DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 9,485,252; claims 1-24 of U.S. Patent No. 10,631,
160; and claims 1-25 of U.S. Patent No. 12,108,488. Although the conflicting claims are not identical, they are not patentably distinct from each other because independent claims 1, 9, 17, 25 of the present of application are broader in scope and thus encompass the subject matter already claimed in allowed claims 1, 9, 17 in respectively of US patent application 15/040,425 (Subject to be published as US Patent No: 9,485,252 on Nov. 1, 2016); claimed in allowed claims 1, 9, 17 in respectively of US patent application 15/283,491 (Subject to be published as US Patent No: 10,631,160 on Apr. 21, 2020); and claimed in allowed claims 1, 9, 17, 25 in respectively of US patent application 16/842801 (Subject to be published as US Patent No: 12,108,488 on Oct. 1, 2024).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
Claim(s) 1-2, 4-10, 12-18, 20-25 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li et al. (US Pub No. 2014/0073375).
As to claim 1, Li discloses a mobile station comprising: an application processor physically connected to a baseband processor (Fig. 2; items 202, 206, 204, application processor, baseband processor), wherein the physical connection facilitates secure transmission of commands to the application processor from a cellular modem application hosted by the baseband processor (See Fig. 2, and par [0057,0069, 0092] eSIM data is used in order to facilitate automatic switch-over between multiple eSIMs, a baseband processor and/or modem of the host radio device); and one or more memories storing computer-executable instructions that, when executed, configure a mobile application running on the application processor to (par [0069]), in response to receipt of one or more commands from the baseband processor (par [0069]), communicate with a virtual reprogrammable universal integrated circuit chip (eUICC) that is not physically or electrically connected to the baseband processor (par [0051, 0057, 0060-0061, 0069, 0085] disclosed the secure element includes a virtual or electronic entity such as e.g., a software application, hereafter referred to as an Embedded Universal Integrated Circuit Card (eUICC) wherein the secure element includes a virtual which is not physically or electrically connected to the baseband processor 206).
As to claim 2, 10, 18, Li further discloses the mobile station of claim 1, wherein the virtual eUICC is stored within a trusted execution environment (TEE) of the application processor (par [0085]).
As to claim 4, 12, Li further discloses the mobile station of claim 1, wherein the baseband processor is programmed to non-electrically attach to the virtual eUICC (par [0051, 0069]).
As to claim 5, 13, 20, Li further discloses the mobile station of claim 4, wherein non-electrical attachment comprises a transmission to the application processor of a command initiated by the baseband processor (par [0051, 0069]).
As to claim 6, 14, 21, Li further discloses the mobile station of claim 5, wherein a radio interface layer of the application processor is configured to interpret and forward the command to the virtual eUICC (par [0051-0053]).
As to claim 7, 15, 22, Li further discloses the mobile station of claim 1, wherein the virtual eUICC is configured to: indirectly receive requests based on the one or more commands transmitted from the baseband processor (par [0048, 0054]); and generate one or more responses to the indirectly received requests (par [0099] the eUICC (or the Advanced Subscriber Identity Toolkit) issues a "refresh" instruction to the baseband processor).
As to claim 8, 16, 24, Li further discloses the mobile station of claim 1, wherein the computer-executable instructions further configure the mobile application to, in response to receipt of one or more commands from the baseband processor (par [0051-0054]), communicate with one or more other virtual eUICCs that are not physically or electrically connected to the baseband processor (See par [0051-0057]).
As to claim 9, the claim is rejected for the same reasons as set forth in claim 1.
As to claim 17, the claim is rejected for the same reasons as set forth in claim 1.
As to claim 23, Li further discloses the mobile station of claim 17, wherein the virtual eUICC includes: means for indirectly receiving requests based on the one or more commands transmitted from the baseband processor (par [0051-0054]); and means for generating one or more responses to the indirectly received requests (par [0051-0054]).
As to claim 25, the claim is rejected for the same reasons as set forth in claim 1.
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.
Claim 3, 11, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US Pub No. 2014/0073375) in view of STEIN (US Pub No. 2015/0373530).
As to claim 3, 11, 19, Li further discloses the mobile station of claim 1, wherein the virtual eUICC is hosted by a device that is remote from the mobile station (par [0051] “the eUICC selects the desired eSIM(s), the UE can initiate an authentication procedure to obtain wireless network services from the eSIM's corresponding network operator”). However, Li does not show the eUICC that is not physically or electrically connected to the baseband processor; the mobile application running on the application processor communicates with the secure element in response to receipt of one or more commands from the base band processor. STEIN clearly shows the eUICC that is not physically or electrically connected to the baseband processor (par [0134, 0188; 0190, 0203, 0212] “disclosed print circuit board in conventional that the eUICC that is not physically or electrically connected to the baseband processor); the mobile application running on the application processor communicates with the secure element in response to receipt of one or more commands from the base band processor (par [0139, 0145, 0168, 0172, 0223, 0230, 0236, 0245, 0253] “applied the mobile application running on the application processor communicates with the secure element in response to receipt of one or more commands from the base band processor, for example: A software application that runs on the user's mobile device, SIM card or on the SIM virtualization hardware itself. The software application could also consist of software running on a microcontroller embedded in the CTS system, by a software application 82 is provided to execute programmed instructions for operating the mobile station 52”). Therefore, it would have been obvious to one of ordinary skill in the art having the invention was made to provide of STEIN to the system of Li in order to manage the antenna related function and a SIM card to accommodate a default SIM associated with the default communication network.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUOC HUU DOAN whose telephone number is (571)272-7920. The examiner can normally be reached on 8:00AM - 4:00PM.
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/PHUOC H DOAN/
Primary Examiner, Art Unit 2646
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