DETAILED ACTION
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 .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 10/17/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
3. The drawings were received on 10/17/2024. These drawings are considered by examiner.
Terminal Disclaimer
4. Examiner suggests the Assignee must submit the Terminal Disclaimer accordingly, in order to process of the application promptly.
Double Patenting
5. The nonstatutory 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 nonstatutory 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).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,219,657 as further detailed in the table below:
Instant Application
United States Patent No. 12,219,657
Claim 1. A baseband processor comprising a memory and configured to: transmit a request to activate a first user equipment (UE) with a cellular carrier; transmit to the cellular carrier, in response to receiving an authentication request for authenticating a user of the first UE,
information identifying a second UE and authentication information for authenticating the user;
obtain verification information transmitted to the second UE; transmit the verification information to the cellular carrier; and after transmitting the verification information to the cellular carrier,
receive an embedded subscriber identity module (eSIM) subscription transferred from the second UE.
Claim 1. A method performed by a set of one or more servers, the method comprising: receiving, from a first user equipment (UE) to be activated with a cellular carrier for a user, and at the set of one or more servers,
information identifying a second UE of the user and authentication information for authenticating the user with the cellular carrier; authenticating the user using the authentication information;
transmitting a password to the second UE at least partly in response to authenticating the user;
receiving, from the first UE and at the set of one or more servers, the password; validating the password received from the first UE; and initiating a transfer of an embedded subscriber identity module (eSIM) subscription, from the second UE to the first UE, at least partly in response to validating the password.
Claim 6
Claim 8
Claim 11. An application server processor comprising a memory and configured to:
receive, from a first user equipment (UE) to be activated with a cellular carrier for a user, information identifying a second UE of the user and authentication information for authenticating the user with the cellular carrier;
authenticate the user using the authentication information;
transmit a password to the second UE at least partly in response to authenticating the user;
receive the password from the first UE; validate the password received from the first UE; and
initiate a transfer of an embedded subscriber identity module (eSIM) subscription, from the second UE to the first UE, at least partly in response to validating the password.
Claim 11. A network, comprising: a set of one or more servers, the set of one or more servers including a set of one or more processors configured to,
receive, from a first user equipment (UE) to be activated with a cellular carrier for a user, information identifying a second UE of the user and authentication information for authenticating the user with the cellular carrier;
authenticate the user using the authentication information;
transmit a password to the second UE at least partly in response to authenticating the user;
receive, from the first UE, the password; validate the password received from the first UE; and
initiate a transfer of an embedded subscriber identity module (eSIM) subscription, from the second UE to the first UE, at least partly in response to validating the password.
Claim 12
Claims 2,12, 20
Claim 13
Claims 3, 13
Claim 14
Claims 4, 14
Claim 15
Claim 5
Claim 16
Claims 6, 15
Claim 17
Claims 7, 16
Claim 18
Claim 8
Claim 19
Claims 9, 17
Claim 20
Claim 18
Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent claims include all the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, " a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claim preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 103
6. 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 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.
7. 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.
8. Claims 1-2, 4-8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Guru et al (US 11,146,944), hereinafter “Guru“, in view of Uehling et al (US 11,146,948), hereinafter “Uehling“.
Regarding claim 1, Guru teaches a baseband processor comprising a memory (fig. 1) and configured to:
transmit a request to activate a first user equipment (UE) with a cellular carrier (col. 9, lines 16-67);
transmit to the cellular carrier (col. 7, line 52 to col. 8, line 56), in response to receiving an authentication request for authenticating a user of the first UE (col. 7, line 52 to col. 8, line 56), information identifying a second UE and authentication information for authenticating the user (col. 9, line 39 to col. 10, line 60);
Guru does not explicitly teach obtain verification information transmitted to the second UE; transmit the verification information to the cellular carrier; and
after transmitting the verification information to the cellular carrier, receive an embedded subscriber identity module (eSIM) subscription transferred from the second UE.
Uehling, in the same field of endeavor, teaches obtain verification information transmitted to the second UE (col. 7, lines 16-51); transmit the verification information to the cellular carrier (col. 8, line 54 to col. 9, line 23); and
after transmitting the verification information to the cellular carrier (col. 8, line 54 to col. 9, line 23 teach the verification information, i.g., PIN, password), receive an embedded subscriber identity module (eSIM) subscription transferred from the second UE (col. 1, line 41 to col. 2, line 28 teach sharing eSIM credentials between two mobile communication devices).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Guru to Uehling, in order to provide authentication information to cell sites when they attach to the radio access network to receive wireless communication services such as the authentication information allows the wireless service provider to identify the mobile communication device and determine if the device has privileges for accessing its network (as suggested by Uehling in col. 1, lines 21-37).
Regarding claim 2, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru does not clearly teach configured to: transmit, to the cellular carrier, a notification of a status of the eSIM subscription transfer.
Uehling, in the same field of endeavor, teaches configured to: transmit, to the cellular carrier, a notification of a status of the eSIM subscription transfer (col. 1, line 40 to col. 2, line 28).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Guru to Uehling, in order to provide authentication information to cell sites when they attach to the radio access network to receive wireless communication services such as the authentication information allows the wireless service provider to identify the mobile communication device and determine if the device has privileges for accessing its network (as suggested by Uehling in col. 1, lines 21-37).
Regarding claim 4, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru further teaches configured to: encrypt, before transmitting to the cellular carrier, at least one of the authentication information for authenticating the user (col. 4, lines 5-42 teaches encrypted code and decrypts the code and the eSIM sharing application on the second device encrypts the input user code and sends the encrypted code to the eSIM sharing application on the first device), or the verification information.
Regarding claim 5, the combination of Guru and Uehling teach the baseband processor of claim 4, Guru further teaches wherein the at least one of the authentication information or the verification information is encrypted based on a configuration file including one or more keys for encrypting the authentication information (col. 4, lines 5-42 teaches encrypted code and decrypts the code and the eSIM sharing application on the second device encrypts the input user code and sends the encrypted code to the eSIM sharing application on the first device) or the verification information.
Regarding claim 6, the combination of Guru and Uehling teach the baseband processor of claim 5, Guru further teaches wherein the one or more keys for encrypting the authentication information (col. 4, lines 5-42 teaches encrypted code and decrypts the code and the eSIM sharing application on the second device encrypts the input user code and sends the encrypted code to the eSIM sharing application on the first device) or the password are valid for a limited time duration.
Regarding claim 7, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru further teaches wherein the verification information includes one or more of: a one-time password (OTP), a personal identification number (PIN) (col. 4, lines 5-42 teach to input a user code (e.g., a personal identification number-PIN), a password, a phrase, an image, or machine-readable code.
Regarding claim 8, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru further teaches configured to: prompt the user to provide, to an input system of the first UE, the verification information (col. 4, lines 5-42 teach to input a user code (e.g., a personal identification number-PIN).
Regarding claim 10, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru does not clearly teach wherein receipt of the embedded eSIM subscription indicates the verification information is validated by the cellular carrier.
Uehling, in the same field of endeavor, teaches wherein receipt of the embedded eSIM subscription indicates the verification information is validated by the cellular carrier (col. 8, line 54 to col. 9, line 23 teach the verification information, i.g., PIN, password).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Guru to Uehling, in order to provide authentication information to cell sites when they attach to the radio access network to receive wireless communication services such as the authentication information allows the wireless service provider to identify the mobile communication device and determine if the device has privileges for accessing its network (as suggested by Uehling in col. 1, lines 21-37).
9. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Guru et al (US 11,146,944), hereinafter “Guru“, in view of Uehling et al (US 11,146,948), hereinafter “Uehling“, further in view of Seenivasagam et al (US 2019/0392659), hereinafter “Seenivasagam”..
Regarding claim 9, the combination of Guru and Uehling teach the baseband processor of claim 1, Guru and Uehling do not clearly teach wherein the verification information is obtained from a photo taken by the first UE.
Seenivasagam, in the same field of endeavor teaches wherein the verification information is obtained from a photo taken by the first UE (pars [0086-0089]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Guru, Uehling to Seenivasagam, in order to provide the identification, verification, and authentication of an individual by obtaining a biometric feature (e.g., facial recognition) of an individual using a mobile device (e.g., a mobile device camera) (as suggested by Seenivasagam in paragraph [0001]).
Allowable Subject Matter
10. Claim 3 is 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 claim.
As to claim 3, the prior art of record fails to disclose wherein: at least one of the request to activate the first UE, the information identifying the second UE, the authentication information, or the verification information is transmitted to an endpoint configured in a memory of the first UE, the endpoint configured to provide activation service to the first UE, and obtaining the verification information comprises prompting the user, using a display of the first UE, to provide the verification information via an input system of the first UE as specified in the claim.
11. Claims 11-20 are allowed if the Terminal Disclaimer is filed.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T VU whose telephone number is (571)272-8131. The examiner can normally be reached on 8:00AM to 6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Appiah can be reached on (571-272-7904. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T VU/
Primary Examiner, Art Unit 2641
Prosecution Insights