DETAILED ACTION
Claim(s) 1-20 are presented for examination.
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 .
Priority
As required by M.P.E.P.201.14(c), acknowledgement is made to applicant’s claim for priority based on application(s) JP2022-085190 submitted on May 25th, 2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on August 16th, 2024 and April 8th, 2026 follow the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant’s amendment to the specification of the disclosure filed August 16th, 2024 is considered.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed (i.e., “PROFILE AUTHENTICATION USING EMBEDDED SUBSCRIBER IDENTITY MODULE (eSIM))”.
The abstract of the disclosure is objected to because it contains a legal phraseology “comprises …” in line 1. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 U.S.C. § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 1-6, 8, 10-12 and 14-20 are rejected under 35 U.S.C. § 103 as being unpatentable PARK et al. (US 2019/0104401 A1) over hereinafter “Park” in view of SEO et al. (US 2021/0006965 A1) hereinafter “Seo”.
Regarding Claims 1 and 17,
Park discloses a communication apparatus [see fig(s). 8 & 13, pg. 10, ¶198 lines 1-8, an electronic device “801” within a network environment “800”], comprising:
circuitry configured to determine whether an end condition is satisfied [see fig. 13B: Step “1303b”, pg. 15, ¶273 lines 1-4, the electronic device “1301” determines whether or not a new profile can be downloaded based on the identification result], the end condition relating to a profile stored in a memory [see fig. 13B: Step “1302b”, pg. 15, ¶272 lines 1-4, the electronic device “1301” identifies the remaining capacity of the internal memory and the capacity of the pre-installed profile]; and
in a case that the end condition is satisfied [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, when it is determined that the download is not possible], control display of an output via a user interface [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, the electronic device “1301” display the pre-installed profiles], the output requesting instruction whether or not to delete the profile [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, which can be deleted, through a display].
Although Park discloses the end condition relating to a profile, Park does not explicitly teach “an embedded subscriber identity module (eSIM)”.
However Seo discloses determining [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, attempt to reinstall], by circuitry of a communication apparatus [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, by the eUICC “330” or an embedded SIM (eSIM)], whether an end condition is satisfied [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, to reinstall the profile therein by using the one-time key stored in the second memory “331” and the profile package delivered by the processor “320”], the end condition relating to an embedded subscriber identity module (eSIM) profile stored in a memory [see fig. 6B: Step “633”, pg. 5, ¶52 lines 1-5; pg. 12, ¶207 lines 1-4, the processor “320” transmits, to the eUICC “330” or the embedded SIM (eSIM), a profile package stored in a separate memory]; and
in a case that the end condition is satisfied [see fig. 6C: Step “637”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, during an reinstall failure, the eUICC “330” transmits, to the processor “320”, a profile installation failure message notifying of the failure of installation of the profile], displaying an output via a user interface [see fig. 6C: Step “639”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, the processor “320” displays a screen], the output requesting instruction whether or not to delete the eSIM profile [see fig. 6C: Step “639”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, for deleting the installed existing profile].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide “an embedded subscriber identity module (eSIM)” by Seo in the system of Park for reinstalling a profile by using the profile package maintained during the installation of the profile; and thus not required to re-perform mutual authentication between a profile server and the electronic device and download of a profile package, and enabling a reduction in a time necessary to install a profile [see Seo, pg. 1, ¶11 lines 1-11].
Regarding Claim 2,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the end condition is indicated in the eSIM profile [see fig. 12, pg. 15, ¶257 lines 1-3, the eUICC Manager “1220” transmits (notifies) profile information (eSIM profile Info.) (for example, an EID or file size) of the eSIM to the terminal “1230”].
Regarding Claim 3,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the end condition is a data usage limit [see fig. 13B: Step “1301b”, pg. 15, ¶271 lines 1-4, the electronic device “801” identifies the capacity of a profile to be newly downloaded], and the circuitry determines that the end condition is satisfied when data usage by the communication apparatus using the eSIM profile has reached the data usage limit [see fig. 13B: Step “1302b”, pg. 15, ¶272 lines 1-4, the electronic device “1301” identifies the remaining capacity of the internal memory and the capacity of the pre-installed profile].
Regarding Claim 4,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the end condition is an expiration date [see pg. 18, ¶324 lines 1-4; ¶325 lines 1-17, a second priority includes information on a preset second priority (“expire date”) for arranging one or more profile items corresponding one or more pre-stored profiles], and the circuitry determines that the end condition is satisfied when the expiration date has been reached [see pg. 18, ¶324 lines 1-4; ¶325 lines 1-17, a second recommendation screen “2080” includes a first profile item corresponding to a first profile among one or more pre-stored profiles and first profile information (“01/02/15”) corresponding to the second priority (“expire date”) of the first profile].
Regarding Claim 5,
Park discloses the communication apparatus according to claim 1.
Park does not explicitly teach “the end condition is an available area, and the circuitry determines that the end condition is satisfied when the communication device is no longer in the available area”.
However Seo discloses the end condition is an available area [see pg. 4, ¶44 lines 1-15, the location manager “219”, for example, manages locational information], and the circuitry determines that the end condition is satisfied when the communication device is no longer in the available area [see pg. 4, ¶44 lines 1-15, on the electronic device “101”].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide “the end condition is an available area, and the circuitry determines that the end condition is satisfied when the communication device is no longer in the available area” by Seo in the system of Park for the same motivation as set forth in claim 1.
Regarding Claim 6,
Park discloses the communication apparatus according to claim 1.
Park does not explicitly teach “the end condition is an invalid state, and the circuitry determines that the end condition is satisfied when the eSIM profile is in the invalid state for a predetermined period of time”.
However Seo discloses the end condition is an invalid state [see pg. 7, ¶96 lines 1-9, the processor “320” controls the eUICC “330” to clean the second memory “331” in a state of maintaining the one-time key], and the circuitry determines that the end condition is satisfied when the eSIM profile is in the invalid state for a predetermined period of time [see pg. 7, ¶98 lines 1-6, the electronic device “300” cleans the second memory “331” in a state of maintaining the one-time key, and thus reduces a time necessary to re-perform mutual authentication according to a comparison, regenerate a one-time key, and then re-encrypt a profile package].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide “the end condition is an invalid state, and the circuitry determines that the end condition is satisfied when the eSIM profile is in the invalid state for a predetermined period of time” by Seo in the system of Park for the same motivation as set forth in claim 1.
Regarding Claim 8,
Park discloses the communication apparatus according to claim 1.
Park does not explicitly teach “the end condition is an out-of-area state, and the circuitry determines that the end condition is satisfied when the communication device is in the out-of-area state for a predetermined period of time”.
However Seo discloses the end condition is an out-of-area state [see pg. 7, ¶96 lines 1-9, the processor “320” controls the eUICC “330” to clean the second memory “331” in a state of maintaining the one-time key], and the circuitry determines that the end condition is satisfied when the communication device is in the out-of-area state for a predetermined period of time [see pg. 7, ¶98 lines 1-6, the electronic device “300” cleans the second memory “331” in a state of maintaining the one-time key, and thus reduces a time necessary to re-perform mutual authentication according to a comparison, regenerate a one-time key, and then re-encrypt a profile package].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide “the end condition is an invalid state, and the circuitry determines that the end condition is satisfied when the eSIM profile is in the invalid state for a predetermined period of time” by Seo in the system of Park for the same motivation as set forth in claim 1.
Regarding Claim 10,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the circuitry is further configured to receive the instruction via the user interface [see pg. 5, ¶85 lines 1-6, the terminal “130” transmits/receives], and in a case that the instruction indicates to delete the eSIM profile [see pg. 5, ¶85 lines 1-6, in order to access a wireless communication network], delete the eSIM profile from the memory [see pg. 5, ¶85 lines 1-6, a signal to/from the eUICC “140” to install a profile, select an installed profile, or delete the installed profile or may initialize the configuration of the eUICC “140” and the profile].
Regarding Claim 11,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the circuitry is further configured to set the end condition of the eSIM profile according to an input via the user interface [see pg. 5, ¶86 lines 1-4, the eUICC “140” transmits/receives a signal to/from the terminal “130” to install a profile, select a profile, delete a profile, or initialize the configuration of the eUICC “140” and the profile].
Regarding Claim 12,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the circuitry is further configured to control display of plural end condition as options for selection via the user interface [see pg. 16, ¶285 lines 1-6, the profile agent “1411” is configured to provide, through the display (for example, the display 860), a User Interface (UI) for selecting at least one of the profiles stored in secure memory #1 “1421”], and receive selection of a particular end condition via the user interface [see pg. 16, ¶285 lines 1-6, or secure memory #2 “1431” in response to the download request].
Regarding Claim 14,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the end condition includes a first condition and a second condition [see fig. 13B: Step “1301b”, pg. 15, ¶271 lines 1-4, the electronic device “801” identifies the capacity of a profile to be newly downloaded], and the circuitry is configured to determine whether one or more of the first condition and the second condition is satisfied [see fig. 13B: Step “1302b”, pg. 15, ¶272 lines 1-4, the electronic device “1301” identifies the remaining capacity of the internal memory and the capacity of the pre-installed profile].
Regarding Claim 15,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park further discloses wherein the output further indicates details of the end condition [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, when it is determined that the download is not possible, the electronic device “1301” displays the pre-installed profiles, which can be deleted, through a display].
Regarding Claim 16,
The combined system of Park and Seo discloses the communication apparatus according to claim 1.
Park discloses the apparatus further comprising the memory which stores the eSIM profile [see fig(s). 8 & 13, pg. 10, ¶198 lines 1-8, a memory “830”].
Regarding Claim 18,
The combined system of Park and Seo discloses the communication method according to claim 17.
Park further discloses wherein the end condition is indicated in the eSIM profile [see fig. 13B: Step “1302b”, pg. 15, ¶272 lines 1-4, the electronic device “1301” identifies the remaining capacity of the internal memory and the capacity of the pre-installed profile].
Regarding Claim 19,
The combined system of Park and Seo discloses the communication method according to claim 17.
Park further discloses receiving the instruction via the user interface [see fig. 13B: Step “1306b”, pg. 15, ¶276 lines 1-3, when the user selection is received]; and
in a case that the instruction indicates to delete the eSIM profile [see fig. 13B: Step “1305b”, pg. 15, ¶275 lines 1-3, the electronic device “1301” determine whether or not user selection is received through the display], deleting the eSIM profile from the memory [see fig. 13B: Step “1306b”, pg. 15, ¶276 lines 1-3, the electronic device “1301” deletes the corresponding profile].
Regarding Claim 20,
Park discloses a non-transitory computer readable medium storing computer executable instruction which [see fig(s). 8 & 13, pg. 10, ¶198 lines 1-8, a memory “830” storing software and/or a program “840”], when executed by circuitry of a communication apparatus [see fig(s). 8 & 13, pg. 10, ¶198 lines 1-8, during an implementation by an electronic device “801” within a network environment “800”], cause the communication apparatus to [see fig(s). 8 & 13, pg. 10, ¶198 lines 1-8, executing the electronic device “801” to]:
determine whether an end condition is satisfied [see fig. 13B: Step “1303b”, pg. 15, ¶273 lines 1-4, the electronic device “1301” determines whether or not a new profile can be downloaded based on the identification result], the end condition relating to a profile stored in a memory [see fig. 13B: Step “1302b”, pg. 15, ¶272 lines 1-4, the electronic device “1301” identifies the remaining capacity of the internal memory and the capacity of the pre-installed profile]; and
in a case that the end condition is satisfied [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, when it is determined that the download is not possible], control display of an output via a user interface [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, the electronic device “1301” display the pre-installed profiles], the output requesting instruction whether or not to delete the profile [see fig. 13B: Step “1303b”, pg. 15, ¶274 lines 1-4, which can be deleted, through a display].
Although Park discloses the end condition relating to a profile, Park does not explicitly teach “an embedded subscriber identity module (eSIM)”.
However Seo discloses determining [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, attempt to reinstall], by circuitry of a communication apparatus [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, by the eUICC “330” or an embedded SIM (eSIM)], whether an end condition is satisfied [see fig. 6B: Step “635”, pg. 5, ¶52 lines 1-5; pg. 12, ¶209 lines 1-5, to reinstall the profile therein by using the one-time key stored in the second memory “331” and the profile package delivered by the processor “320”], the end condition relating to an embedded subscriber identity module (eSIM) profile stored in a memory [see fig. 6B: Step “633”, pg. 5, ¶52 lines 1-5; pg. 12, ¶207 lines 1-4, the processor “320” transmits, to the eUICC “330” or the embedded SIM (eSIM), a profile package stored in a separate memory]; and
in a case that the end condition is satisfied [see fig. 6C: Step “637”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, during an reinstall failure, the eUICC “330” transmits, to the processor “320”, a profile installation failure message notifying of the failure of installation of the profile], displaying an output via a user interface [see fig. 6C: Step “639”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, the processor “320” displays a screen], the output requesting instruction whether or not to delete the eSIM profile [see fig. 6C: Step “639”, pg. 5, ¶52 lines 1-5; pg. 12, ¶210 lines 1-7; ¶211 lines 1-5, for deleting the installed existing profile].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide “an embedded subscriber identity module (eSIM)” by Seo in the system of Park for reinstalling a profile by using the profile package maintained during the installation of the profile; and thus not required to re-perform mutual authentication between a profile server and the electronic device and download of a profile package, and enabling a reduction in a time necessary to install a profile [see Seo, pg. 1, ¶11 lines 1-11].
Allowable Subject Matter
Claims 7, 9 and 13 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
United States Patent Application Publication: Salmela et al. (US 2020/0084610 A1); see fig. 3, pgs. 4-6, ¶63-¶92.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSHIL P SAMPAT whose telephone number is (469) 295-9141. The examiner can normally be reached on Mon-Fri (8 AM - 5 PM).
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/RUSHIL P. SAMPAT/Primary Examiner- TC 2400, Art Unit 2469
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