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 .
This office action is in response to the communication filed on 6/11/2025.
Claims 1-20 have been examined.
Information Disclosure Statement
No IDS has been filed in this application. The applicants are reminded of their duty of disclosure. This should include any relevant art cited for corresponding foreign applications as well as search reports and written opinions.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it contains phrases which can be implied (i.e. “there is provided”). Correction is required. See MPEP § 608.01(b).
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 3, 4, 7, 11-15 and 17-19 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.
Claim 3 recites “the secondary circuitry is activated and not be selected for use…” which is not grammatically correct.
Claim 7 recites “SIM” which is an acronym that has not yet been defined in the claim.
Claim 11 recites “SIM” which is an acronym that has not yet been defined in the claim.
Claim 13 recites the limitation "the unique identifier" which lacks antecedent basis in the claim.
Claim 14 recites the limitation "the unique digital identifiers" which lacks antecedent basis in the claims.
Claim 15 recites “SIM ID” which is an acronym that has not yet been defined in the claim.
Claim 15 recites “ID” which is an acronym that has not yet been defined in the claim.
Claim 15 uses the term “and/or”. This term renders the scope of the claim language unclear because it is not clear whether all of the limitations are required or not, in order to fall within the scope of the claim. The use of "and" in the language would require all the limitations to be present in order to fall within the scope of the claim language. The use of "or" in the language would only require one of the limitations to be present in order to fall within the scope of the claim language. The use of "and/or" makes the applicants intended scope unclear because one of ordinary skill in the art would be unable to determine whether or not all of the listed limitations are required or not. Therefore, the claims are rejected for failing to specifically point out and distinctly claim the subject matter which the inventors regard as the invention.
Claims 17-18 recites the limitation "the unique digital identifiers" which lacks antecedent basis in the claims.
Claim 19 is directed to a method, but then recites only a processor, which is not a method. It is unclear whether this claim should be considered as a method or whether it should be considered as a device.
All rejected dependent claims are rejected by virtue of their dependence upon one of the above addressed claims.
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 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 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.
Claim(s) 1-10, 13-15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nimmala et al. (US Patent Application Publication Number 2021/0136849) in view of Bruner et al. (US Patent Application Publication Number 2018/0103335).
Regarding claim 1, Nimmala taught a mobile device for accessing a service hosted by an application server, comprising:
at least one processor of a mobile device executing a code for:
operating primary circuitry installed in the mobile device connected to a first cellular service provider and providing cellular data services to the mobile device (Nimmala paragraphs 0004, 0029, 0038 and 0043 for example);
accessing a unique digital identifier stored in a secondary circuitry of the mobile device having connectivity provided by a second cellular service provider (Nimmala paragraphs 0004, 0029, 0038 and 0043 for example); and
providing the unique digital identifier to the application server for authenticating the mobile device for accessing the service (Nimmala paragraphs 0043-0044 for example).
Nimmala does not explicitly teach receiving a request for authentication of the mobile device from an application server.
Bruner taught receiving a request for authentication of the mobile device from an application server (Bruner paragraphs 0003, 0025 and 0051-0053 for example).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including the mobile device receiving a request for unique identification information. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 2, Nimmala and Bruner taught the mobile device wherein the unique digital identifier stored in the secondary circuitry comprises a Mobile Station International Subscriber Directory Number (MSISDN) (Nimmala paragraph 0043).
Regarding claim 3, Nimmala and Bruner taught the mobile device wherein the primary circuitry is activated and selected for providing cellular services by the first cellular service provider, and the secondary circuitry is activated and not be selected for use by the mobile device for cellular services (Nimmala paragraphs 0033, 0035 and 0043).
Regarding claim 4, Nimmala and Bruner taught the mobile device wherein the cellular services that are activated on the primary circuitry and not selected on the secondary circuitry include at least one of: voice call services, upload data services, download data services, and short message service (SMS) services (Nimmala paragraphs 0004-0005, 0033, 0035, and 0043).
Regarding claim 5, Nimmala and Bruner taught the mobile device wherein the primary circuitry is activated for providing cellular services by the first cellular service provider, and the secondary circuitry is activated for providing cellular services by the second cellular service provider (Nimmala paragraphs 0004-0005, 0033, 0035, and 0043).
Regarding claim 6, Nimmala and Bruner taught the mobile device wherein the primary circuitry comprises a subscriber identifier module (SIM) card and the secondary circuitry is configured for hosting an embedded SIM (eSIM) (Nimmala paragraphs 0004, 0029, 0038, and 0043).
Regarding claim 7, Nimmala and Bruner taught the mobile device wherein the primary circuitry comprises a first SIM card and the secondary circuitry comprises a second SIM card (Nimmala paragraphs 0004, 0029, 0038 and 0043 for example).
Regarding claim 8, Nimmala and Bruner taught the mobile device wherein the primary circuitry and secondary circuitry are separate components, installed in different locations in the mobile device (Nimmala paragraphs 0004, 0029, 0038 and 0043 for example).
Regarding claim 9, Nimmala and Bruner taught downloading code instructions including the unique digital identifier from a server, wherein the server provides different unique digital identifiers to different mobile devices via respective code instructions configured for installation on the different mobile devices (Bruner paragraphs 0025, 0027-0028 and 0045-0047).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including provisioning the mobile device with unique digital identifiers from a server. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 10, Nimmala and Bruner taught that the primary circuitry is used for communicating with the application server and identified by the unique digital identifier assigned to the secondary circuitry (Nimmala paragraph 0043).
Regarding claim 13, Nimmala and Bruner taught downloading code instructions including the unique digital identifier from a server, wherein the server provides different unique digital identifiers to different mobile devices via respective code instructions configured for installation on the different mobile devices (Bruner paragraphs 0025 and 0027-0028).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including provisioning the mobile device with unique digital identifiers from a server. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 14, Nimmala and Bruner taught obtaining unique identifiers of hardware of the mobile device; and providing in association with the unique digital identifiers, at least one unique identifier of hardware to the application server for authentication of the mobile device (Bruner paragraphs 0003, 0030 and 0051-0053).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including the mobile device receiving a request for unique identification information. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 15, Nimmala and Bruner taught that the unique identifiers of hardware include self-generated identifiers that represent the Integrated Circuity Card Identification (ICCID) or Embedded Identity Document (EID), which may denote a SIM ID and/or Embedded Mobile Equipment Identity (EMEI) which may denote a device ID (Bruner paragraphs 0003, 0030 and 0051-0053).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including the mobile device receiving a request for unique identification information. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 18, Nimmala and Bruner taught receiving the request for authentication and sending the unique digital identifiers, via the secondary circuitry over a cellular network operated by the secondary cellular service provider (Nimmala paragraph 0043).
Regarding claim 19, Nimmala taught a method for using mobile device for accessing a service hosted by an application server, comprising:
at least one processor of a mobile device executing a code for:
operating primary circuitry installed in the mobile device connected to a first cellular service provider and providing cellular data services to the mobile device (Nimmala paragraphs 0004, 0029, 0038 and 0043);
accessing a unique digital identifiers stored in a secondary circuitry of the mobile device having connectivity provided by a second cellular service provider (Nimmala paragraphs 0004, 0029, 0038 and 0043;); and
providing the unique digital identifiers to the application server for authenticating the mobile device for accessing the service (Nimmala paragraphs 0043-0044).
Nimmala does not explicitly teach receiving a request for authentication of the mobile device from an application server.
Bruner taught receiving a request for authentication of the mobile device from an application server (Bruner paragraphs 0003, 0025 and 0051-0053 for example).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including the mobile device receiving a request for unique identification information. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Regarding claim 20, Nimmala taught a non-transitory medium storing program instructions for using a mobile device for accessing a service hosted by an application server, comprising program instructions which when executed by at least one processor, cause the at least one processor to:
operate primary circuitry installed in the mobile device connected to a first cellular service provider and providing cellular data services to the mobile device (Nimmala paragraphs 0004, 0029, 0038 and 0043);
access a unique digital identifiers stored in a secondary circuitry of the mobile device having connectivity provided by a second cellular service provider (Nimmala paragraphs 0004, 0029, 0038 and 0043); and
provide the unique digital identifiers to the application server for authenticating the mobile device for accessing the service (Nimmala paragraphs 0043-0044).
Nimmala does not explicitly teach receiving a request for authentication of the mobile device from an application server.
Bruner taught receiving a request for authentication of the mobile device from an application server (Bruner paragraphs 0003, 0025 and 0051-0053 for example).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Bruner in the system of Nimmala by including the mobile device receiving a request for unique identification information. This would have been obvious because the person having ordinary skill in the art would have been motivated to improve the access to communicate proper credentials to access and enable use of services.
Claim(s) 11-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nimmala and Bruner, and further in view of Yang et al. (US Patent Application Publication Number 2021/0194679).
Regarding claim 11, Nimmala and Bruner did not explicitly teach that the secondary circuitry further comprises a storage component installed in the mobile device storing an applet, wherein the applet obtains device and SIM unique digital identifiers from the secondary circuitry in response to the request.
Yang taught a mobile device wherein secondary circuitry further comprises a storage component installed in the mobile device storing an applet, wherein the applet obtains device and SIM unique digital identifiers from the secondary circuitry in response to the request (Yang paragraphs 0084, 0089 and 0098-0101).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Yang in the authentication system of Nimmala and Bruner by using applets. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide secure module to secure module communications for transmitting information.
Regarding claim 12, Nimmala, Bruner and Yang taught that the applet is downloaded in association with the unique digital identifier from a server providing different unique digital identifiers to different mobile devices (Yang paragraphs 0084, 0089 and 0098-0101).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Yang in the authentication system of Nimmala and Bruner by using applets. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide secure module to secure module communications for transmitting information.
Regarding claim 16, Nimmala and Bruner did not explicitly teach executing an applet stored in a storage component of the secondary circuitry for accessing at least one unique identifier of hardware of the mobile device, wherein the applet obtains the unique identifier of hardware to provide to the application server.
Yang taught the mobile device further comprising code for: executing an applet stored in a storage component of the secondary circuitry for accessing at least one unique identifier of hardware of the mobile device, wherein the applet obtains the unique identifier of hardware to provide to the application server (Yang paragraphs 0084, 0089 and 0098-0101).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Yang in the authentication system of Nimmala and Bruner by using applets. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide secure module to secure module communications for transmitting information.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nimmala and Bruner, and further in view of Hult et al. (US Patent Application Publication Number 2021/0006969).
Regarding claim 17, Nimmala and Bruner taught receiving a request from the application server for registration of the mobile device; and providing the unique digital identifiers for registration of the mobile device (Nimmala paragraphs 0043-0044).
However, Nimmala and Bruner did not explicitly teach that the application server stores the unique digital identifiers in a user record, wherein the application server authenticates the mobile device by comparing the unique digital identifiers received in response to the request for authentication, to the unique digital identifiers stored in the user record.
Hult taught wherein the application server stores the unique digital identifiers in a user record, wherein the application server authenticates the mobile device by comparing the unique digital identifiers received in response to the request for authentication, to the unique digital identifiers stored in the user record (Hult claim 9 and paragraphs 0017 and 0024).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to employ the teachings of Hult in the authentication system of Nimmala and Bruner by checking MSISDN. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide improved subscription management without requesting information from any MNO servers.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 and 21-36 of copending Application No. 19/530,544 (copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, the examiner notes that the copending application has been issued a notice of allowance. As such, once the copending application is officially patented, rejection will no longer be provisional.
Conclusion
Claims 1-20 have been rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2023/0020909 disclosed a method of providing an electronic subscriber identity module (eSIM) profile to a wireless communication device. The method comprises receiving an eSIM profile provisioning request by a subscription manager-data preparation+(SM-DP+) server, wherein the provisioning request comprises an embedded UICC identifier (EID) number, a private identity code, and wireless communication service subscription information; building an eSIM profile package by the SM-DP+ server based in part on the wireless communication service subscription information, wherein the eSIM profile package comprises an eSIM profile, the EID number, and the private identity code; sending a notification of the availability of the eSIM profile by the SM-DP+ server to a subscription manager-discovery server (SM-DS server), wherein the notification comprises the EID number and the private identity code; and transmitting the eSIM profile package by the SM-DP+ server to the wireless communication device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 9AM-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, William Korzuch can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T HENNING/Primary Examiner, Art Unit 2491
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