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 .
Response to Amendment
Applicant’s amendment filed 22 April 2026 amends claims 3, 10, 13, 14, 16, and 19. Applicant’s amendment has been fully considered and entered.
Response to Arguments
Applicant argues on page 1 of the response, “Claims 3-10 were rejected for informalities. The foregoing amendment removes the informalities.” This argument has been fully considered and is persuasive. Therefore, the previous 112(b) rejections of claims 3-10 have been withdrawn.
Applicant argues on page 1 of the response, “A terminal disclaimer is submitted herewith, which overcomes the rejection without admission of propriety of the rejection.” This argument has been fully considered and is persuasive. Therefore, the previous double patenting rejections have been withdrawn.
Applicant argues on page 1 of the response, “In contrast, a decryption key in Wane is about controlling access to the clear text of encrypted content, which is different from controlling access to a particular memory region.” This argument is not persuasive because the claims do not define how the claimed access control is performed. Instead, the claims require general access control of a particular memory region. Wane discloses a that 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]). Therefore, the decryption keys of Wane effectively control access to the particular memory locations by controlling access to the files stored at those particular memory locations.
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
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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: 5:30-4:00.
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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
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