DETAILED ACTION
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in India on 7/3/2023. It is noted, however, that applicant has not filed a certified copy of the IN 202341044500 application as required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
In line 4 of [0011], “suspected” should be changed to “suspended”.
Appropriate correction is required.
Claim Objections
Claims 1, 5, 6, 13, and 16 are objected to because of the following informalities:
In line 5 of claim 1, “authenticate user's identity” should be changed to “authenticate the user's identity”.
In line 3 of claim 5, “secondary device set to expire” should be changed to “secondary device is set to expire”.
In line 2 of claim 6, “to controlling” should be changed to “to control”.
In line 5 of claim 13, “authenticating user's identity” should be changed to “authenticating the user's identity”.
In line 5 of claim 16, “secondary device set to expire” should be changed to “secondary device is set to expire”.
In line 6 of claim 16, “to controlling” should be changed to “to control”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 4, 6, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 4, 6, and 16: the meaning of the phrases “conditions for profiling eSIM” and “associated with the temporary eSIM profiling” are unclear. Is this the same thing as temporarily provisioning the eSIM profile on the secondary device? If so, the wording of the claim should be changed to clarify. If not, the wording of the claim should be changed to clarify the intended claim scope.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “receiving module”, “authentication module”, “suspension module”, “profile download module”, and “profile activation module” in claim 1 and “user interface module” in claim 4.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b/f)
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 4: claim limitations “receiving module”, “authentication module”, “suspension module”, “profile download module”, and “profile activation module” (in claim 1) and “user interface module” (in claim 4) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as indicated above. Similarly, However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the functions.
In particular, the specification describes these modules in elements 210-220 of Figure 2 and the corresponding descriptions in [0052]-[0058] and [0033]-[0042], for example. These paragraphs describe the function performed by these modules, but do not describe the structure required by 35 U.S.C. 112(f). That is, because the limitations “receiving module”, “authentication module”, “suspension module”, “profile download module”, “profile activation module”, and “user interface module” invoke 35 U.S.C. 112(f), the structure is limited to that described in the specification. However, because the specification does not provide sufficient structure for these modules, the scope of these claim limitations is indefinite.
Therefore, claims 1 and 4 are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 2-12 depend from claim 1 and/or claim 4 and thus include the above limitations and are also rejected under 35 U.S.C. 112(b) for reasons similar to those stated above.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 112(a/f)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor, at the time the application was filed, had possession of the claimed invention.
In particular, as noted above, claim limitations “receiving module”, “authentication module”, “suspension module”, “profile download module”, and “profile activation module” (in claim 1) and “user interface module” (in claim 4) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Further, as noted in the rejection under 35 U.S.C. 112(b), the specification describes the function of these modules, but does not provide the required structural support. Thus, in addition to being indefinite (because the scope of the claim is not clear as articulated in the 35 U.S.C. 112(b) rejection), the claim is similarly rejected for failing to comply with the written description requirement. That is, the original disclosure does not provide a written description of the structure of the limitations “receiving module”, “authentication module”, “suspension module”, “profile download module”, “profile activation module”, and “user interface module”. Therefore, claims 1 and 4 are rejected under 35 U.S.C. 112(a).
Claims 2-12 depend from claim 1 and/or claim 4 and thus include the above limitations and are also rejected under 35 U.S.C. 112(a) for reasons similar to those stated above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 9-17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2018/0191728) in view of Guru et al (US 11,146,944) in view of Orcutt et al (US 2024/0349035).
Regarding claim 1: Kim discloses a system for temporary remote provisioning of an electronic Subscriber Identity Module (eSIM) profile on a secondary device, the system comprising:
a receiving module to receive a request from a user to temporarily provision the eSIM profile on the secondary device (disclosed throughout; the device 202 receives a request 215 that requests a temporary provision of an eSIM profile on the secondary device (202); as indicated in [0081], this request is triggered based on a user submitting a request that triggers the generation of a trigger signal to trigger data sharing – “the trigger signal may be generated when the user enters a user ID and password and specifies a data usage amount to be shared through the application”; see also the variation in Figure 4, and described in [0110]-[0112], where the user inputs the request on an application running on target device 402);
an authentication module to authenticate user’s identity by verifying user credentials via an authentication server (discloses throughout; see steps 217-223, which perform authentication of the user via an authentication server (203));
a profile download module to download the eSIM profile, to the secondary device, from a subscription management server that is configured to manage eSIM profile provisioning (disclosed throughout; see step 227, for example, which downloads the eSIM profile to the secondary device); and
a profile activation module to activate the eSIM profile on the secondary device based on a predefined condition (disclosed throughout; see step 229 and 231, which describe the terminal installing and transmitting a conformation message, which activate the eSIM profile; the request specifies at least the “data usage amount” as indicated in [0081], [0083], and Figure 5, for example, which is a predefined condition).
Kim does not explicitly disclose the limitations of a suspension module to suspend the eSIM profile on a primary device upon successful authentication. However, Guru discloses a similar system which shares eSIM credentials between two mobile devices (see 1:41-43, for example). Further, as indicated in 1:53-61, for example, the eSIM is suspended by changing the state to disabled-transferred after the eSIM profile has been transferred to the second device. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to suspend the eSIM profile/credentials on the first device as part of the process of transferring the credentials to the second device. The rationale for doing so would have been to ensure that only one mobile device is enabled to use the particular eSIM profile at any one time as indicated by Guru in 5:24-26, for example.
Kim further does not disclose the limitation that the eSIM profile is activated for a specific interval. However, Orcutt discloses another example of sharing eSIM profiles between multiple devices (see the abstract and [0002]-[0003], for example). Further, as indicated in [0027]-[0028], Orcutt teaches limiting the amount of time that the second mobile device may use the eSIM profile. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim, modified above, to activate the eSIM profile on the second device for a specific interval of time as suggested by Orcutt. The rationale for doing so would have been to ensure that the second device uses the eSIM profile for a limited time that can be configured by the owner or primary user of the eSIM profile as suggested by Orcutt.
Regarding claim 13: Kim discloses a method for temporary remote provisioning of an electronic Subscriber Identity Module (eSIM) profile on a secondary device, the method comprising:
receiving a request from a user to temporarily provision the eSIM profile on the secondary device (disclosed throughout; the device 202 receives a request 215 that requests a temporary provision of an eSIM profile on the secondary device (202); as indicated in [0081], this request is triggered based on a user submitting a request that triggers the generation of a trigger signal to trigger data sharing – “the trigger signal may be generated when the user enters a user ID and password and specifies a data usage amount to be shared through the application”; see also the variation in Figure 4, and described in [0110]-[0112], where the user inputs the request on an application running on target device 402);
authenticating user’s identity by verifying user credentials via an authentication server (discloses throughout; see steps 217-223, which perform authentication of the user via an authentication server (203));
downloading the eSIM profile, to the secondary device, from a subscription management server that is configured to manage eSIM profile provisioning (disclosed throughout; see step 227, for example, which downloads the eSIM profile to the secondary device); and
activating the eSIM profile on the secondary device based on a predefined condition (disclosed throughout; see step 229 and 231, which describe the terminal installing and transmitting a conformation message, which activate the eSIM profile; the request specifies at least the “data usage amount” as indicated in [0081], [0083], and Figure 5, for example, which is a predefined condition).
Kim does not explicitly disclose the limitations of suspending the eSIM profile on a primary device upon successful authentication. However, Guru discloses a similar system which shares eSIM credentials between two mobile devices (see 1:41-43, for example). Further, as indicated in 1:53-61, for example, the eSIM is suspended by changing the state to disabled-transferred after the eSIM profile has been transferred to the second device. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to suspend the eSIM profile/credentials on the first device as part of the process of transferring the credentials to the second device. The rationale for doing so would have been to ensure that only one mobile device is enabled to use the particular eSIM profile at any one time as indicated by Guru in 5:24-26, for example.
Kim further does not disclose the limitation that the eSIM profile is activated for a specific interval. However, Orcutt discloses another example of sharing eSIM profiles between multiple devices (see the abstract and [0002]-[0003], for example). Further, as indicated in [0027]-[0028], Orcutt teaches limiting the amount of time that the second mobile device may use the eSIM profile. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim, modified above, to activate the eSIM profile on the second device for a specific interval of time as suggested by Orcutt. The rationale for doing so would have been to ensure that the second device uses the eSIM profile for a limited time that can be configured by the owner or primary user of the eSIM profile as suggested by Orcutt.
Regarding claim 2: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim does not explicitly disclose the limitations of claim 2 that the profile activation module is further configured to deactivate and delete the eSIM profile from the secondary device and reactivate the eSIM profile on the primary device upon expiration of the specific interval. However, as indicated in [0106], Orcutt discloses that the eSIM profile can be “reclaimed” if it has not been used for the specific interval (threshold period of time). This reclaiming of the eSIM profile includes deleting the eSIM profile from the secondary device and stored in the eSIM database to be reloaded at a later time. Thus, the eSIM profile is reactivated (for future reloading to a secondary device) on the primary device upon expiration of the specific interval. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to perform the above steps in Orcutt to enable the eSIM profile to be used at a later time after the expiration of the threshold period of time/specific interval. The rationale for doing so would have been to ensure that the services allocated to the eSIM profile are not wasted.
Regarding claim 3: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitations of claim 3 that the predefined condition includes at least one of: a data consumption limit, a number of incoming/outgoing calls, and a user-specified time limit (disclosed throughout; see [0081] and [0083], which disclose that the predefined condition is a data consumption limit (the “data usage amount to be shared”, which is also described as a “maximum data sharing amount”)).
Regarding claim 4: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitation of claim 4 of a user interface module to facilitate the user, on the primary device, to specify conditions for profiling eSIM on the secondary device (disclosed throughout; see the “user interface (UI) window 500” of Figure 5 and described in [0082]-[0085], for example, which facilitates the user to specify conditions for profiling the eSIM (such as indicating the sharing target device and the data sharing amount); as indicated in [0081], the user interface may be installed on the primary device (electronic device 201)).
Regarding claim 5: Kim, modified, discloses the limitations of parent claim 4 as indicated above. Kim further discloses the limitation of claim 5 that the user interface module notifies the user, on the primary device, when the predefined condition for the temporary eSIM profile provisioning on the secondary device set to expire (disclosed throughout; see Figure 8 as well as in [0128], which disclose that a window (user interface) of a dedicated application can be configured to notify the user when the condition (data usage) is set to expire (when it exceeds a threshold such as 1GB or 100MB).
Regarding claim 6: Kim, modified, discloses the limitations of parent claim 4 as indicated above. Kim further discloses the limitation of claim 6 of the user interface module facilitates the user, on the primary device, to controlling actions associated with the temporary eSIM profiling on the secondary device, wherein the actions include at least one of: enabling SMS, enabling calls, enabling data services, receiving one-time passwords for financial transactions, accessing office resources (disclosed throughout; see the “user interface (UI) window 500” of Figure 5 and described in [0082]-[0085], for example, which facilitates the user to specify conditions for profiling the eSIM (such as indicating the sharing target device and the data sharing amount); further, the user interface controls actions (such as enabling data services) by selecting the particular secondary device to which the data usage amount applies (see 505 in Figure 5)).
Regarding claim 7: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitations of claim 7 that the authentication module prompts the user, on the secondary device, for at least one of: additional credentials and biometric verification before provisioning the eSIM profile (disclosed throughout; see Figure 5, for example, which indicates that the user interface (which may run on the primary device and/or the secondary device) prompts the user for additional credentials (such as a user ID and password).
Regarding claim 9: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim does not explicitly disclose the limitations of claim 9 that the primary device and the secondary device communicate via a secure channel to ensure data integrity during the eSIM profile transfer. However, Guru discloses that the devices communicate via a secure channel to protect the eSIM profile throughout. For example, see 6:47-65 and 10:45-60, which discloses that the channel used for transferring credentials between the two devices is secure (by at least encryption and other security measures indicated in the above passages. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to use a secure channel between the primary and secondary devices using some of the means suggested by Guru. The rationale for doing so would have been to deter “a rogue second device having an eSIM sharing application attempting to hijack the eSIM credentials of the first device without consent of the authorized subscriber” as suggested by Guru in 4:26-29, for example.
Regarding claim 10: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitation of claim 10 that the eSIM profile includes at least one of: operator credentials, subscriber data, and SIM-based applications (disclosed throughout; see [0072], for example, which discloses at least that the eSIM profile includes subscriber data).
Regarding claim 11: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitations of claim 11 that the authentication server verifies user credentials through one or more verification techniques including at least one of: password, PIN, biometric identification, and security questions (disclosed throughout; see as least the user ID and password in Figure 5, for example).
Regarding claim 12: Kim, modified, discloses the limitations of parent claim 1 as indicated above. Kim further discloses the limitations of claim 12 that the secondary device is selected from a group consisting of a mobile phone, tablet, car infotainment system, and any connected device with an eSIM slot (disclosed throughout; see [0049], for example, which discloses that the sharing target device may be a mobile phone a tablet, etc.).
Regarding claim 14: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim does not explicitly disclose the limitations of claim 14 that deactivating and deleting the eSIM profile from the secondary device and reactivate the eSIM profile on the primary device upon expiration of the specific interval. However, as indicated in [0106], Orcutt discloses that the eSIM profile can be “reclaimed” if it has not been used for the specific interval (threshold period of time). This reclaiming of the eSIM profile includes deleting the eSIM profile from the secondary device and stored in the eSIM database to be reloaded at a later time. Thus, the eSIM profile is reactivated (for future reloading to a secondary device) on the primary device upon expiration of the specific interval. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to perform the above steps in Orcutt to enable the eSIM profile to be used at a later time after the expiration of the threshold period of time/specific interval. The rationale for doing so would have been to ensure that the services allocated to the eSIM profile are not wasted.
Regarding claim 15: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim further discloses the limitations of claim 15 that the predefined condition includes at least one of: a data consumption limit, a number of incoming/outgoing calls, and a user-specified time limit (disclosed throughout; see [0081] and [0083], which disclose that the predefined condition is a data consumption limit (the “data usage amount to be shared”, which is also described as a “maximum data sharing amount”)); and wherein the eSIM profile includes at least one of: operator credentials, subscriber data, and SIM-based applications (disclosed throughout; see [0072], for example, which discloses at least that the eSIM profile includes subscriber data).
Kim does not explicitly disclose the limitations of claim 15 that the primary device and the secondary device communicate via a secure channel to ensure data integrity during the eSIM profile transfer. However, Guru discloses that the devices communicate via a secure channel to protect the eSIM profile throughout. For example, see 6:47-65 and 10:45-60, which discloses that the channel used for transferring credentials between the two devices is secure (by at least encryption and other security measures indicated in the above passages. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim to use a secure channel between the primary and secondary devices using some of the means suggested by Guru. The rationale for doing so would have been to deter “a rogue second device having an eSIM sharing application attempting to hijack the eSIM credentials of the first device without consent of the authorized subscriber” as suggested by Guru in 4:26-29, for example.
Regarding claim 16: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim further discloses the limitation of claim of facilitate the user, on the primary device, to specify conditions for profiling eSIM on the secondary device (disclosed throughout; see the “user interface (UI) window 500” of Figure 5 and described in [0082]-[0085], for example, which facilitates the user to specify conditions for profiling the eSIM (such as indicating the sharing target device and the data sharing amount); as indicated in [0081], the user interface may be installed on the primary device (electronic device 201)); notifying the user, on the primary device, when the predefined condition for the temporary eSIM profile provisioning on the secondary device set to expire (disclosed throughout; see Figure 8 as well as in [0128], which disclose that a window (user interface) of a dedicated application can be configured to notify the user when the condition (data usage) is set to expire (when it exceeds a threshold such as 1GB or 100MB); and facilitating the user, on the primary device, to controlling actions associated with the temporary eSIM profiling on the secondary device, wherein the actions include at least one of: enabling SMS, enabling calls, enabling data services, receiving one-time passwords for financial transactions, accessing office resources (disclosed throughout; see the “user interface (UI) window 500” of Figure 5 and described in [0082]-[0085], for example, which facilitates the user to specify conditions for profiling the eSIM (such as indicating the sharing target device and the data sharing amount); further, the user interface controls actions (such as enabling data services) by selecting the particular secondary device to which the data usage amount applies (see 505 in Figure 5)).
Regarding claim 17: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim further discloses the limitations of claim 17 that prompting the user, on the secondary device, for at least one of: additional credentials and biometric verification before provisioning the eSIM profile (disclosed throughout; see Figure 5, for example, which indicates that the user interface (which may run on the primary device and/or the secondary device) prompts the user for additional credentials (such as a user ID and password).
Regarding claim 19: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim further discloses the limitations of claim 13 that the authentication server verifies user credentials through one or more verification techniques including at least one of: password, PIN, biometric identification, and security questions (disclosed throughout; see as least the user ID and password in Figure 5, for example).
Regarding claim 20: Kim, modified, discloses the limitations of parent claim 13 as indicated above. Kim further discloses the limitations of claim 20 that the secondary device is selected from a group consisting of a mobile phone, tablet, car infotainment system, and any connected device with an eSIM slot (disclosed throughout; see [0049], for example, which discloses that the sharing target device may be a mobile phone a tablet, etc.).
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2018/0191728) in view of Guru et al (US 11,146,944) in view of Orcutt et al (US 2024/0349035) in view of Mueller et al (US 2023/0084955).
Regarding claim 8: Kim discloses the limitations of parent claim 1 as indicated above. Kim does not explicitly disclose the limitations of claim 8 that the profile activation module suspends the eSIM profile of a second user on the secondary device if the secondary device has limited eSIM profile slots available. However, Mueller discloses a similar system that utilizes a plurality of eSIM profiles to be shared with multiple devices. Further, as indicated in [0057], the number of profiles is limited (by a maximum number of communication profiles), and when the number of profiles equals this maximum, one of the profiles is disabled or deactivated (suspended) to enable the new profile to be used. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim, modified, to limit the number of available eSIM profile slots and to further suspend/disable/deactivate one of the profiles when the limit has been reached and a new profile is to be used, as disclosed by Mueller. The rationale for doing so would have been to maximize the usage of the available profile slots as suggested by Mueller.
Regarding claim 18: Kim discloses the limitations of parent claim 13 as indicated above. Kim does not explicitly disclose the limitations of claim 18 of suspending the eSIM profile of a second user on the secondary device if the secondary device has limited eSIM profile slots available. However, Mueller discloses a similar system that utilizes a plurality of eSIM profiles to be shared with multiple devices. Further, as indicated in [0057], the number of profiles is limited (by a maximum number of communication profiles), and when the number of profiles equals this maximum, one of the profiles is disabled or deactivated (suspended) to enable the new profile to be used. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kim, modified, to limit the number of available eSIM profile slots and to further suspend/disable/deactivate one of the profiles when the limit has been reached and a new profile is to be used, as disclosed by Mueller. The rationale for doing so would have been to maximize the usage of the available profile slots as suggested by Mueller.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jin et al (US 2023/0081421) discloses a method for direct ESIM transfer between wireless devices.
Lim et al (US 2022/0070655) discloses a method for recovering a profile in case of a device change failure.
Park et al (US 2021/0105609) discloses a method for reinstalling a SIM profile in a wireless communication system.
Chaugule et al (US 2021/0076195) discloses a method for efficient transfer of multiple cellular service credentials.
Karimli et al (US 10,194,313) discloses a method for eSIM profile provisioning between proximate devices.
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Robert C. Scheibel
Primary Examiner
Art Unit 2467
/Robert C Scheibel/Primary Examiner, Art Unit 2467 June 8, 2026
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