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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 10/23/2024, 2/18/2025, 7/28/2025, and 4/13/2026 have been considered by the examiner.
Claim Objections
Claims 8, 15-17, and 20 are objected to because of the following informalities:
Regarding claim 8: line 2 includes “a wireless device” which should be similar to “a wireless device that includes the eUICC” to obviate 35 USC 112 written description / indefinite issues where wireless device is unbounded and could be any wireless device.
Regarding claim 15: line 6 includes “a fully functional eSIM” which should be “[[a]] the fully functional eSIM”.
Regarding claim 16: the claim is interpreted and objected to for substantially the same reason as set forth in claim 8.
Regarding claim 17: line 1 includes “A non-transitory computer readable storage medium storing instructions for configuring” which should be “A non-transitory computer readable storage medium storing instructions executed by” to obviate broad interpretation of software per se.
Regarding claim 20: line 6 includes “a fully functional eSIM” which should be “[[a]] the fully functional eSIM”.
Appropriate correction is required.
Double Patenting
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 1-3 and 5-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 17-19 of U.S. Patent No. 12,133,293 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because take examples of comparing claims 1-2 of the pending application with claims 1-2 of U.S. Patent No. 12,133,293 B2:
18/924,311
US 12,133,293 B2
(claim 1) A method for notifying provisioning status of one or more electronic subscriber identity modules (eSIMs) on an embedded universal integrated circuit card (eUICC), the method comprising:
(claim 1 [*limitations not required in 18/924,311 omitted]) A method for notifying ... provisioning status of one or more electronic subscriber identity modules (eSIMs) on an embedded universal integrated circuit card (eUICC) ..., the method comprising:
by device processing circuitry comprising a baseband processor: obtaining, from the eUICC, an eSIM notification list indicating notification messages for one or more eSIMs installed on the eUICC;
... receiving, from device processing circuitry ... an eSIM notification list for eSIMs installed on the eUICC; providing, to the device processing circuitry ... the eSIM notification list; receiving, from the device processing circuitry, ... a notification for a first eSIM included in the eSIM notification list;
obtaining, from the eUICC for a first eSIM indicated in the eSIM notification list, a first notification message generated during installation of the first eSIM on the eUICC while at a wireless device assembly and/or testing facility; and
receiving ... a notification for a first eSIM included in the eSIM notification list; receiving, from the device processing circuitry, ... a notification for a first eSIM included in the eSIM notification list; providing ... the notification for the first eSIM, the first eSIM was installed on the eUICC of the wireless device at a manufacturing facility for the wireless device.
sending, to a first provisioning server of a first mobile network operator (MNO) associated with the first eSIM, the first notification message indicating successful installation of the first eSIM on the eUICC.
... forwards the notification ... to a provisioning server of a first mobile network operator (MNO) associated with the first eSIM, the notification for the first eSIM indicates to the provisioning server of the first MNO that the first eSIM is installed on the eUICC ...
(claim 2) The method of claim 1, wherein the first notification message includes a network address of the first provisioning server of the first MNO.
(claim 2) The method of claim 1, wherein the notification ... includes a network address of the provisioning server of the first MNO.
Regarding claim 3, the claim corresponds to claim 3.
Regarding claim 5, the claim corresponds to claim 4.
Regarding claim 6, the claim corresponds to claim 5.
Regarding claim 7, the claim corresponds to claim 6.
Regarding claim 8, the claim corresponds to claim 7.
Regarding claim 9, the claim corresponds to claim 17.
Regarding claim 10, the claim corresponds to claim 18.
Regarding claim 11, the claim corresponds to claim 19.
Regarding claim 12, the claim corresponds to claim 19.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-4, 8-9, 11-12, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over GSMA (SGP.22 RSP Technical Specification, made of record in the IDS of 4/13/2026) hereinafter GSMA in view of Park et al. (US 2018/0123803 A1) hereinafter Park.
Regarding claim 1, GSMA teaches a method for notifying provisioning status of one or more electronic subscriber identity modules (eSIMs) on an embedded universal integrated circuit card (eUICC) (report about profile installation processed by embedded universal integrated circuit card (eUICC); page 9 section 1.5 Definition of Terms, remote subscriber identity modules (SIMs) provisioning including installing profile [SIM]; page 11 section 1.5 Definition of Terms), the method comprising: by device processing circuitry comprising a baseband processor (baseband processor for eUICC; pages [76, 115-116]): obtaining, from the eUICC, an eSIM notification list indicating notification messages for one or more eSIMs installed on the eUICC (list of already installed profiles within eUICC presented [obtained]; pages [82, 89] section 3.2.1 Enable Profile step 0 and 3.2.4 List Profiles step 2, eUICC information provided in profile installation procedure includes list of supported Global System for Mobile Communications Association (GSMA) certificate issuer (CI) Key IDs for Remote Sim Profile (RSP) server signature verification and list of GSMA CI Key IDs for which eUICC has signed certificate [notification messages] that can be used for signature verification by RSP server; page 115 section 4.3 eUICC Information); obtaining, from the eUICC for a first eSIM indicated in the eSIM notification list, a first notification message (profile installation procedure includes list of GSMA CI Key IDs for which eUICC has signed certificate [notification messages] that can be used for signature verification by RSP server; page 115 section 4.3 eUICC Information) generated during installation of the first eSIM on the eUICC while at a wireless device assembly (pre-loaded / pre-installed profiles; pages [88-89, 202] sections [3.2.3, 3.2.4, 5.7.19], examiner notes the use of alternative language here, thus, only one of the alternative features need to be shown by reference) and/or testing facility (test profiles; pages [88-89, 202] sections [3.2.3, 3.2.4, 5.7.19]).
While GSMA discloses mobile network operators (MNOs), operator Subscription Manager Data Preparation (SM-DP+), servers, transmitting a response indicating enabled profile, and notifications of successful profile management operation, GSMA does not explicitly disclose sending, to a first provisioning server of a first mobile network operator (MNO) associated with the first eSIM, the first notification message indicating successful installation of the first eSIM on the eUICC.
However, in the same field of endeavor, Park teaches sending, to a first provisioning server of a first mobile network operator (MNO) associated with the first eSIM (device sends event result to subscription manager secure routing (SM-SR) / subscription manager data preparation (SM-DP) [provisioning server]; para. [41-42, 251-252], mobile network operator (MNO) associated with SM-SR operates management processes; para. [67, 298]), the first notification message indicating successful installation of the first eSIM on the eUICC (device sends event result to SM-SR / SM-DP after [indicating] successful profile installation; para. [41-42, 248-252]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the system of GSMA, where GSMA’s definition of provisioning and management of eUICC (page 7 section 1.3 Document Purpose) along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
Regarding claim 3, the combination of GSMA and Park teaches the limitation of previous claim 1.
GSMA further teaches further comprising: by the device processing circuitry: obtaining, from the eUICC for a second eSIM indicated in the eSIM notification list, a second notification message generated during installation of the second eSIM on the eUICC while at the wireless device assembly and/or testing facility (start conditions include multiple [second] profile installation; pages 60-61 section 3.1.3 Profile Download and Installation, profile installation procedure includes list of GSMA CI Key IDs for which eUICC has signed certificate [notification messages] that can be used for signature verification by RSP server; page 115 section 4.3 eUICC Information).
While GSMA discloses enabling multiple profiles and reporting of results regarding management of multiple profiles, GSMA does not explicitly disclose sending, to a second provisioning server of a second MNO associated with the second eSIM, the second notification message indicating successful installation of the second eSIM on the eUICC.
However, in the same field of endeavor, Park further teaches sending, to a second provisioning server of a second MNO associated with the second eSIM (device sends event result to SM-SR / SM-DP [provisioning server]; para. [41-42, 251-252], MNO associated with SM-SR operates management processes; para. [67, 298], proprietary values between MNOs / MNO IDs [second MNO]; Tables [1, 88, 96], second profile; para. 176), the second notification message indicating successful installation of the second eSIM on the eUICC (device sends event result to SM-SR / SM-DP after [indicating] successful profile installation; para. [41-42, 248-252]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
Regarding claim 4, the combination of GSMA and Park teaches the limitation of previous claim 3.
While GSMA discloses MNO identifiers, GSMA does not explicitly disclose wherein the first MNO is distinct from the second MNO.
However, in the same field of endeavor, Park further teaches wherein the first MNO is distinct from the second MNO (proprietary values between MNOs / MNO IDs [distinct MNOs]; Tables [1, 88, 96]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
Regarding claim 8, the combination of GSMA and Park teaches the limitation of previous claim 1.
While GSMA discloses boot-time and initialization, GSMA does not explicitly disclose wherein the first notification message is sent to the first provisioning server of the first MNO during an initialization procedure for a wireless device.
However, in the same field of endeavor, Park further teaches wherein the first notification message is sent to the first provisioning server of the first MNO during an initialization procedure for a wireless device (method performed during initialization; para. 16-17).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
Regarding claim 9, the claim is interpreted and rejected for the same reason as set forth in claim 1, including device processing circuitry comprising a baseband processor communicatively coupled to embedded universal integrated circuit card (eUICC) (baseband processor for eUICC; pages [76, 115-116]) and to a memory storing instructions (eUICC firmware [memory] / applet; page [22, 115] Fig. 3 and section 4.3 eUICC Information, software; page 76 section 3.1.5 Error Handling Within the Profile Download Procedure).
Regarding claim 11, the claim is interpreted and rejected for the same reason as set forth in claim 3.
Regarding claim 12, the claim is interpreted and rejected for the same reason as set forth in claim 4.
Regarding claim 16, the claim is interpreted and rejected for the same reason as set forth in claim 8.
Regarding claim 17, the claim is interpreted and rejected for the same reason as set forth in claim 9, including non-transitory computer readable storage medium storing instructions (eUICC firmware [memory] / applet; page [22, 115] Fig. 3 and section 4.3 eUICC Information, software; page 76 section 3.1.5 Error Handling Within the Profile Download Procedure).
Regarding claim 18, the claim is interpreted and rejected for the same reason as set forth in claim 11.
Regarding claim 19, the claim is interpreted and rejected for the same reason as set forth in claim 12.
Claim(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over GSMA in view of Park, and further in view of Lee et al. (US 2022/0326959 A1) hereinafter Lee.
Regarding claim 2, the combination of GSMA and Park teaches the limitation of previous claim 1.
While the combination of GSMA and Park variously disclose recipient address and uniform resource locator in success notification messages, the combination of GSMA and Park does not explicitly disclose wherein the first notification message includes a network address of the first provisioning server of the first MNO.
However, in the same field of endeavor, Lee teaches wherein the first notification message includes a network address of the first provisioning server of the first MNO (after success, device transmits SM-DP address; para. 140-141).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Lee to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Lee’s downloading SIM profile in bootstrap profile (para. 20) improves system efficiency by enabling downloading of SIM profile in a communication environment that is limited in a communication system.
Regarding claim 10, the claim is interpreted and rejected for the same reason as set forth in claim 2.
Claim(s) 5-6 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over GSMA in view of Park, and further in view of Narasimhan et al. (US 2018/0069581 A1) hereinafter Narasimhan.
Regarding claim 5, the combination of GSMA and Park teaches the limitation of previous claim 3.
While GSMA discloses bound profile packages (BPP), GSMA does not explicitly disclose wherein the first eSIM and the second eSIM were installed on the eUICC from bound profile packages (BPPs).
However, in the same field of endeavor, Park teaches wherein the first eSIM and the second eSIM were installed on the eUICC from bound profile packages (BPPs) (installing bulk [first / second] profiles; para. 204, local profile assistant (LPA) receives Bound Profile Package (BPP) including profile info from SM-DP; para. 145-146, LPA included in terminal for profile download / installation / management operations for eUICC; para. 101).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
While the combination of GSMA and Park discloses temporarily storing profile information, the combination of GSMA and Park does not explicitly disclose stored at a local provisioning server that received the BPPs from a BPP aggregator server.
However, in the same field of endeavor, Narasimhan teaches stored at a local provisioning server that received the BPPs from a BPP aggregator server (eSIM server [BPP aggregator server] stores BPP until requested; para. 41).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Narasimhan to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Narasimhan’s updating trust (para. [07-12]) improves the system by updating trust of servers after policy update.
Regarding claim 6, the combination of GSMA, Park, and Narasimhan teaches the limitation of previous claim 5.
GSMA does not explicitly disclose wherein the first provisioning server of the first MNO and the second provisioning server of the second MNO individually provided the BPPs for the respective first and second eSIMs prior to assembly and/or testing of a wireless device.
However, in the same field of endeavor, Park teaches wherein the first provisioning server of the first MNO and the second provisioning server of the second MNO individually provided the BPPs for the respective first and second eSIMs prior to assembly and/or testing of a wireless device (BPP includes one-time public key of SM-DP; para. 145, profile package includes one-time public key of profile providing server [individual provided for first / second]; para. [184, 190]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Park to the modified system of GSMA, Park, and Narasimhan, where GSMA, Park, and Narasimhan’s modified system along with Park’s profile management for roaming (para. 10-13) improves the system by ensuring interoperability between different manufacturers and operators of devices and networks.
Regarding claim 13, the claim is interpreted and rejected for the same reason as set forth in claim 5.
Regarding claim 14, the claim is interpreted and rejected for the same reason as set forth in claim 6.
Claim(s) 7, 15, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over GSMA in view of Park, and further in view of Bouskila (US 2021/0044947 A1) hereinafter Bouskila.
Regarding claim 7, the combination of GSMA and Park teaches the limitation of previous claim 1.
While the combination of GSMA and Park discloses limited capability SIMs and boot-time functionality, the combination of GSMA and Park does not explicitly disclose wherein: the first eSIM comprises a limited functionality bootstrap eSIM, and the method further includes the baseband processor: downloading, using the limited functionality bootstrap eSIM, from the first provisioning server of the first MNO, a fully functional eSIM; and installing, to the eUICC, the fully functional eSIM.
However, in the same field of endeavor, Bouskila further teaches wherein: the first eSIM comprises a limited functionality bootstrap eSIM (device without profile loaded uses special purpose provisioning / bootstrap profile to download [new] profile; para. 23), and the method further includes the baseband processor: downloading, using the limited functionality bootstrap eSIM (device uses bootstrap profile to download [new] profile; para. 23), from the first provisioning server of the first MNO, a fully functional eSIM (new permanent profile establishes stable connection to local network [first MNO]; para. [29, 42]); and installing, to the eUICC, the fully functional eSIM (updated profile for local use installed; para. 23).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the technique of Bouskila to the modified system of GSMA and Park, where GSMA and Park’s modified system along with Bouskila’s initializing eSIM (para. [06-07, 10]) improves the system by enabling installation of SIM for optimal coverage for various deployment locations.
Regarding claim 15, the claim is interpreted and rejected for the same reason as set forth in claim 7.
Regarding claim 20, the claim is interpreted and rejected for the same reason as set forth in claim 15.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ståhl et al. (US 2024/0314538 A1) discloses download of operational subscription profile.
Anslot et al. (US 2021/0392489 A1) discloses a method for establishing a bidirectional communication channel between a server and a secure element, corresponding servers and secure element.
Dos Santos et al. (US 2020/0137555 A1) discloses management of subscriber profiles simultaneously active in an eUICC card using a plurality of separate links.
Kulkarni et al. (US 2020/0296573 A1) discloses an electronic device and method for managing an IC card with multiple SIM profiles
GSMA, included in the IDS of 4/13/2026, is not included in the instant OA.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE L PEREZ whose telephone number is (571) 270-7348. The examiner can normally be reached M-F 11 am - 3 pm.
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/uspto-automated-interview-request-air-form.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Thier can be reached at (571) 272-2832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE L PEREZ/Examiner, Art Unit 2474
