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 .
Examiner Notes
All claims were reviewed for compliance with 35 USC § 101 (as set forth in MPEP 2106) and it was determined that the claims are statutory.
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 3-10 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.
Claim 3 recites the limitation "the integrated circuit package" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,089,049. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘049 patent include all the limitations of the instant claims.
Instant Application
U.S. Patent No. 12,089,049
integrated circuit memory cells formed on one or more integrated circuit dies, including a first memory region of memory cells configured to store device identity data; (Claim 1)
integrated circuit memory cells formed on one or more integrated circuit dies, including a first memory region of memory cells configured to store device identity data; (Claim 1)
and a controller configured to generate the device identity data representative of the memory device based at least in part on a root secret of the memory device and control access to the first memory region based on an access control key; (Claim 1)
a controller configured to generate device identity data representative of the memory device based at least in part on a root secret of the memory device and control access to the first memory region based on an access control key…(Claim 1)
wherein the controller is further configured to store a card profile in the integrated circuit memory cells to emulate a function of a smart card based on the card profile. (Claim 1)
wherein the controller is further configured to store a card profile in the integrated circuit memory cells to emulate a function of a smart card based on the card profile…(Claim 1)
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 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wane, U.S. Publication No. 2020/0236533. Referring to claim 11, Wane discloses a universal integrated circuit chip (UICC) that includes random access memory ([0076]: random access memory is configured to store data which could include device identity data), which meets the limitation of storing, in a first memory region of integrated circuit memory cells formed on one or more integrated circuit dies enclosed within the integrated circuit package, device identity data. The UICC implements secure storage wherein files are encrypted and stored in the random access memory such that decryption is required for access to the files ([0110] & [0121]: decryption key would be considered the claimed access control key), which meets the limitation of controlling, by the controller, access to the first memory region based on an access control key. The UICC includes the storage of multiple virtual SIMs that allow for the mobile device to operate on a variety of networks ([0073] & [0083] & [0085] & [0112]: virtual SIMs emulate actual SIM cards), which meets the limitation of writing, by the controller, a card profile to the integrated circuit memory cells to emulate a function of a smart card based on the card profile.
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 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.
Claims 1, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wane, U.S. Publication No. 2020/0236533, in view of Yoo, WO 2020/162739. Referring to claim 1, Wane discloses a universal integrated circuit chip (UICC) that includes random access memory ([0076]: random access memory is configured to store data which could include device identity data), which meets the limitation of integrated circuit memory cells formed on one or more integrated circuit dies, including a first memory region of memory cells configured to store device identity data. The UICC can be implemented on an application processor ([0076]), which meets the limitation of a controller. The UICC implements secure storage wherein files are encrypted and stored in the random access memory such that decryption is required for access to the files ([0110] & [0121]: decryption key would be considered the claimed access control key), which meets the limitation of a controller configured to [generate device identity data representative of the memory device based at least in part on a root secret of the memory device and] control access to the first memory region based on an access control key. The UICC includes the storage of multiple virtual SIMs that allow for the mobile device to operate on a variety of networks ([0073] & [0083] & [0085] & [0112]: virtual SIMs emulate actual SIM cards), which meets the limitation of wherein the controller is further configured to store a card profile in the integrated circuit memory cells to emulate a function of a smart card based on the card profile.
Wane discloses a UICC ID (EID), but does not specify that the EID is generated by the mobile device using a root secret. Yoo discloses a mobile device that generates a virtual code using an internal value such as chip-specific value provided during manufacture (Page 7, last paragraph – Page 8, third paragraph & Page 9, last paragraph – Page 10, third paragraph: virtual code reads on the claimed device identity data, internal value reads on the claimed root secret), which meets the limitation of a controller configured to generate device identity data representative of the memory device based at least in part on a root secret of the memory device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the EID of Wane to have been generated by the device using an internal device value in order to provide an accurate device identifier as suggested by Yoo (Page 6: Advantageous Effects).
Referring to claim 18, Wane discloses a device that includes a baseband processor and a universal integrated circuit chip (UICC)(Figure 2: baseband processor reads on the claimed processor; UICC reads on the claimed memory device) that includes random access memory ([0076]: random access memory is configured to store data which could include device identity data), which meets the limitation of a plurality of components, including a memory device and a processor connected to the memory device, wherein the memory device includes integrated circuit memory cells formed on one or more integrated circuit dies, including a first memory region of memory cells configured to store device identity data. The UICC implements secure storage wherein files are encrypted and stored in the random access memory such that decryption is required for access to the files ([0110] & [0121]: decryption key would be considered the claimed access control key), which meets the limitation of a controller configured to [generate device identity data representative of the memory device based at least in part on a root secret of the memory device and] control access to the first memory region based on an access control key. The UICC includes the storage of multiple virtual SIMs that allow for the mobile device to operate on a variety of networks ([0073] & [0083] & [0085] & [0112]: virtual SIMs emulate actual SIM cards), which meets the limitation of wherein the controller is further configured to store a card profile in the integrated circuit memory cells to emulate a function of a smart card based on the card profile.
Wane discloses a UICC ID (EID), but does not specify that the EID is generated by the mobile device using a root secret. Yoo discloses a mobile device that generates a virtual code using an internal value such as chip-specific value provided during manufacture (Page 7, last paragraph – Page 8, third paragraph & Page 9, last paragraph – Page 10, third paragraph: virtual code reads on the claimed device identity data, internal value reads on the claimed root secret), which meets the limitation of a controller configured to generate device identity data representative of the memory device based at least in part on a root secret of the memory device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the EID of Wane to have been generated by the device using an internal device value in order to provide an accurate device identifier as suggested by Yoo (Page 6: Advantageous Effects).
Allowable Subject Matter
Claims 2-10, 12-16, 19, 20 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 6:20-4:50.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached at 5712705143. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437