Ex Parte Buckley

Patent Trial and Appeal BoardJul 22, 2013

11174079 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ADRIAN BUCKLEY ____________ Appeal 2011-002628 Application 11/174,079 Technology Center 2600 ____________ Before JOHN A. JEFFERY, BRYAN F. MOORE, and MATTHEW R. CLEMENTS, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-24 and 34-41. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention manages network lists in a wireless device by downloading only those only network list data entries relevant to geographic region information from the device’s removable storage device. See generally Abstract. Claim 1 is illustrative with disputed limitations emphasized: Appeal 2011-002628 Application 11/174,079 2 1. A method for managing network lists in a wireless device, comprising: scanning by said wireless device for discovering at least one network; determining geographic region information based on identity information of said at least one network discovered by said wireless device via scanning; and downloading only those network list data entries relevant to said geographic region information from a removable storage module (RSM) operable to be coupled to said wireless device, said network list data entries for facilitating network selection by said wireless device. THE REJECTION The Examiner rejected claims 1-24 and 34-41 under 35 U.S.C. § 103(a) as unpatentable over Casaccia (US 2004/0192304 A1; Sept. 30, 2004) and Coles (US 2006/0217153 A1; Sep. 28, 2006; filed Nov. 25, 2003). Ans. 3-7.1 CONTENTIONS The Examiner finds that Casaccia’s method of managing wireless device network lists has every recited element of claim 1, but does not explicitly teach downloading only network list data entries relevant to determined geographic region information. Ans. 3-4. The Examiner, however, cites Coles as teaching this feature in concluding that the claim would have been obvious. Ans. 4, 7-11. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 23, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed September 16, 2010 (“Ans.”); and (3) the Reply Brief filed November 16, 2010 (“Reply Br.”). Appeal 2011-002628 Application 11/174,079 3 Appellant argues the prior art does not teach or suggest downloading only those network list data entries relevant to the geographic region information from a removable storage module. App. Br. 6-17; Reply Br. 2- 8. According to Appellant, the Examiner’s reliance on Coles is misplaced since Coles merely changes the order of preferred networks downloaded to a mobile device depending on the device’s current location, but only the first entry is guaranteed to be relevant to that location. Id. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Casaccia and Coles collectively would have taught or suggested downloading only those only network list data entries relevant to determined geographic region information from a removable storage module? ANALYSIS We begin by noting that since this dispute hinges on the Examiner’s reliance on Coles for teaching the downloading limitation above, we confine our discussion to that reference. It is undisputed that Coles downloads entries from a list of preferred networks (i.e., preferred public land mobile networks (PLMNs)) from a removable storage module (subscriber identity module (SIM) 34). See App. Br. 8-11 (discussing Coles’ Figures 4 and 5). Nor is it disputed that Coles changes the order of these preferred networks depending on the device’s location, such that at least the first listed entry is from the current country and therefore “relevant” to that location, but there is no guarantee about the other entries which, in one example, is seven additional preferred networks. Appeal 2011-002628 Application 11/174,079 4 See App. Br. 10-11, 14, 16; Reply Br. 4-5; Ans. 7-10. We emphasize “preferred” here, for this preference is why the Examiner finds the associated entries are “relevant” to the location which is said to broadly mean “appropriate, suitable, and pertinent” to that location. Ans. 7 (citing dictionary definition of “relevant”). We see no error in this position. Notably, Appellant acknowledges that there may be some situations in Coles where all entries downloaded to the mobile device are relevant to the location—even under Appellant’s somewhat narrower definition of the term. Reply Br. 4. But even if seven of the eight entries (i.e., all except the first entry) in Coles’ example are networks in locations different from the first entry, they are still “relevant” at least in the sense that these networks—like the first network—are preferred as the Examiner indicates. Ans. 10. By listing preferred networks that cooperate with a particular network provider or otherwise offer favorable roaming conditions, Coles’ system increases the chance that networks within this preferred group will be used when roaming, and not those of a competitor. See Ans. 10 (citing Coles ¶ 0020); see also Coles ¶ 0009. In short, although Coles’ seven remaining downloaded entries may not be as relevant to the location as the first entry, that does not mean that they are irrelevant as Appellant contends: they are still relevant at least regarding promoting preferred networks when roaming to and from a location. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2-24 and 34-41 not separately argued with particularity. Appeal 2011-002628 Application 11/174,079 5 CONCLUSION The Examiner did not err in rejecting claims 1-24 and 34-41 under § 103. DECISION The Examiner’s decision rejecting claims 1-24 and 34-41 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj