Ex Parte Subramanian et al

Patent Trial and Appeal BoardDec 29, 2017

14264923 (P.T.A.B. Dec. 29, 2017)

United States Patent and Trademark Office 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. 14/264,923 04/29/2014 Ramaswamy Subramanian ALC 3926 1059 76614 7590 01/03/2018 Terry W. Kramer, Esq. Kramer & Amado, P.C. 330 John Carlyle Street 3rd Floor Alexandria, VA 22314 EXAMINER BATAILLE, FRANTZ ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): mail@krameramado.com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAMASWAMY SUBRAMANIAN and TIRU K. SHETH Appeal 2017-003183 Application 14/264,9231 Technology Center 2600 Before JOHN A. EVANS, JOHN D. HAMANN, and STEVEN M. AMUNDSON, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—20. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 The Bibliographic Data Sheet identifies Alcatel-Lucent Canada, as the real party in interest. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 21, 2016, “App. Br.”), the Reply Brief (filed December 21, 2016, “Reply Br.”), the Examiner’s Answer (mailed November 25, 2016, “Ans.”), the Final Action (mailed June 1, 2016, “Final Act.”), and the Specification (filed April 29, 2014, “Spec.”) for their respective details. Appeal 2017-003183 Application 14/264,923 STATEMENT OF THE CASE The Invention The claims relate to a method to obtain a subscriber record. See Abstract. Claims 1,8, and 15 are independent. An understanding of the invention can be derived from a reading of Claim 1, which is reproduced below with some formatting added: 1. A non-transitory machine-readable medium encoded with instructions for performing authentication, the non-transitory machine-readable medium comprising: instructions for obtaining, by a session establishment device, a subscriber record associated with a subscriber based on the session establishment device receiving a request message for establishment of a session with respect to a user device, wherein the request message includes a received subscriber identifier associated with the subscriber and a received international mobile station equipment identity software version (IMEISV) associated with the user device, and wherein the subscriber record stores a stored subscriber identifier and a stored IMEI; instructions for comparing the received IMEISV to the stored IMEI to determine whether the user equipment is associated with the subscriber in the subscriber record; and instructions for conditionally rejecting establishment of the session based on the determination of whether the user equipment is associated with the subscriber in the subscriber record. References and Rejections O’Connell US 2002/0035539 A1 Mar. 21, 2002 Jokinen, et al., US 2003/0027581 A1 Feb. 6, 2003 2 Appeal 2017-003183 Application 14/264,923 Sasakura, et al., US 2006/0109966 Al May 25, 2006 Lee, et al., US 2007/0192837 Al Aug. 16, 2007 Choi-Grogan US 2010/0128694 Al May 27, 2010 Carter US 2011/0202466 Al Aug. 18,2011 Pasquero, et al., US 2012/0131653 Al May 24, 2012 Kurokawa, et al., US 2013/0065606 Al Mar. 14,2013 Pollin, et al., US 2013/0325709 Al Dec. 5,2013 Liu US 2013/0346610 Al Dec. 26, 2013 The claims stand rejected as follows: 1. Claims 1 and 4—7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen and Kurokawa. Final Act. 7—16. 2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen, Kurokawa, and Choi-Grogan. Final Act. 16-19. 3. Claims 8 and 11—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen and Kurokawa. Final Act. 19-28. 4. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen, Kurokawa, and Choi-Grogan. Final Act. 28-31. 5. Claims 15 and 17—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen and Kurokawa. Final Act. 31—39. 6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jokinen, Kurokawa, and Choi-Grogan. Final Act. 39-40. 3 Appeal 2017-003183 Application 14/264,923 ANALYSIS We have reviewed the rejections of claims 1—20 in light of Appellants’ arguments that the Examiner erred. We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 5—11. Claims 1-20: Obviousness over JOKINEN, KUROKAWA, AND CHOI-GROGAN. Appellants argue independent claims 1, 8, and 15 as a group. App. Br. 6, 7. Comparing the received IMEISV to the stored IMEI. Independent claim 1 recites, inter alia, “instructions for comparing the received IMEISV to the stored IMEI.” Appellants assert independent claims 8 and 15 contain commensurate limitations. App. Br. 6. The Examiner finds Jokinen fails to teach comparing the received IMEISV to a stored IMEI. Final Act. 9. The Examiner finds Kurokawa teaches this concept. Id., 10 (citing Kurokawa, 1142). Appellants contend that Kurokawa actually compares the “IMEI delivered from IMEISV with the illicit IMEI list.” Thus, Kurokawa compares IMEI to an IMEI list instead of comparing the received IMEISV to the stored IMEI. App. Br. 6. Appellants argue IMEISV and IMEI are not the same. Id., (citing Spec., 1 57) (“the exemplary message 300 of FIG. 3 will not be authenticated because the message 300 is received from a different device (IMEISV ‘0123290076896’) than the expected device indicated by the subscriber record (IMEI ‘303218799 5781’)”). Id. The Examiner finds that Jokinen does not teach comparing IMEISV to IMEI, but Kurokawa teaches “EIR 9 compares IMEI delivered from 4 Appeal 2017-003183 Application 14/264,923 IMEISV with the illicit IMEI list stored in the apparatus.” Ans. 2. The Examiner finds Appellants define “IMEI” as “a software version of IMEISV.” Id., (citing Spec., 1 55). The Examiner finds, therefore, the “IMEI included in IMEISV” of Kurokawa reads on Appellants’ broad definition. Id. The Examiner finds the “IMEI included in IMEISV” is, in fact, what is compared with the stored IMEI, as claimed. Id. Appellants re-allege their contention that Kurokawa compares an IMEI to an IMEI list rather than comparing a received IMEISV to a stored IMEI, as claimed. We find “IMEI” and “IMEISV” are terms of art defined by the 3rd Generation Partnership Project.3 To be his own lexicographer, a patentee must use a “special definition of the term [that] is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996); see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (“[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”). Appellants disclose: “[t]he message also includes a User-Equipment-Info AVP 330 which, in turn, includes a sub-AVP 332 specifying an IMEI Software Version (IMEISV) of “0123290076896.” 3 See 3rd Generation Partnership Project, “Technical Specification Group Core Network and Terminals; Interworking between the Public Land Mobile Network (PLMN) supporting packet based services and Packet Data Networks (PDN) (Release 12),” 3GPP TS 29.061 V12.1.0 (2013-03), http://www.3gpp.org (accessed December 11, 2017). 5 Appeal 2017-003183 Application 14/264,923 Spec., 1 55. We do not find Appellants’ disclosure rises to the level of Appellants acting as their own lexicographer. We agree with Appellants that Kurokawa discloses comparing an IMEI to an IMEI list, but does not disclose comparing an IMEISV to an IMEI, as claimed. The Examiner does not cite Choi-Grogan as teaching this concept. See Final Act. 17. In view of the foregoing, we decline to sustain the rejections of claims 1—20. DECISION The rejections of claims 1—20 under 35 U.S.C. § 103 are REVERSED. REVERSED 6