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 statement (IDS) submitted was filed after the mailing date. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 8 objected to for reciting “the same phone number” when it is not clear if this is referencing an earlier recited “same phone number.” Examiner recommends reciting “a same telephone number” to be consistent with claim 1. Claim 19 objected to for the same reason.
Claim 1 is objected to, as it recites “a second request for configuration information through the communication connection, including one or more service identifiers corresponding to one or more services, including the specific service” and it is unclear if the “second request” or the “configuration information” comprises the “one or more service identifiers.” Examiner interpreting this to mean the returned configuration information comprises this.
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).
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Claim 1-6, 8-17, 19-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 6, 7 of parent application, now U.S. Patent No. 10820187 in view of Kim et al. (“Kim”) (US 20160337521 A1). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of Instant Application
Claim 1, 6, 7 of 10820187
An entitlement server comprising: communication circuitry; at least one processor including processing circuitry; memory configured to store information corresponding to the electronic device and instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: establish a communication connection with a user equipment using the communication circuitry, receive, from the user equipment, a first request for a specific service activation through the communication connection, wherein the first request includes information indicating whether to activate the specific service and the specific service is for transmitting and/or receiving a call via a cellular communication connection with a telephone number of the user equipment at an external electronic device connected, via a short-range communication connection, with the user equipment, receive, from the user equipment, a second request for configuration information through the communication connection, including one or more service identifiers corresponding to one or more services, including the specific service, available to the external electronic device; subsequent to transmission of the first request and/or the second request, transmit, to the user equipment, the configuration information associated with the activated specific service available to the external electronic device.
1. An electronic device comprising: a memory configured to store device information corresponding to the electronic device; a first communication module comprising communication circuitry configured to establish a first communication connection corresponding to a first communication method with an external server; a second communication module comprising communication circuitry configured to establish a second communication connection corresponding to a second communication method with an external electronic device; and a processor, wherein the processor is configured to: establish the first communication connection with the external server using the first communication module, transmit the device information to the external server through the first communication connection [“second request”], receive one or more service identifiers [“configuration information”] corresponding to one or more services available to the external electronic device from the external server, establish the second communication connection with the external electronic device using the second communication module, transmit control information based on at least a part of an identifier corresponding to at least one service of the one or more services to the external electronic device to set a profile installed in the external electronic device based on the control information for activating the at least one service in the external electronic device, transmit another request for a profile to be installed in a universal integrated circuit card (UICC) of the external electronic device to another external server, transmit the profile to the external electronic device in response to receiving the profile from the other external server as a response to the other request, and transmit a request for a web address to be used in subscription to a cellular communication service for the external electronic device to a web server corresponding to a cellular communication service different from the external server and the other external server, in response to receiving an indication that the profile does not exist in the other external server as the response to the other request.
6. The electronic device of claim 1, wherein the processor is configured to transmit configuration information used to activate a first function associated with the at least one service and/or to deactivate a second function associated with the at least one service in the external electronic device to the external electronic device as at least a part of the control information.
7. The electronic device of claim 6, wherein the processor is configured to: transmit a request [“first request”] for activating the at least one service to the external server, and receive at least a part of the configuration information from the external server as at least a part of a response to the request.
Claim 1, 6-7 teaches the activation of service for the external device but does not specify in this claim the call forwarding function however Kim teaches sending information indicating whether to activate and/or deactivate the one or more services, to the first external electronic device, wherein the one or more service includes a first service for transmitting and/or receiving a call via a telephone number same with a telephone number of the first external electronic device [Figure 6, server sends information being call forwarding configuration confirmation with call forwarding configuration which is to activate call forwarding in first device, ¶0118-120, call forwarding service activated as calls meant for telephone number of first electronic device forwarded to second electronic device in one-number scheme, as the call was dialed to MSISDN1 of first device thus sharing a number].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify a service for forwarding a call with the same telephone number. Claim 1 with claim 6-7 of the prior art already teaches activating a function and receiving function although it is not captured in the independent claim thus it would have been obvious to specify call forwarding as claimed as in Kim in order to automatically and no longer manually configure the call forwarding with a first device and wearable device ¶0003.
Claim 2-6, 8-17, 19-20 rejected based on claim 1, 6, 7 of U.S. Patent No. 10820187 in view of Kim, see rejection for claim 1.
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of parent application, now U.S. Patent No. 12137498 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of Instant Application
Claim 1, 9 of 12137498
An entitlement server comprising: communication circuitry; at least one processor including processing circuitry; memory configured to store information corresponding to the electronic device and instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: establish a communication connection with a user equipment using the communication circuitry, receive, from the user equipment, a first request for a specific service activation through the communication connection, wherein the first request includes information indicating whether to activate the specific service and the specific service is for transmitting and/or receiving a call via a cellular communication connection with a telephone number of the user equipment at an external electronic device connected, via a short-range communication connection, with the user equipment, receive, from the user equipment, a second request for configuration information through the communication connection, including one or more service identifiers corresponding to one or more services, including the specific service, available to the external electronic device; subsequent to transmission of the first request and/or the second request, transmit, to the user equipment, the configuration information associated with the activated specific service available to the external electronic device.
1. An electronic device comprising: a first communication module comprising communication circuitry configured to establish a cellular communication connection; a second communication module comprising communication circuitry configured to establish a short-range communication connection; at least one processor; and memory for storing information corresponding to the electronic device and instructions that, when executed by the at least one processor individually or collectively, cause the electronic device to: establish the cellular communication connection with an external server using the first communication module, establish the short-range communication connection with an external electronic device using the second communication module, transmit a first request for a specific service activation [“first request”] to the external server through the cellular communication connection, wherein the first request includes information indicating whether to activate the specific service and the specific service is for transmitting and/or receiving a call via the cellular communication connection with a telephone number of the electronic device at the external electronic device, transmit a second request for configuration information [“second request”], to the external server through the cellular communication connection, including one or more service identifiers corresponding to one or more services, including the specific service, available to the external electronic device, subsequent to transmission of the first request and/or the second request, receive the configuration information [“configuration information” that is sent] associated with the activated specific service available to the external electronic device, and transmit a first information, associated with the configuration information, to the external electronic device through the short-range communication connection, the first information including setting information that cause the external electronic device to perform an operation to activate the specific service for utilizing the specific service.
Claim 2-4, 8, 12-15 rejected based on claim 1 of U.S. Patent No. 10820187, see rejection for claim 1.
Claim 5, 16 rejected based on claim 2 respectively of U.S. Patent No. 10820187, see rejection for claim 1.
Claim 6, 17 rejected based on claim 3 respectively of U.S. Patent No. 10820187, see rejection for claim 1.
Claim 7, 18 rejected based on claim 5 respectively of U.S. Patent No. 10820187, see rejection for claim 1.
Claim 9-10 rejected based on claim 13 respectively of U.S. Patent No. 10820187, see rejection for claim 1.
Claim 11, 19-20 rejected based on claim 14 respectively of U.S. Patent No. 10820187, see rejection for claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1-6, 9-10, 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (“Kim”) (US 20160337521 A1) in view of Cha et al. (“Cha”) (US 20160150400 A1).
Regarding claim 1, Kim teaches:
An entitlement server comprising: communication circuitry; at least one processor including processing circuitry; memory configured to store information corresponding to the electronic device and instructions that, when executed by the at least one processor individually or collectively [Figure 6, server ], cause the entitlement server to: establish a communication connection with a user equipment using the communication circuitry [¶0064 establish connection to electronic device], receive, from the user equipment, a first request for a specific service activation through the communication connection, wherein the first request includes information indicating whether to activate the specific service and the specific service is for transmitting and/or receiving a call via a cellular communication connection with a telephone number of the user equipment at an external electronic device connected, via a short-range communication connection, with the user equipment [¶0118, Figure 6, step 540, first electronic device (UE) “ sends the server a message requesting for call forwarding to the second electronic device (e.g., **21MSISDN2#)” second device being wearable device, connected via BT ¶0091],
subsequent to transmission of the first request and/or the second request, transmit, to the user equipment, the configuration information associated with the activated specific service available to the external electronic device [¶0118 “Then the server makes configuration for forwarding the call addressed to the first electronic device to the second electronic device and sends the first electronic device a call forwarding configuration confirmation message at operation 545. The first electronic device may check the call forwarding configuration based on the confirmation message.” Confirmation configuration message being configuration information].
Kim teaches a first request but not the second request.
Cha teaches receive, from the user equipment, a second request for configuration information through the communication connection, including one or more service identifiers corresponding to one or more services, including the specific service, available to the external electronic device [Figure 11A, step S1109-S1111, ¶0191, device 200 sends second request for profiles, corresponding to service identifiers, receives configuration with the profiles i.e. service identifiers].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the second request for configuration information based on the service identifier as in Cha who teaches this allows for the device to determine services that can be provided to further electronic device 100 ¶0191.
Regarding claim 2, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches configuration information but not configuration information enabling a user to set a transmit first information to external device.
Cha teaches wherein the configuration information enables the user equipment to transmit a first information, associated with the configuration information, to the external electronic device through the short-range communication connection, the first information including setting information that cause the external electronic device to perform an operation to activate the specific service for utilizing the specific service [Figure 11A, S1118, ¶0192, device 200 sends request to server with subscription information corresponding to profile, and sends subscription information to first device 100 being first information, causing further device 100 to start a service as in later step S1131 ¶0194].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the setting of information to activate a service in the external device as in Cha for device 100 as Cha teaches this allows for the device to determine services that can be provided to further electronic device 100 ¶0191 and for the service to be provided to external device 100 as in ¶0194.
Regarding claim 3, Kim-Cha teaches:
The entitlement server of claim 2, wherein the configuration information enables the user equipment to transmit, to the external electronic device, the first information used to activate a first function associated with the specific service and/or to deactivate a second function associated with the specific service in the external electronic device as at least a part of the first information [Figure 11A, S1118, ¶0192, device 200 sends request to server with subscription information corresponding to profile, and sends subscription information to first device 100 being first information, causing further device 100 to start a service as in later step S1131 ¶0194, see rationale for combination as in claim 2].
Regarding claim 4, Kim-Cha teaches:
The entitlement server of claim 3, wherein the memory is configured to store instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: receive, from the user equipment, a request for activating the specific service, and transmit, to the user equipment, at least a part of the configuration information as at least a part of a response to the request [Kim ¶0118, Figure 8, step 540, first electronic device (UE) “ sends the server a message requesting for call forwarding to the second electronic device (e.g., **21MSISDN2#)” second device being wearable device, connected via BT ¶0091, and ¶0133, electronic device 100 requests information to external server, including device information, and server responds with call forwarding configuration confirmation message considered part of the configuration information].
Regarding claim 5, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches receiving a request but not external device information.
Cha teaches wherein the memory is configured to store instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: receive, from the user equipment, information corresponding to the external electronic device together with the information corresponding to the user equipment [Figure 11B, ¶0198 device 200 sends request with MNO profile, EID of further external device 100, and master ID of 200].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the request includes device information of the external device and the transmitting device as in Cha who teaches this overcomes the problem of installing services on electronic devices see ¶0066 and allows for remote installation of communication profiles ¶0195-196.
Regarding claim 6, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches a call forwarding service but not sending service identifiers for a service.
Cha teaches wherein the memory is configured to store instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: transmit, to the user equipment, an identifier corresponding to a service that is executable in association with the user equipment and the external electronic device, as at least a part of the one or more service identifiers [Cha Figure 11A, S1111 profile list, comprising identifiers, for use in activating a service see S1111 sent to device 200, ¶0191 includes profiles for a service i.e. service identifier].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify sending the service identifiers for a service to the electronic device 200 as in Cha who teaches this overcomes the problem of installing services on electronic devices see ¶0066 and allows for remote installation of communication profiles ¶0195-196.
Regarding claim 9, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches a call forwarding service but not sending designated application.
Cha teaches wherein the memory is configured to store instructions that, when executed by the at least one processor individually or collectively, cause the entitlement server to: transmit, to the user equipment, a designated application corresponding to the at least one service [Cha Figure 11A, S1111 profile list, comprising identifiers, for use in activating a service see S1111 sent to device 200, ¶0191 includes profiles and a specific subscription sent to external device 10 s1118 i.e. designated application].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify sending the service identifiers pertaining to designated application for a service to the electronic device 200 as in Cha who teaches this overcomes the problem of installing services on electronic devices see ¶0066 and allows for remote installation of communication profiles ¶0195-196.
Regarding claim 10, Kim-Cha teaches:
The entitlement server of claim 9, wherein the designated application is transmitted, by the user equipment, to the external electronic device [Cha Figure 11A, S1111 profile list, comprising identifiers, for use in activating a service see S1111 sent to device 200, ¶0191 includes profiles and a specific subscription sent to external device 10 s1118 i.e. designated application, see rationale for combination claim 9].
Regarding claim 12-17, see similar rejections for claims 1-6 respectively which recite the physical structure performing the corresponding step.
Claim(s) 8, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (“Kim”) (US 20160337521 A1) in view of Cha et al. (“Cha”) (US 20160150400 A1) and Yi et al. (“Yi”) (US 20110021200 A1).
Regarding claim 8, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches a call forwarding function but does not specify a same number.
Yi teaches wherein the configuration information enables the user equipment to provide a call forwarding function for the same phone number to the external electronic device when the specific service is deactivated in the external electronic device [¶0061 call forwarding service provided on soft terminal and not indicated to be provided on mobile terminal thus considered deactivated on
mobile terminal 200, and service allows call to be forwarded from soft switch to connected mobile
terminal 200].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the service provided in Cha via the Bluetooth communication to be call forwarding related to a same number as in Yi. Kim teaches call forwarding services provided over a Bluetooth connection but does not teach a call forwarding service. It would have been obvious to modify Kim such that the service provided is a call forwarding service as in Yi who teaches this allows calls made to a PC to be transferred to an external device seamlessly ¶0003, ¶0061.
Regarding claim 19, see rejection for claim 8 which teaches the physical structure performing the corresponding step.
Claim(s) 7, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (“Kim”) (US 20160337521 A1) in view of Cha et al. (“Cha”) (US 20160150400 A1) and Fan et al. (“Fan”) (US 20180255451 A1).
Regarding claim 7, Kim-Cha teaches:
The entitlement server of claim 1.
Kim teaches services in the electronic device but does not specify the services are not executable by the electronic device.
Fan teaches wherein the at least one service is not executable in the user equipment and is executable in the external electronic device [¶0103-114, Figure 2, profile for service forwarded by
UE1, first electronic device, to UE 2, external, to be executed by UE 2 and no teaching of UE 1 executing the service thus not executable in the UE 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kim such that a service is provided to the external device that is not disclosed to be executable at the first electronic device as in Fan. It would have been obvious to modify Kim such that a service is provided by means of forwarding a profile without disclosing the profile is to be executed by the first device as in Fan who teaches this allows for profile management without complex operation process such as using an operator service center ¶0004 to enhance profile processing efficiency.
Regarding claim 18, see rejection for claim 7 which teaches the physical structure performing the corresponding step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L. VOGEL whose telephone number is (303)297-4322. The examiner can normally be reached Monday-Friday 8AM-4:30 PM MT.
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/JAY L VOGEL/Primary Examiner, Art Unit 2478
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