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 .
Information Disclosure Statement
Applicant has submitted large amount of Information Disclosure Statements and/or huge amount of references and/or reference(s) which are very hefty. Where applicant points the Examiner to large reference or references without citing a specific portion or page, the Examiner will not pour over the documents to extract the relevant information, Ernst Haas Studio, Inc. v. palm Press, Inc. 164 F.3rd 110, 112 (2d Cir. 1999), Winer International Royalty Corp. v. Wang, 202 F3d 1340, 1351 (Fed. Cir. 2000). It is not true, if applicant presents an overload of irrelevant or non-probative references, somehow the irrelevancies will add up to relevant evidence, DeSilva v. DiLeonardi, 181 F.3d 865, 867. Information Disclosure Statements must make all relevant information accessible to the Examiner, rather ask him to play archaeologist with the references, Shiokawa v. Maienfisch, 56 USPQ2d 1406, 1413 and LeVeen v. Edwards 57 USPQ2d 1406, 1413. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). With this in mind, the Information Disclosure Statement has been considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
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.
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 limitation(s) 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 limitation(s) is/are:
“Module” in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) 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 limitation(s) recite(s) 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 Objections
Claims 10 and 20 is objected to because of the following informalities:
All abbreviations, symbols, acronyms, functional designations, sigla, letter combinations, code names, initialisms, nicknames, mnemonic devices, project names, alphabetical contractions and general slang must be positively defined and identified in the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 6-9, 12-16, 18, 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) receiving and transmitting information or data and also what the information or data is. This judicial exception is not integrated into a practical application because the method and apparatus do nothing with the data or information other than transmitting or receiving data or information which can be done by a person with a pencil and pen. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.
Claim Rejections - 35 USC § 112
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 1-5, 9, 15, 19 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.
The term “completely ready” in claims 1, 9, 15, 19 is a relative term which renders the claim indefinite. The term “completely ready” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What the difference from being just ready to completely ready, can one be a just a little bit ready? Also, what is being ready for?
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.
Claim(s) 1, 2, 5-9, 12-14, 16-19, are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2016/0301529 (Park, et al).
Park, et al discloses an electronic device (figure 12) comprising an embedded universal integrated circuit card (eUICC) (¶7, 14, 17, etc.). Memory storing one or more computer programs(¶320, claims 21, 22) and one or more processors (¶309, 315, 316, etc.) communicatively coupled to the eUICC and the memory. The one or more computer programs (¶320, claims 21, 22) include computer-executable instructions that, when executed by the one or more processors (¶309, 315, 316, etc.) individually or collectively, cause the electronic device to base on identifying at least one user input causing transfer of a first profile stored in the eUICC to an external electronic device transmit a first message requesting the transfer of the first profile to the external electronic device (figure 8, ¶185, 192, 226, etc.). Based on receiving a second message requesting deletion of the first profile corresponding to the first message, delete the first profile (Figure 8, #828, ¶238, 240, 265, etc.). Transmit a third message indicating the deletion of the first profile to a subscription manager data preparation plus (SM-DP+) server (¶265-267, 279, 280, etc.). Receive, from an entitlement server, a fourth message indicating that the first profile is “completely ready” in the SM-DP+ server receiving the third message (¶49, 205, 278, etc.). Transmit a fifth message requesting profile download information to the entitlement server, based on the fourth message (Abstract, 2, 7, 10, etc.). Receive a sixth message including the download information corresponding to the fifth message from the entitlement server (¶15, 18-23, 44, 45, etc.) and provide the download information identified based on the sixth message (¶44, 45, 53, 55, etc,, figures 2, 3A, 3, 4, 6A, 6B).
Regarding claim 2, a display module (figure 8, ¶129, 184-185, 237, 238, etc.) and the one or more computer programs further include computer-executable instructions that, when executed by the one or more processors individually or collectively, cause the electronic device to control the display module to display a quick response (QR) code for obtaining the download information, as at least part of providing the download information (¶110, 11, 129, 184, etc.)
Regarding claim 5, providing information indicating that another communication connection is required, based on the deletion of the first profile, note ¶108.
Regarding claim 6, Park, et al shows a method for operating a server (figure 3A-3D, 6A-6B, #307,309,345, 349,610). The method comprising receiving a first message requesting a new profile with a specific integrated circuit card identification (ICCID) from an entitlement server (#231. ¶91, 231, 234-235). Transmitting a second message requesting the new profile with the specific ICCID to a subscription manager data preparation plus (SM-DP+) server, based on reception of the first message (¶135, 281, 282, etc.). After transmitting the second message, receiving a third message indicating that the specific ICCID is in use from the SM-DP+ server (¶135, 281, 282) and transmitting a fourth message requesting deletion of the profile with the specific ICCID to the entitlement server, based on reception of the third message (figure 7, ¶235, 238, 240).
Regarding claim 7, identifying that transfer of the profile with the specific ICCID is requested, based on the first message (Abstract, ¶18, 19, 22, etc) and based on identifying that the transfer of the profile with the specific ICCID is requested, identifying that the deletion of the profile with the specific ICCID is requested, based on the third message (figure 2, #260, 265, ¶23, 75, 9, 234, 235, etc.).
Regarding claim 8. after transmitting the fourth message, receiving a fifth message indicating the deletion of the profile with the specific ICCID from the SM-DP+ server; and transmitting a sixth message requesting the profile with the specific ICCID to the SM-DP+ server, based on reception of the fifth message (figure 7, ¶235, 238).
Regarding claim 9, after transmitting the sixth message, receiving a seventh message indicating that the profile with the specific ICCID is completely ready from the SM-DP+ server; and transmitting an eighth message including profile information about the profile with the specific ICCID to the entitlement server, based on reception of the seventh message (¶205, 278).
Regarding claim 12, Park, et al reveals a method for operating an entitlement server (figures 3A-3D, 6A-6B, #307, 309, 345, 349, 610), The method comprising receiving a first message requesting transfer of a profile from an electronic device (Abstract, ¶18-19, 22, 23, etc.). Transmitting a second message requesting a new profile with a specific integrated circuit card identification (ICCID) to a business support system (BSS)/operations support system (OSS), based on the first message (figure 2, 3, #210, 305, 231, ¶ 75, 135, 185, 231, etc.). Receiving a third message indicating that deletion of the profile with the specific ICCID is requested (figure 7, #249, 265, 267, etc.) and transmitting a fourth message indicating that the deletion of the profile with the specific ICCID is requested to the electronic device, based on reception of the third message (¶279).
Regarding claim 13, note figure 7, #710, 761, ¶231, 233-235, 239, etc.
Regarding claim 14, note ¶49.
Regarding claim 16, Park, et al unveils one or more non-transitory computer-readable storage media storing computer-executable instructions that, when executed by one or more processors individually or collectively, cause a server to perform operations (claims 21 and 22). The operations comprising receiving a first message requesting a new profile with a specific integrated circuit card identification (ICCID) from an entitlement server (figures 2 and 3, #20, 305, ¶75, 135, 185, 231, etc. ). Transmitting a second message requesting the new profile with the specific ICCID to a subscription manager data preparation plus (SM-DP+) server, based on reception of the first message (¶49). After transmitting the second message, receiving a third message indicating that the specific ICCID is in use from the SM-DP+ server (¶49) and transmitting a fourth message requesting deletion of the profile with the specific ICCID to the entitlement server, based on reception of the third message (¶208, 235. 238. 240, etc.).
Regarding claim 17, identifying that transfer of the profile with the specific ICCID is requested, based on the first message (¶18-19, 22-23, 75, etc.) and based on identifying that the transfer of the profile with the specific ICCID is requested, identifying that the deletion of the profile with the specific ICCID is requested, based on the third message (¶91, 101, 134-135, etc.).
Regarding claim 18, after transmitting the fourth message, receiving a fifth message indicating the deletion of the profile with the specific ICCID from the SM-DP+ server (¶49) and transmitting a sixth message requesting the profile with the specific ICCID to the SM-DP+ server, based on reception of the fifth message (¶28, 240, 265, etc.).
Regarding claim 19, note ¶135.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
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) 3, 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2016/0301529 (Park, et al) in view of United States Patent Application Publication 2020/0367043 (Ananad, et al).
Park, et al discloses all subject matter, note the above paragraphs except for receiving the second message based on a java script (JS) callback message, requesting the deletion of the first profile.
Ananad, et al teaches the use of receiving the second message based on a java script (JS) callback message, requesting the deletion of the first profile for the purpose of roaming subscription, note ¶56-58. Hence, it 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 to incorporate the use of receiving the second message based on a java script (JS) callback message, requesting the deletion of the first profile for the purpose of roaming subscription, as taught by Ananad, et al, in the electronic device of Park, et al in order to have roaming subscription is provided over an existing MSISDN of the SIM f the home MNO, when the shared number service is selected by the user.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 11 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not show or make obvious the claimed fourth message requesting the deletion of the profile with the specific ICCID is based on an 200 OK message, and the fourth message includes information of SubscriptionResult=6-DELETE PROFILE IN USE. In combination with a method for operating a server. The method comprising receiving a first message requesting a new profile with a specific integrated circuit card identification (ICCID) from an entitlement server. Transmitting a second message requesting the new profile with the specific ICCID to a subscription manager data preparation plus (SM-DP+) server, based on reception of the first message. After transmitting the second message, receiving a third message indicating that the specific ICCID is in use from the SM-DP+ server and transmitting a fourth message requesting deletion of the profile with the specific ICCID to the entitlement server, based on reception of the third message.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
Prosecution Insights