Detailed Action
1. This Office Action is in response to the Applicant’s preliminary amendment filed on 03/31/2025. In virtue of this communication, claims 1-16 are currently pending in this Office Action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Applicant’s claim for the benefit of prior-filed applications as ADS filed on 12/02/2024 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Double Patenting
4. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 11 and 16 of U.S. Patent No. 12,160,926 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because from the comparison, the patent claims includes many more elements and more specific, and thereby, the patent claims encompass the broader scope of the instant claims. Accordingly, allowing the broader instant claims could cause unjustified or improper timewise extension of the “right to exclude” granted by a patent and possible harassment by multiple assignees.
5.1. Patent Claim 1 renders the instant claim limitations obvious or anticipates the instant limitations of instant claim 1 as follows:
identifying a profile to be enabled within an embedded universal integrated circuit card (eUICC) in the terminal, from a user selection (lines 47-56 & 66-67 of col. 42);
transmitting, to the eUICC, a command for enabling of the profile (lines 47-56 of col. 42); and
receiving, from the eUICC, a response for enabling of the profile (profile in lines 50-56 of col. 42), wherein the response includes a result for enabling of the profile and information on an embedded subscriber identity module (eSIM) port (eSIM selection in lines 50-56 of col. 42) selected by the eUICC, on which the profile is enabled (lines 50-65 of col. 42).
5.2. The instant claim 9 is a terminal claim a reciting the same scopes of the respective limitations of the instant claim 1. Accordingly, the instant claim 9 can be compared to the patent claim 11 in the same way that the instant claim 1 is compared to the patent claim 1 set forth above.
5.3. Patent Claim 6 renders the instant claim limitations obvious or anticipates the instant limitations of instant claim 5 as follows:
receiving, from a local profile assistant (LPA) in the terminal (limitations in claim 6 would include at least a database for storing profile information and profile mode information that reads on the instant feature LPA or renders the LPA obvious), a command for enabling of a profile to be enabled within the eUICC (lines 21-29 of col. 43);
selecting an embedded subscriber identity module (eSIM) port associated with the profile (lines 24-29 of col. 43); and
transmitting, to the LPA, a response for enabling of the profile, wherein the response includes a result for enabling of the profile and information on the eSIM port on which the profile is enabled (lines 33-38 of col. 43).
5.4. The instant claim 13 is a terminal claim a reciting the same scopes of the respective limitations of the instant claim 5. Accordingly, the instant claim 13 can be compared to the patent claim 16 in the same way that the instant claim 5 is compared to the patent claim 6 set forth above.
5.5. The fact that the instant dependent claims are not discussed in details here is due to the following reasons: the patented dependent claims might render the dependent claims obvious; filing terminal disclaimer, TD, would overcome the obviousness type double patenting, ODP, rejection under 35 USC 101; without TD, amendment made to the claims in the future would necessitate determination again if ODP will still exist for the amended claims.
6. Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 10 and 15 of U.S. Patent No. 11,903,089 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because from the comparison, the patent claims includes many more elements and more specific, and thereby, the patent claims encompass the broader scope of the instant claims. Accordingly, allowing the broader instant claims could cause unjustified or improper timewise extension of the “right to exclude” granted by a patent and possible harassment by multiple assignees.
6.1. Patent claim 1 anticipates the instant limitations of the instant claim 1 or renders the instant limitation of claim 1 as follows:
identifying a profile to be enabled within an embedded universal integrated circuit card (eUICC) in the terminal, from a user selection (lines 7-9 of col. 40);
transmitting, to the eUICC, a command for enabling of the profile (lines 10-14 of col. 40); and
receiving, from the eUICC, a response for enabling of the profile, wherein the response includes a result for enabling of the profile and information on an embedded subscriber identity module (eSIM) port selected by the eUICC, on which the profile is enabled (lines 15-23 of col. 40, a target port and messages could have rendered the instant claim features “eSIM port” and “command” obvious to one of ordinary skill in the art).
6.2. The instant claim 9 is a terminal claim a reciting the same scopes of the respective limitations of the instant claim 1. Accordingly, the instant claim 9 can be compared to the patent claim 10 in the same way that the instant claim 1 is compared to the patent claim 1 set forth above.
6.3. Patent Claim 6 renders the instant claim limitations obvious or anticipates the instant limitations of instant claim 5 as follows:
receiving, from a local profile assistant (LPA) in the terminal (LPA in line 35 of col. 40), a command for enabling of a profile to be enabled within the eUICC (lines 35-41 of col. 40);
selecting an embedded subscriber identity module (eSIM) port associated with the profile (lines 37-45 of col. 40); and
transmitting, to the LPA, a response for enabling of the profile, wherein the response includes a result for enabling of the profile and information on the eSIM port on which the profile is enabled (lines 42-49 of col. 40, a target port and messages could have rendered the instant claim features “eSIM port” and “command” obvious to one of ordinary skill in the art).
6.4. The instant claim 13 is a terminal claim a reciting the same scopes of the respective limitations of the instant claim 5. Accordingly, the instant claim 13 can be compared to the patent claim 16 in the same way that the instant claim 5 is compared to the patent claim 6 set forth above.
6.5. The fact that the instant dependent claims are not discussed in details here is due to the following reasons: the patented dependent claims might render the dependent claims obvious; filing terminal disclaimer, TD, would overcome the obviousness type double patenting, ODP, rejection under 35 USC 101; without TD, amendment made to the claims in the future would necessitate determination again if ODP will still exist for the amended claims.
Claim Rejections - 35 USC § 103
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 of this title, 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. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
9. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. Pub. No.: US 2020/0288298 A1 in view of Nix Pub. No.: US 2015/0163056 A1.
Claim 1
Li discloses a method (fig. 1-6 for managing active and inactive eSIMs) performed by a terminal (a wireless device in fig. 1-6) in a wireless communication system, the method comprising:
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identifying a profile (eSIM B in fig. 4G) to be enabled within an embedded universal integrated circuit card (eUICC) in the terminal (eUICC 110 in fig. 1), from a user selection (step 491 in fig. 4G and par. 0039, start session command with an identifier for an inactive eSIM B, and in step 493, eSIM B is selected to be active or enabled; triggering a task by user selection is intrinsic feature on mobile phone or a computer, see user selection in fig. 2-4 of Lee et al. Pub. No.: US 2018/0160294 A1);
transmitting, to the eUICC, a command for enabling of the profile (enable profile eSIM B in step 493 in fig. 4G and par. 0041); and
receiving, from the eUICC, a response for enabling of the profile (9000 response in step 493 of fig. 4G), wherein the response includes a result for enabling of the profile and (eSIM B becomes active in par. 0041 and step 493 of fig. 4G).
Although Li does not disclose: “information on an embedded subscriber identity module (eSIM) port selected by the eUICC, on which the profile is enabled”, the claim limitation is considered obvious by the following rationales.
In fact, Li discloses selecting to activate or enable eSIM A or eSIM B or eSIM C in fig. 4C-H. It means that Li is silent on mentioning the use of port in communication (see fig. 3 of Li). In physical layer connection, the designation of port on the computers and communication devices for communicating is intrinsic feature. The evidence could be seen in Nix. In particular, Nix teaches the use of port number in communications (fig. 1f and par. 0107 and see fig. 1A and par. 0054, 0075 & 0077).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify managing inactive electronic subscriber identity modules of Li by providing embedded Universal Integrated Circuit Card eUICC as taught in Nix. Such a modification would have included eUICC on a mobile phone to activate the multiple subscriptions associated with eSIM so that the mobile network operator could have transferred within a profile securely and efficiently as suggested in par. 0012-0015 of Nix.
Claim 2
Li, in view of Nix, discloses the method of claim 1, wherein, in case that no eSIM Port is available, the result indicates a failure and the response does not include the information on the eSIM port (Li, responses in fig. 4C-H; Nix, responses in fig. 3 & 5C and port number in par. 0054, 0075 & 0077; it can be considered as that the maximum active number for eSIM A-C in fig. 4 of Li has reached and, hence, command or modified command to active eSIM in fig. 4 C-H of Li is failed; accordingly, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim, see MPEP 2143, KSR Exemplary Rationale G; see evidence number of profiles enabled in fig. 3 of Kim et al. Pub. No.: US 2018/0249322 A1 and see fig. 9 of Lee et al. Pub. No.: US 2018/0160294 A1).
Claim 3
Li, in view of Nix, discloses the method of claim 1, further comprising:
transmitting, to a baseband connected to the eSIM port on which the profile is enabled, a message (Li, message in fig. 4A-H and eSIM A-C in fig. 4H corresponds to the baseband or the frequency band to transmit and receive the message; Nix, see frequency band for communications in par. 0048, 0177 and port number in par. 0054, 0075 & 0077; for these reasons, one of ordinary skill in the art would have expected the combined prior art to perform equally well to the claim).
Claim 4
Li, in view of Nix, discloses the method of claim 3, wherein cached information is discarded in the baseband (Li, eSIM A-C for active and inactive states in fig. 4H; Nix, cache memory in par. 0082, 0216 & 0266; since claim does not specifically define what are involved in discarding, the combined prior art would have rendered the claim obvious, for instance, the wireless device of Li is reset or restarted by the user, and then, the previously cached status will be lost or discarded or lost; see evidence of resetting in par. 0083, 0086 & 0087 in Kim et al. Pub. No.: US 2018/0249322 A1).
Claim 5
Li discloses a method (fig. 1-6 for managing active and inactive eSIMs) performed by an embedded universal integrated circuit card (eUICC) (eUICC or secure element SE in fig. 1-6) in a terminal in a wireless communication system (wireless device and wireless communication system in fig. 1-6), the method comprising:
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receiving, from a local profile assistant (LPA) in the terminal (LPA 304 in fig. 3), a command for enabling of a profile to be enabled within the eUICC (step 491 in fig. 4G and par. 0039, start session command with an identifier for an inactive eSIM B);
selecting an embedded subscriber identity module (eSIM) associated with the profile (selecting eSIM B to be active in step 493 of fig. 4G); and
transmitting, to the LPA, a response for enabling of the profile (see fig. 3 for special commands and authenticate communication to and from LPA), wherein the response includes a result for enabling of the profile and information on the eSIM port on which the profile is enabled (in step 493 in fig. 4G, eSIM B is enabled or active in response 9000).
Although Li does not explicitly disclose “selecting an embedded subscriber identity module (eSIM) port associated with the profile; and the eSIM port”, the claim limitations are considered obvious by the following rationales.
In fact, Li discloses selecting to activate or enable eSIM A or eSIM B or eSIM C in fig. 4C-H. It means that Li is silent on mentioning the use of port in communication (see fig. 3 of Li). In physical layer connection, the designation of port on the computers and communication devices for communicating is intrinsic feature. The evidence could be seen in Nix. In particular, Nix teaches the use of port number in communications (fig. 1f and par. 0107 and see fig. 1A and par. 0054, 0075 & 0077).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify managing inactive electronic subscriber identity modules of Li by providing embedded Universal Integrated Circuit Card eUICC as taught in Nix. Such a modification would have included eUICC on a mobile phone to activate the multiple subscriptions associated with eSIM so that the mobile network operator could have transferred within a profile securely and efficiently as suggested in par. 0012-0015 of Nix.
Claim 6-8
Claims 6-8 are another method claims found reciting the similar limitations of claims 2-4. All of the limitations in claims 6-8 are found reciting the same scopes of the respective limitation in claims 2-4. Accordingly, claims 6-8 can be considered obvious by the same rationales applied in the rejection of claims 2-4 respectively, set forth above.
Claim 9-12
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Claims 9-12 are device claims corresponding to method claims 1-4. All of the limitations in claims 9-12 are found reciting for the structures of the same scopes of the respective limitation in claims 1-4. Accordingly, claims 9-12 can be considered obvious by the same rationales applied in the rejection of claims 1-4 respectively, set forth above. Additionally, Li discloses a terminal (a wireless device 102 in fig. 1-6) in a wireless communication system, the terminal comprising: a transceiver capable of transmitting or receiving at least one signal (network interface 611 could transmit and receive commands, messages and signals as depicted in fig. 1-5); and a controller coupled to the transceiver (controller 613 and processor 602 re interconnected to network interface 611 in fig. 6).
Claim 13-16
Claims 13-16 are device claims corresponding to method claims 5-8. All of the limitations in claims 13-16 are found reciting for the structures of the same scopes of the respective limitation in claims 5-8. Accordingly, claims 13-16 can be considered obvious by the same rationales applied in the rejection of claims 5-8 respectively, set forth above. Additionally, Li discloses an embedded universal integrated circuit card (eUICC) (eUICC in Secure Element 110 in fig. 1) in a terminal (wireless device 102 in fig. 106) in a wireless communication system, the eUICC comprising: a transceiver capable of transmitting or receiving at least one signal (network interface 113 of fig. 3 for transmitting and receiving from secure element 308 in fig. 3 and see fig. 4C-H); and a controller coupled to the transceiver (host processor 308 is internally connected to network interfaces 113 in fig. 3).
10. In this instant application, there are two groups of claims 1-4 and 9-12 in one group and claims 5-8 and 13-16 in another group. It’s suggested to keep them under the same scope of the claimed invention to advance the prosecution.
Contact Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN A HTUN whose telephone number is (571)270-3190. The examiner can normally be reached on Monday - Thursday 7 AM - 5 PM.
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/SAN HTUN/
Primary Examiner, Art Unit 2643
Prosecution Insights