profiles on first and second electronic devices in fig. 6-14) of a primary user equipment (UE) (101a in fig. 6A-B & 12A-B), comprising:
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a first subscriber identity module (SIM) configuration (fig. 14A-B) used by the primary UE to perform active-mode network communications (steps 602-608 in fig. 6A and see 1510-1540 in fig. 15) on the first SIM (see first SIM 111 in fig. 1B and eSIM 201 in fig. 5 and par. 0064 for two or more SIMs);
sending, to a secondary UE (UE 101b in fig. 6A-B), a first indication (1206-1208-1210 in fig. 12A) to activate (610 in fig. 6A and see 628 in fig. 6B for transmitting information for subscription transfer), at the secondary UE, the second SIM configuration in response to the activating the first SIM configuration used by the primary UE (configuration in fig. 11-15).
Although Jung does not explicitly show: “activating a first subscriber identity module (SIM) of a dual SIM dual standby (DSDS) configuration; a second SIM of the DSDS configuration”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitation “activating a first subscriber identity module (SIM)”, recall that Jung describes that the second electronic device may activate the second profile installed on the eSIM (210 in fig. 2, 4-7). Although Jung does not explicitly show, it would be the same way that the first electronic device could activate the first profile installed in the eSIM. To advance the prosecution, the evidence is provided herein. In particular, Touati teaches eSIM activation (414 in fig. 4).
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 transferring subscription embedded SIM in an electronic device of Jung by providing eSIM activation as taught in Touati. Such a modification would have provided a primary wireless communication deice to transfer a cellular subscription device to other devices such as wearable devices or home entertainment devices so that the communication capabilities would be shared each other as suggested in par. 0003-0013 of Touati.
Secondly, to address the obviousness of the claim limitations “a dual SIM dual standby (DSDS) configuration; a second SIM of the DSDS configuration”, recall that Jung explains that the electronic device may operate as a dual SIM dual standby DSDS mode (par. 0064). In particular, Sharma teaches DSDS device configuring for SIM-1 and SIM-2 (fig. 2-14).
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 transferring subscription embedded SIM in an electronic device of Jung in view of Touati by providing a Dual SIM Dual Standby DSDS device as taught in Sharma to obtain the claimed invention as specified in the claim. Such a modification would have provided a DSDS device to scan for recovering service so that the cell selection would be optimized without delay in the cell search as suggested in par. 0007-0018 of Sharma.
Claim 2
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising:
determining that the active-mode network communications on the first SIM are ended (640-642-644 in fig. 6B of Jung); and
sending, to the secondary UE, a second indication to activate (Jung, 1234 in fig. 12B), at the secondary UE, the first SIM of the DSDS configuration in response to the determination that the active-mode network communications on the first SIM are ended (Jung, deactivate first profile in fig. 6-15; Sharma, suspend the first SIM in fig. 2-14; accordingly, the combined prior art renders the claim obvious).
Claim 3
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising sending, to the secondary UE, configuration information comprising the first SIM and the second SIM of the DSDS configuration (Jun, downloading configuration information and profile information in fig. 12-15; Sharma, DSDS configuration in fig. 2-14; for these reasons, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim, see MPEP 2143, KSR Exemplary Rationale F).
Claim 4
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising sending, to the secondary UE, a second indication that the first SIM of the DSDS configuration is a default SIM of the secondary UE (Jung, profile policy enabler 452 in fig. 4 and transmitting second profile download information 1234 in fig. 12B; Sharma, priority operations for the SIM in par. 0045; with these teachings, prioritization for SIM operation and enabling SIM profile could be the same as a default SIM, unless claim further recites what are required to be the default SIM; default SIM is intrinsic feature in a cellular mobile communication and see default SIM in Zhu et al. Pub. No.: US 2021/0200494 A1).
Claim 5
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising determining that the secondary UE is within a proximity of the primary UE (Jung, establishing short-range communication in 1206 in fig. 12A involves determining the proximity; Sharma, device in proximity and device out proximity in fig. 6-7), wherein the first indication is further sent to the secondary UE in response to the determination that the secondary UE is within the proximity of the primary UE (Jung, first indication in 1208 and second indication 1234 in fig. 12A; accordingly, the combined prior art meets the claim requirement).
Claim 6
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising receiving a paging message corresponding to the second SIM of the DSDS configuration during the active-mode network communications on the first SIM (Jung, fig. 12A-B; Sharma, paging occasion P in fig. 2A and paging message for updating tracking areas in par. 0067 and fig. 5 that will invoke from SIM 1 to SIM 2 or from SIM 2 to SIM 1), wherein the first indication is further sent to the secondary UE in response to the receiving of the paging message (Jung, 1208 in fig. 12A; and thus, the combined prior art renders the claim obvious).
Claim 7
Jung, in view of Touati and Sharma, discloses the method of claim 1, further comprising receiving, from the secondary UE, a notification that active-mode network communications on the second SIM are available to the primary UE through the secondary UE (Jung, see fig. 12A-B and 14A-B for transferring profile information; Touati, 551 in fig. 5; for these reasons, the combined prior art renders the claim obvious).
Claim 8
Jung, in view of Touati and Sharma, discloses the method of claim 1, wherein the primary UE and the secondary UE communicate via a Bluetooth® connection (Jung, Bluetooth in par. 0031 and short-range communication in 1206 in fig. 12A; accordingly, the combined prior art meets the claim requirement).
Claim 9
Jung discloses a method (fig. 5-15 for activating profiles) of a secondary user equipment (UE) (101b in fig. 5-15) configured with a first subscriber identity module (SIM) and a second SIM configuration used by a primary UE (101a in fig. 5-15), comprising:
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receiving, from a primary UE, a first indication to activate (1208 in fig. 12A), at the secondary UE, the second SIM configuration used by the primary UE (steps 1206-1210 in fig. 12A); and
activating the second profile for use by the secondary UE in response to receiving the first indication (1238 in fig. 12B).
Although Jung does not explicitly show: “activating the second SIM; a first subscriber identity module (SIM) of a dual SIM dual standby (DSDS) configuration; a second SIM of the DSDS configuration”, the claim limitations are considered obvious by the following rationales.
Firstly, to consider the obviousness of the claim limitation “activating a first subscriber identity module (SIM)”, recall that Jung describes that the second electronic device may activate the second profile installed on the eSIM (210 in fig. 2, 4-7). Although Jung does not explicitly show, it would be the same way that the first electronic device could activate the first profile installed in the eSIM. To advance the prosecution, the evidence is provided herein. In particular, Touati teaches eSIM activation (414 in fig. 4).
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 transferring subscription embedded SIM in an electronic device of Jung by providing eSIM activation as taught in Touati. Such a modification would have provided a primary wireless communication deice to transfer a cellular subscription device to other devices such as wearable devices or home entertainment devices so that the communication capabilities would be shared each other as suggested in par. 0003-0013 of Touati.
Secondly, to address the obviousness of the claim limitations “a dual SIM dual standby (DSDS) configuration; a second SIM of the DSDS configuration”, recall that Jung explains that the electronic device may operate as a dual SIM dual standby DSDS mode (par. 0064). In particular, Sharma teaches DSDS device configuring for SIM-1 and SIM-2 (fig. 2-14).
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 transferring subscription embedded SIM in an electronic device of Jung in view of Touati by providing a Dual SIM Dual Standby DSDS device as taught in Sharma to obtain the claimed invention as specified in the claim. Such a modification would have provided a DSDS device to scan for recovering service so that the cell selection would be optimized without delay in the cell search as suggested in par. 0007-0018 of Sharma.
Claim 10
Jung, in view of Touati and Sharma, discloses the method of claim 9, further comprising deactivating the first SIM at the secondary UE in response to receiving the first indication (Jung, deactivation 645 in par. 0149 and fig. 6B; Sharma, suspend SIM-1 in fig. 2-14; accordingly, the combined prior art renders the claim obvious).
Claim 11
Jung, in view of Touati and Sharma, discloses the method of claim 9, further comprising performing active-mode network communications on the second SIM (Sharma, SIM-2 in fig. 2-14; and thus, the combined prior art meets the claim condition).
Claim 12
Jung, in view of Touati and Sharma, discloses the method of claim 11, further comprising sending, to the primary UE, a notification that active-mode network communications on the second SIM are available to the primary UE through the secondary UE (Jung, see fig. 12A-B and 14A-B for transferring profile information; Touati, 551 in fig. 5; for these reasons, the combined prior art renders the claim obvious).
Claim 13
Jung, in view of Touati and Sharma, discloses the method of claim 9, further comprising:
receiving, from the primary UE, after the receiving of the first indication, a second indication to activate, at the secondary UE, the first SIM of the first DSDS configuration (Jung, 1234 for fig. 12B for transmitting second profile download information; Sharma, DSDS configuration in fig. 2-6); and
deactivating the second SIM at the secondary UE (Jung, deactivating first profile in 646 of fig. 6A) and activating the first SIM at the secondary UE (Touati, activating SIM in fig. 4) in response to receiving the second indication (Sharma, switching SIM-1 and SIM-2 in fig. 5-14; for these reasons, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim, see MPEP 2143, KSR Exemplary Rationale F).
Claim 14
Jung, in view of Touati and Sharma, discloses the method of claim 9, further comprising receiving, from the primary UE, configuration information comprising the first SIM and the second SIM of the first DSDS configuration (Jung, see profile configuration in fig. 4, and download configuration information in 1402 in fig. 14A; Sharma, DSDS configuration for fig. 2-14; and thus, the combined prior art renders the claim obvious).
Claim 15
Jung, in view of Touati and Sharma, discloses the method of claim 9, further comprising receiving, from the primary UE, a second indication that the first SIM of the first DSDS configuration is a default SIM of the secondary UE (Jung, profile policy enabler 452 in fig. 4 and transmitting second profile download information 1234 in fig. 12B; Sharma, priority operations for the SIM in par. 0045; with these teachings, prioritization for SIM operation and enabling SIM profile could be the same as a default SIM, unless claim further recites what are required to be the default SIM; default SIM is intrinsic feature in a cellular mobile communication and see default SIM in Zhu et al. Pub. No.: US 2021/0200494 A1).
Claim 16
Jung, in view of Touati and Sharma, discloses the method of claim 9, wherein the primary UE and the secondary UE communicate via a Bluetooth® connection (Jung, Bluetooth in par. 0031 and short-range communication in 1206 in fig. 12A; accordingly, the combined prior art meets the claim requirement).
Claim 17
Jung, in view of Touati and Sharma, discloses the method of claim 9, wherein the first SIM and the second SIM are configured in a second DSDS configuration used by the secondary UE (Jung, see profile configuration in fig. 4, and download configuration information in 1402 in fig. 14A; Sharma, DSDS configuration for fig. 2-14; and thus, the combined prior art renders the claim obvious).
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claim 9 recites the limitation "a primary UE" twice in lines 3-4 of claim. There is insufficient antecedent basis for this limitation in the claim.
Contact Information
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN HTUN whose telephone number is (571)270-3190. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM.
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/SAN HTUN/
Primary Examiner, Art Unit 2643
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