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 .
Election/Restrictions
Claims 1-7 and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/31/2026.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gupta (US 2025/0193668 A1).
Regarding claims 8 and 18,. Gupta disclose a mobile network operator (MNO) entity and its related method comprising: a transceiver; at least one processor; and at least one memory storing instructions, wherein the instructions, when executed by the at least one processor, cause the MNO entity to:
receive, from a user associated with a target device, a request to transfer an embedded subscriber identity module (eSIM) from a source device to the target device,
wherein the source device is associated with a source original equipment manufacturer (OEM) entity and the target device is associated with a target OEM entity different from the source OEM entity, [0039 and 0052 expressly disclose that the OEM for the source and the target may be different]
request the target OEM entity to register the eSIM with the target OEM entity, [0057, request to activate at the target device]
generate a new profile of the eSIM, [0040, a new eSIM/profile may be generated to enable the transfer] and transmit the new profile to the target device via the target OEM entity for download and activation at the target device, thereby completing the transfer of the eSIM. [0040, The target wireless device 102B can download, install, and activate the eSIM 208 on an eUICC 108 of the target wireless device 102]
Allowable Subject Matter
Claims 9-12 and 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892 for further state of art references related to eSIMs and their transfer. For example, Barry (US 2021/0392488 A1) discloses a system which uses an SM-DS to discover and track eSIM information.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEWIS G WEST whose telephone number is (571)272-7859. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, George Eng can be reached at (571) 272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEWIS G WEST/Primary Examiner, Art Unit 2699
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