Ex Parte Laurila et al

Patent Trial and Appeal Board

Mar 17, 2016

10082348 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/082,348 02/26/2002
10948 7590 03/21/2016
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Pasi Laurila
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
800.0317.Ul(US) 9575
EXAMINER
IQBAL, KHAWAR
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
03/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ASI LAURILA and JURA TIMONEN
Appeal2014-000399
Application 10/082,348
Technology Center 2600
Before HUNG H. BUI, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
34--71, which constitute all the claims pending in this application. 1 We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 In this Opinion, we refer to the original Specification ("Spec.", filed
February 26, 2002); Appellants' Appeal Brief ("App. Br.," filed May 28,
2013); Appellants' Reply Brief ("Reply Br.," filed September 17, 2013); the
Final Office Action ("Final Act.," mailed January 3, 2013); and the
Examiner's Answer ("Ans.," mailed July 16, 2013).
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Application 10/082,348
THE INVENTION
Appellants' invention is directed to enabling a subscriber/user
terminal to access one or more subscriber databases in a telecommunication
system. Spec. i-f 41. Upon establishing a connection, the terminal may
communicate with subscriber databases of several different networks. The
subscriber, if successfully authenticated, is able to access data in the
subscriber database via the terminal. Spec. i-f 44.
Claims 34 and 67, reproduced below, are illustrative of the claimed
subject matter.
34. A method comprising:
establishing a connection between a terminal and a
subscriber database that stores subscriber data of a subscriber
associated with the terminal and that is external to the terminal;
identifying during a communication using the established
connection the subscriber associated with the terminal by using
a subscriber identifier, where the communication contains an
indication that another subscriber identifier is to be activated,
where a particular subscriber identifier identifies the subscriber
in a particular network;
in response to determining that the subscriber is
authorized to use another subscriber database that stores
subscriber data, sending a subscriber identifier that is associated
with the another subscriber database to the terminal; and
modifying subscriber data stored in the another
subscriber database in accordance with data received from the
authorized subscriber.
67. A method, comprising:
providing a subscriber database associated with a
subscriber, the subscriber database storing subscriber data
comprised of at least personal information associated with the
subscriber and being at least partly editable by the subscriber
via the telecommunication system;
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in response to receipt of a connection establishment
request from a terminal of the subscriber, transmitting a
subscriber identification request to the terminal; and
in response to verifying that the subscriber has the right
to use the subscriber database, transmitting at least some of the
personal information associated with the subscriber to the
terminal.
THE REJECTIONS
Claims 34--37, 39-51, and 53---61 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over US 2007 /0037569 Al, published
February 5, 2007 ("McNiff') and US 2003/0211845 Al filed April 22, 2003,
published November 13, 2003 ("Lohtia"). Final Act. 4--10.
Claims 62---65 and 67-70 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McNiff and US 2002/0042841 Al, published April
11, 2002 ("Nishio"). Final Act. 10-13.
Claims 38 and 52 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McNiff, Lohtia, and US 6,549,776 Bl, published April
15, 2003 ("Joong"). Final Act. 13.
Claims 66 and 71 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McNiff in view of Nishio and Joong. Final Act. 13-14.
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed Appellants' arguments that the Examiner erred.
App. Br. 6-26; Reply Br. 2-11. We are not persuaded by Appellants'
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contentions. We agree with the findings and reasons set forth in the
Examiner's rejections in the action from which this appeal is taken (Final
Act. 3-14) and the Examiner's Answer (Ans. 3-10). We highlight specific
arguments and findings for emphasis as follows.
Claims 34, 39, 48, and 53
Issue 1:
Regarding independent claim 34, the Examiner finds McNiff' s mobile
identification number ("MIN") discloses the recited "subscriber data." Final
Act. 4. Appellants argue McNiff fails to disclose the claimed "subscriber
data of a subscriber associated with the terminal" because the mobile
identification number ("MIN") of McNiff is associated with the
device/terminal - not with the subscriber. App. Br. 10. Appellants argue,
by contrast, the international mobile subscriber identity (IMSI) disclosed in
the Appellants' Specification is associated with the subscriber. Id.
vVe find Appellants' argument unpersuasive. During examination,
claims are given their broadest reasonable interpretation consistent with the
specification, and the language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Amer. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The presumption
that a term is given its ordinary and customary meaning may be rebutted by
Appellants by clearly setting forth a different definition of the term in the
specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellants refer to Specification paragraph 8, which states "it is
assumed ... that the subscriber is also the user." However, Appellants'
Specification does not clearly define the term "subscriber data," but only
describes that the subscriber may be the end user. This does not support
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Appellants' argument that the term "subscriber data" cannot be associated
with the terminal. Accordingly, consistent with the ordinary meaning of the
claim language, "subscriber data" can, broadly but reasonably, read on any
data associated with a user-including data about a user's device. 2
Appellants' Reply Brief raises new arguments comparing data flows
illustrated in Fig. 5 of Appellants' Specification with those in Fig. 6 of
McNiff. 3 Reply Br. 4--5. Appellants argue regarding the direction of data
flow, "MIN is directed toward the service node in McNiff, while the
subscriber data in the current application figure is directed from the
database." Reply Br. 5. Thus, we are unpersuaded of error in the
Examiner's rejection with respect to this first issue.
Issue 2:
Appellants further argue McNiff fails to teach transmitting an
indication during an established communication, contending that since "'no
connection has yet been established ... there is no 'communication' that
'contains an indication."' App. Br. 11-12. vVe disagree.
Fig. 5 of McNiff illustrates the communication of several messages in
a network. McNiff paragraphs 30 and 42--45 teach communication between
various network nodes and that, for example, the origination request
(OrigReq) is communicated using an established connection. Final Act. 4,
9; Ans. 4. Thus, it is clear to one of ordinary skill that in McNiff some
2 We note the terms "subscriber" and "terminal" are used synonymously in
the Specification, confirming our view that "subscriber data" may be
associated with either the user or the terminal. See Spec. i-fi-120-25.
3 In the absence of a showing of good cause, arguments and evidence that
could have been presented in the Appeal Brief, but were not, may not be
presented in the Reply Brief. See 37 C.F.R. § 41.41(b)(2); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Regardless, we
have considered Appellants' new arguments and remain unpersuaded.
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connection (physical or logical) is established in order for an origination
request to be successfully communicated from one network node to another.
Appellants contend that the established connection recited in the claim
is distinguishable from the teachings of McNiff because the connection in
McNiff is established for the purpose of "initiating a call." App. Br. 11-12.
There are no limitations recited in the claims, however, that help distinguish
the intended purpose of the claimed connection over McNiff. Thus, we
remain unpersuaded of Examiner error on this issue as well.
Issue 3:
Appellants further argue that the "temporary IP address" of McNiff is
not equivalent to the claimed "subscriber identifier that is associated with the
another subscriber database." App. Br. 12-13; Reply Br. 5-7 (citing McNiff
i-fi-132, 44 and Lohtia i-fi-121, 37). We are not persuaded.
Appellants provide no persuasive evidence of error in the Examiner's
findings, but merely repeat the claim language and argue the claimed
features are not the same as tvfcNiff s temporary IP address. tvferely reciting
language of the claims and asserting the cited prior art reference does not
teach or suggest the claim limitation is insufficient. See 37 C.F.R.
§ 41.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011 ). Still further, it is well settled that mere attorney's arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
The Examiner finds McNiff teaches returning a Temporary IP address
(i.e., a subscriber identifier) to the mobile device in response to receipt of a
Registration Request and such a Temporary IP address can be associated
with another subscriber database/service node (i.e., some service node other
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than a service node with which the mobile device communicated). Final
Act. 4; Ans. 5 (citing McNiffFigs. 1, 3, 5 and i-fi-132, 40, 42, and 43). In
view of Appellants' conclusory argument unsupported by persuasive
evidence, we are unpersuaded of error in the Examiner's rejection on this
issue.
Issue 4:
The Examiner relies on Lohtia, in combination with McNiff, for
"modifying subscriber data stored," finding Lohtia suggests authenticating a
subscriber/user to access and modify personal data stored in a database.
Final Act. 5---6 (citing Lohtia i-fi-121 and 37).
Appellants argue the combination of McNiff with Lohtia "does not
encompass modifying subscriber data stored in the another subscriber
database in accordance with data received from the authorized subscriber."
App. Br. 13-16 and Reply Br. 5-7. Specifically, Appellants argue,
[i]f one were to attempt to combine the disclosures of McNiff et
al. and Lohtia et al., which is not admitted is suggested, at most
it would appear that the wireless communication network 132
of McNiff et al. would be modified to somehow incorporate the
subscriber profile database 311 of Lohtia et al. whereby a
wireless telephone 148 of McNiff et al. could send an SMS or a
microbrowser information request that would be checked
against the user's profile record prior to responding. The user
could possible [sic] modify his profile in the database 311 using
a www connection via some computer.
App. Br. 16.
We are unpersuaded of Examiner error. The test for obviousness is
not whether the references may be bodily incorporated but rather is what the
combined teachings suggest to the ordinarily skilled artisan. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Appellants' arguments address bodily
incorporation of the references rather than what would be suggested to the
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ordinarily skilled artisan by the combined teachings. Appellants' argument
that "[t]he user could possibl[y] modify his profile in the database" actually
validates the Examiner's findings because it suggests "modifying subscriber
data" as recited. Thus, we remain unpersuaded of Examiner error with
respect to this issue.
For the above reasons, we are not persuaded the Examiner erred in
rejecting independent claim 34 or independent claim 48 argued together
therewith (App. Br. 7).
Claims 39 and 53, dependent from claims 34 and 48, respectively,
further recite that "the subscriber data comprises personal data of the
subscriber." The Examiner finds McNiff paragraphs 30 and 55 disclose
storing such personal data. Final Act. 7; see also Ans. 6-7. Appellants
argue that McNiff s "mobile identification number and password" do not
teach or suggest the claimed "personal data," which Appellants'
Specification describes as including "telephone numbers and stored
messages." Reply Br. 8 (citing to exemplary embodiments in Spec. lf 68).
We are not persuaded by Appellants' arguments. As discussed above
regarding "subscriber data," Appellants' claims in view of the Specification
do not provide a narrowing definition of "personal data." An exemplary
embodiment discussed in the Specification is not a limiting definition of a
term. Any special definition for a claim term must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). Appellants do not identify any such clear
definition that precludes the Examiner's broad, but reasonable interpretation
and, thus, we are not persuaded the Examiner erred in rejecting dependent
claims 39 and 53.
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Therefore, we sustain the rejection of claims 34, 39, 48 and 53 as well
as the rejection of claims 35-38, 40-47, 49-52, and 54---61, not separately
argued (App. Br. 18).
Independent Claims 62 and 67
Appellants argue that McNiff fails to teach the claimed limitations in
claims 62 and 67. App. Br. 18-22 (citing McNiffi1i132, 42--43, 48, 50, and
52). Appellants' reasoning for distinguishing claims 62 and 67 over McNiff
is an amalgam of reasons provided by Appellants with respect to claims 34
and 39. In fact, Appellants seem to have mistakenly copied from arguments
presented for claims 34 and 39 and pasted them into the portion of the
Appeal Brief that relates to claims 62 and 67. See App. Br. 18-22.
Potentially due to the copy/paste of arguments, Appellants' arguments
regarding claims 62 and 67 address phrases that are not recited in the claims.
Also, at the bottom of page 23 of the Appeal Brief, Appellants attempt to
distinguish over Lohtia - a reference not relied upon by the Examiner to
reject claims 62 and 67.
To the extent that Appellants present arguments that are the same as,
or similar to, those presented for claims 34 and 39, we find Appellants'
arguments unpersuasive of Examiner error for the same reasons discussed
supra.
Appellants also argue there is no motivation to combine McNiff with
Nishio because McNifffails to teach "subscriber data." App. Br. 20-21.
Appellants' arguments are largely premised upon Appellants' earlier
argument urging a narrower construction of the term "subscriber data" - an
argument which we found unpersuasive. Therefore, we are not persuaded
the Examiner erred in rejecting claims 62 and 67.
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Thus, we sustain the rejection of independent claims 62 and 67, and
the rejection of dependent claims 63---66 and 68-71, not separately argued
(App. Br. 25).
DECISION
For the above reasons, the Examiner's decision rejecting claims 34--71
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)(l )(iv).
AFFIRMED
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