Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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A) Claims 1-2, 4, 7, 13 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6, and 11-12 of U.S. Patent No. 12,144,062 B2 in view of Scholl (US 2021/0110364 A1).
Please see table below for claim 1:
Instant application No. 18/910,212
U.S. Patent No. 12,144,062 B2
1. A method in a communications network comprising: displaying on a UE, an icon representing an identifier; receiving a touch indication on a display indicating a selection of the icon representing the identifier; encoding the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
1. A method in a communications network comprising: sending, by a UE, a request to reserve an embedded subscriber identity module (eSIM) profile, wherein the request to reserve the eSIM profile comprises a voice call to a network operator using the UE; receiving, by the UE, a request to provide an embedded Universal Integrated Circuit Card identifier (EID) in response to the request to reserve the eSIM profile; displaying on the UE, an icon representing the EID; receiving a touch indication on a display indicating a selection of the icon representing the EID; encoding the EID associated with the icon representing the EID into one or more telecommunications signals, wherein the encoding comprises converting the EID into an audible signal; and causing the eSIM profile to be reserved for the UE by transmitting the one or more telecommunications signals comprising the encoded EID associated with the icon representing the EID from the UE.
The claim 1 of instant application encompass the same subject matter except “transmitting the one or more signals in an ongoing voice call.”
In the same field of endeavor, Scholl teaches transmitting the one or more signals in an ongoing voice call (¶0016-17, transmitting the signals over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of applicant’s claimed invention to implement US 2021/0110364 A1 because it was notoriously well known to provide a method and/or system by the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
Nonetheless, the removal of said limitation from claim 1 of the current application made these claim as a broader version of claim 1 of U.S. Patent No. 12,144,062 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 1 of U.S. Patent No. 12,144,062 B2 and claim 1 of the current application is not patentably distinct from each other.
B) Claims 2 and 4 of instant application correspond to claims 2 and 4 of allowed U.S. patent 12,144,062 B2. Please see the table below:
Instant application No. 18/910,212
U.S. Patent No. 12,144,062 B2
2. The method of claim 1, further comprising initiating a voice call.
2. The method of claim 1, wherein the request to reserve the eSIM profile comprises initiating a voice call.
4. The method of claim 1, wherein the identifier is requested during the voice call.
4. The method of claim 3, wherein transmitting the encoded EID comprises transmitting the audible signal during the voice call.
C) Please see table below for claim 7:
Instant application No. 18/910,212
U.S. Patent No. 12,144,062 B2
7. A system in a communications network, the system comprising: a processor; and one or more computer storage hardware devices storing computer-usable instructions that, when used by the processor, cause the processor to: display on a UE, an icon representing an identifier; receive a touch indication on a display indicating a selection of the icon representing the identifier; encode the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmit the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
6. A system in a communications network, the system comprising: a processor; and one or more computer storage hardware devices storing computer-usable instructions that, when used by the processor, cause the processor to: send a request to reserve an embedded subscriber identity module (eSIM) profile, wherein the request to reserve the eSIM profile comprises a voice call to a network operator using a UE; receive a request to provide an embedded Universal Integrated Circuit Card identifier (EID) in response to the request to reserve the eSIM profile; display on a display of the UE, an icon representing the EID; receive a touch indication on the display indicating a selection of the icon representing the EID; encode the EID associated with the icon representing the EID into one or more telecommunications signals, wherein the encoding comprises converting the EID into one or more dual-tone multi-frequency signaling tones; and cause the eSIM profile to be reserved for the UE by transmitting the one or more telecommunications signals comprising the encoded EID associated with the icon representing the EID from the UE.
The claim 7 of instant application encompass the same subject matter except “transmit the one or more signals in an ongoing voice call.”
In the same field of endeavor, Scholl teaches transmit the one or more signals in an ongoing voice call (¶0016-17, transmitting the signals over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of applicant’s claimed invention to implement US 2021/0110364 A1 because it was notoriously well known to provide a method and/or system by the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
Nonetheless, the removal of said limitation from claim 7 of the current application made these claim as a broader version of claim 6 of U.S. Patent No. 12,144,062 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 6 of U.S. Patent No. 12,144,062 B2 and claim 7 of the current application is not patentably distinct from each other.
D) Please see table below for claim 13:
Instant application No. 18/910,212
U.S. Patent No. 12,144,062 B2
13. Non-transitory computer-readable storage media having stored thereon executable instructions that when executed by a processor of a computing device perform steps comprising: displaying on a UE, an icon representing an identifier; receiving a touch indication on a display indicating a selection of the icon representing the identifier; encoding the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
11. Non-transitory computer-readable storage media having stored thereon executable instructions that when executed by a processor of a computing device controls the computing device to perform steps for a call waiting method, the steps comprising: sending, by a UE, a request to reserve an embedded subscriber identity module (eSIM) profile wherein the request to reserve the eSIM profile comprises a voice call to a network operator using the UE; receiving, by the UE, a request to provide an embedded Universal Integrated Circuit Card identifier (EID) in response to the request to reserve the eSIM profile; displaying on the UE, an icon representing the EID; receiving a touch indication on a display indicating a selection of the icon representing the EID; encoding the EID associated with the icon representing the EID into one or more telecommunications signals, wherein the encoding comprises converting the EID into one or more dual-tone multi-frequency signaling tones; and causing the eSIM profile to be reserved for the UE by transmitting the one or more telecommunications signals comprising the encoded EID associated with the icon representing the EID from the UE.
The claim 13 of instant application encompass the same subject matter except “transmitting the one or more signals in an ongoing voice call.”
In the same field of endeavor, Scholl teaches transmitting the one or more signals in an ongoing voice call (¶0016-17, transmitting the signals over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of applicant’s claimed invention to implement US 2021/0110364 A1 because it was notoriously well known to provide a method and/or system by the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
Nonetheless, the removal of said limitation from claim 13 of the current application made these claim as a broader version of claim 11 of U.S. Patent No. 12,144,062 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claim 11 of U.S. Patent No. 12,144,062 B2 and claim 13 of the current application is not patentably distinct from each other.
E) Claim 16 of instant application correspond to claim 12 of allowed U.S. patent 12,144,062 B2. Please see the table below:
Instant application No. 18/910,212
U.S. Patent No. 12,144,062 B2
16. The non-transitory computer-readable storage media of claim 13, wherein the identifier comprises a numerical identifier.
12. The non-transitory computer-readable storage media of claim 11, wherein the EID comprises a numerical identifier.
Claim Rejections - 35 USC § 103
3. 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 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.
A) Claims 1-4, 6-11, 13-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over TAO (EP 4021042 A1) in view of Scholl (US 2021/0110364 A1).
As per claim 1, TAO teaches a method in a communications network (¶0130, method in the cellular network) comprising: displaying on a UE, an icon representing an identifier (¶0130 and Fig.7(a), displaying on the electronic device an icon 710 representing EID (i.e. identifier)); receiving a touch indication on a display indicating a selection of the icon representing the identifier (¶0130 and Fig.7(a) and 7(d), receiving a tap operation (i.e. touch indication) on display indicating a selection of the icon 710 representing the EID).
However, TAO does not explicitly tach encoding the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
In the same field of endeavor, Scholl teaches encoding the identifier associated with the icon representing the identifier into one or more signals (¶0017, encrypting or encoding the merchant identifier into an audio signal, wherein the encoding comprises converting the identifier into an audible signal (¶0017, the merchant identifier is converted to digital (e.g., binary) values, and each digital value is assigned an audio frequency); and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call (¶0016-17, transmitting the signals comprising the encrypted or encoded the merchant identifier into an audio signal that can be transmitted over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 2 as applied to claim 1 above, TAO further teaches initiating a voice call (¶0095, making or initiating a voice call).
As per claim 3 as applied to claim 1 above, TAO further teaches wherein the display receiving the touch indication is the display of the UE (¶0130 and Fig.7(a), receiving tap operation (i.e. touch indication) on display of the electronic device).
As per claim 4 as applied to claim 1 above, TAO does not explicitly teach wherein the identifier is requested during the voice call.
In the same field of endeavor, Scholl teaches wherein the identifier is requested during the voice call (¶0026-27, merchant identifier is requested during telephone call).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 6 as applied to claim 1 above, TAO does not explicitly teach wherein the identifier comprises an alphanumerical identifier.
In the same field of endeavor, Scholl teaches wherein the identifier comprises an alphanumerical identifier (¶0017, merchant identifier may be a unique identifier (e.g., a number or alphanumeric code)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 7, TAO teaches a system in a communications network (¶0044, a system), the system comprising: a processor (¶0044, processor); and one or more computer storage hardware devices storing computer-usable instructions that (¶0044, computer storage storing computer instructions), when used by the processor, cause the processor to: display on a UE, an icon representing an identifier (¶0130 and Fig.7(a), displaying on the electronic device an icon 710 representing EID (i.e. identifier)); receive a touch indication on a display indicating a selection of the icon representing the identifier (¶0130 and Fig.7(a) and 7(d), receiving a tap operation (i.e. touch indication) on display indicating a selection of the icon 710 representing the EID).
However, TAO does not explicitly tach encode the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmit the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
In the same field of endeavor, Scholl teaches encode the identifier associated with the icon representing the identifier into one or more signals (¶0017, encrypting or encoding the merchant identifier into an audio signal, wherein the encoding comprises converting the identifier into an audible signal (¶0017, the merchant identifier is converted to digital (e.g., binary) values, and each digital value is assigned an audio frequency); and transmit the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call (¶0016-17, transmitting the signals comprising the encrypted or encoded the merchant identifier into an audio signal that can be transmitted over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 8 as applied to claim 7 above, TAO further teaches initiate a voice call (¶0095, making or initiating a voice call).
As per claim 9 as applied to claim 7 above, TAO does not explicitly teach wherein the identifier comprises an alphanumerical identifier.
In the same field of endeavor, Scholl teaches wherein the identifier comprises an alphanumerical identifier (¶0017, merchant identifier may be a unique identifier (e.g., a number or alphanumeric code)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 10 as applied to claim 7 above, TAO further teaches wherein the display receiving the touch indication is the display of the UE (¶0130 and Fig.7(a), receiving tap operation (i.e. touch indication) on display of the electronic device).
As per claim 11 as applied to claim 7 above, TAO does not explicitly teach wherein the identifier is requested during the voice call.
In the same field of endeavor, Scholl teaches wherein the identifier is requested during the voice call (¶0026-27, merchant identifier is requested during telephone call).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 13, TAO teaches non-transitory computer-readable storage media having stored thereon executable instructions that when executed by a processor of a computing device (¶0044, computer-readable storage media having stored thereon executable instructions that when executed by a processor) perform steps comprising: displaying on a UE, an icon representing an identifier (¶0130 and Fig.7(a), displaying on the electronic device an icon 710 representing EID (i.e. identifier)); receiving a touch indication on a display indicating a selection of the icon representing the identifier (¶0130 and Fig.7(a) and 7(d), receiving a tap operation (i.e. touch indication) on display indicating a selection of the icon 710 representing the EID).
However, TAO does not explicitly tach encoding the identifier associated with the icon representing the identifier into one or more signals, wherein the encoding comprises converting the identifier into an audible signal; and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call.
In the same field of endeavor, Scholl teaches encoding the identifier associated with the icon representing the identifier into one or more signals (¶0017, encrypting or encoding the merchant identifier into an audio signal, wherein the encoding comprises converting the identifier into an audible signal (¶0017, the merchant identifier is converted to digital (e.g., binary) values, and each digital value is assigned an audio frequency); and transmitting the one or more signals comprising the encoded identifier associated with the icon representing the identifier from the UE in an ongoing voice call (¶0016-17, transmitting the signals comprising the encrypted or encoded the merchant identifier into an audio signal that can be transmitted over the land line when a telephone call is connected between the merchant computing device and the landline telephone device (i.e. an ongoing voice call)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 14 as applied to claim 13 above, TAO further teaches initiating a voice call (¶0095, making or initiating a voice call).
As per claim 15 as applied to claim 13 above, TAO does not explicitly teach wherein the identifier comprises an alphanumerical identifier.
In the same field of endeavor, Scholl teaches wherein the identifier comprises an alphanumerical identifier (¶0017, merchant identifier may be a unique identifier (e.g., a number or alphanumeric code)).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 16 as applied to claim 13 above, TAO does not explicitly teach, wherein the identifier comprises a numerical identifier.
In the same field of endeavor, Scholl teaches wherein the identifier comprises a numerical identifier (¶0022, identifier comprises a numeric).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 17 as applied to claim 13 above, TAO does not explicitly teach receiving a request for the identifier.
In the same field of endeavor, Scholl teaches receiving a request for the identifier (¶0026-27, receiving a requested for the merchant identifier).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 18 as applied to claim 13 above, TAO does not explicitly teach wherein the identifier is requested during the voice call.
In the same field of endeavor, Scholl teaches wherein the identifier is requested during the voice call (¶0026-27, merchant identifier is requested during telephone call).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Scholl into
invention of TAO in order to identify, in response to the query, the merchant by matching the extracted merchant identifier against the plurality of merchant identifier in the database for securely transacting over a landline.
As per claim 20 as applied to claim 13 above, TAO further teaches wherein the display receiving the touch indication is the display of the UE (¶0130 and Fig.7(a), receiving tap operation (i.e. touch indication) on display of the electronic device).
B) Claims 5, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over TAO (EP 4021042 A1) in view of Scholl (US 2021/0110364 A1) and further in view of Schell (US 2012/0108295 A1).
As per claim 5 as applied to claim 4 above, TAO in view of Scholl does not explicitly teach, wherein the identifier is requested by a customer care representative.
In the same field of endeavor, Schell teaches wherein the identifier is requested by a customer care representative (¶0078, request is made by sales representative to tie a user account to the access data corresponding to the unique identifier of the device by requesting the eSIM associated to the ICC-ID).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Schell into
invention of TAO and Scholl in order to allow user equipment to authenticate to wireless networks using access control clients for secure communication.
As per claim 12 as applied to claim 11 above, TAO in view of Scholl does not explicitly teach, wherein the identifier is requested by a customer care representative.
In the same field of endeavor, Schell teaches wherein the identifier is requested by a customer care representative (¶0078, request is made by sales representative to tie a user account to the access data corresponding to the unique identifier of the device by requesting the eSIM associated to the ICC-ID).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Schell into
invention of TAO and Scholl in order to allow user equipment to authenticate to wireless networks using access control clients for secure communication.
As per claim 19 as applied to claim 18 above, TAO in view of Scholl does not explicitly teach, wherein the identifier is requested during the voice call by a representative.
In the same field of endeavor, Schell teaches wherein the identifier is requested during the voice call by a representative (¶0078, request is made by sales representative to tie a user account to the access data corresponding to the unique identifier of the device by requesting the eSIM associated to the ICC-ID via the Internet or telephone call).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of applicant’s claimed invention to have incorporated Schell into
invention of TAO and Scholl in order to allow user equipment to authenticate to wireless networks using access control clients for secure communication.
Conclusion
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARIDEH MADANI whose telephone number is (571)272-1249. The examiner can normally be reached Monday through Friday; 9 AM to 5 PM EST.
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/FARIDEH MADANI/Examiner, Art Unit 2643
/JINSONG HU/ Supervisory Patent Examiner, Art Unit 2643
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