Microsoft Technology Licensing, LLCDownload PDFPatent Trials and Appeals BoardJun 23, 20202019001936 (P.T.A.B. Jun. 23, 2020) Copy Citation 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 4 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 6 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 Copy with citationCopy as parenthetical citation