DETAILED ACTION
Authorization for Internet Communications
The examiner encourages Applicant to submit an authorization to communicate with the examiner via the Internet by making the following statement (from MPEP 502.03):
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please note that the above statement can only be submitted via Central Fax (not Examiner's Fax), Regular postal mail, or EFS Web using PTO/SB/439.
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 on 03/19/2025 is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
Page 3, para 0027; the first occurrence of the acronyms “ETSI” and “3GPP” should be spelled out.
Appropriate correction is required.
Claim Objections
Claims 1 - 18 are objected to because of the following informalities:
Regarding claims 1 and 12; there appears to be a missing “and” at the end of line 6, claim 1 and line 5, claim 12.
Claims 2 – 11 and 13 - 18 are dependent claims and thus also objected.
Regarding claims 2 – 10; the limitations “the secure element of claim 1” lack proper antecedent basis because there are multiple recitations i.e., “a secure element” and “a target secure element” earlier in the claim. It is suggested to amend “a secure element of claim 1” in claim 1 to -- a source secure element of claim 1 --.
Regarding claim 8; there appears to be a typographical error “eUICC” of -- (eUICC) --.
Appropriate correction is required.
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 - 20 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, 12 and 19, the limitation “authorize an export of the profile to a target secure element when the export control data meet said predefined condition” renders the claims indefinite because it is unclear whether the recited step is required in all embodiments or only conditionally performed. The claims do not specify what occurs if the predefine condition is not met. Thus, the scope of the claims is not reasonably certain.
Claims 2 – 11, 13 – 18 and 20 are dependent claims and thus also rejected.
Regarding claims 7, and 18, the limitation “generate an export package containing said profile if the export has been authorized” renders the claims indefinite because it is unclear whether the recited step is required in all embodiments or only conditionally performed. The claims do not specify what occurs if the condition is not met. Thus, the scope of the claims is not reasonably certain.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 8 and 10 - 20 are rejected under 25 U.S.C. 101 because the claimed invention is directed to judicial exception (an abstract idea) without significantly more. The following is Examiner’s analysis of the claimed invention.
Claim 12 is directed to an abstract idea because the following claim limitations recite an abstract idea:
A method of operating a secure element, comprising:
Storing, in a storage unit of the secure element, a profile and export control data associated with said profile, (mental process: a human-being, a shipper, storing a shipment and shipment related data i.e., shipment authorization slip);
Verifying, whether the export control data meet a predefined condition, (mental process: a human-being i.e., the shipper, checking the authorization slip to see if the authorization slip meet shipping precondition);
Authorizing an export of the profile to a target secure element when the export control meet said predefined condition, (mental process: a human-being, the shipper authorizes the shipment to be shipped when the authorization slip meets the shipping precondition).
Claim 1 recites the following additional elements:
wherein the steps are performed “by a processing unit”.
Step 2A, prong 2
The claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to integrate the abstract idea into a practical application.
Step 2B, prong 2
Likewise, to step 2A, prong 2, the claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a).). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to amount to significantly more than the abstract idea itself, even when the additional elements are considered alone and in combination with the abstract idea.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 1 and 19 are a system and product claims of the abstract method claim 12 above. Thus, the analysis and findings for abstract claim 12 applied to claims 1 and 19 respectively and also are directed to an abstract idea without significantly more and are unpatentable.
Claims 2 and 13 are directed to an abstract idea because the following claim limitation recites an abstract idea:
Wherein the export control data comprise a binary digit indicative of whether or not the export of the profile is allowed, and wherein the predefined condition is that said binary digit indicates that the export is allowed (mental process: a human-being, the shipper, checking the authorization slip to see – “Yes – the shipment is allowed” or “N0 – the shipment is not allowed”).
No new additional elements.
Step 2A, prong 2
Claims 2 and 13 fail to recite any new additional elements relative to claims 1 and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1 and 12, however, the analysis and findings includes consideration of claims 2 and 13 as a whole.
Step 2B, prong 2
Claims 2 and 13 fail to recite any new additional elements relative to claims 1 and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1 and 12, however, the analysis and findings includes consideration of claims 2 and 13 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 3, 14 and 20 are directed to an abstract idea because the following claim limitation recites an abstract idea:
Wherein the export control data comprise a counter value, and wherein the predefined condition is that said counter value is greater than zero (mental process: a human-being, the shipper, checking the shipment limit in non-zero positive number according to shipper predefined condition).
No new additional elements.
Step 2A, prong 2
Claims 3, 14 and 20 fail to recite any new additional elements relative to claims 1, 12 and 19. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, 12 and 19, however, the analysis and findings includes consideration of claims 3, 14 and 20 as a whole.
Step 2B, prong 2
Claims 3, 14 and 20 fail to recite any new additional elements relative to claims 1, 12 and 19. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, 12 and 19, however, the analysis and findings includes consideration of claims 3, 14, and 20 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 4 and 15 are directed to an abstract idea because the following claim limitation recites an abstract idea:
to decrement the counter value by one upon exporting the profile to the target sucre element, and to transmit the decrement counter value to said target secure element along with the profile (mental process: a human-being, the shipper, subtracting how many time he/she sent the shipment from total number of allowed shipment and sending it with the shipment to the receiver).
No new additional elements.
Step 2A, prong 2
Claims 4 and 15 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 4 and 15 as a whole.
Step 2B, prong 2
Claims 4 and 15 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 4 and 15 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 5 and 16 are directed to an abstract idea because the following claim limitation recites an abstract idea:
Wherein the counter value is configured to be reset by an authorized party (mental process: a human-being, the shipper of the shipment company, reset the maximum number of allowed shipment to preset value after the shipment is completed).
No new additional elements.
Step 2A, prong 2
Claims 5 and 16 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 5 and 16 as a whole.
Step 2B, prong 2
Claims 5 and 16 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 5 and 16 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 6 and 17 are directed to an abstract idea because the following claim limitation recites an abstract idea:
Wherein the authorized party is an owner of the profile (mental process: a human-being, the shipper of the shipment company, owns the shipment).
No new additional elements.
Step 2A, prong 2
Claims 6 and 17 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 6 and 17 as a whole.
Step 2B, prong 2
Claims 6 and 17 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 6 and 17 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claims 7 and 18 are directed to an abstract idea because the following claim limitation recites an abstract idea:
to generate an export package containing said profile if the export has been authorized (mental process: a human-being, the shipper, packaging the shipment for shipping after verification of the authorization slip).
No new additional elements.
Step 2A, prong 2
Claims 7 and 18 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 7 and 18 as a whole.
Step 2B, prong 2
Claims 7 and 18 fail to recite any new additional elements relative to claims 1, and 12. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claims 1, and 12, however, the analysis and findings includes consideration of claims 7 and 18 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claim 8 is directed to an abstract idea because the following claim limitation recites an abstract idea:
To generate feedback data indicative of a result of the export of the profile (mental process: a human-being, the shipper, surveying the receiver to determine whether the receiver receive the shipment).
No new additional elements.
Step 2A, prong 2
Claim 8 fails to recite any new additional elements relative to claim 1. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claim 1, however, the analysis and findings include consideration of claim 8 as a whole.
Step 2B, prong 2
Claim 8 fails to recite any new additional elements relative to claim 1. Thus, the analysis and findings for step 2A, prong 2 incorporates the analysis and findings of claim 1, however, the analysis and findings include consideration of claim 8 as a whole.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claim 10 recites the following additional elements:
A mobile communication device comprising the secure element of claim 1.
Step 2A, prong 2
The claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with a shipping handheld device for authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. The additional elements in the claim merely add pre-extra solution activity to the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to integrate the abstract idea into a practical application.
Step 2B, prong 2
Likewise, to step 2A, prong 2, the claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with a shipping handheld device for authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a).). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. The additional elements in the claim merely add pre-extra solution activity to the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to amount to significantly more than the abstract idea itself, even when the additional elements are considered alone and in combination with the abstract idea.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
Claim 11 recites the following additional elements:
The mobile communication device further comprising the target secure element.
Step 2A, prong 2
The claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with a shipping handheld device for authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. The additional elements in the claim merely add pre-extra solution activity to the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to integrate the abstract idea into a practical application.
Step 2B, prong 2
Likewise, to step 2A, prong 2, the claims fail to achieve a technical solution to a technical problem. Thus, the claims fail to provide an improvement to the functioning of a computer or to a technology itself. The claims culminate with a shipping handheld device for authorizing a shipment after verification of the shipment authorization. See MPEP 2106.04(d)(1) and 2106.05(a).). The additional elements are recited at a high level of generality and amount to merely using computers as a tool to implement the abstract idea. The additional elements in the claim merely add pre-extra solution activity to the abstract idea. Thus, the additional elements are considered mere instructions to apply the abstract idea. See MPEP 2106.05(f). Therefore, the examiner must find that the claims fail to amount to significantly more than the abstract idea itself, even when the additional elements are considered alone and in combination with the abstract idea.
Therefore, the claims are directed to an abstract idea without significantly more and are unpatentable.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 7 – 12, and 18 - 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 – 12 and 17 - 19 of copending Application No. 19/085,559. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application NO. 19/084,089
Copending Application NO. 19/085,559
1. A secure element, comprising: a storage unit configured to store a profile and to store export control data associated with said profile; a processing unit operatively coupled to the storage unit, wherein said processing unit is configured to: verify whether the export control data meet a predefined condition; authorize an export of the profile to a target secure element when the export control data meet said predefined condition.
1. A secure element, comprising: a storage unit configured to store a profile and to store export target information associated with said profile; an interface unit configured to receive a message from a target secure element; a processing unit operatively coupled to the storage unit and the interface unit, wherein said processing unit is configured to: verify whether data included in said message matches with the export target information; and authorize an export of the profile to the target secure element when the data included in said message matches with the export target information.
7. The secure element of claim 1, wherein the processing unit is further configured to generate an export package containing said profile if the export has been authorized.
7. The secure element of claim 1, wherein the processing unit is further configured to generate an export package containing said profile if the export has been authorized.
8. The secure element of claim 1, wherein the processing unit is further configured to generate feedback data indicative of a result of the export of the profile.
8. The secure element of claim 1, wherein the processing unit is further configured to generate feedback data indicative of a result of the export of the profile.
9. The secure element of claim 1, being an embedded universal integrated circuit card, eUICC.
9. The secure element of claim 1, being an embedded universal integrated circuit card, eUICC.
10. A mobile communication device comprising the secure element of claim 1.
10. A mobile communication device comprising the secure element of claim 1.
11. The mobile communication device of claim 10, further comprising the target secure element.
11. The mobile communication device of claim 10, further comprising the target secure element.
12. A method of operating a secure element, comprising: storing, in a storage unit of the secure element, a profile and export control data associated with said profile; verifying, by a processing unit of the secure element, whether the export control data meet a predefined condition; authorizing, by the processing unit, an export of the profile to a target secure element when the export control data meet said predefined condition.
12. A method of operating a secure element, the method comprising: storing, in a storage unit of the secure element, a profile and export target information associated with said profile; receiving, by an interface unit of the secure element, a message from a target secure element; verifying, by a processing unit of the secure element, whether data included in said message matches with the export target information; and authorizing, by the processing unit, an export of the profile to the target secure element when the data included in said message matches with the export target information.
18. The method of claim 12, wherein the processing unit generates an export package containing said profile if the export has been authorized.
17. The method of claim 12, wherein the processing unit generates an export package containing said profile if the export has been authorized.
19. A non-transitory computer-readable medium storing processor-readable instructions that, when executed, cause a secure element to perform a method comprising: storing, in a storage unit of the secure element, a profile and export control data associated with said profile; verifying, by a processing unit of the secure element, whether the export control data meet a predefined condition; and authorizing, by the processing unit, an export of the profile to a target secure element when the export control data meet said predefined condition.
19. A non-transitory computer-readable medium of a secure element storing instructions that, when executed, cause a processing unit of the secure element to perform a method comprising: storing, in a storage unit of the secure element, a profile and export target information associated with said profile; receiving, by an interface unit of the secure element, a message from a target secure element; verifying, by the processing unit of the secure element, whether data included in said message matches with the export target information; and authorizing, by the processing unit, an export of the profile to the target secure element when the data included in said message matches with the export target information.
Claim Rejections - 35 USC § 102
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.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 – 2, 7 – 13, and 18 – 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KANG et al., (US 2023/0209340 A1) (hereinafter “KANG”)
KANG discloses;
Regarding claim 1, a secure element [i.e., eUICC-equipped terminal (page 2, para 0013)], comprising:
a storage unit configured to store a profile [i.e., a profile 1 is downloaded inside the eUICC of the eUICC equipped terminal (page 2, para 0013), (see ref. 5a-20 of figure 5A), (page 10, para 0085 – 0086)] and to store export control data associated with said profile [i.e., the profile 1 having Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) i.e., the LPAI 410 may additionally identify information on whether to support a device transfer in metadata of the corresponding profile…acquire status information of the profile acquired through profile metadata identification (step 5a-30) (page 10, para 0086)];
a processing unit [i.e., processor (controller) (see ref. 750 figure 7), (page 18, para 0120)] operatively coupled to the storage unit [i.e., the controller is coupled to the memory (see ref. 740 of figure 7), (page 18, para 0120)], wherein said processing unit is configured to:
verify whether the export control data meet a predefined condition [i.e., identify information collected through information stored in the metadata of the profile to identify whether a communication service provider supports a device transfer (see ref. 305 of figure 3), (page 7, para 0072) i.e., Check Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) Note; figure 3 in step 305 verifies whether the transfer support information contained in the profile metadata i.e., [eSIM Transfer = Yes…] satisfies the condition that transfer is supported];
authorize an export of the profile [i.e., the “Yes” branch leaving step 305 “Device transfer Support?” of figure 3 (see figure 3), (page 7, para 0073)] to a target secure element when the export control data meet said predefined condition [i.e., download the profile to the second terminal according to a remote SIM provisioning procedure…thereby completing installation (page 12, para 0087), (see ref. 5a-230 of figure 5A), (see ref. 390 of figure 3), (page 7, para 0073)].
Regarding claim 2, the secure element of claim 1, wherein the export control data comprise a binary digit indicative of whether or not the export of the profile is allowed [i.e., the profile 1 having Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A)], and wherein the predefined condition is that said binary digit indicates that the export is allowed [i.e., Note: eSIM Transfer = Yes].
Regarding claim 7, the secure element of claim 1, wherein the processing unit is further configured to generate an export package containing said profile if the export has been authorized [i.e., download the profile to the second terminal according to a remote SIM provisioning procedure…thereby completing installation (page 12, para 0087), (see ref. 5a-230 of figure 5A), (see ref. 390 of figure 3), (page 7, para 0073)].
Regarding claim 8, the secure element of claim 1, wherein the processing unit is further configured to generate feedback data indicative of a result of the export of the profile [i.e., when the downloading and installation of the profile is completed, the user may identify that reinstallation of the profile has been completed…(page 16, para 0112)].
Regarding claim 9, the secure element of claim 1, being an embedded universal integrated circuit card, eUICC [i.e., eUICC-equipped terminal (page 2, para 0013)].
Regarding claim 10, a mobile communication device comprising the secure element of claim 1 [i.e., a mobile communication terminal (page 1, para 0006)].
Regarding claim 11, the mobile communication device of claim 10, further comprising the target secure element.
Regarding claim 12, a method of operating a secure element [i.e., (see figures 3 and 5A), (page 7, para 0071), (page 10, para 0085)], comprising:
storing, in a storage unit of the secure element, a profile [i.e., a profile 1 is downloaded inside the eUICC of the eUICC equipped terminal (page 2, para 0013), (see ref. 5a-20 of figure 5A), (page 10, para 0085 – 0086)] and export control data associated with said profile [i.e., the profile 1 having Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) i.e., the LPAI 410 may additionally identify information on whether to support a device transfer in metadata of the corresponding profile…acquire status information of the profile acquired through profile metadata identification (step 5a-30) (page 10, para 0086)];
verifying, by a processing unit of the secure element [i.e., processor (controller) (see ref. 750 figure 7), (page 18, para 0120)], whether the export control data meet a predefined condition [i.e., identify information collected through information stored in the metadata of the profile to identify whether a communication service provider supports a device transfer (see ref. 305 of figure 3), (page 7, para 0072) i.e., Check Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) Note; figure 3 in step 305 verifies whether the transfer support information contained in the profile metadata i.e., [eSIM Transfer = Yes…] satisfies the condition that transfer is supported];
authorizing, by the processing unit [i.e., processor (controller) (see ref. 750 figure 7), (page 18, para 0120)], an export of the profile [i.e., the “Yes” branch leaving step 305 “Device transfer Support?” of figure 3 (see figure 3), (page 7, para 0073)] to a target secure element when the export control data meet said predefined condition [i.e., download the profile to the second terminal according to a remote SIM provisioning procedure…thereby completing installation (page 12, para 0087), (see ref. 5a-230 of figure 5A), (see ref. 390 of figure 3), (page 7, para 0073)].
Regarding claim 13, the method of claim 12, wherein the export control data comprise a binary digit indicative of whether or not the export of the profile is allowed, and wherein the predefined condition is that said binary digit indicates that the export is allowed [i.e., the profile 1 having Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A)], and wherein the predefined condition is that said binary digit indicates that the export is allowed [i.e., Note: eSIM Transfer = Yes].
Regarding claim 18, the method of claim 12, wherein the processing unit generates an export package containing said profile if the export has been authorized [i.e., authorized? (see figure 5A)].
Regarding claim 19, a non-transitory computer-readable medium storing processor-readable instructions [i.e., memory (see ref. 740 of figure 7), (page 18, para 0120)] that, when executed, cause a secure element to perform a method comprising:
storing, in a storage unit of the secure element, a profile [i.e., a profile 1 is downloaded inside the eUICC of the eUICC equipped terminal (page 2, para 0013), (see ref. 5a-20 of figure 5A), (page 10, para 0085 – 0086)] and export control data associated with said profile [i.e., the profile 1 having Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) i.e., the LPAI 410 may additionally identify information on whether to support a device transfer in metadata of the corresponding profile…acquire status information of the profile acquired through profile metadata identification (step 5a-30) (page 10, para 0086)];
verifying, by a processing unit of the secure element [i.e., processor (controller) (see ref. 750 figure 7), (page 18, para 0120)], whether the export control data meet a predefined condition [i.e., identify information collected through information stored in the metadata of the profile to identify whether a communication service provider supports a device transfer (see ref. 305 of figure 3), (page 7, para 0072) i.e., Check Profile 1 Metadata ([ProfileStatus, [eSIM Transfer = Yes, Method = ODSA, ECS Address]), (see ref. 5a-30 of figure 5A) Note; figure 3 in step 305 verifies whether the transfer support information contained in the profile metadata i.e., [eSIM Transfer = Yes…] satisfies the condition that transfer is supported]; and
authorizing, by the processing unit [i.e., processor (controller) (see ref. 750 figure 7), (page 18, para 0120)], an export of the profile [i.e., the “Yes” branch leaving step 305 “Device transfer Support?” of figure 3 (see figure 3), (page 7, para 0073)] to a target secure element when the export control data meet said predefined condition [i.e., download the profile to the second terminal according to a remote SIM provisioning procedure…thereby completing installation (page 12, para 0087), (see ref. 5a-230 of figure 5A), (see ref. 390 of figure 3), (page 7, para 0073)].
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) 3 – 4, 14 – 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over KANG in view of Cooper et al., (5,563,946), (hereinafter “Cooper”).
Regarding claim 3, KANG discloses; the secure element of claim 1 [i.e., (see claim 1 above)].
KANG does not disclose;
wherein the export control data comprise a counter value, and wherein the predefined condition is that said counter value is greater than zero.
However, Cooper discloses;
an export control data comprise a counter value [i.e., export counter which performs the functions of defining the maximum number of export operations allowed for the particular protected software product (col. 22, lines 53 - 58), (col. 26, lines 57 - 59), (see figures 30 and 34)], and wherein a predefined condition is that said counter value is greater than zero [i.e., once the clear text is obtained, the export counter is modified. For example, if this is the seventh permitted export operation out of ten permissible operations, the counter might read 7:10 (col. 22, lines 34 – 37), (col. 26, lines 10 - 14), (see figures 30 and 34) Note; remaining=maximum-used therefore remaining > 0].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teaching of KANG by adapting the teachings of Cooper for vendors to securely distribute software for preview by potential customers (See Cooper; col. 2, lines 20 – 24).
Regarding claim 4, KANG discloses; the secure element of claim 3 [i.e., (see claim 3 above)].
KANG does not disclose;
wherein the processing unit is further configured to decrement the counter value by one upon exporting the profile to the target secure element, and to transmit the decremented counter value to said target secure element along with the profile.
However, Cooper discloses;
a processing unit is further configured to decrement the counter value by one upon exporting the profile to the target secure element, and to transmit the decremented counter value to said target secure element along with the profile [i.e., once the clear text is obtained, the export counter is modified. For example, if this is the seventh permitted export operation out of ten permissible operations, the counter might read 7:10 (col. 22, lines 34 – 37), (col. 26, lines 10 - 14), (see figures 30 and 34) Note; remaining=maximum-used therefore decrementing the remaining counter].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teaching of KANG by adapting the teachings of Cooper for vendors to securely distribute software for preview by potential customers (See Cooper; col. 2, lines 20 – 24).
Regarding claim 14, KANG discloses; the method of claim 12 [i.e., (see claim 12 above)].
KANG does not disclose;
wherein the export control data comprise a counter value, and wherein the predefined condition is that said counter value is greater than zero.
However, Cooper discloses;
an export control data comprise a counter value [i.e., export counter which performs the functions of defining the maximum number of export operations allowed for the particular protected software product (col. 22, lines 53 - 58), (col. 26, lines 57 - 59), (see figures 30 and 34)], and wherein a predefined condition is that said counter value is greater than zero [i.e., once the clear text is obtained, the export counter is modified. For example, if this is the seventh permitted export operation out of ten permissible operations, the counter might read 7:10 (col. 22, lines 34 – 37), (col. 26, lines 10 - 14), (see figures 30 and 34) Note; remaining=maximum-used therefore remaining > 0].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teaching of KANG by adapting the teachings of Cooper for vendors to securely distribute software for preview by potential customers (See Cooper; col. 2, lines 20 – 24).
Regarding claim 15, KANG discloses; the method of claim 14 [i.e., (see claim 14 above)].
KANG does not disclose;
wherein the processing unit is further configured to decrement the counter value by one upon exporting the profile to the target secure element, and to transmit the decremented counter value to said target secure element along with the profile.
However, Cooper discloses;
a processing unit is further configured to decrement the counter value by one upon exporting the profile to the target secure element, and to transmit the decremented counter value to said target secure element along with the profile [i.e., once the clear text is obtained, the export counter is modified. For example, if this is the seventh permitted export operation out of ten permissible operations, the counter might read 7:10 (col. 22, lines 34 – 37), (col. 26, lines 10 - 14), (see figures 30 and 34) Note; remaining=maximum-used therefore decrementing the remaining counter].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teaching of KANG by adapting the teachings of Cooper for vendors to securely distribute software for preview by potential customers (See Cooper; col. 2, lines 20 – 24).
Regarding claim 20, KANG discloses; the non-transitory computer-readable medium of claim 19 [i.e., (see claim 19 above)].
KANG does not disclose;
wherein the export control data comprise a counter value, and wherein the predefined condition is that said counter value is greater than zero.
However, Cooper discloses;
an export control data comprise a counter value [i.e., export counter which performs the functions of defining the maximum number of export operations allowed for the particular protected software product (col. 22, lines 53 - 58), (col. 26, lines 57 - 59), (see figures 30 and 34)], and wherein a predefined condition is that said counter value is greater than zero [i.e., once the clear text is obtained, the export counter is modified. For example, if this is the seventh permitted export operation out of ten permissible operations, the counter might read 7:10 (col. 22, lines 34 – 37), (col. 26, lines 10 - 14), (see figures 30 and 34) Note; remaining=maximum-used therefore remaining > 0].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teaching of KANG by adapting the teachings of Cooper for vendors to securely distribute software for preview by potential customers (See Cooper; col. 2, lines 20 – 24).
Claim(s) 5 – 6 and 16 - 17 are rejected under 35 U.S.C. 103 as being unpatentable over KANG in view of Cooper as applied to claims 3 and 14 above, and further in view of NOONE et al., (US 2013/0015355 A1) (hereinafter “NOONE”).
Regarding claim 5, KANG discloses; the secure element of claim 3 [i.e., (see claim 3 above)].
KANG and Cooper do not disclose;
wherein the counter value is configured to be reset by an authorized party.
However, NOONE discloses;
wherein the counter value is configured to be reset by an authorized party [i.e., the people counting module 50 reset the counters as indicated by the system administrator (page 4, para 0039), (see figure 5)].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teachings of KANG and Cooper by adapting the teachings of NOONE for detecting and counting people transiting an interrogation zone of an electronic surveillance system in non-intrusive way (See NOONE; page 1, para 0008).
Regarding claim 6, KANG discloses; the secure element of claim 5 [i.e., (see claim 5 above)].
KANG and Cooper do not disclose;
wherein the authorized party is an owner of the profile.
However, NOONE discloses;
wherein the authorized party is an owner of the profile [i.e., the people counting module 50 reset the counters as indicated by the system administrator (page 4, para 0039), (see figure 5)].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teachings of KANG and Cooper by adapting the teachings of NOONE for detecting and counting people transiting an interrogation zone of an electronic surveillance system in non-intrusive way (See NOONE; page 1, para 0008).
Regarding claim 16, KANG discloses; the method of claim 14 [i.e., (see claim 14 above)].
KANG and Cooper do not disclose;
wherein the counter value is configured to be reset by an authorized party.
However, NOONE discloses;
wherein the counter value is configured to be reset by an authorized party [i.e., the people counting module 50 reset the counters as indicated by the system administrator (page 4, para 0039), (see figure 5)].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teachings of KANG and Cooper by adapting the teachings of NOONE for detecting and counting people transiting an interrogation zone of an electronic surveillance system in non-intrusive way (See NOONE; page 1, para 0008).
Regarding claim 17, KANG discloses; the method of claim 16 [i.e., (see claim 16 above)].
KANG and Cooper do not disclose;
wherein the authorized party is an owner of the profile.
However, NOONE discloses;
wherein the authorized party is an owner of the profile [i.e., the people counting module 50 reset the counters as indicated by the system administrator (page 4, para 0039), (see figure 5)].
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the teachings of KANG and Cooper by adapting the teachings of NOONE for detecting and counting people transiting an interrogation zone of an electronic surveillance system in non-intrusive way (See NOONE; page 1, para 0008).
Conclusion
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/SYED A RONI/Primary Examiner, Art Unit 2432
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