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 .
DETAILED ACTION
This action is responsive to the Application filed on 03/13/2024
Claims 1-20 are pending in the case. Claims 1 and 11 are independent claims.
This application claims domestic priority from provisional application 63581923 filed on 09/11/20223.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/09/2025 was filed after the mailing date of the 09/10/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Examiner notes some possible errors in the IDS in the author field of entries 1 and 2. Examiner has considered the citations under patent publication numbers 11146944, 11363449, and 20230171585, ignoring the other fields.
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 12-15 recites the limitation "the method of claim 1". There is insufficient antecedent basis for this limitation in the claim since there is no recitation of “a method” in claim 1. Examiner suggests to amend the claim in the following way “The method of claim 11”. For the purposes of compact prosecution, examiner will assume claims 12-15 depend on independent claim 11 instead of independent claim 1.
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.
Claims 1, 10-11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah et al, U.S. Patent Publication No. 20190174299, published on 2019-06-06 (hereinafter Ullah) in view of Park et al, U.S. Patent Publication No. 20170064552, published on 2017-03-02 (hereinafter Park).
As for independent claim 1, Ullah discloses a system and method comprising An apparatus comprising processing circuitry configured to: process, based on signaling received from a target device with which a source device is engaging in an embedded subscriber identity module (eSIM) transfer process to transfer an eSIM profile to the target device,
(Ullah paragraph [0074] discloses an MNO (the apparatus) receiving a message comprising EIS which is defined to contain eSIM information, “At arrow 105, the migration application 23 forwards the obtained EIS and ICCID to the migration service 21a of the MNO.”)
a first message comprising a target embedded identity document (EID) of the target device
(Ullah paragraph [0071] discloses the MNO receiving an EIS which comprises EID information of a device, “the MNO migration service 21a asks for the eUICC Information Set (EIS) and the ICCID of the profile that is to be migrated from the migration application 23. The EIS comprises a certificate of the eUICC 34 of the source device 10. The certificate also includes the EID of the eUICC.”)
generate, for transmission to the target device, a second message comprising a source EID of the source device
(Ullah paragraph [0067] discloses an SM-DP+ entity being sent the EID of a source device, “The update order is sent to the SM-DP+ entity 19 and in this update order the migration service 21a identifies the profile to be updated, using e.g. EID of the source device 10, and/or ICCID-number of the profile, and/or IMSI of the subscription. The update order also comprises parameters to modify (if any). The EID of the destination device 30 should also be provided in order for the SM-DP+ to make a bounded profile.”)
prepare, for transmission to the target device, the eSIM profile, a third message comprising the eSIM profile
(Ullah paragraph [0091] discloses a destination device (target device) downloading a profile, “prepare, for transmission to the target device, the eSIM profile, a third message comprising the eSIM profile.”)
wherein the eSIM profile includes an Integrated Circuit Card Identification Number (ICCID)
(Ullah paragraph [0057] disclose the eUICC (which received the third message in the previous limitation) storing the ICCID, “On the eUICC hardware module one or more operator profiles may be stored, including e.g. International mobile subscriber identity (IMSI) number, ICCID, service provider name (SPN), authentication key and algorithms, applications and data.”)
Ullah does not appear to disclose a third message comprising an indication of a first state of the eSIM profile on the source device.
However, Park does disclose an eSIM transfer system and method comprising a message comprising an indication of a first state of the eSIM profile on the source device.
(Park paragraph [0092] discloses a message containing profile information including the state of the profile (called the profile type), “The terminal 110 may send the SM-DP+ 120 a message including the eUICC signature1 and profile information. This message may be an Authentication Request message (e.g., AuthClientRequest). The profile information may include profile mapping information for use by the SM-DP+ 120 in identifying the profile or a type of the profile. At this time, the profile information may include the profile mapping information as follows: [0093] eUICC Identifier or EID [0094] eUICC certificate [0095] EventID [0096] MatchingID [0097] ActivationToken [0098] NotificationID”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Park adding further information to the message to the eSIM transfer system of Ullah in order to have a system that works for a more diverse set of devices and circumstances.
As for claim 10, the limitations of the parent claim 1 have been discussed. Park discloses a system and method wherein the processing circuitry is further configured to: process, based on signaling received from the target device, a target one-time key pair; generate a source one-time key pair; and generate a session key, based on at least the target one-time key pair and the source one-time key pair
(Park paragraphs [0448] and [0449] disclose a one-time key pair for the SM-DP+ and one for the server (accounting for the target and source one-time key pair) and based on those generating an encryption key, which serves as a session key “The one-time asymmetric key pair may be used for generating an encryption key between the SM-DP+ 120 and the eUICC 115 along with the one-time asymmetric key pair of the server 120. The encryption key may be generated as follows… The SM-DP+ 120 generates the encryption key by combining the one-time private key of the SM-DP+ 120 and the one-time private key of the eUICC 115. [0450] The eUICC generates the encryption key by combining the private key of the eUICC 115 and the public key of the SM-DP+ 120.”)
wherein the third message comprises a profile package including the eSIM profile, the indication of the first state and the source one-time key pair.
(Park paragraph [0453] discloses the one-time key pair being sent, by a device that could send the message containing the other limitations previously discussed, by message, “The eUICC 115 at step 737 may send the terminal 110 the one-time public key of the eUICC 115 and the eUICC signature value.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Park adding an installation report confirmation to the eSIM transfer system of Ullah in order to have a system with added security.
As for independent claim 11, claim 11 comprises a method to implement the system of claim 1 and is rejected along the same rationale.
As for claim 20, the limitations of the parent claim 11 have been discussed. Claim 20 comprises a method to implement the system of claim 10 and is rejected along the same rationale.
Claims 2-5, 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah in view of Park, in further view of Yu et al, WIPO Publication No. 2018176430, published on 2018-10-04 (hereinafter Yu), in further view of Williams et al, U.S. Patent Publication No. 10993096, published on 2021-04-27 (hereinafter Williams).
As for claim 2, the limitations of the parent claim 1 have been discussed. Park discloses a system and method configured to process, based on signaling received from the target device, an installation stub
(Park paragraphs [0115] and [0116] disclose sending an installation confirmation report (an installation stub), “Then the terminal 110 may decode the encrypted profile and install the profile at step 280. The profile decoding may be performed in the eUICC 115 of the terminal 110… the terminal 110 may send the SM-DP+ 120 a profile download rejection report and/or confirmation result at step”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Park adding an installation report confirmation to the eSIM transfer system of Ullah in order to have a system with added security.
Park does not appear to disclose the installation stub comprising an EID and verifying the target EID received in the installation stub matches the target EID received in the first message.
However, Yu does disclose a system and method comprising a message comprising an EID and verifying the target EID received in the installation stub matches the target EID received in the first message.
(Yu discloses an MNO receiving an authentication message including EID information and matching the EID information to a known value, “obtain the eUICC certificate (CERT.EUICC.ECDSA) provided by all card vendors from the card vendor. The eUICC certificate contains the public key of the eUICC. After generating the authentication algorithm program, the MNO can match the corresponding version of the authentication algorithm program according to the EID information in the eUICC certificate.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Yu adding EID information and matching to the eSIM transfer system of Ullah and Park in order to have a system with added security.
Neither Park or Yu appear to disclose the installation stub comprising an ICCID and verifying the ICCID received in the installation stub matches the ICCID of the eSIM profile transmitted to the target device.
However, Williams does disclose a system and method comprising a message comprising an ICCID and verifying the ICCID received in the installation stub matches the ICCID of the eSIM profile transmitted to the target device.
(Williams col 6, lines 3-8 disclose sending a confirmation message including an ICCID and matching it to a stored one, “carrier provisioning system 130 may determine which ICCID has been most recently provisioned for use and may send the most recently provisioned ICCID to RSP 120. In response, RSP 120 may send a notification to LPA 160 to determine whether eSIM 150 stores a matching ICCID (block 310).”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Williams adding ICCID information and matching to the eSIM transfer system of Ullah, Yu, and Park in order to have a system with added security.
As for claim 3, the limitations of the parent claim 2 have been discussed. Ullah discloses a system and method wherein the processing circuitry is further configured to: delete the eSIM profile from the source device when the verification of the target EID and ICCID is successful.
(Ullah paragraph [0064] discloses a delete command of a profile (eSIM profile), “After, optionally, verifying the eligibility of migration for the profile, the MNO migration service 21a requests the eUICC 14 of the source device 10 to delete the profile and waits for a confirmation from the source device 10 that the profile has been deleted.”)
As for claim 4, the limitations of the parent claim 3 have been discussed. Ullah discloses a system and method wherein the eSIM profile is deleted from an Embedded Universal Integrated Circuit Card (eUICC) of the source device.
(Ullah paragraph [0064] discloses a delete command of a profile (eSIM profile) on an eUICC, “After, optionally, verifying the eligibility of migration for the profile, the MNO migration service 21a requests the eUICC 14 of the source device 10 to delete the profile and waits for a confirmation from the source device 10 that the profile has been deleted.”)
As for claim 5, the limitations of the parent claim 3 have been discussed. Ullah discloses a system and method wherein the processing circuitry is further configured to: in response to deletion of the eSIM profile, generate, for transmission to the target device, a deletion stub comprising the target EID and the ICCID.
(Ullah paragraph [0077] disclose the delete confirmation including ICCID and being signed by the eUICC (implying it contains EID), “An exception is, as has been mentioned, that the delete confirmation message according to the present teachings has to comprise the ICCID of the deleted profile and has to be signed by the eUICC certificate.”)
As for claim 12, the limitations of the parent claim 11 have been discussed. Claim 12 comprises a method to implement the system of claim 2 and is rejected along the same rationale.
As for claim 13, the limitations of the parent claim 12 have been discussed. Claim 13 comprises a method to implement the system of claim 3 and is rejected along the same rationale.
As for claim 14, the limitations of the parent claim 13 have been discussed. Claim 14 comprises a method to implement the system of claim 4 and is rejected along the same rationale.
As for claim 15, the limitations of the parent claim 13 have been discussed. Claim 15 comprises a method to implement the system of claim 5 and is rejected along the same rationale.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah in view of Park, in further view of Li et al, WIPO Publication No. 2018076711, published on 2018-05-03 (hereinafter Li).
As for claim 6, the limitations of the parent claim 1 have been discussed. Ullah discloses a system and method configured to generate, for transmission to the further target device, a fifth message comprising the source EID
(Ullah paragraph [0067] discloses an SM-DP+ entity being sent the EID of a source device, “The update order is sent to the SM-DP+ entity 19 and in this update order the migration service 21a identifies the profile to be updated, using e.g. EID of the source device 10, and/or ICCID-number of the profile, and/or IMSI of the subscription. The update order also comprises parameters to modify (if any). The EID of the destination device 30 should also be provided in order for the SM-DP+ to make a bounded profile.”)
prepare, for transmission to the further target device, the eSIM profile,
(Ullah paragraph [0091] discloses a destination device (target device) downloading a profile, “prepare, for transmission to the target device, the eSIM profile, a third message comprising the eSIM profile.”)
wherein the eSIM profile includes the ICCID
(Ullah paragraph [0057] disclose the eUICC (which received the third message in the previous limitation) storing the ICCID, “On the eUICC hardware module one or more operator profiles may be stored, including e.g. International mobile subscriber identity (IMSI) number, ICCID, service provider name (SPN), authentication key and algorithms, applications and data.”)
Ullah does not appear to disclose the eSIM comprising an indication of a first state of the eSIM profile on the source device.
However, Park does disclose an eSIM transfer system and method wherein the eSIM comprises an indication of a first state of the eSIM profile on the source device.
(Park paragraph [0092] discloses a message containing profile information including the state of the profile (called the profile type), “The terminal 110 may send the SM-DP+ 120 a message including the eUICC signature1 and profile information. This message may be an Authentication Request message (e.g., AuthClientRequest). The profile information may include profile mapping information for use by the SM-DP+ 120 in identifying the profile or a type of the profile. At this time, the profile information may include the profile mapping information as follows: [0093] eUICC Identifier or EID [0094] eUICC certificate [0095] EventID [0096] MatchingID [0097] ActivationToken [0098] NotificationID”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Park adding further information to the message to the eSIM transfer system of Ullah in order to have a system that works for a more diverse set of devices and circumstances.
Neither Ullah or Park appear to disclose a system wherein the processing circuitry is further configured to: prior to receiving an installation stub from the target device, process, based on signaling received from a further target device, a fourth message comprising a further target EID of the further target device.
However, Li discloses a system and method wherein the processing circuitry is further configured to: prior to receiving an installation stub from the target device, process, based on signaling received from a further target device, a fourth message comprising a further target EID of the further target device.
(Li discloses a system for eSIM transferring including a third device sending an EID, “It should be noted that only the process of verifying the legitimacy of the third device by the UICC of the third device and downloading the profile for the eUICC of the third device is described in FIG. Optionally, in step 1402, the third device may simultaneously apply to the MNO 103 for profile download and No. 1 multi-card service, that is, to transmit identification information (eg, ICCID, MSISDN or IMSI) of the SIM card and an identifier EID of the eUICC. The specific application process is similar to that of FIG. 5 and will not be described here. After the first card multi-card service is opened, the UICC card and eUICC of the third device can share one MSISDN number.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Li adding a third device to the eSIM transfer system of Ullah and Park in order to have a system that works for a more diverse set of devices and circumstances.
As for claim 16, the limitations of the parent claim 11 have been discussed. Claim 16 comprises a method to implement the system of claim 6 and is rejected along the same rationale.
Claims 7-8 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah in view of Park, in further view of Li, in further view of Yu, in further view of Williams.
As for claim 7, the limitations of the parent claim 6 have been discussed. Ullah discloses a system and method configured to delete the eSIM profile from the source device when the verification of the further target EID and ICCID is successful
(Ullah paragraph [0064] discloses a delete command of a profile (eSIM profile), “After, optionally, verifying the eligibility of migration for the profile, the MNO migration service 21a requests the eUICC 14 of the source device 10 to delete the profile and waits for a confirmation from the source device 10 that the profile has been deleted.”)
in response to deletion of the eSIM profile, generate, for transmission to the further target device, a deletion stub comprising the further target EID and the ICCID to the further target device
(Ullah paragraph [0077] disclose the delete confirmation including ICCID and being signed by the eUICC (implying it contains EID), “An exception is, as has been mentioned, that the delete confirmation message according to the present teachings has to comprise the ICCID of the deleted profile and has to be signed by the eUICC certificate.”)
Ullah does not appear to disclose a system configured to process, based on signaling received from the further target device, an installation stub comprising the ICCID and further target EID.
However, Park discloses a system and method configured to process, based on signaling received from the target device, an installation stub
(Park paragraphs [0115] and [0116] disclose sending an installation confirmation report (an installation stub), “Then the terminal 110 may decode the encrypted profile and install the profile at step 280. The profile decoding may be performed in the eUICC 115 of the terminal 110… the terminal 110 may send the SM-DP+ 120 a profile download rejection report and/or confirmation result at step”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Park adding an installation report confirmation to the eSIM transfer system of Ullah in order to have a system with added security.
Neither Ullah or Park appears to disclose the installation stub comprising an EID and verifying the target EID received in the installation stub matches the target EID received in the message.
However, Yu does disclose a system and method comprising a message comprising an EID and verifying the target EID received in the installation stub matches the target EID received in the first message.
(Yu discloses an MNO receiving an authentication message including EID information and matching the EID information to a known value, “obtain the eUICC certificate (CERT.EUICC.ECDSA) provided by all card vendors from the card vendor. The eUICC certificate contains the public key of the eUICC. After generating the authentication algorithm program, the MNO can match the corresponding version of the authentication algorithm program according to the EID information in the eUICC certificate.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Yu adding EID information and matching to the eSIM transfer system of Ullah and Park in order to have a system with added security.
Neither Ullah, Park, or Yu appear to disclose the installation stub comprising an ICCID and verifying the ICCID received in the installation stub matches the ICCID of the eSIM profile transmitted to the target device.
However, Williams does disclose a system and method comprising a message comprising an ICCID and verifying the ICCID received in the installation stub matches the ICCID of the eSIM profile transmitted to the target device.
(Williams col 6, lines 3-8 disclose sending a confirmation message including an ICCID and matching it to a stored one, “carrier provisioning system 130 may determine which ICCID has been most recently provisioned for use and may send the most recently provisioned ICCID to RSP 120. In response, RSP 120 may send a notification to LPA 160 to determine whether eSIM 150 stores a matching ICCID (block 310).”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Williams adding ICCID information and matching to the eSIM transfer system of Ullah, Yu, and Park in order to have a system with added security.
As for claim 8, the limitations of the parent claim 7 have been discussed. Williams discloses a system and method wherein the processing circuitry is further configured to: generate, for transmission to the further target device, an abused delete notification message comprising the further target EID to the target device.
(Williams col 6, lines 56-59 and col 7, lines 21-26 disclose a carrier provisioning device sending a message which is an abuse delete notification message since it is sent when it detects an attempt to use a deleted ICCID and EID is being used, “carrier provisioning system 130 may notify RSP 120 to pair the new ICCID to the eID associated with eSIM 150 and may provide instructions for activating the service on UE 110 (block 324)… carrier provisioning device 130 may search historical records of ICCIDs associated with the eID and may determine if any ICCIDs exist that do not include “Delete Notifications” indicating that the ICCIDs have been deleted or de-activated.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Williams adding security reporting measures to the eSIM transfer system of Ullah, Yu, and Park in order to have a system with added security specifically to deal with the malicious attack issue disclosed in paragraph [0135] of Ullah.
As for claim 17, the limitations of the parent claim 16 have been discussed. Claim 17 comprises a method to implement the system of claim 7 and is rejected along the same rationale.
As for claim 18, the limitations of the parent claim 17 have been discussed. Claim 18 comprises a method to implement the system of claim 8 and is rejected along the same rationale.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah in view of Park, in further view of Lalwaney et al, US Patent Publication No. 10021558, published on 2018-07-10 (hereinafter Lalwaney).
As for claim 9, the limitations of the parent claim 1 have been discussed. Lalwaney discloses a system and method wherein the first state is an enabled state or a disabled state.
(Lalwaney discloses information about the eUICC including state information and if it is in an enabled or disabled state, “The EIS has key information for accessing the eUlCC (the Platform Management Credential), and state information such as whether each SIM profile is enabled or disabled.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the eSIM transfer system of Lalwaney adding the reporting of enable or disabled states to the eSIM transfer system of Ullah and Park in order to have a system to overcome the challenges of using SIMs in a roaming environment.
As for claim 19, the limitations of the parent claim 11 have been discussed. Claim 19 comprises a method to implement the system of claim 9 and is rejected along the same rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C LAWRENCE whose telephone number is (571)272-9833. The examiner can normally be reached Monday-Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeanette Parker, can be reached at (571) 270-3647. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN CALEB LAWRENCE/Examiner, Art Unit 2646
/MATTHEW D. ANDERSON/Supervisory Patent Examiner, Art Unit 2646
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