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 .
Status of Claims
The following is a non-final, first action on the merits, in response to application filed December 26, 2024. The preliminary amended claims 1-3, are currently pending.
Priority
Certified copy of priority document EP 22305968 dated June 30, 2022, is acknowledged which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 12/26/2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Note:
The examiner notes that the recitation “A method for informing a mobile network operator server which profile of a profile type should be downloaded from a SM-DP+, Subscription Manager - Data Preparation, to a secure element comprised in a device, said SM- DP+ storing profiles classified in three categories:
a Preferred profile type, a profile type that has already been successfully downloaded in another secure element, when said other secure element and the device in which it is comprised have the same characteristics than those of said secure element and said device;
a Authorized profile type, a profile type that is authorized by said mobile network operator server providing said profile type to said SM-DP+ to be downloaded to said secure element;
a Forbidden profile type, a profile type that is forbidden by said mobile network operator server providing said profile type to said SM-DP+ to be downloaded to said secure element, when a profile of said forbidden profile type has been downloaded with failure in another secure element, when said other secure element and the device in which it is comprised have the same characteristics than those of said secure element and said device,” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
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.
Claim 1-3, 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 1, recites the limitation "the messages exchanged" in line 21-22. There is no mention of any “messages” in the claim anywhere, resulting in antecedent base for this limitation in the claim. Claims 2-3 depend from claim 1, therefore rejected likewise.
Claim 1, recites the limitation “between them”. It is not sufficiently clear what the term “them” is referring to. Is it the network operator and/or said SM-DP+ as “between them”.
Claim Objections
Claim 3, is objected to because of the following informalities: Claim 3, line 1, recites “The A method”. The letter “A” needs to be deleted. 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.
Claim 1-3, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. To be patent eligible, a claim that is directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way. Claim(s) 1 is directed to a method, comprising generating EligibilityId between a server and a device for pairing messages (information) and transmitting the information for downloading. The claims appear to indicate it meets the statutory category of invention, and pass the step I analysis.
With reference to analysis under step 2A, (Mayo test) meeting the judicially recognized exceptions, the claims are analyzed to see if directed to a Law of Nature, a Natural Phenomenon, or an Abstract Idea. It appears the method claim recites pairing data (information) between devices (such as a server and a device) and providing it (transmitting) to a network operator. Examples of Judicial exceptions include among others, abstract ideas of: collecting data, recognizing certain data within the collected data set, and storing that recognized data in memory; organizing information through mathematical correlations.
Claim(s) 1, is/are directed to a method of sharing EligibilityId between devices for pairing information (messages) between them The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because sharing and pairing the messages etc., amounts to collecting data, using elements are found to be abstract. It has been recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation, is abstract as an ancillary part of such collection and analysis (Content Extraction, 776 F. 3d at 1347; Ultamercial, Inc. v. Hulu, LLC, 772 F. 3d 709, 715 (Fed. Cir 2014). Merely requiring the selection and manipulation of information – to provide a “humanly comprehensible” amount of information useful for users, e.g. buySAFE and Google (limitations regarding using a sensor to sense (receive) gas concentrations at a surface, were simply attempting to limit the abstract idea to a sensor environment), Electric Power Group and Alstom (requirement for performing the claimed functions of gathering, analyzing and display in real time by use of anything but entirely conventional, generic technology and did not state an arguably inventive concept in the realm of application of the information based abstract idea). Considering step 2B, the analysis show that sensor is merely a general link to particular technology or field of use or/and adding the works “apply it” (or an equivalent) with judicial exception, or mere instructions to implement an abstract idea with elements generally recognized as performing given function, is not significantly more, see MPEP 2106.05(d)(II)(ii), performing repetitive measurement or calculations on messages exchanged at multiple points. When considered as an ordered combination of elements as a whole each step does no more than require process manipulation, as perform functions. The claims in the instant case do not include additional elements that are sufficient to amount to significantly more than the judicial exception because simply the steps of sharing and, pairing or accumulation information (messages) at multiple point between devices, etc., are basic functional elements and each step does no more than require process manipulation. The given functions do not add meaningful limitation to the abstract idea. Claims 2-3, similarly do not add significantly more than the basic steps treated above. Claims 2-3, merely comprises application/use of sensors to scan information in QR code and store in a SIM or other elements, amounts to not significantly more. Accordingly the claims are not patent eligible.
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) 1-3, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al (hereinafter Park) (US 2016/0301529).
Regarding claim 1, Park discloses a method for informing a mobile network operator server of profile type, the method comprising:
generating, by said mobile network operator server or said SM-DP+ an Eligibilityld, and sharing said Eligibilityld between said mobile network operator server, said SM-DP+ and said device for pairing the messages exchanged between them (The transaction ID may also be an event identifier EventID. The profile providing server may then generate a DP challenge. The DP challenge may be a challenge of the SM-DP or a challenge of the profile providing server. A session key may be shared by combining the public key with the personal key. In this case, the public key becomes disposable, and therefore a new session key may be shared whenever the profile is downloaded) (paras. 0049, 0198, 0202);
transmitting from said device to said SM-DP+information on said secure element and said device (the terminal 620 may transmit the profile request message to the profile providing server 630, …. The eUICC authentication information may include at least one of the disposable public key of the eUICC, the address of the profile providing server, the profile installation key, the terminal information, the eUICC information, the hashed secret code value, the eUICC_Signal, the eUICC certificate, and the eUICC manufacturer certificate issuing the eUICC certificate) (paras. 0203, 0204);
transmitting from said SM-DP+ to said mobile network operator server said information on the profile type to be downloaded in said secure element, based on said information on said secure element and said device (in operation 662, the terminal 620 may transmit the profile request message to the profile providing server 630. The profile request message transmitted to the profile providing server 630 may include the eUICC authentication information received from the eUICC 630. The terminal 620 may transfer at least one of a transaction ID which is the address of the profile providing server corresponding to the stored transaction ID prior to performing the operation 656, the disposable public key of the eUICC, the address of the profile providing server, the profile installation key, the terminal information, the eUICC information, the hashed secret code value, the eUICC_Signal, the eUICC certificate, and the eUICC manufacturer certificate issuing the eUICC certificate to the profile providing server 610) (para. 0204).
Regarding claim 2, Park discloses wherein said device scans said information in a QR code prior to transmitting it (para. 0184, fig. 4).
Regarding claim 3, Park discloses wherein said secure element is a Sim card, a UICC, an eUICC or an iUICC (paras. 0044, 0067).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUTBUDDIN GHULAMALI whose telephone number is (571) 272-3014. The examiner can normally be reached 7:30am to 4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chieh Fan can be reached at 571 272 3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUTBUDDIN GHULAMALI/
Primary Examiner,
Art Unit 2632.
Prosecution Insights