Ex Parte Deas et al

Patent Trial and Appeal BoardDec 22, 2014

11312990 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/312,990 12/19/2005 David A. Deas 7785-69 (CP2044) 5417 92384 7590 12/23/2014 AT&T Legal Department - G&G Attention: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER HO, HUY C ART UNIT PAPER NUMBER 2644 MAIL DATE DELIVERY MODE 12/23/2014 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 DAVID A. DEAS, MICHAEL F. GRANNAN, UMESH M. DESAI, ANIL K. DORADLA, LALITHA SURYANARAYANA, DAVID R. WOLTER, and DINESH NADARAJAH ____________ Appeal 2012-008971 Application 11/312,990 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, and 5–15, which are all the claims pending in the application. Claims 3, 4, and 16–22 were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-008971 Application 11/312,990 2 Invention The claimed invention on appeal “relates generally to service management centers, and more specifically to a method for acquiring services on a multiplicity of devices.” (Spec. 1 ¶ l.) Representative Claim Independent claim 1 is representative of the invention on appeal: 1. A non-transitory computer-readable storage medium in a service management center for managing operations of a plurality of service centers, comprising computer instructions at least for: enabling a selection of at least one service of the service centers on a select one of a plurality of devices according to a single identification reference supplied by an end user to collectively enable any services of the service centers subscribed to by the end user; receiving from the select one of the devices the single identification reference in response to a request for service by the end user, wherein the single identification reference is not associated with the select one of the devices, wherein the single identification reference is inputted into the select one of the devices by the end user when the request for service is generated; selecting the at least one service associated with the single identification reference; enabling the at least one services on the selected one of the devices; authenticating the single identification reference; determining if the service requested is enabled for the end user on a device different from the selecte [sic.] one of the devices; and upon a finding that the single identification reference is valid and there are no services enabled for the end user on a device other than the Appeal 2012-008971 Application 11/312,990 3 select one of the devices, searching for at least one services associated with the single identification reference. (Contested limitations emphasized.) Evidence Relied Upon US Patent 7,113,765 B2 Minear Sept. 26, 2006 US Pub. 2004/0254993 A1 Mamas Dec. 16, 2004 US Patent 7,003,481 B2 Banka Feb. 21, 2006 US Pub. 2004/0002878 A1 Maria Hinton Jan. 1, 2004 US Pub. 2007/0038931 A1 Allaire Feb. 15, 2007 US Pub. 2008/0005064 A1 Sarukkai Jan. 3, 2008 Rejections A. Claims 1, 2, 5, 6, and 10–12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Minear, Mamas, Banka, and Maria. B. Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Minear, Mamas, Banka, Maria, and Allaire. C. Claims 8, 9, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Minear, Mamas, Banka, Maria, and Sarukkai. Appeal 2012-008971 Application 11/312,990 4 Grouping of Claims Based on Appellants’ arguments, we decide the appeal of rejection A of claims 1, 2, 5, 6, and 10–12 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address rejections B and C separately, infra. Contentions Appellants contend, inter alia: Minear does not disclose or suggest receiving a single identification reference from the select one of the devices where the single identification reference is inputted into the select one of the devices by the end user when the request for service is generated as in claim 1. (App. Br. 8; see also similar argument Reply Br. 7–8.) The Examiner disagrees: Minear teaches and discloses the claimed feature in column 8 lines 12-48, i.e., the removable user identification module RUIM, thus the single identification reference. Therefore, Minear teaches and discloses the argued claimed features "single identification reference" in claims 1 and 10. (Ans. 14.) 1 Appellants filed a Notice of Appeal on June 2, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board rules published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-008971 Application 11/312,990 5 In the Reply Brief (8), Appellants respond: “It is respectfully asserted that a Removable User Identification Module (RUIM) is not a single identification reference as recited in claim 1, but rather is a removable hardware component of a wireless device.” (Emphasis added). However, we find Minear’s RUIM includes a “single identification reference” falling within the scope of Appellants representative claim 1: “Generally, a RUIM's serial number or a subscriber identification number (SID) are used to identify a subscriber and the RUIM's serial number and SID are stored in a server.” (Minear, col. 8, ll. 19–22, emphasis added.) In the Reply Brief, Appellants contest additional limitations not allegedly taught by the RUIM alternative embodiment.2 (Reply Br. 8; Minear, col. 8, ll. 11–22.) However, we note the Examiner relies on other embodiments in the Minear reference in combination with the other cited references for teaching or suggesting these additional contested features. (Ans. 5–6.) Regarding the Examiner’s reliance on Minear’s RUIM alternative embodiment (Ans. 14–15), our reviewing court guides that “[c]ombining two embodiments disclosed adjacent to each other in a prior 2 See Reply Br. 8: “Moreover, Minear does not describe enabling a selection of at least one service of the service centers on a select one of a plurality of devices according to a RUIM supplied by an end user to collectively enable any services of the service centers subscribed to by the end user and receiving the RUIM from the select one of the devices. Further, Minear does not describe the RUIM being inputted into the select one of the devices by the end user when the request for service is generated.” Appeal 2012-008971 Application 11/312,990 6 art patent does not require a leap of inventiveness,” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Nor do we find Appellants various “teaching away” arguments persuasive. (See, e.g., App. Br. 10–11; Reply Br. 8–9.) A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Therefore, on this record, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for representative independent claim 1. Accordingly, we sustain rejection A of representative claim 1, and we sustain rejection A of all grouped claims which fall with claim 1. See Claim Grouping supra. Rejections B and C under § 103 Appellants contend the additional cited secondary reference(s) do not overcome the deficiencies of the base combination of references relied on by the Examiner in support of rejection A. (App. Br. 12–13.) However, we find no deficiencies regarding rejection A for the reasons discussed above. Therefore, for the same reasons discussed above regarding claim 1, we also sustain all claims rejected under rejections B and C. Appeal 2012-008971 Application 11/312,990 7 DECISION We affirm the Examiner’s decision rejecting claims 1, 2, and 5–15 under §103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED cdc