Ex Parte LI et al

Patent Trials and Appeals Board

Jan 15, 2019

14499002 - (D) (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/499,002 09/26/2014 Li LI
47743 7590 01/17/2019
DICKINSON WRIGHT RLLP
Attn: IP Docketing
P.O. BOX569
Cupertino, CA 95015
UNITED ST A TES OF AMERICA
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.
P21459US l/20230US. l 3331
EXAMINER
SHIUE, DONG-CHANG
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
01/17/2019 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):
S VDocketing@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte LI LI and ARUN G. MATHIAS
Appeal2018-005896
Application 14/499,002
Technology Center 2600
Before JUSTIN BUSCH, JASON J. CHUNG, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20, which are all the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Throughout this Decision we have considered the Appeal Brief filed
October 12, 2017 ("App. Br."), the Examiner's Answer mailed February 9,
2018 ("Ans."), and the Final Office Action mailed January 13, 2017 ("Final
Act.").
2 Appellants identify Apple Inc. as the real party in interest. App. Br. 4.
Appeal2018-005896
Application 14/499,002
INVENTION
Appellants' invention relates to mitigating paging collisions at a
mobile device by using device-specific information including International
Mobile Subscriber Identity (IMSI) information. Spec. ,r 5.
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A method comprising:
at a provisioning server:
receiving, from a mobile device, a first
provisioning request comprising at least a portion of a
first international mobile subscriber identity (IMSI),
wherein:
i) the first IMSI is associated with a first
electronic subscriber identity module ( eSIM), ii)
the first eSIM is present on an embedded universal
integrated circuit card ( eUICC), iii) the eUICC is
included in the mobile device, iv) the request is for
a second eSIM, and v) the second eSIM is
associated with a second IMSI different than the
first IMSI;
identifying, based on the at least a portion of the
first IMSI, a particular eSIM as the second eSIM to
provide to the mobile device; and
providing, to the mobile device, the
particular eSIM.
REJECTIONS
The Examiner rejected claim 11 under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
The Examiner rejected claims 1, 4--7, 9, 11, 12, 14, 16, and 19 under
35 U.S.C. § 103 as being unpatentable over US 2013/0157673 Al published
June 20, 2013 (Brusilovsky) in view of US 2014/0038666 Al published
February 6, 2014 (Chin). Final Act. 3.
TheExaminerrejectedclaims2, 3, 8, 13, 15, 17, 18, and20under
2
Appeal2018-005896
Application 14/499,002
35 U.S.C. § 103 as being unpatentable over Brusilovsky, Chin, and US
2014/0106750 Al published April 17, 2014 (Roullier). Final Act. 11.
The Examiner rejected claim 10 under 35 U.S.C. § 103 as being
unpatentable over Brusilovsky, Chin, and US 2012/0117635 Al published
May 10, 2012 (Schell). Final Act. 14.
In the Answer, the Examiner withdrew the rejection of claims 3 and
18. Ans. 2. Additionally, the Answer does not repeat the rejection of claim
11 under 35 U.S.C. § 112 made in the Final Rejection. We conclude that the
rejection of claim 11 has also been withdrawn. See Ex parte Emm, 118
USPQ 180, 181 (Bd. App. 1957) (rejection not referred to in the Examiner's
Answer is assumed to have been withdrawn).
CONTENTIONS AND ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 as being unpatentable over the combination of Brusilovsky
and Chin. In particular, Appellants argue Brusilovsky does not teach the
recited "identifying, based on the at least a portion of the first IMSI, a
particular eSIM as the second eSIM to provide to the mobile device." App.
Br. 16. We agree with Appellants.
Appellants point out, and we agree, that Brusilovsky discloses
security information, but the reference to security information being
associated with an eSIM download does not disclose identifying the eSIM
based on a first IMSI. App. Br. 16.
The Examiner finds:
The claim language "based on" in the recited limitation
"identifying, based on at least a portion of the first IMSI" is very
broad in nature, i.e., anything that is related to first the IMSI can
be based on for the subsequent action for the particular eSIM.
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Appeal2018-005896
Application 14/499,002
Brusilovsky discloses a bootstrapping scheme to download a
second (or particular) set of eSIM based on the security of the
first eSIM. It is disclosed by Brusilovsky, in at least [0036], lines
4--11, that upon power-up, this device establishes a bootstrap
bearer with operator A, uses that bearer to access a subscription
manager (SM), uses boot strap credentials ( e.g., pre-shared
secret, certificate, etc.) to establish bootstrapping session
security with the SM, and uses that security information to
download a set of eSIM/eUICC credentials and/or a subscription
profile for operator B, and [0035], last 2 lines: the identification
information can also include an IMSI or parts thereof, wherein
examiner construes that that security information is related to the
first IMSI and the second eSIM is a particular eSIM for a
particular operator B. "that security information" and certificate
are related to the first eSIM and therefore identifying a second
eSIM is based on the first eSIM.
Ans. 3.
Although the Examiner ties the security information to the first eSIM,
there is no disclosure in Brusilovsky that the security information of
Brusilovsky is based on the IMSI. App. Br. 17. Rather, Brusilovsky
appears to distinguish security information from identification information,
where identification information can include an IMSI. Brusilovsky ,r 35.
Therefore, on this record, the Examiner has not shown sufficiently how the
combination of references teaches "identifying, based on the at least a
portion of the first IMSI, a particular eSIM as the second eSIM to provide to
the mobile device," as recited in claim 1.
Thus, we are persuaded of error in the Examiner's rejection of claim 1
under 35 U.S.C. § 103, and we do not sustain the§ 103 rejection of claim 1.
For the same reasons, we do not sustain the§ 103 rejection of independent
claims 9 and 16, as well as the pending dependent claims. Nor do we sustain
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Appeal2018-005896
Application 14/499,002
the rejection of the remaining claims because the Examiner does not find the
other cited references cure the deficiencies of Brusilovsky discussed above.
DECISION
We reverse the decision of the Examiner to reject claims 1-20 under
35 U.S.C. § 103.
REVERSED
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