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 .
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 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.
Claims 1, 13 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13 and 20 of issued Patent 12,200,496. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1, 13 and 20 of the reference patent covers all the limitations of claims 1, 13 and 20 of the instant application and, as such, anticipates claims 1, 13 and 20 of the instant application.
The dependent claims of the issued patent contain every element of the dependent claims of the instant application, and as such, anticipate all of the dependent claims of the instant application.
Instant Application No. 19/012,603
Reference Patent No. 12,200,496
Claim 1: A method performed by a processor of a source device to obtain a transfer token with secure intent confirmation for transfer of a profile to a target device, the method comprising:
providing, to an embedded universal integrated circuit (eUICC) of the source device after detection of a secure intent gesture:
attestation data including a secure enclave processor (SEP) public key (PKsep),
a transfer nonce obtained from a mobile network operator (MNO) entitlement server, and
a SEP signature generated by the SEP using a SEP private key (SKsep) corresponding to the PKsep;
sending, to the MNO entitlement server after verification of the SEP signature by the eUICC, a profile transfer authorization request including: the transfer nonce, and an eUICC signature generated by the eUICC using an eUICC private key (SKeUICC); and
receiving, from the MNO entitlement server, the transfer token for transfer of the profile to the target device.
Claim 1: A method performed by a source device to obtain a transfer token with secure intent confirmation to transfer a profile to a target device, the method comprising:
responsive to receipt of a secure intent gesture, providing, to an embedded universal integrated circuit card (eUICC) of the source device:
attestation data including a secure enclave processor (SEP) public key (PKsep),
a transfer nonce and authentication challenge parameters, and
a SEP signature generated by the SEP using a SEP private key (SKsep) corresponding to the PKsep;
verifying, by the eUICC, the SEP signature using the PKsep extracted from the attestation data;
responsive to verification of the SEP signature by the eUICC, sending to a mobile network operator (MNO) entitlement server, a profile transfer authorization request including: the transfer nonce, authentication challenge response parameters, and an eUICC signature generated by the eUICC using an eUICC private key (SKeUICC); and
receiving, from the MNO entitlement server, the transfer token for transfer of the profile to the target device.
Additional Art Considered
The prior art made of record and not relied upon is considered pertinent to the Applicants’ disclosure.
The following prior art are cited to further show the state of the art at the time of Applicants’ invention with respect to profile transfer with secure intent.
a. LITWINSKI (U.S. PGPub. 2024/0422527) discloses techniques for managing at least one eUICC information set (EIS) of a eUICC and intermediate buffer proxy, comprising transferring an eSIM profile to the eUICC of a user device in the form of a consumer device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODMAN ALEXANDER MAHMOUDI whose telephone number is (571)272-8747. The examiner can normally be reached on M-F 11:00am – 7:00pm.
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/RODMAN ALEXANDER MAHMOUDI/Examiner, Art Unit 2499
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