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 .
The claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/20/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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/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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 7-12 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-12 and 18-19 of U.S. Patent Application No. 19/084,089. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the instant application is made obvious by the ‘089 Application. Essentially, the ‘089 application and the instant application differs in that the ‘089 application discloses a verify and authorize step based “the export control data meet a predefined condition”, while the instant application discloses the verify and authorize step based on “data included in said message matches with the export target information”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to understand that during an exporting event, one of the predefine condition would be checking the target information. Therefore, claims of the instant application is made obvious by the ‘089 application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 1029(a)(1) as being anticipated by Kang et al. (US Pub No 2023/0209340).
Prior art Kang teaches Claim:
1. A secure element (e.g., eUICC-equipped terminal ¶ 0013), comprising:
a storage unit configured to store a profile and to store export target information associated with said profile (e.g., select profile 1 + eSIM transfer from storage with stored configuration ¶ 0086);
an interface unit configured to receive a message from a target secure element (e.g., receive eSIM transfer request ¶ 0085, Fig. 4 #410 & 5a #20);
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 (e.g., verify the eSIM transfer configuration and authentication @ Fig. 3 #305 and #315-335 and “the back-end system 130 of the MNO transmits an ICCID of the new profile installed in the second terminal 350 or an ICCID together with the IMEI of the second terminal 350 to the ECS 120, and the ECS 120 matches the ICCID to the ICCID value acquired in (step 5a-120)” ¶ 0087); 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 (e.g., “and in the case that the ICCID and the ICCID value are the same, the ECS 120 may update the corresponding subscription information and optionally reply the update result to the provider back-end system 130” ¶ 0087, which teaches the matching to authorize the profile export to the target device).
Prior art Kang further teaches Claim:
2. The secure element of claim 1, wherein said message is a signed message, and wherein the processing unit is further configured to: verify whether the message has been validly signed (e.g., mutual authentication with verifying signatures ¶ 0098-0100); and authorize the export of the profile to the target secure element when the message has been validly signed and the data included in said message matches with the export target information (e.g., validation verification process ¶ 0098 and matching ICCID of target profile ID ¶ 0086-0087).
Prior art Kang further teaches Claim:
3. The secure element of claim 1, wherein the export target information contains an identifier of the target secure element (e.g., integrated circuit card identifier (ICCID) ¶ 0086-0087).
Prior art Kang further teaches Claim:
4. The secure element of claim 1, wherein the export target information contains a token provided by an owner of the profile (e.g., authentication token ¶ 0086).
Prior art Kang further teaches Claim:
5. The secure element of claim 4, wherein said token provided by the owner of the profile is a random number (e.g., authen token including the nonce ¶ 0098).
Prior art Kang further teaches Claim:
6. The secure element of claim 1, wherein the processing unit is further configured to delete the export target information from the storage unit (e.g., profile delete ¶ 0112).
Prior art Kang further teaches 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 (e.g., download the profile to the second terminal ¶ 0087).
Prior art Kang further teaches Claim:
8. The secure element of claim l, wherein the processing unit is further configured to generate feedback data indicative of a result of the export of the profile (e.g., notify user of completion and requesting user consent for subsequent profile deletion step ¶ 0112).
Prior art Kang further teaches Claim:
9. The secure element of claim 1, being an embedded universal integrated circuit card, eUICC (e.g., eUICC-equipped terminal ¶ 0013).
Prior art Kang further teaches Claim:
10. A mobile communication device comprising the secure element of claim 1 (e.g., mobile communication terminal ¶ 0006 & 0023).
Prior art Kang further teaches Claim:
11. The mobile communication device of claim 10, further comprising the target secure element (e.g., mobile communication terminal ¶ 0006, 0023 & 0072).
Claim 12 is substantially similar to claim 1 above, and therefore the claim is likewise rejected.
Claim 13 is substantially similar to claim 2 above, and therefore the claim is likewise rejected.
Claim 14 is substantially similar to claims 3+4 above, and therefore the claim is likewise rejected.
Claim 15 is substantially similar to claim 5 above, and therefore the claim is likewise rejected.
Claim 16 is substantially similar to claim 6 above, and therefore the claim is likewise rejected.
Claim 17 is substantially similar to claim 7 above, and therefore the claim is likewise rejected.
Claim 18 is substantially similar to claim 8 above, and therefore the claim is likewise rejected.
Claim 19 is substantially similar to claim 1 above, and therefore the claim is likewise rejected.
Claim 20 is substantially similar to claim 2 above, and therefore the claim is likewise rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU LE whose telephone number is (571)270-7217. The examiner can normally be reached M-F 8:00-5:00.
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/CHAU LE/Primary Examiner, Art Unit 2408
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