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 .
This Office Action is in response to the communications for the present US application number 18/923,181 last filed on October 22nd, 2024.
Claims 1-17 are pending and have been examined, directed to METHOD AND APPARATUS FOR CLIENT-CENTRIC REMOTE PROFILE PROVISIONING ON M2M IOT DEVICES SUPPORTING ESIM.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are found in claims 6 and 12.
In claim 6, directed to a system of components, there are
…a provisioning control server configured to operate… …a…RSP…server configured to subscribe…
…a…IoT device configured to…
These systems, either the servers or the device, were interpreted as generic placeholders, each performing some function without sufficiently linked to some structure.
And because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the filed Specifications shows in ¶¶ [0103], [00110], [00112], and [00115], an open-ended nonlimiting list of examples, where if it’s only at least one system/server, that would mean, the rest can be implemented in software means. Also, the Fig. 10 black box with all the elements within can be entirely implemented in software as well.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 6-17 are 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.
Claim limitations in claims 6 and 12, like
…a provisioning control server configured to operate… …a…RSP…server configured to subscribe…
…a…IoT device configured to…
invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As previously explained above, the sections that cover the provisioning and RSP servers, can be implemented in software or all the internet blocks as illustrated in Fig. 10 can also be implemented via software means. The supporting paragraphs from the Filed Specifications are left open-end allowing for entire implementations via software to be possible.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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 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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. US 2022/0360970 A1 to Ahmed et al. (referred to hereafter as “Ahmed”) in view of U.S. Patent Publication No. US 2022/0116465 A1 to Descombes et al. (referred to hereafter as “Descombes”).
As to claim 1, Ahmed discloses a method of client-centric remote profile provisioning, which is a method of remote profile provisioning for an Internet of Things (IoT) device supporting an embedded subscriber identity module (eSIM, the method comprising:
generating, by a provisioning control server, a first topic to which a remote SIM provisioning (RSP) server is configured to subscribe and a second topic to which an IoT device is configured to subscribe, according to a message queueing telemetry transport (MQTT) protocol (Ahmed discloses of an overall similar system with distinct entities, like a MNO with control signals, and a remote SIM provisioning (RSP) server that can get requests or be triggered to publish some data, in accordance with some “topic”, like profile information, and that can then allow an endpoint/IoT to then download that profile data, under that “topic.” This can be repeated, meaning the RSP server can publish more than one “topic” for different reasons and endpoints (e.g., Ahmed: ¶¶ 139, 48-49, 54, 71 and Figs. 2, 6, 13 and 14).
While Ahmed discloses of the overall concept, Ahmed does not expressly disclose of the use of MQTT protocol, and that’s also why some terms like “topics” are not used, but it would have been obvious to one of ordinary skill in the art, before the effective filing date of the present application, that what’s published can be identified and categorized and treated as a “topic”, which relates to a profile, that a subscribed endpoint might also be interested in.
Descombes more expressly discloses of a similar scenario with the use of MQTT protocol, along with publishing and subscribing of various topics (e.g., Descombes: ¶¶ 127, 187-188, and 191).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present application, to combine and incorporate Descombes’ teachings of the use of MQTT within Ahmed’s overall system because the resulting combined system would be improved and can better handle topics and scale with multiple IoT endpoints);
publishing, by a first IoT device, a triggering message to start provisioning to the first topic to request the RSP server to publish a profile to be applied to the first IoT device (Ahmed discloses that an endpoint/IoT can make the request that can trigger a profile to be published, such as via a separate entity, like the MNO, which can then trigger the RSP to publish a profile that would then allow the endpoint to download and get it applied, e.g., Ahmed: ¶¶ 48-49, 54, and 71-72); and
publishing, by the RSP server, the profile to the second topic in response to the triggering message (Following the above steps and interpretations, Ahmed discloses that the RSP can be triggered by various reasons, to publish some data like some profile, which can be then retrieved by various IoT/endpoints, e.g., Ahmed: ¶¶ 48-49, 54, and 71-72 and Figs. 2 and 6).
As to claim 2, Ahmed further discloses the method of claim 1, further comprising downloading, by the first IoT device, the profile from the second topic (Following claim 1, the first IoT/endpoint or any other endpoints can download the published profile/data, e.g., Ahmed: ¶¶ 54, and 71-72).
As to claim 3, Ahmed further discloses the method of claim 1, further comprising, when the second topic is set to a multi-mode, downloading, by a second IoT device subscribing to the second topic, the profile from the second topic when the profile is published to the second topic by the RSP server (Following claim 1, while Ahmed discloses of the general concept with respect to publishing different data/topics, Ahmed does not expressly disclose of multi-mode.
Descombes more expressly discloses of a goal that supports multicasting to multiple endpoints, e.g., Descombes: ¶ 6).
See the previously stated reasons for combining and incorporating Descombes’ teachings within Ahmed’s overall system and teachings).
As to claim 4, Ahmed further discloses the method of claim 2, further comprising publishing, by a third IoT device subscribing to the second topic, a triggering message to start provisioning to the second topic with the first IoT device as a receiving target to request the first IoT device to publish the profile (Following claims 1 and 2, Ahmed discloses that a profile can be triggered for download as request, which also means it would have been obvious to one of ordinary skill in the art, before the effective filing date of the present application, that a third or fourth or any entity can request and trigger a profile to be shared (e.g., interest in a profile), e.g., Ahmed: ¶ 71).
As to claim 5, Ahmed further discloses the method of claim 4, further comprising:
receiving, by the first IoT device, the triggering message published by the third IoT device from the second topic (Following claims 1, 2, and 4, a third IoT/endpoint/entity can be a subscribing endpoint, interested in a particular “topic” or profile, e.g., Ahmed: ¶¶ 2, 10, 46 and 51);
publishing, by the first IoT device, the profile to the second topic with the third IoT device as a receiving target (A different or “first” IoT with the sought after profile can be triggered to share the profile, e.g., Ahmed: ¶ 71); and
downloading, by the third IoT device, the profile from the second topic when the first IoT device publishes the profile to the second topic (Following the above steps, the third IoT/endpoint would be able to get the profile, given their subscription, e.g., Ahmed: ¶¶ 46, 51, and 72-73).
As to claim 6, Ahmed further discloses a system for remote profile provisioning for an Internet of Things (IoT) device supporting an embedded subscriber identity module (eSIM), the system comprising:
a provisioning control server configured to operate a first topic and a second topic generated according to a message queueing telemetry transport (MQTT) protocol (See the similar interpreted response in claim 1 that covers both/multiple publish-subscribes, from different entities, like an MNO or RSP, and in accordance with the use of MQTT protocol (as supplemented from Descombes’ teachings));
a remote SIM provisioning (RSP) server configured to subscribe to the first topic (See the similar interpreted response in claim 1); and
a first IoT device configured to subscribe to the second topic (See the similar interpreted response in claim 1),
wherein the RSP server publishes a profile to be applied to the first IoT device to the second topic (See the similar interpreted response in claim 1), and
the first IoT device downloads the profile from the second topic (See the similar interpreted response in claim 2).
As to claim 7, Ahmed further discloses the system of claim 6, wherein, before downloading the profile, the first IoT device publishes a triggering message to start provisioning to the first topic to request the RSP server to publish the profile (See the similar interpreted response in claim 1).
As to claim 8, Ahmed further discloses the system of claim 6, wherein, before publishing the profile to the second topic, the RSP server publishes a triggering message to start provisioning to the second topic to request the first IoT device to download the profile (The RSP can be triggered to publish/share some profile, which would provision the “topic”, and that that in turn would trigger or allow an endpoint like the first IoT/endpoint to retrieve it from their subscription, e.g., Ahmed: ¶¶ 48-49, 54, and 71-72).
As to claim 9, see the similar corresponding rejection of claim 3.
As to claim 10, see the similar corresponding rejection of claim 4.
As to claim 11, see the similar corresponding rejection of claim 5.
As to claim 12, see the similar interpreted response in claim 6 (or similarly from claims 1 and 2), wherein Ahmed discloses of different variations involving the different entities (e.g., a MNO or RSP) that can publish and subscribe to one or more topics, in accordance with the use of MQTT protocol (as supplemented from Descombes’ teachings).
As to claim 13, see the similar corresponding rejection of claim 7 and/or 1.
As to claim 14, see the similar corresponding rejection of claim 8.
As to claim 15, see the similar corresponding rejection of claim 9.
As to claim 16, see the similar corresponding rejection of claim 10.
As to claim 17, see the similar corresponding rejection of claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiang Yu whose telephone number is (571)270-5695. The examiner can normally be reached M-F 9:30-3:00 (PST/PDT).
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, Emmanuel Moise can be reached at (571)272-3865. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Xiang Yu/Examiner, Art Unit 2455