Ex Parte Lipford et al

Patent Trial and Appeal Board

May 27, 2016

13240425 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/240,425 09/22/2011
28005 7590 06/01/2016
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
FIRST NAMED INVENTOR
Mark A. Lipford
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.
4600a 7435
EXAMINER
LAI, DANIEL
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
6450patdocs@sprint.com
steven.j.funk@sprint.com
docketing@mbhb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. LIPFORD, SERGE M. MANNING, and
DAVID S. McGINNISS
Appeal2014-006819
Application 13/240,425
Technology Center 2600
Before LINZY T. McCARTNEY, KAMRAN JIVANI, and
SCOTT E. BAIN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-13 and 15-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-006819
Application 13/240,425
STATEMENT OF THE CASE
The present application concerns provisioning wireless
communication devices. See Spec. 2. Claims 1 and 10 are independent.
Claim 1 illustrates the claimed subject matter:
1. A method comprising:
receiving from a wireless communication chipset
manufacturer a certified wireless communication chipset;
manufacturing a device, including embedding the received
wireless communication chipset in the device to enable the
device to engage in wireless communication; and
storing on the device a set of device-characteristics data
describing one or more components or capabilities of the device,
and programming the device to report the stored data to a service-
provider' s network during first-time activation of the device with
the service provider so as to facilitate customizing initial service
provisioning of a service account for the device based on the one
or more components or capabilities, the service account being
maintained in the network and used by the service provider to
serve the device, wherein the first-time activation of the device
initially correlates the device with the service account, the device
not yet being correlated with the service account until the first-
time activation of the device, and wherein customizing initial
provisioning of the service account comprises setting one or
more service parameters of the service account.
REJECTIONS
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoffman (US 6,622,017 Bl; Sept. 16, 2003), Montpetit (US
2007 /00223523 Al; Sept. 27, 2007), and Intel, Intel WiMAX Connection
2250 The Path to the Mobile Internet (Oct. 12, 2006) ("Intel").
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Application 13/240,425
Claims 10-12 and 15-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Upp (US 2008/0108322 Al; May 8, 2008) and Montpetit.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Upp, Montpetit, and Hoffman.
ANALYSIS
Claim 1
Appellants contend the Examiner's combination of Hoffman,
Montpetit, and Intel does not teach or suggest the following limitations
recited in claim 1 :
[S]toring on the device a set of device-characteristics data
describing one or more components or capabilities of the device,
and programming the device to report the stored data to a service-
provider 's network during the first time activation of the device
with the service provider ... wherein the first-time activation of
the device initially correlates the device with the service account,
the device not yet being correlated with the service account until
the first-time activation of the device ....
See App. Br. 4--8; Reply Br. 3-7. Appellants assert the Examiner found
Montpetit teaches "that when a device registers with a network ... the
device provides the network with its capabilities information." App. Br. 4.
Appellants argue "[e]ssentially what the Examiner has sought to do is take
something that Montpetit teaches would occur during a device's registration
with a network and argue that it would have been obvious to have that thing
occur instead during a device's first-time device activation with a service
provider that Hoffman teaches." Id. at 5. But according to Appellants, "the
Examiner did not provide objective evidence to support that theory." Id.
We find Appellants' arguments unpersuasive. As found by the
Examiner, Hoffman suggests certain aspects of Montpetit's registration
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process-in particular, sending data about device capabilities to a network-
may occur during first-time activation. See Ans. 3--4. Specifically, Hoffman
discloses that"[ w ]hen the user first obtains a new station 5 [i.e., a cellular
telephone], the user operates the cellular telephone ... to initiate
provisioning." Hoffman 10:5-7. According to Hoffman, in tum "[t]he
MTAS [Mobile Telephone Administration System] provides provisioning
data to the network elements ... [and] customer service systems 17 a set-up
an entry for the station in the database 27." Id. at 10:7-10 (emphasis added).
Hoffman teaches that as part of the MTAS supplying provisioning data to
network elements, the "MTAS provides data to the HLR [Home Location
Register] 15 ... to provision services for new stations" such as paging and
data communication services. Id. at 8:52-53 (emphasis added). See also id.
at 8:29--40 (explaining that "[t]he wireless network 3 includes a home
location register" and that a home location register "stores for each mobile
subscriber ... information specifying the wireless services subscribed to ...
such as numeric paging or text-based paging, data communication services,
etc.").
One of ordinary skill in the art would have appreciated that the MTAS
generally sends data concerning services the new cellular telephones of
interest can perform to the HLR because it would make little sense for the
MTAS to send data about services the new cellular telephones cannot
perform. This process would have therefore at least suggested providing
data about a device's capabilities to a network during first time activation to
one of ordinary skill in the art. Neither Appellants' unsupported assertions
about what is allegedly well known about activation and registration, nor
Appellants' arguments about the distinctions between Hoffman's HLR and
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provisioning database have persuaded us otherwise. See Reply Br. 3-5. In
light of the link between Hoffman's first-time device activation and
Montpetit's registration process, we disagree with Appellants that the
Examiner has not identified objective evidence to support the Examiner's
obviousness rejection.
Even if Hoffman did not provide objective evidence to support the
Examiner's findings, Appellants' arguments would not persuade us the
Examiner erred. The Examiner was not required to "seek out precise
teachings directed to the specific subject matter of the challenged claim" as
argued by Appellants. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Rather, the Examiner's obviousness analysis could "take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ," id., as well as "include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion," Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
Here, the Examiner found Monteptit "does not explicitly limit
[registration] ... to an already established service account" and "[ o ]ne
skilled in the art would reasonably be expected to determine the device
capabilities disclosed by Monteptit can be conveyed to network during first-
time activation." Final Act. 3; Ans. 5. The Examiner found "[ o ]ne with
ordinary skills in the art would recognize the registration process can be
performed during activation of the device" and concluded combining
Hoffman's and Monteptit's teachings in the claimed manner would have
been obvious to one of ordinary skill in the art. Final Act. 3--4; see also id.
5-8; Ans. 3---6. Although Appellants contend the Examiner's findings lack
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supporting evidence, Appellants have not persuasively explained why these
findings are erroneous or demonstrated these findings are outside the
inferences, logic, judgment, and common sense available to one of ordinary
skill in the art. Moreover, Appellants have not shown the Examiner's
combination would have been "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). We therefore do not find Appellants'
arguments persuasive.
For the above reasons, we sustain the Examiner's rejection of claim 1.
Claim 10
Claim 10 recites "a stored set of device-characteristics data describing
one or more components or capabilities of the device" and "wherein, with
the authentication message that the device sends wirelessly to facilitate
network authentication of the wireless communication chipset, the device
provides the device-characteristics data to enable the service provider's
network .... " Appellants contend the Examiner did not provide objective
evidence to support the Examiner's conclusion that a combination of Upp
and Montpetit teaches or suggests these limitations. See App. Br. 8-11;
Reply Br. 7-9.
We find Appellants' arguments unpersuasive. Appellants again
contend the Examiner was required to provide objective evidence to support
the Examiner's obviousness analysis. But as explained above, the Examiner
was not required to find specific teachings that address the disputed
limitations. See KSR, 550 U.S. at 418. The Examiner could rely on, among
other things, the logic, judgment, common sense, and creative steps
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available to one of ordinary skill in the art to support the Examiner's
obviousness analysis. See id.; Perfect Web, 587 F.3d at 1329.
Here, Upp teaches a connectivity service network (CSN) that
authenticates a wireless device in response to a request for network access
from the device. See Upp i-fi-1 21-26. Upp teaches that as part of the
authentication process the CSN, among other things, (1) receives a
credential from the device, (2) authenticates the credential, and (3) transmits
authentication information such as the device's hardware version and
manufacturer to an access service network (ASN). See id. i122-23. Based
on this, the Examiner found Upp suggests the device stores and provides a
set of device-characteristics to the network. Final Act. 11. Appellants
contend "[t]he fact that Upp's CSN provides device hardware and
manufacture information to the ASN does not mean the device sends that
information to the CSN [or] ... that the device sends such information to the
CSN with an authentication message." App. Br. 10 (emphases added); see
also Reply Br. 7-9. But given the flow of authentication information-the
device sends an authentication credential to the CSN, then the CSN sends
authentication information (e.g., device hardware and manufacturer
information) to the ASN---even if Upp does not explicitly disclose the device
sends device characteristic data in an authentication credential, one of
ordinary skill in the art would reasonably infer (or find the process suggests)
as much.
Moreover, even if Upp did not suggest that the device transmits
device characteristics such as a device's hardware version or manufacturer
in an authentication credential, the Examiner provided sufficient reason to
combine the teachings of Upp and Monteptit in the claimed manner. The
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Examiner found that one of skill in the art would have been motivated to
combine Monteptit' s and Upp' s teachings in the claimed manner because
doing so would "allow [the] network to customize services to the mobile
device ... without sending [an] additional message with capability
information." Final Act. 12. Appellants have not persuasively addressed
this reasoning.
For the above reasons, we sustain the Examiner's rejection of claim
10.
Remaining Claims
Appellants have not presented separate, persuasive patentability
arguments for claims 2-9, 11-13, and 15-18. Accordingly, we sustain the
Examiner's rejections of these claims.
DECISION
For the above reasons, we affirm the rejection of claims 1-13 and 15-
18.
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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