9DETAILED 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 9, 10, and 12 are rejected under 35 U.S.C. 102 as being anticipated by Yang et al. (US 2022/0399993 A1).
Regarding claims 1 and 9, Yang discloses a method for electronic subscriber identity module (eSIM) transfer from a source wireless device to a target wireless device, and a processor of a source wireless device, the method comprising:
by a processor of the source wireless device (processor(s)106, Fig. 3):
retrieving, from local storage at the source wireless device ([0024], eSIM data and/or encrypted sensitive eSIM data are stored in a security domain associated with the eUICC OS 206) or from remote storage at a network-accessible server, one or more encrypted subscription service files corresponding to one or more applets of the eSIM to be transferred from an embedded universal integrated circuit card (eUICC) of the source wireless device to an eUICC of the target wireless device (Fig.4, [0004] new BPP can then be transferred from the eUICC of the source device to the eUICC of the target device for decryption and installation, [0024], [0033],from the storage element and previously extracted from a bound profile package (BPP) 602 (or 702), a) an encrypted symmetric key (K.sub.s) 606 encrypted with a first key encryption key (KEK1), and b) K.sub.s encrypted eSIM data 608 (or 706));
generating an eSIM export package that includes the eSIM ([0030], actions performed by the eUICC 108-1 of the source device 102-1 further include generating the eSIM profile 710 (or 810) to include in the new BPP 714 (or 814) based at least in part on an installed eSIM profile 708 (or 808) on the eUICC 108-1 of the source device 102-1…) and at least one decrypted version of the one or more encrypted subscription service files ([0028], The eSIM profile 704 (along with sensitive data extracted from a decrypted version of the K.sub.s encrypted eSIM algorithm data 706) can be installed on the source device eUICC 108-1 within a dedicated security domain for the eSIM 208 ); and
sending the eSIM export package to the target wireless device (Fig.4-5, [0025] At 518, the source device eUICC 108-1 sends the new eSIM BPP to the target device eUICC 108-2 and [0028], the new BPP 814 can be sent by the source device eUICC 108-1 to the target device eUICC 108-2 to transfer the eSIM 208 for subsequent installation on the target device eUICC 108-2).
Regarding claims 2 and 10, Yang further discloses wherein generation of the eSIM export package comprises: sending, to the eUICC of the source wireless device, the one or more encrypted subscription service files ([0026, A BPP 602, received previously by the source device eUICC 108-1 from a provisioning server 116 and stored by the source device eUICC 108-1, includes a BPP header 604, which includes information from which the source device eUICC can derive a first key encryption key KEK1, and a symmetric key K.sub.s 606 encrypted with KEK1); and
receiving, from the eUICC of the source wireless device, the eSIM export package ([0026] For transfer (export) of the eSIM 208 to another mobile wireless device 102, e.g., to a target device eUICC 108-2, the source device eUICC 108-1 can establish an eSIM transfer session with the target device eUICC 108-2 and exchange ephemeral keys, e.g., ePK.sub.source and ePK.sub.target)
Regarding claims 4 and 12, Yang further discloses receiving, from the eUICC of the source wireless device in association with a procedure installing the eSIM on the eUICC of the source wireless device, the one or more subscription service files, and
storing the one or more encrypted subscription service files on the local storage at the source wireless device or the remote storage at the network-accessible server ([0026] A BPP 602, received previously by the source device eUICC 108-1 from a provisioning server 116 and stored by the source device eUICC 108-1, includes a BPP header 604, which includes information from which the source device eUICC 108-1 can derive a first key encryption key KEK1, and a symmetric key K.sub.s 606 encrypted with KEK1. Upon installation of the eSIM 208 obtained from the BPP 602, the source device eUICC 108-1 can store the first key encryption key KEK1 securely within a dedicated security domain of the source device eUICC 108-1, e.g., within a profile issuer security domain (ISD-P) associated with the installed eSIM 208)
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.
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.
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. as applied to claims 1 and 9 above, and further in view of Jiang (US 2018/0146361 A1).
Regarding claims 3 and 11 Yang fails to explicitly teach wherein at least one of the encrypted subscription service files comprise an encrypted Customized Applications for Mobile network Enhanced Logic (CAMEL) Application Part (CAP) file.
In an analogous field of endeavor, Jiang discloses a method for facilitating local data services in which a cloudSIM hub converts one or more signaling parameters of signaling associated with a Home operator’s IMSI to one or more signaling parameters of the signaling associated with a user’s device’s IMSI and wherein the signaling parameters can be either MAP signaling, call signaling, subscriber’s MSDISDN, CAMEL/SIP/TCAP transaction, data sessions and data traffic ([0041]
Jiang further discloses that the subscription data is fully managed by the cloudSIM applet and any OTA downloads of additional IMSIs are directed to this applet. These enhancements ensure the CloudSIM Applet can be ported to any SIM card compliant to Java Card standards from any SIM card manufacturer supplier with minimum testing effort (see [0147])
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Jiang’s teaching of being to port any Java Card compliant sim cards using CAMEL protocol in the system of Yang in order to ensure the capability of allowing the transferred eSIM to hanbdle a variety of operator services and customization, including those enabled by CAMEL logic for supporting mobile network services.
Claims 5-7 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al as applied to claims 1 and 9 above, and further in view of Park et al. (US 2016/0142906 A1).
Regarding claims 5-7 and 13-15, Yang teaches receiving from the eUICC of the source wireless device one or more encrypted subscription service files and retrieval of one or more encrypted subscription service files from the local storage or from the remote storage ([0025] At 502/520, the source device eUICC 108-1 or the target device eUICC 108-2 initiates an eSIM transfer session for secure transfer of an eSIM 208 (or multiple eSIMs 208) from the source device eUICC 108-1 to the target device eUICC 108-2. At 504, the source device eUICC 108-1 derives an ephemeral key pair (ePK.sub.source, eSK.sub.source) to use for secure transfer of the eSIM(s) 208 during the eSIM transfer session. Similarly, at 524, the target device eUICC 108-2 derives an ephemeral key pair (ePK.sub.target, eSK.sub.target) to use for secure transfer of the eSIM(s) 208 during the eSIM transfer session. At 506, the source device eUICC 108-1 provides the ephemeral public key ePK.sub.source to the target device eUICC 108-2, while at 526, the target device eUICC 108-2 provides the ephemeral public key ePK.sub.target to the source device eUICC 108-1).
However, Yang fails to explicitly disclose wherein the encrypted subscription service files are organized by associated application identifier(AID) values, obtaining from the eUICC of the source wireless device, an array of AID values corresponding to the one or more applets associated with the eSIM, and wherein retrieval of the one or more encrypted subscription service files from the local storage or the remote storage is based on at least in part on an array of AID values.
In an analogous field of endeavor Park discloses a method for profile installation for receiving service of a mobile communication provider in a communication system in which a server manages an encrypted profile which can be transferred to a UE using the UE [0013]-[0014]. According to Park, a eUICC can extract or retrieve encrypted profile packages from the text of a message using AID values or TAR values and transmit the encrypted Profile Package command to a Security Domain, a Profile Domain, or an Application corresponding to the AID value or TAR value, which can be decoded and used to install a profile on the UE ([0083], [0175] and [0192]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Park’s teaching of using AID values for decoding and installing profiles using decoded Profile Packages with Hampali’s E-SIM profile transfer method in order to ensure the retrieval and installation of the appropriate profile data for effective and enhanced communications.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al as applied to claims 1 and 9 above, and further in view of Adams et al. (US 2014/0031024 A1).
Regarding claims 8 and 16 Yang fails to explicitly teach saving personalized applet data associated with each applet identified by a corresponding AID value for the eSIM, and transferring the personalized applet data to the eUICC of the target wireless device for personalizing one or mor e applets of the eSIM transferred to the target wireless device.
In a similar field of endeavor Xie discloses a system for a service provider to personalize and install applets on a secure element (see abstract). Xie discloses the capability of personalizing an applet related to an application installed on a mobile device [0024] and that the applets can be pre-installed or downloaded and installed and personalized [00057], and that a notification of the status of a personalized applet provisioning may include Application ID [0089]-0098].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate Xie’s method of personalizing applets into Yang’s system in order to provide customized and secure services to users.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hampali (US 2024/0422529 A1) in view of Park et al. (US 2016/0142906 A1).
Regarding claim 17, Hampali discloses a method for managing one or more subscription service files corresponding to one or more applets of an electronic subscriber identity module (eSIM) to be transferred from a source wireless device to a target wireless device ([0007] method for transferring an embedded Subscriber Identity Module (e-SIM) from first communication device to a second communication device):
by an applet asset server (server):
receiving, from the source wireless device, a first message requesting the one or more subscription service files corresponding to the one or more applets of the eSIM (Fig. 4, step 402, [0051], user device currently being used by the user may initiate, based, for example, on a user input, an eSIM transfer request by sending EID of a new user device to the server); and
sending, to the source wireless device, a second message that includes the one or more subscription service files ([steps 404-406, [0052]-[0053], server updating e-SIM profile and user having to wait for a short duration of time to receive notification for the installation of the e-SIM at the second communication device).
Hampali fails to explicitly teach wherein the first message include one or more application identifier (AID) values corresponding to the one or more applets of the eSIM.
In an analogous field of endeavor Park discloses a method for profile installation for receiving service of a mobile communication provider in a communication system in which a server manages an encrypted profile which can be transferred to a UE using the UE [0013]-[0014]. According to Park, a eUICC can extract encrypted profile packages from the text of a message using AID value or a TAR value and transmit the encrypted Profile Package command to a Security Domain, a Profile Domain, or an Application corresponding to the AID value or TAR value, which can be decoded and used to install a profile on the UE ([0083], [0175] and [0192])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate Park’s teaching of using AID values for decoding and installing profiles using decoded Profile Packages with Hampali’s E-SIM profile transfer method in order to ensure the installation of the appropriate profiles for effective communication.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hampali et al. and Park et al as applied to claim 17 above, and further in view of Jiang (US 2018/0146361 A1).
Regarding claim 18, Hampali as modified by Park fail to explicitly teach wherein at least one of the encrypted subscription service files comprise an encrypted Customized Applications for Mobile network Enhanced Logic (CAMEL) Application Part (CAP) file.
In an analogous field of endeavor, Jiang discloses a method for facilitating local data services in which a cloudSIM hub converts one or more signaling parameters of signaling associated with a Home operator’s IMSI to one or more signaling parameters of the signaling associated with a user’s device’s IMSI and wherein the signaling parameters can be either MAP signaling, call signaling, subscriber’s MSDISDN, CAMEL/SIP/TCAP transaction, data sessions and data traffic ([0041].
Jiang further discloses that the subscription data is fully managed by the cloudSIM applet and any OTA downloads of additional IMSIs are directed to this applet. These enhancements ensure the CloudSIM Applet can be ported to any SIM card compliant to Java Card standards from any SIM card manufacturer supplier with minimum testing effort (see [0147]).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Jiang’s teaching of being to port any Java Card compliant sim cards using CAMEL protocol in the system of Hampali and Park in order to ensure the capability of allowing the transferred eSIM to hanbdle a variety of operator services and customization, including those enabled by CAMEL logic for supporting mobile network services.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hampali (US 2024/0422529 A1) and Park et al. (US 2016/0142906 A1) as applied to claim 17 above, and further in view of Yang et al. (US 2021/0314148 A1).
Regarding claims 19 and 20 Hampali as modified by Park fails to explicitly teach wherein the one or more subscription service files includes a subscription service file that corresponds to a version or a newer version of an applet of the eSIM installed with the eSIM on an embedded universal integrated circuit card (eUICC) of the source wireless device.
In a similar of endeavor, Yang discloses wherein the one or more subscription service files includes a subscription service file that corresponds to a version ([0028] The eSIM profile 704 (along with sensitive data extracted from a decrypted version of the K.sub.s encrypted eSIM algorithm data 706) can be installed on the source device eUICC 108-1 within a dedicated security domain for the eSIM 208, e.g., within an ISD-P, while the K.sub.s encrypted eSIM algorithm data 706 can be stored at the source device eUICC 108-1 (e.g., inside or outside the ISD-P containing the installed eSIM 208, e.g., in a root issuer security domain ISD-R) or in some embodiments on a memory of the mobile wireless device 102 external to the source device eUICC 108-1), or a newer version of an applet of the eSIM installed with the eSIM on an embedded universal integrated circuit card (eUICC) of the source wireless device ([0028] In some embodiments, the installed eSIM profile 708 can be updated, e.g., based on MNO OTA updates and/or user customizations, to produce an updated installed eSIM profile 808. In some embodiments, the K.sub.s encrypted eSIM algorithm data 706 can be updated (within a secure protected environment of the source device eUICC 108-1, such as in the ISD-P) and re-encrypted with K.sub.s and stored as K.sub.s encrypted updated algorithm data 806 (which can be stored inside or outside the ISD-P). Updating of the eSIM profile and the eSIM algorithm data can occur independently, e.g., one or both may be updated prior to re-wrapping for transfer of the eSIM 208 to the target device eUICC 108-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Yang’s use of version and updating of eSIM profiles into the system of Hampali as modified by Park in order ensure security, compatibility of transferred files or applications.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
von Behren et al. (US 8,646,059 B1) discloses a wallet application for interacting with a secure element application for a contactless payment device by configuring a card applet from a list of registered list of card applets having application identifiers (AIDs).
Khan et al. (US 2017/0003954 A1) discloses an electronic device that automatically installs and personalizes updates to an applet on a secure element in the electronic device.
Nitsch et al. (US 2024/0365106 A1) discloses a method for generating and downloading profiles to a eUICC hosted in a device.
Regnault et al. EP (4394590 A1) discloses a method for generating an unlinked program code to be transferred from a source device to a target device
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/CHARLES N APPIAH/Supervisory Patent Examiner, Art Unit 2641
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