Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 23, 2020

2019001936 (P.T.A.B. Jun. 23, 2020)

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.
14/835,693 08/25/2015 Shai Guday 337305.03 3421
39254 7590 06/23/2020
Barta, Jones & Foley, P.C.
(Patent Group - Microsoft Corporation)
3308 Preston Road
#350-161
Plano, TX 75093
EXAMINER
NGUYEN, DAVID Q
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
docket@bjfip.com
usdocket@microsoft.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAI GUDAY and GIL ZALMANOVITCH
Appeal 2019-001936
Application 14/835,693
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–39 and 42. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 1.
Appeal 2019-001936
Application 14/835,693
2
CLAIMED SUBJECT MATTER
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A system comprising:
a mobile computing device;
a memory area associated with a mobile computing
device, the memory area storing data usage plans available to
the mobile computing device, the one or more data usage plans
having respective data usage information and mobile operator
information associated therewith including an amount of
network data consumed under a respective data usage plan
provided by a respective mobile operator that provides access to
one or more networks; and
a processor programmed to:
receive a data transfer request from the mobile
computing device; and
based in part on the data usage information
associated with the one or more data usage plans, the
mobile operator information associated with the one or
more data usage plans, an estimated Quality of Service
corresponding to available network connections and the
one or more data usage plans, and the received data
transfer request, select, from a plurality of mobile
operators available to the mobile computing device, a
mobile operator to continue performing the received data
transfer request.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Momtahan US 2011/0276442 A1 Nov. 10, 2011
Sfar US 2014/0044099 A1 Feb. 13, 2014
Fan US 2008/0318621 A1 Dec. 25, 2008
Mao US 2010/0184440 A1 July 22, 2010

Appeal 2019-001936
Application 14/835,693
3
REJECTIONS
1. Claims 21–39 and 42 stand rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1–20 of U.S.
Patent No. 9,161,200 B2. Final Act. 3–4.2
2. Claims 21–25 and 28–39 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Momtahan and Sfar. Final Act. 5–10.
3. Claim 26 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Momtahan, Sfar, and Fan. Final Act. 10–11.
4. Claims 27 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Momtahan, Sfar, and Mao. Final Act. 11.
OPINION
Non-Statutory Double Patenting Rejection
The Examiner rejects claims 21–39 and 42 on the grounds of non-
statutory obviousness-type double patenting over claims 1–20 of U.S. Patent
No. 9,161,200 B2. Final Act. 3. Appellant did not appeal the double
patenting rejection. See Appeal Br. 8–15. As a result, we summarily affirm
the Examiner’s non-statutory double patenting rejection of claims 21–39 and
42. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“If an appellant fails to present arguments on a particular issue –– or, more
broadly, on a particular rejection –– the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).

2 Although the header of the rejection indicates that claims 21–40 are
rejected, this appears to be an error, as claim 40 is cancelled.
Appeal 2019-001936
Application 14/835,693
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Prior-Art Rejections
Claim 21 recites “a processor programmed to . . . select, from a
plurality of mobile operators available to the mobile computing device, a
mobile operator [that provides access to one or more networks] to continue
performing the received data transfer request.” The Examiner finds Sfar
teaches or suggests the aforementioned limitation. See Final Act. 5–6; see
also Ans. 10. More specifically, the Examiner finds Sfar discloses a
wireless communication system including: a user equipment (“UE”) that
includes two Subscriber Identity Module (“SIM”) cards; two dedicated
Public Land Mobile Networks (“PLMNs”) (i.e., PLMN1 and PLMN2), and
a service provider that provides access to PLMN1 and PLMN2. See Ans. 8–
9 (citing Sfar at ¶¶ 63, 66, Fig. 1); see also Sfar ¶¶ 42, 43. As found by the
Examiner, Sfar further discloses the service provider allows the UE to
switch a downlink packet transmission between the two networks. See
Ans. 8–10 (citing Sfar ¶¶ 19, 37, 63, 66); see also Sfar ¶ 45. As further
found by the Examiner, Sfar also discloses that the UE can also switch an
uplink data stream between two distinct network operators. See Ans. 9
(citing Sfar ¶ 8).
Appellant argues Sfar fails to teach or suggest the aforementioned
limitation. See Appeal Br. 14. Specifically, Appellant argues Sfar discloses
switching between multiple networks (i.e., PLMN1 and PLMN2) via a
single service provider rather than switching between multiple service
providers. See Reply Br. C-2–C-3; see also Appeal Br. 11–12. Appellant
additionally argues Sfar’s network operator refers to a network rather than
the claimed “mobile operator,” and, thus, Sfar’s disclosure of switching
between a plurality of network operators actually teaches switching between
Appeal 2019-001936
Application 14/835,693
5
a plurality of networks rather than the claimed switching between a plurality
of mobile operators. See Reply Br. C-3–C-5; see also Appeal Br. 12–13.
We are not persuaded the Examiner erred. Claim 21 recites that a
mobile operator “provides access to one or more networks.” We agree with
the Examiner that Sfar’s service provider teaches the claimed “mobile
operator,” as Sfar discloses that the service provider provides access to
multiple networks (i.e., PLMN1 and PLMN2). See Ans. 8. We further
agree with the Examiner that Sfar’s disclosure of the selection of a network
from the multiple networks for a downlink packet transmission teaches or
suggests the claimed “[selecting], from a plurality of mobile operators . . . a
mobile operator to continue performing the received data transfer request,”
recited in claim 21. See Ans. 8–9. Although the cited portions of Sfar
disclose a selection of a network associated with a service provider, rather
than a selection of a service provider, we conclude that such a difference is
not sufficient to patentably distinguish the claim from Sfar’s disclosure, as a
person of ordinary skill in the art would have been able to modify Sfar’s
disclosure to have the UE select a different service provider associated with
a different network. As the Supreme Court made clear that when
considering obviousness, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Further, even assuming arguendo that Appellant’s argued distinction
would be sufficient to patentably distinguish the claim, Sfar explicitly
discloses the selection of a network provider, as opposed to the selection of a
network. See Ans. 9 (citing Sfar ¶ 8). Contrary to Appellant’s argument,
Appeal 2019-001936
Application 14/835,693
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Sfar’s network provider also teaches the claimed “mobile operator,” as Sfar
discloses that the network provider provides access to a network. See Sfar
¶¶ 7, 8. Appellant’s argument that Sfar’s network provider refers to a
network, rather than a mobile operator or service provider, is not supported
by the disclosure of Sfar.
Accordingly, we sustain the Examiner’s rejection of independent
claim 21. The Examiner rejects independent claims 29 and 37 on a similar
basis as claim 21, and, therefore, we also sustain the Examiner’s rejections
of claims 29 and 37. We also sustain the rejections of dependent claims 22–
28, 30–36, 38, 39, and 42, as they are not separately argued by Appellant.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–39, 42 Non-statutory
Double Patenting
21–39, 42
21–25, 28–
39
103(a) Momtahan, Sfar 21–25, 28–
39

26 103(a) Momtahan, Sfar,
Fan
26
27, 42 103(a) Momtahan, Sfar,
Mao
27, 42
Overall
Outcome
21–39, 42

Appeal 2019-001936
Application 14/835,693
7
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED