Ex Parte Chatrath

Patent Trial and Appeal BoardMay 31, 2013

10855551 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/855,551 05/26/2004 Vishal Chatrath 004770.01829 9185 72165 7590 05/31/2013 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT 004770 1100 13TH STREET SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER ALAM, FAYYAZ ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 05/31/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VISHAL CHATRATH ____________________ Appeal 2010-009592 Application 10/855,551 Technology Center 2600 ____________________ Before JEAN R. HOMERE, BRYAN F. MOORE, and JOHN G. NEW, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009592 Application 10/855,551 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1-9 and 11-31. Br. 2. Claim 10 is cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to an improved method and system for associating subscriber identity information. Spec, ¶ [0001]. Claims 1 and 6, reproduced below, are illustrative of the claimed subject matter: 1. A method comprising: establishing a connection between a first terminal and a second terminal; and communicating a software subscriber identity module from the first terminal to the second terminal, wherein the software subscriber identity module comprises a standard component and an active component, wherein the active component is always communicated to the second terminal so that the second terminal can establish an additional connection with a network, wherein the standard component is selectively communicated to the second terminal to establish the additional connection with the network, and wherein the standard component includes handshaking information required to make a successful connection with the network. 6. The method of claim 1, further comprising: receiving, at the first terminal, a confirmation message from a software subscriber identity module database confirming that the second terminal is part of a federation with the first terminal. REFERENCES Ahonen US 2004/0023689 A1 Feb. 5, 2004 Simmons US 2004/0043792 A1 Mar. 4, 2004 Appeal 2010-009592 Application 10/855,551 3 Yaqub US 2004/0180657 A1 Sep. 16, 2004 Carlsson US 2004/0204087 A1 Oct. 14, 2004 Stenmark US 2005/0009563 A1 Jan.13, 2005 REJECTIONS Claims 1-3, 7-9, 11, 12, 14, 17-26 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carlsson, Stenmark, and Simmons. Ans. 3-19. Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carlsson, Stenmark, Simmons, and Ahonen. Ans. 19. Claims 6, 15, 16, 27, 28, 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carlsson, Stenmark, Simmons, and Yaqub. Ans. 20-22. Issues The dispositive issues before us are as follows: 1. whether the combination of Carlsson, Stenmark, and Simmons collectively teach that “the standard component is selectively communicated to the second terminal to establish the additional connection with the network,” as recited in claim 1; and 2. whether Yaqub teaches “receiving, at the first terminal, a confirmation message from a software subscriber identity module database confirming that the second terminal is part of a federation with the first terminal,” as recited in claim 6. Appeal 2010-009592 Application 10/855,551 4 Analysis 35 U.S.C. § 103(a) - Carlsson, Stenmark, and Simmons Claims 1-3, 7-9, 11, 12, 14, 17-26 and 29 Appellant argues that “Simmons still fails to teach or suggest that the key identifier is communicated to the MS (i.e., the alleged second terminal) to establish an additional connection with a network, as recited in claim 1.” Br. 12. Specifically, Appellant argues that “FIG. 3 of Simmons merely illustrates the MS processing a random number with a key identifier to help the SIM determine whether to proceed (e.g., verification that the SIM is valid for the mobile device). This argument is not persuasive of Examiner error. We agree with the Examiner that “the Simmons reference is not used to show first and second terminal but instead a teaching of signaling or messaging/identifier that is communicated from one location to another in order to establish connection with the network.” Ans. 23. In other words, the Examiner relies on Carlsson to show a first and second terminal. Ans. 4. Simmons teaches the SIM communicates the key identifier to MS (in box 20-4) and that the key identifier allows the authentication of the SIM and allows the MS to connect to the network. Simmons, Fig. 3; ¶¶ [0051], [0052], and [0053]. Thus, Simmons has a standard component, i.e., a key identifier, that is communicated to a terminal, MS, to allow a connection to a network. Therefore, the Examiner did not err in finding that Simmons and Carlsson collectively teach a standard component is communicated to the second terminal to establish the additional connection with the network. Claim 1 also recites that the standard component is selectively communicated to the second terminal to establish the additional connection Appeal 2010-009592 Application 10/855,551 5 with the network. Appellant argues “Simmons lacks a teaching or suggestion of selective communication of the standard component to another terminal, as recited in claim 1.” Br. 7. Specifically, Appellant argues that: “Simmons does not teach or suggest a choice or option of whether or not to send the selected key identifier.” Id. Appellant also argues that “Simmons teaches away from the sharing of identification cards, stating that the invention is directed to a system that ‘provides for binding an identification card to terminal equipment so that the card cannot be used in any other equipment.’” Id. (citing Simmons, Abstract). We do not agree with Appellant. Simmons’ Fig. 3 discloses a section of a key identifier (20-3), i.e., a standard component, from a list and sending it (20-4) to the MS, i.e., the terminal. Simmons, Fig. 3. Thus, Simmons teaches that there is a selection of which key to communicate to the MS. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). Here, the claimed phrase, “selectively communicate” is silent as to whether “selectively” refers to when to communicate, whether to communicate, what to communicate, etc. Therefore, we agree with the Examiner that the broadest reasonable interpretation of “selectively communicate” encompasses making a selection of what is to be communicated, i.e., which key identifier to communicate. Ans. 25. We are thus satisfied that the cited disclosure of Simmons teaches the disputed limitations. It follows that Appellant’s argument is not persuasive of Examiner error. Appeal 2010-009592 Application 10/855,551 6 Appellant also argues that “Simmons teaches away from the sharing of identification cards, stating that the invention is directed to a system that ‘provides for binding an identification card to terminal equipment so that the card cannot be used in any other equipment.’” Id. (citing Simmons, Abstract). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Although Simmons teaches binding the identification card to the terminal equipment, it does not specifically discourage or discredit sharing the identification card, it simply provides an embodiment in which the card is binded to one terminal. Thus we are not persuaded by this argument. Appellant does not make substantive arguments regarding claims 2-3, 7-9, 11, 12, 14, 17-26 and 29, thus they fall with claim 1. Thus, for the reasons above, we sustain the Examiner’s decision to reject claims 1-3, 7-9, 11, 12, 14, 17-26 and 29. 35 U.S.C. § 103(a) - Carlsson, Stenmark, Simmons, and Ahonen Appeal 2010-009592 Application 10/855,551 7 Claims 4 and 13 Appellant does not make substantive arguments regarding claims 4 and 13, thus they fall with claim 1. Thus, for the reasons above, we sustain the Examiner’s decision to reject claims 4 and 13. 35 U.S.C. § 103(a) - Carlsson, Stenmark, Simmons, and Yaqub Claims 6, 15, 16, 27, 28, 30 and 31 Claim 6 recites “receiving, at the first terminal, a confirmation message from a software subscriber identity module database confirming that the second terminal is part of a federation with the first terminal.” Appellant argues “[n]owhere does Yaqub teach or suggest receiving a confirmation at a first terminal (e.g., devices 500, 502, 504 or handheld device 812 and laptop 810) from a software subscriber identity module database confirming that a second terminal is part of a federation with the first terminal.” Br. 8. This argument is not persuasive of Examiner error. First of all, Appellant argument “assumes, without conceding, that device 500 corresponds to a first terminal and device 502 corresponds to a second terminal and that Yaqub describes a federation between devices 500 and 502.” Id. We agree with the Examiner that device 500 corresponds to a first terminal and device 502 corresponds to a second terminal and that Yaqub describes a federation between devices 500 and 502. Ans. 20. For example, devices 500 and 502 may be mobile phones. Yaqub, ¶ [0027]. Additionally, Yaqub “allows multiple devices to simultaneously access different networks, operated by a common operator, using the same identification information from the same SIM.” Id. Thus, the devices are in federation with each other. For example, the Specification describes a Appeal 2010-009592 Application 10/855,551 8 federation as group of devices associated with the same SIM. Spec, ¶ [0025]. Given those understandings, we focus on whether a confirmation message is received as recited in claim 6. In Yaqub: The SIM wirelessly sends an alert in step 1002 to primary device A [, then] the user at device A receives an alert in the form of a message that pops up at the device. The message informs the user that another device has requested identification information from the SIM, and the message presents a user with a choice of whether to allow the access or not in decision step 1006. Yaqub, ¶ [0035]. In other words, Yaqub send an alert to the users in order to confirm that the second device is allowed to use the SIM and form an association with the first device. We find that the broadest reasonable interpretation of a confirmation message encompasses an alert requesting confirmation of an association. Therefore, we agree with the Examiner that Yaqub teaches “receiving, at the first terminal, a confirmation message from a software subscriber identity module database confirming that the second terminal is part of a federation with the first terminal.” As to claim 28, we note that Appellant’s arguments amount to no more than reciting the claim features and generally alleging that Yaqub is deficient. Merely pointing out certain claim features recited in claim 28 and nakedly asserting that Yaqub fails to disclose such features does not amount to a separate patentability argument. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding Appeal 2010-009592 Application 10/855,551 9 elements were not found in the prior art.”); see also Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Thus claim 28 falls with claim 1. Appellant does not make substantive arguments regarding claims 15, 16, 27, 30 and 31, which depend from either claim 1 or 9, thus they fall with claims 1 and 9. Thus, for the reasons above, we sustain the Examiner’s decision to reject claims 6, 15, 16, 27, 28, 30 and 31. DECISION The decision of the Examiner to reject claims 1-38 under 35 U.S.C. § 103(a) 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 ke