Ex Parte Sen et al

Patent Trial and Appeal Board

Oct 22, 2018

13648368 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/648,368 10/10/2012
81310 7590 10/24/2018
Meyertons, Hood, Kivlin, Kowert & G (Apple)
P.O. BOX 398
Austin, TX 78767-0398
FIRST NAMED INVENTOR
Abhishek Sen
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.
5888-52701 6242
EXAMINER
LAM,DUNGLE
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHISHEK SEN, MADHUSUDAN CHAUDHARY, and
KARTHIK ANANTHARAMAN
Appeal2018-004324
Application 13/648,368
Technology Center 2600
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
JAMES W. DEJMEK, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2018-004324
Application 13/648,368
INVENTION
The invention is directed to a system and method for selecting a
subscriber identity in a user equipment (UE) device having multiple
subscriber identities. (Spec. ,r 2.) Claim 1 is illustrative and is reproduced
below:
1. A method for a user equipment (UE) device to select a subscriber
identity, wherein the UE device is configured to perform cellular wireless
communication and non-cellular wireless communication, the method
compnsmg:
prior to registering with any cellular network at a current location and
after a period where the UE device disabled cellular communication,
obtaining current location information for the UE device, wherein said
obtaining is performed using non-cellular wireless communication;
providing the current location information to a subscriber identity
module (SIM), wherein the SIM is comprised in or coupled to the UE
device;
wherein the SIM comprises a plurality of subscriber identities,
wherein the SIM is configured to activate a first subscriber identity based on
the current location information;
registering with a first cellular network using the first subscriber
identity, wherein said registering is performed using cellular wireless
communication
REJECTIONS AT ISSUE
Claim 1, 3-10, 13-20, 22, and 25 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Aerrabotu (US Pub. No. 2004/0192386
Al, published Sept. 30, 2004), in view ofVenkateswarlu (US Pub. No.
2008/0090568 Al, published Apr. 17, 2008), and in further view of Gouriou
(US Pub. No. 2014/0038601 Al, published Feb. 6, 2014).
2
Appeal2018-004324
Application 13/648,368
Claim 2 is rejected under 35 U.S.C. § I03(a) over Aerrabotu,
Venkateswarlu, and Gouriou, in view of Rappaport (US Pub. No.
2006/0019679 Al, published Jan. 26, 2006).
Claims 6, 12, and 21 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Aerrabotu, Venkateswarlu, and Gouriou in view of the
Official Notice.
Claims 23, 24, and 26 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Aerrabotu, Venkateswarlu, and Gouriou, in view of Jiang
(US Pub. No. (2005/0192035 Al, published Sept. 1, 2005).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. With the exception of the Examiner's rejection of dependent
claim 12 (reversed infra), we disagree with Appellants' arguments, and we
adopt as our own: ( 1) the findings and legal conclusions set forth by the
Examiner in the Final Office Action from which this appeal is taken, and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellants' arguments. We have considered Appellants'
Reply Brief but find it unpersuasive to rebut the Examiner's responses.
We highlight and address specific findings and arguments for
emphasis in our analysis below.
3
Appeal2018-004324
Application 13/648,368
Claims 1 and 18
Appellants have presented several arguments as to why the
combination of the references does not teach or suggest the features recited
in independent claim 1. 1 Appeal Br. 8-12. In particular, Appellants argue
that the combination of Aerrabotu and Gouriou does not teach "prior to
registering with any cellular network at a current location and after a period
where the UE device disabled cellular communication, obtaining location
information for the UE device, wherein said obtaining is performed using
non-cellular wireless communication," and "registering with a first cellular
network using the first subscriber identity, wherein said registering is
performed using cellular wireless communication." Id.
The Examiner has identified the relevant portions of Aerrabotu,
Venkateswarlu, and Gouriou and has provided sufficient explanation with
corresponding citations to various parts of the references for teaching the
disputed limitations. Final Act. 4--12.
Further, Appellants' arguments (Appeal Br. 8-12) are not
commensurate with the scope of the claim language. For example,
Appellants' argument that at some point the mobile device in Aerrabotu and
Gouriou were connected to a cellular network is not commensurate with the
scope of the claim language, because the claim language does not recite that
the UE is precluded from having been connected to a network at any other
previous time. As to Appellants' arguments about the teaching in Figure 6
of Aerrabotu (Appeal Br. 8-9), the claim language does not preclude the
steps in Figure 6 of Aerrabotu.
1 Throughout this opinion we refer to the Appeal Brief dated September 29,
2017, and Reply Brief dated March 19, 2018.
4
Appeal2018-004324
Application 13/648,368
Regarding dependent claim 18, Appellants contend:
The "command" of claim 18 is connected by claim 17 to claim 13 's
"generate information configured for use by the SIM in selecting an
active subscriber identity from the plurality of subscriber identities,
wherein the information is generated based on the current location
information". Specifically, claim 17 states that the "information
configured for use by the SIM comprises a command, wherein the
command is executable by the SIM". First, the information is clearly
"based on the current location information" not based on a "switching
of the SIM" as in Gouriou.
Reply Br. 5. 2
In the Final Action (page 5), the Examiner finds
Venkateswarlu is additionally cited to show the explicit teaching of
providing the location information to a subscriber identity module
("the SIM tool kit module 110 provides a location event status to the
SIM card module 120 in the format of an envelope command, in step
E. The location event status includes network information ( e.g., a
country code, a network code, etc.) for a specific region and service
information." [0028, 0015, 0053] Fig. 2 step D and Fig. 3 step 340).
We agree with the Examiner's above findings because Appellants'
arguments do not take into account what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art and are therefore
ineffective to rebut the Examiner's prima facie case of obviousness. See In
re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
2 Our reference to page numbers is based upon the cover page of the Reply
Brief being page 1, as the Reply Brief does not contain any page numbers.
5
Appeal2018-004324
Application 13/648,368
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." (citations omitted)). This
reasoning is applicable here.
Thus, Appellants have not provided sufficient evidence or argument to
persuade us of any reversible error in the Examiner's reading of the
contested limitations on the cited prior art.
Appellants present no arguments for claims 3-11, 13-17, and 19-26
and their corresponding rejections. We refer to the above discussion and
further adopt the Examiner's findings and conclusion concerning the
rejections of these claims.
Accordingly, we are unpersuaded that the Examiner has erred in
rejecting claims 1, 3-11, and 13-26.
Dependent Claim 2
Appellants argue Rappaport does not teach "wherein the non-cellular
wireless communication comprises WLAN communication." Appeal
Br. 12-13.
The Examiner finds this limitation is taught by a combination of
Aerrabotu, Venkateswarlu, Gouriou, and Rappaport. (See Final Act. 12-13.)
Rappaport paragraph 68 teaches WLAN communication. The Examiner
finds, and we agree "it would have been obvious for one of ordinary skill in
the art at the time of the invention to substitute said Aerrabotu's teaching of
location determining using a non-cellular wireless communication with
Rappaport' s teaching of WLAN wireless communication." Final Act. 13.
6
Appeal2018-004324
Application 13/648,368
Accordingly, we are unpersuaded that the Examiner has erred in
rejecting claim 2.
Dependent Claim 12
Claim 12 recites "wherein the program instructions are further
configured to: obtain the current location information using a third wireless
communication technology." Appeal Br. 18.
The Examiner finds "Anderson teaches obtain[ing] the location via a
third wireless communication technology (GPS, triangulation, cell towers
[0083])." Final Act. 14. However, the Examiner does not provide a citation
to identify Anderson.
Appellants contend:
For this feature, the Office Action cites paragraph [0083] of a
reference identified only as "Anderson". Appellant is not able to
identify this reference. Nevertheless, from the description in the
Office Action, it is clear that this reference cannot teach the cited
feature. The Office Action identifies "GPS, triangulation, cell
towers". Presumably, these are intended to represent three different
wireless communication technologies. In context of claim 12 and
claim 8, GPS may correspond to the "first wireless communication
technology", which is explicitly "non-cellular". Similarly, "cell
towers" clearly refers to a cellular technology, which may correspond
to the "second wireless communication technology", which is
explicitly used to register with a first cellular network. The third
element, "triangulation" is not defined in the quote. However,
triangulation using cell towers is a common technique, and may be
done using the same technology as communicating with the cell
towers. No hint or suggestion is found of using any third wireless
communication technology for triangulation.
Appeal Br. 13.
7
Appeal2018-004324
Application 13/648,368
In the Answer, the Examiner fails to respond to Appellants' above
contention.
We thus conclude that the rejection of claim 12 lacks the requisite
specificity needed for the establishment of a prima facie case of
unpatentability. The Examiner bears the initial burden of presenting a prima
facie case ofunpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). A prima facie case is established when the party with the burden of
proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434
F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a
manner enabling proper review. For us to sustain the Examiner's rejection,
we would need to resort to impermissible speculation or unfounded
assumptions or rationales to cure the deficiencies in the factual bases of the
rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we agree that the Examiner erred as the analysis in the
Examiner's rejection is not sufficient to show that claim 12 is unpatentable
without identification of the Anderson reference and further explanation.
Therefore, we cannot sustain the Examiner's rejection of claim 12.
DECISION
The Examiner's decision to reject claims 1-11 and 13-26 is affirmed.
The Examiner's decision to reject claim 12 is reversed.
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) (2017).
8
Appeal2018-004324
Application 13/648,368
AFFIRMED-IN-PART
9