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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/21/2025 was filed before the mailing of the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Allowable Subject Matter
Claims 2, 6, and 10 are 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, either alone or in combination does not expressly disclose a method for use in a eUICC encompassing all the limitations of independent claims 1, 5, and 9 in addition to the limitations disclosed in the dependent claims 2, 6, and 10, respectively.
Dependent claims 3-4, 7-8 and 11-15 are objected to for being dependent upon an already objected to claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1-2, 5, and 9, the applicant uses the phraseology of “or constructed to,” which renders the claims indefinite as it is unclear whether the is or is not hosting/generating or performing the action linked (i.e., it an intended use of the device?). Examiner recommends removing this language and actively recite what the device is doing.
Regard claim 1, the applicant states “hosting a device e-UICC binding applet constructed to after each reset of the eUICC,” which is indefinite as it is unclear what the binding applet is constructed to do.
Dependent claims 2-4, 6-8, and 10-15 are rejected under the same rationale as they do not cure the deficiencies of independent claims 1, 5, or 9.
Regarding claim 15, the applicant is claiming both a method and a computer readable medium. This is indefinite as it is unclear what statutory class the claim falls into. It is recommended to either make claim 15 a separate independent claim, or to cancel claim 15 entirely.
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.
Claim(s) 1, 5, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vegelos (US 10,812,970) in view of Lai (US 2005/0020308) and in further view of Ahmed et al (US 2022/0360970).
Regarding claim 1, Vegelos discloses a method for that is for hosting, or constructed for hosting, at least one security domain profile (ISD-P), the ISD-P hosting, or constructed for hosting, at least one subscriber profile, said method comprising:
storing pre-stored identification information of a device [column 7 lines 6-14] (the initialization process stores wireless device information);
hosting a device binding applet (BA) constructed to, after each reset of the card [column 6 lines 24-36, fig 3] (a SIM card initialization process may prevent theft thus that it is initialized to a particular device)
receiving at the card identification information provided by the device[column 8 lines 64-cplumn 9 lines 4-13] (device identifiers are received);
comparing the received identification information to the pre-stored identification information[column 8 lines 64-cplumn 9 lines 4-13] (device identifiers are compared);
when the received identification information corresponds to the pre-stored identification information, identifying the device and the eUICC in a device-eUICC binding and allowing further operation of the card; and when the received identification information does not correspond to the pre-stored identification information, identifying the device and the not in a device-eUICC binding and disabling the card [column 9 lines 13-24] (it is determined if a match is made, if so the process is continued, if not the process is prevented).
However, Vegelos does not expressly disclose but Lai discloses wherein the received, pre-stored and compared identification information comprising at least two or more device identifiers of the device [0022] (The subscriber identification information referenced herein includes, but is not limited to, at least one of an International Mobile Subscriber Identity (IMSI), a Mobile Country Code (MCC), a Mobile Network Code (MNC), a Mobile Station Identification Number (MSIN), a Mobile Station International Integrated Service Digital Network (ISDN) Number (MSISDN), a Number Assignment Module (NAM), and other information of the particular user or subscriber. The communication device identification information of an embodiment referenced herein includes at least one of an International Mobile Equipment Identity (IMEI), a Type Approval Code (TAC), a Final Assembly Code (FAC), a Serial Number (SNR), an Electronic Serial Number (ESN), an embedded digital signature, a device model, information of a software version of the portable communication device, and configuration information of the portable communication device, but is not so limited).
However, Vegelos and Lai do not expressly disclose but Ahmed et al discloses that A method for use with an embedded universal integrated circuit card (eUICC) that is for hosting, or constructed for hosting, at least one security domain profile (ISD-P), the ISD-P hosting, or constructed for hosting, at least one subscriber profile [abstract, 0044, fig 1] (The radio access network node 30 provides network access to, and thus serves, a terminal device 50. In turn, the terminal device 50 comprises a subscriber entity 300. In some examples the subscriber entity 300 is an eUICC. In some examples the remote SIM provisioning server 100 is an SM-DP+ entity. In some examples the storage entity 200 is a server, for example holding an immutable audit record. In some examples the subscriber entity 300 is an integrated universal integrated circuit card (iUICC) or an eUICC).
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 teachings of Vegelos by implementing use of two or more identifiers, for the purpose of having multiple identifiers to compare against, based upon the beneficial teachings provided by Lai, see for example [0022]. It would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Vegelos and Lai by implementing eUICC, for the purpose of using an embedded SIM, based upon the beneficial teachings provided by Ahmed et al, see for example [0044]. These modifications would result in ease of use and increased security, both of which are obvious benefits to the skilled artisan. Additionally, the cited references are in the field of computer security, as is the current application, and thus, are in analogous arts.
Claims 5 and 9 are rejected under the same rationale as claim 1 as they correspond similarly to the limitations of the method of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gibis et al (US 12,688,272): discloses authorizing an application installed on a security element includes the steps of transmitting authorization information from a user verification element to the security element, comparing the authorization information with at least one requirement from a list on the security element; and selecting the application on the security element and/or performing a transaction by means of the application, provided that the authorization information meets the requirements from the list.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENDALL DOLLY whose telephone number is (571)270-1948. The examiner can normally be reached Monday-Friday 7am-3pm (EST).
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/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shewaye Gelagay can be reached at (571)272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KENDALL DOLLY/Primary Examiner, Art Unit 2436
Prosecution Insights