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 .
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 1-19 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.
The broad formulation of claim 1 is not supported by the description and this claim does not comply with the requirements of MPEP 609.01 also for this reason. As mentioned in the MPEP 609.01, claims must not be broader than is justified by the description and drawings. In the present case, claim 1 discloses that the eUICC obtains from a network server, data for the MNO. Data for the MNO is very broad and encompasses, for example data for network management. This example is clearly not covered by the description. In order for claim 1 to be supported by the description, the data for the MNO should be more precisely defined e.g. based on Figure 5, defining that the obtained data is a b-IMSI: eUICC receives an initiate b-IMSI acquisition message from the wireless device processor eUICC uses a NAS attach procedure with initial IMSI to obtain a server assigned bootstrap b-IMSI Similarly, claim 1 defines a binding command to merge a portion of the data for the MNO with an eSIM template associated with the MNO. Merging a portion of the data for the MNO with an eSIM template is very broad. It encompasses for
instance that some network management parameters are introduced in the eSIM template. This merging is more precisely defined in the description, see paragraph 43 also in the context of Figure 5: "The eUICC 108 can merge previously cached b-IMSI data into the eSIM template 306 to customize the eSIM template for the wireless device 102, generating a device specific bootstrap eSIM".
This limitation should be introduced in claim 1 in order for claim 1 to be supported by the description.
Similarly, claim 1 discloses the merging of a portion of the data for the MNO with an eSIM template to create a customized eSIM for the wireless device. This feature is very broad, the merging encompassing many possibilities e.g. Network management or QoS parameters. In the description, the merging to create a customized eSIM is precisely defined, see e.g. paragraph 0043 and involves merging previously cached IMSI data into the eSIM template to customize the eSIM template for the wireless device.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: It’s interpreted, the prior art of record either singularly or in proper combination fails to teach wherein device processor obtains from the eUICC eSIM template information for one or more eSIM template available in the eUICC, determines the eSIM template associated with the MNO and sends to the eUICC a binding command to create the eSIM associated with the MNO and customized for the wireless device, this customization being defined by the merging[ as discussed previously].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH E DEAN, JR whose telephone number is (571)270-7116. The examiner can normally be reached Mon-Fri 7:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Slater can be reached at 571-270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH E DEAN, JR/ Primary Examiner, Art Unit 2647
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