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 § 102
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.
Claims 1, 2, 6, 8, 9,10, 11, 15, 17, 18, 19, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. US 2016/0246611 A1 (hereinafter referred to as Li).
As per claim 1, Li teaches: A method for dynamic management of a reserve electronic subscriber identity module (eSIM) installed on an embedded universal integrated circuit card (eUICC), the method comprising: by one or more processors ([0003] and [0039]):
determining one or more conditions to use the reserve eSIM are satisfied ([0029] says “The selection agent is configured to select the particular bootstrap eSIM based on various criteria. The criteria can include location information associated with the mobile device, camping network information, business related information, installed eSIM information, and the like.”);
providing a recommendation for use of the reserve eSIM to one or more applications authorized to use the reserve eSIM ([0042] says “the selection agent includes logic that drives the selection of the particular bootstrap eSIM”, the recommendation being included in this logic);
detecting a network connection request for an application of the one or more applications authorized to use the reserve eSIM ([0011] says “(3) receive a request for a service, and (4) provide the requested service via the first bootstrap eSIM.” and [0037] says “In some embodiments, an eUICC can verify eSIM-related requests to ensure that a given communication is received from an entity authorized to make eSIM-related requests.”);
reconfiguring the reserve eSIM from an inactive state to an active state ([0030] says “When the selection agent identifies an appropriate bootstrap eSIM for selection, the selection agent provides, to the secure element, a unique identifier that corresponds to the selected bootstrap eSIM. In turn, the secure element activates the selected bootstrap eSIM.”); and
attaching to a wireless network via the reserve eSIM ([0051] says “The secure element OS activates the selected bootstrap eSIM, thereby providing the mobile device with limited wireless access to the MNO associated with the selected bootstrap eSIM.”).
As per claim 2, Li teaches: The method of claim 1, further comprising: disabling one or more active user eSIMs on the eUICC prior to reconfiguring the reserve eSIM from the inactive state to the active state ([0030] says “In some cases, the secure element deactivates a currently active bootstrap eSIM prior to activating the selected bootstrap eSIM.”).
As per claim 6, Li teaches: The method of claim 1, wherein: the one or more conditions to use the reserve eSIM are satisfied when:
iii) no Internet connectivity is available via a non-cellular wireless connection ([0061] says When the request is received, a determination is made regarding whether a Wi-Fi connection is available. When the Wi-Fi connection is available, the requested service is provided via the Wi-Fi connection. On the other hand, when the Wi-Fi connection is not available, the requested service is provided via the activated bootstrap eSIM.”).
As per claim 8, Li teaches: The method of claim 1, wherein the reserve eSIM is restricted for use, by the one or more applications, to one or more authorized tasks ([0024] says “bootstrap eSIM provides the mobile device with limited wireless access to the associated MNO's network for purposes of, for example, purchasing a data plan, mobile device unblocking, firmware updates, downloading eSIMs, and the like.”).
As per claim 9, Li teaches: The method of claim 8, wherein the one or more authorized tasks include provisioning of a new user eSIM to the eUICC ([0026] says “In some embodiments, the mobile device can roam onto a local carrier and attempt to download a subscriber eSIM. The local carrier can contact a provisioning carrier associated with a provisioning profile (of a bootstrap eSIM on the mobile device). When the provisioning carrier recognizes the user device (for example, when the bootstrap eSIM profile of the user device is registered with the provisioning carrier), the user device will be allowed to download a subscriber eSIM. The user device can then make a local call using the downloaded subscriber eSIM and avoid roaming charges.”).
As per claim 10, Li teaches: The method of claim 8, wherein the one or more authorized tasks include managing a cellular wireless subscription account associated with a user eSIM installed on the eUICC ([0061] says “For example, the user of the mobile device is allowed to purchase a data plan via the activated bootstrap eSIM.”).
Claims 11( and 20), 15, 17, 18, and 19 which are similar in scope respectively to claims 1, 6, 8, 9, 10 are thus rejected under the same rationale.
Claim Rejections - 35 USC § 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.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Bjørdal et al. US 2020/0050439 A1 (hereinafter referred to as Bjørdal).
As per claim 3, Li teaches: The method of claim 1 as discussed above, as well as determining whether to maintain use of the reserve eSIM based on monitoring the one or more conditions to use the reserve eSIM ([0029] and [0042] discuss using a particular eSIM based on various criteria).
However, Li does not teach:
establishing a network connection for the application via the reserve eSIM;
detecting completion of use of the network connection by the application;
Bjørdal teaches:
establishing a network connection for the application via the reserve eSIM ([0032] says the mobile device can “establish a connection with the MNO entity to which the eSIM corresponds” and discusses “utilization of the eSIM by its corresponding software application”);
detecting completion of use of the network connection by the application ([0060] says “the MNO entity provides a response to the data transmission—e.g., a response to a download request, an acknowledgement of a completion of an upload request, and so on. In turn, the mobile device can provide the response to the software application, thereby satisfying the data transmission initiated at step by the software application.”);
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention by the applicant to modify the method of Li with the teaching of Bjørdal to obtain the claimed invention. The suggestion/motivation for doing so would have been to enable the reserve eSIM to recognize when the pertinent application has finished using the connection and has no need to use the eSIM anymore.
As per claim 5, Li in view of Bjørdal teaches the limitations of claim 3 as discussed above. Additionally, Li teaches attaching to a wireless network via the reserve eSIM as mentioned in claim 1. The combination of Li and Bjørdal teaches maintaining attachment to the wireless network via the reserve eSIM when at least one condition to use the reserve eSIM is satisfied. ( Li, [0051])
The proposed combination as well as the motivation for combining the references presented in the rejection of the claim 3 apply to this claim and are incorporated herein by reference.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Bjørdal as applied to claim 3 above, and further in view of Xiong et al. US 2022/0104005 A1 (hereinafter referred to as Xiong).
As per claim 4, Li in view of Bjørdal teaches the limitations of claim 3 as discussed above. However, the combination does not teach reconfiguring the reserve eSIM from the active state to the inactive state when no conditions to use the reserve eSIM are satisfied.
Xiong teaches reconfiguring the reserve eSIM from the active state to the inactive state when no conditions to use the reserve eSIM are satisfied ([0047] says “after installation and activation of the fully functional eSIM, the wireless device can disable the bootstrap eSIM and enable connectivity with the fully functional eSIM.”).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention by the applicant to modify the method of Li as modified by Bjørdal with the teaching of Xiong to obtain the claimed invention. The suggestion/motivation for doing so would have been to disable the reserve eSIM when there is no longer any need to use it.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Francis et al. US 2021/0410038 A1 (hereinafter referred to as Francis) .
As per claim 7, Li teaches the limitations of claim 6 as discussed above. However, Li does not teach:
determining no Internet connectivity is available via the non-cellular wireless connection based on
i) detecting repeated connection failures over a continuous time period satisfying a time threshold, and
ii) detecting an unsuccessful probe resulting from sending one or more packets to a known endpoint after detection of the repeated connection failures.
25. Francis teaches:
i) detecting repeated connection failures over a continuous time period satisfying a time threshold ([0023] says “For example, failure detection module may determine whether a threshold number of errors were received in a threshold time period, such as ten seconds. Failure detection module may identify connectivity issues using different methods (e.g., based on the type of errors received). In response to detecting connectivity issues (e.g., a threshold number of errors in the threshold time period) in the wireless communications between the client device and the first server group, failure detection module may wirelessly transmit a first health check message from the client device to a second server group.”), and
ii) detecting an unsuccessful probe resulting from sending one or more packets to a known endpoint after detection of the repeated connection failures ([0023] says “Based on a result of wirelessly transmitting the first health check message from the client device to the second server group, the failure detection module determines whether the client device is experiencing a wireless communications interruption” and [0025] says “In some instances, the first health check may be unsuccessful e.g., because the client device is in an area where wireless connectivity is unavailable.”).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention by the applicant to modify the method of Li with the teaching of Francis to obtain the claimed invention. The suggestion/motivation for doing so would have been to ensure that connection failures are persistent prior to switching over to use of the reserve eSIM.
Claims 12, 13, 14, 16 which are similar in scope respectively to claims 3, 4, 5, 7 are thus rejected under the same rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Okuyama et al. (US 2001/0005859 A1) teaches network service detection of a network application activation or completion.
Kotecha et al. (US 2013/0329550 A1) teaches receiving connection requests from user devices and applications.
Sabapathi et al. (US 2022/0095180 A1) teaches services that are permitted to access using different SIM subscriptions.
Cunliffe (US 2023/0121282 A1) teaches ping testing used to determine connectivity.
Boettger (US 2023/0247436 A1) teaches application processing circuitry that can determine recommendations for suitable wireless connections by particular applications.
Li et al. (US 2024/0080654 A1) teaches provisioning eSIM use only for certain management operations.
Jung et al. (US 2022/0386105 A1) teaches eSIM profile management based on different profile policy rules.
Rajwar et al. (US 2022/0369094 A1) teaches switching eSIM profiles based on certain conditions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT JOSEPH S GUEVARA whose telephone number is (571)270-7184. The examiner can normally be reached Monday - Friday 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abderrahim Merouan can be reached at (571) 270-5254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.S.G./Examiner, Art Unit 2683
/ABDERRAHIM MEROUAN/Supervisory Patent Examiner, Art Unit 2683
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