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 submitted on February 5, 2025 has been considered by the Examiner and made of record in the application file.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 and 20 of U.S. Patent No. 12,245,148 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
The independent claims 1, 12 and 19 of the current application include broader limitations of the independent claims 1, 9 and 16 of the U.S. Patent No 12,245,148 B2.
The limitation of claim 2 of the current application can be read on limitations of claim 1 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 3 of the current application can be read on limitations of claim 3 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 4 of the current application can be read on limitations of claim 3 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 5 of the current application can be read on limitations of claim 1 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 6 of the current application can be read on limitations of claim 2 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 7 of the current application can be read on limitations of claim 4 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 8 of the current application can be read on limitations of claim 5 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 9 of the current application can be read on limitations of claim 6 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 10 of the current application can be read on limitations of claim 7 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 11 of the current application can be read on limitations of claim 8 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 13 of the current application can be read on limitations of claim 10 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 14 of the current application can be read on limitations of claim 11 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 15 of the current application can be read on limitations of claim 12 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 16 of the current application can be read on limitations of claim 13 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 17 of the current application can be read on limitations of claim 14 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 18 of the current application can be read on limitations of claim 15 of the U.S. Patent No. 12,245,148 B2.
The limitation of claim 20 of the current application can be read on limitations of claim 20 of the U.S. Patent No. 12,245,148 B2.
Nonetheless, claims 1-20 of the present application made the claim a broader version of claims 1-15 and 20 of U.S. Patent No. 12,245,148 B2. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before (In re Karlson (CCPA) 136 USPQ 184 (1963)), claims 1-20 are not patentably distinct from claims 1-15 and 20 of U.S. Patent No. 12,245,148 B2.
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 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.
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.
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 1 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2019/0261270) in view of Yang (US 2017/0171742).
Regarding claim 1, Wu discloses a device, comprising: a processing system including a processor; and a memory that stores executable instructions that, when executed by the processing system, facilitate performance of operations, the operations comprising: receiving an elementary file that specifies whether suspend/resume functionality of a universal integrated circuit card (UICC) is enabled or disabled (see at least paragraph 120-121; fig. 2 [202]); receiving an command that specifies whether the suspend/resume functionality of the UICC is enabled or disabled (see at least paragraph 122; fig. 2 [203]).
Wu fails to explicitly enabling, subject to delay specified in the command, the suspend/resume functionality of the UICC when the elementary file and the command enable the suspend/resume functionality; disabling the suspend/resume functionality of the UICC when at least one of the elementary file or the command disable the suspend/resume functionality. However, in the same field of endeavor, Yang discloses enabling, subject to delay specified in the command, the suspend/resume functionality of the UICC when the elementary file and the command enable the suspend/resume functionality (see at least paragraph 32; enable an eSIM profile based on already stored eSIM profile and eUICC receiving one or more eSIM commands); disabling the suspend/resume functionality of the UICC when at least one of the elementary file or the command disable the suspend/resume functionality (see at least paragraph 32; eSIM can be disable when accessing the customized e UICC level files). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify to incorporate above mention feature as taught by Yang into the system of Wu as for purpose of increasing the flexibility of mobile devices.
Regarding claim 5, Yang discloses the disabling is subject to the delay (see at least paragraph 32). Same motivation as claim 1.
Regarding claim 6, Wu discloses the elementary file is received from a short message service center (SMSC) (see at least paragraph 103).
Regarding claim 7, Wu discloses the device comprises a CAT-M device (see at least paragraph 103).
Regarding claim 8, Wu discloses the device comprises a NB-Iot device (see at least paragraph 103).
Regarding claim 9, Wu discloses the operations further comprise receiving a second elementary file that specifies whether a deactivate/activate functionality of the UICC is enabled or disabled (see at least paragraph 15).
Regarding claim 10, Wu discloses the operations further comprise receiving a second AT command that specifies whether the deactivate/activate functionality of the UICC is enabled or disabled (see at least paragraph 15).
Regarding claim 11, Wu discloses the operations further comprise enabling or disabling the deactivate/activate functionality of the UICC based at least in part on the second elementary file and the second command (see at least paragraph 15).
Regarding claim 12, Wu discloses a non-transitory machine-readable medium, comprising executable instructions that, when executed by a processing system including a processor, facilitate performance of operations, the operations comprising: receiving an elementary file that specifies whether suspend/resume functionality of a universal integrated circuit card (UICC) is enabled or disabled (see at least paragraph 120-121; fig. 2 [202]); receiving a command that specifies whether the suspend/resume functionality of the UICC is enabled or disabled (see at least paragraph 122; fig. 2 [203]).
Wu fails to explicitly enabling, subject to delay specified in the command, the suspend/resume functionality of the UICC when the elementary file and the command enable the suspend/resume functionality; disabling the suspend/resume functionality of the UICC when at least one of the elementary file or the command disable the suspend/resume functionality. However, in the same field of endeavor, Yang discloses enabling, subject to delay specified in the command, the suspend/resume functionality of the UICC when the elementary file and the command enable the suspend/resume functionality (see at least paragraph 32; enable an eSIM profile based on already stored eSIM profile and eUICC receiving one or more eSIM commands); disabling the suspend/resume functionality of the UICC when at least one of the elementary file or the command disable the suspend/resume functionality (see at least paragraph 32; eSIM can be disable when accessing the customized e UICC level files). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify to incorporate above mention feature as taught by Yang into the system of Wu as for purpose of increasing the flexibility of mobile devices.
Regarding claim 13, Wu discloses the elementary file is received from a short message service center (SMSC) (see at least paragraph 103).
Regarding claim 14, Wu discloses the command is received from an application server (see at least paragraph 103).
Regarding claim 15, Wu discloses the device comprises a CAT-M device (see at least paragraph 103).
Regarding claim 16, Wu discloses the operations further comprise receiving a second elementary file that specifies whether a deactivate/activate functionality of the UICC is enabled or disabled (see at least paragraph 15).
Regarding claim 17, Wu discloses the operations further comprise receiving a second AT command that specifies whether the deactivate/activate functionality of the UICC is enabled or disabled (see at least paragraph 15).
Regarding claim 18, Wu discloses the operations further comprise enabling or disabling the deactivate/activate functionality of the UICC based at least in part on the second elementary file and the second command (see at least paragraph 15).
Regarding claim 19, Wu discloses a method, comprising: receiving, by a processing system including a processor, an elementary file that specifies whether suspend/resume functionality of a circuit card is enabled or disabled (see at least paragraph 120-121; fig. 2 [202]); receiving, by the processing system, a command that specifies whether the suspend/resume functionality of the circuit card is enabled or disabled (see at least paragraph 122; fig. 2 [203]).
Wu fails to explicitly enabling, by the processing system and subject to delay specified in the command, the suspend/resume functionality of the circuit card when the elementary file and the command enable the suspend/resume functionality; disabling, by the processing system, the suspend/resume functionality of the circuit card when at least one of the elementary file or the command disable the suspend/resume functionality. However, in the same field of endeavor, Yang discloses enabling, by the processing system and subject to delay specified in the command, the suspend/resume functionality of the circuit card when the elementary file and the command enable the suspend/resume functionality (see at least paragraph 32; enable an eSIM profile based on already stored eSIM profile and eUICC receiving one or more eSIM commands); disabling, by the processing system, the suspend/resume functionality of the circuit card when at least one of the elementary file or the command disable the suspend/resume functionality (see at least paragraph 32; eSIM can be disable when accessing the customized e UICC level files). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify to incorporate above mention feature as taught by Yang into the system of Wu as for purpose of increasing the flexibility of mobile devices.
Regarding claim 20, Wu discloses receiving of the elementary file comprises receiving the elementary file as a SIM over the air (SIM-OTA) message (see at least paragraph 120-121; fig. 2 [202])
Allowable Subject Matter
Claims 2-4 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
The following prior art are cited to show a method, which is considered pertinent to the claimed invention:
Park et al (US Pat. Pub. No. 2016/0021529) directed toward a method to update a profile management server to enable profile management using OTA.
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/LITON MIAH/Primary Examiner, Art Unit 2642
