SIMO HOLDINGS INC. et al.

Patent Trials and Appeals Board

Mar 8, 2022

2022001642 (P.T.A.B. Mar. 8, 2022)

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. 90/014,392 10/22/2019 9736689 990RO0001US2 4478 83275 7590 03/08/2022 AMPACC Law Group, PLLC 6100 219th Street SW, Suite 580 Mountlake Terrace, WA 98043 EXAMINER HOTALING, JOHN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/08/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIMO HOLDINGS INC. Patent Owner and Appellant ____________ Appeal 2022-001642 Reexamination Control 90/014,392 United States Patent 9,736,689 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, ERIC B. CHEN, and JULIET MITCHELL DIRBA, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1-7 and 16-20.2 We have jurisdiction under 35 U.S.C. §§ 134 and 306. 1 Appellant identifies the real party in interest as SIMO Holdings Inc. Appeal Br. 1. 2 Because the Examiner withdrew the rejection of claims 8-15 (see Examiner’s Answer mailed Nov. 1, 2021, at 3-4), that rejection is not before us. Although the Examiner’s Answer indicates that the obviousness rejection of 8-14 over Paetsch, Castrogiovanni, and Walton is withdrawn, that rejection also includes claim 15. Compare Ans. 4 with Final Office Action mailed Feb. 16, 2021 (“Final Act.”), at 63. Accordingly, we presume Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 2 We AFFIRM IN PART. STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed on October 22, 2019 of United States Patent 9,736,689 (“the ’689 patent”), issued to Liu et al. on August 15, 2017. The ’689 patent describes an authentication bank for a wireless communication system, where a foreign mobile device can operate in a local wireless communication network as if it were a local device. Id. at 4:65-5:1. To this end, when a user travels to a foreign location, the user’s device downloads parameters enabling the device to operate as a virtual local mobile device, effectively obtaining a virtual subscriber identity module (SIM) card. See ’689 patent, Abstract; col. 4, ll. 3-13; col. 4, l. 65-col. 5, l. 1. Claims 1 and 2 illustrate the invention and are reproduced below: 1. An authentication bank comprising a plurality of physical identification modules, wherein a physical identification module includes one or more memory, processors, programs, and computer readable media storing subscriber identity module and authentication information, at least one of the one or more programs stored in the memory comprises instructions executable by at least one of the one or more processors for: receiving a first request for authentication information, wherein the first request was transmitted over a data channel, for associating a subscriber identity module (SIM) with a foreign wireless communication client or an extension unit, the Examiner intended to also withdraw the obviousness rejection of claim 15. Therefore, only claims 1-7 and 16-20 remain rejected. Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 3 wherein the SIM is subscribed to a local carrier for a current location of the foreign wireless communication client or the extension unit, wherein the foreign wireless communication client or the extension unit is a wireless device not subscribed to the local carrier, and wherein the first request for authentication information comprises information regarding a second request for local authentication information received by the foreign wireless communication client or the extension unit from the local carrier over a local cellular communication network; retrieving subscriber identity information and authentication information for the foreign wireless communication client or the extension unit from the SIM; sending the subscriber identity information and the authentication information to the foreign wireless communication client or the extension unit over the data channel, wherein the data channel is distinct from local wireless services of the local carrier and wherein the authentication information for the foreign wireless communication client or the extension unit retrieved from the SIM is configured to be sent by the foreign wireless communication client or the extension unit to the local carrier over signal link of the local cellular communication network to provision a communication function from the local carrier for the foreign wireless communication client or the extension unit. 2. The authentication bank of claim 1, the memory comprising instructions executable by at least one of the one or more processors for: Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 4 associating a local telephone number with the SIM; and assigning the local telephone number to the wireless communication client or extension unit associated with the SIM, wherein the foreign wireless communication client or the extension unit may use the local telephone number to send and receive phone calls. RELATED CASES AND PROCEEDINGS This appeal is related to SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd., 1:18-cv-05427 (S.D.N.Y.). See Appeal Br. 2. In that proceeding, the District Court issued a claim construction order construing various terms and phrases in the ’689 patent. SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 346 F. Supp. 3d 598 (S.D.N.Y. 2018). Ultimately, that case ended after the District Court granted summary judgment of infringement of claim 8 of the ’689 patent-a claim that is not at issue here-based on a construction of that claim’s preamble, SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 376 F. Supp. 3d 369 (S.D.N.Y. 2019), and the Federal Circuit then reversed that decision and entered judgement of noninfringement, SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367 (Fed. Cir. 2021). This appeal is also related to another proceeding, where another panel of this Board denied institution over various proposed grounds of unpatentability based principally on the Andreini reference that is not at issue here. See Hong Kong uCloudlink Network Tech. Ltd. v. SIMO Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 5 Holdings Inc., IPR2019-00857, Paper 15 at 1-35 (PTAB Sept. 17, 2019) (“PTAB Inst. Denial Dec.”). THE REJECTIONS3 The Examiner rejected claims 1, 2, 4-7, and 16-20 under 35 U.S.C. § 103 as unpatentable over Paetsch (WO 2004/082314 A2; published Sept. 23, 2004) and Castrogiovanni (US 2003/0220101 A1; published Nov. 27, 2003). Final Act. 24-63.4 The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable over Paetsch, Castrogiovanni, and Walton (WO 2006/094564 A1; published Sept. 14, 2006). Final Act. 63-68. THE REJECTION OVER PAETSCH AND CASTROGIOVANNI The Examiner finds that Paetsch discloses every recited element of independent claim 1, and cites Castrogiovanni for also teaching that the first request for authentication information comprises information regarding a second request for the recited local authentication information in concluding that the claim would have been obvious. Final Act. 24-51. In rejecting dependent claim 2, the Examiner cites Paetsch for (1) associating a local telephone number with the recited SIM; and (2) assigning that number to the 3 As noted previously, because the Examiner withdrew the obviousness rejection of claims 8-15 (see Ans. 3-4), that rejection is not before us. 4 Throughout this opinion, we refer to (1) the Examiner’s Final Rejection mailed February 16, 2021; (2) the Appeal Brief filed September 8, 2021 (“Appeal Br.”); and (3) the Examiner’s Answer mailed November 1, 2021 (“Ans.”). Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 6 wireless communication client or extension unit associated with the SIM, where that client or unit may use the number to send and receive phone calls. Final Act. 51-52. Appellant argues that Paetsch does not teach or suggest assigning a local telephone number to the wireless communication client or extension unit associated with the SIM, where that client or unit may use the number to send and receive phone calls as claimed. Appeal Br. 8-10. According to Appellant, merely transferring a telephone number to an end user in Paetsch does not inherently disclose that the user may use that number to send and receive calls, particularly since tablets and modems with cellular capability may have a telephone number to transfer data, yet still be unable to send and receive phone calls. Appeal Br. 8-9. Appellant adds that although Paetsch’s plug-in card identification data is used to obtain a telephone number, it does not itself include a phone number because a SIM is not inherently associated with such a number. Appeal Br. 9. Appellant argues other recited limitations summarized below. ISSUES Under § 103, has the Examiner erred by finding that Paetsch and Castrogiovanni collectively would have taught or suggested an authentication bank capable of: (1) assigning a local telephone number to a wireless communication client or extension unit associated with the SIM, where the client or unit may use the number to send and receive phone calls as recited in claim 2? Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 7 (2) verifying the subscriber identity information in a subscriber database, where that information is verified prior to sending that information to the authentication server as recited in claim 4? (3) determining a local wireless account to associate with the foreign wireless communication client or an extension unit, the local wireless account having a corresponding local telephone number as recited in claim 6? (4) the first request for authentication information comprises at least one of a unique subscriber identifier, a wireless communication client identifier, a password, and a current location of the foreign wireless communication client or the extension unit as recited in claim 7? ANALYSIS Claims 1, 2, 5, 16, 17, 19, and 20 We begin by noting that Appellant does not dispute the Examiner’s findings and conclusions regarding independent claim 1 from which claim 2 depends. That is, the Examiner’s reliance on Paetsch and Castrogiovanni for teaching the limitations of independent claim 1 is undisputed, as is the Examiner’s conclusion that claim 1 would have been obvious over the cited references’ collective teachings. See Final Act. 24-51. Rather, Appellant disputes the Examiner’s reliance on Paetsch for teaching certain limitations of dependent claim 2, namely assigning a local telephone number to the wireless communication client or extension unit associated with the SIM, where that client or unit may use the number to send and receive phone calls as claimed. See Appeal Br. 8-10. Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 8 Our emphasis on the permissive term “may” underscores that the client or unit does not actually use the local telephone number to send and receive phone calls, but that it may do so. Nevertheless, we see no error in the Examiner’s reliance on the functionality associated with Paetsch’s SIM card for at least suggesting the recited local telephone number assignment. As Paetsch explains on page 1, a SIM card is a plug-in card with an identity, via which a cellular end device (1) is assigned to a specific network server; (2) obtains a specific telephone number; and (3) can be identified clearly in all cellular networks. We emphasize the term “identity” here, for Appellant does not persuasively rebut the Examiner’s finding that this SIM-card-based identity can include a telephone number. See Ans. 6 (finding that part of a SIM card’s identity is the phone number assigned to the SIM card). This finding reasonably comports with the ordinary and customary meaning of “SIM card” in the art, namely “a smart card that is inserted into a device such as cellular telephone, and which serves to identify a user, store information such as telephone[] numbers, and which may also have applications resident.” Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 711 (2004) (“Wiley EE Dictionary”) (emphasis added). Given this ability of a SIM card to identify a user and store telephone numbers, we see no error in the Examiner’s finding that at least part of a SIM card’s identity referenced on Paetsch’s page 1 would be a phone number assigned to the SIM card, at least as an obvious variation. To the extent Appellant contends otherwise, there is no persuasive evidence on this record to substantiate such a contention. Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 9 We reach this conclusion even assuming, without deciding, that, Paetsch’s plug-in card identification data does not include a phone number despite this data being used to obtain such a number as Appellant contends. See Appeal Br. 8-9. That is, even assuming, without deciding, that a SIM card is not inherently associated with a telephone number as Appellant contends (see Appeal Br. 9), that does not mean that such an association would not have been obvious to ordinarily skilled artisans, namely those with (1) an electrical engineering degree (or equivalent training and experience), and (2) two years of experience in the mobile telecommunication field. See PTAB Inst. Denial Dec. 8-9 (noting this skill level). Although inherency can be shown to prove anticipation, inherency need not be shown to establish obviousness as is the case here. See Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”); see also Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1346 (Fed. Cir. 2018) (“[A]lthough anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”) (internal quotation marks omitted); Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“Unlike a section 102 defense which requires that a single reference describe each and every element of a claimed invention, the question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art . . . .”) (internal citation and quotation marks omitted); Intellectual Ventures I LLC v. EMC Corp., 786 F. App’x 1021, 1034 (Fed. Cir. 2019) (non- Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 10 precedential) (concluding that substantial evidence supported the Board’s finding that a cited prior art reference taught or suggested a disputed limitation despite not disclosing that limitation expressly or inherently). To be sure, when the prior art does not disclose a claim limitation expressly, inherency may supply a missing claim limitation in an obviousness analysis. Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (quoting Par Pharm. v. TWI Pharm., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Inherency is established in the context of obviousness when “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Hospira, 946 F.3d at 1329 (quoting Par Pharm.). But where, as here, the Examiner does not rely on inherency to supply missing claim limitations in connection with the obviousness rejection, but rather what the cited references’ collective teachings would have suggested to ordinarily skilled artisans, Appellant’s inherency-based arguments are inapposite and, therefore, unavailing. See Merck, 874 F.2d at 807 (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”) (internal quotation marks omitted; emphasis added); see also Intellectual Ventures, 786 F. App’x at 1034 (concluding that substantial evidence supported the Board’s finding that a cited prior art reference taught or suggested a disputed limitation despite not disclosing that limitation expressly or inherently). Therefore, we see no error in the Examiner’s reliance on Paetsch for at least suggesting the recited local telephone number assignment, including Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 11 the capability to use that number to send and receive calls as claimed. That a SIM card can actually store telephone numbers according to a SIM card’s understood meaning in the art, and the fact that a telephone number “identifies a given telephone station or subscriber,” see Wiley EE Dictionary at 777 (emphasis added), only further weighs in favor of the Examiner in this regard. We reach this conclusion even assuming, without deciding, that Paetsch’s transferring a telephone number for a SIM card to an end user on page 3 does not inherently disclose that the user may use that number to send and receive calls as Appellant contends. See Appeal Br. 8-9. Here again, Appellant’s inherency-based arguments are inapposite to the Examiner’s rejection that does not rely on inherency to supply claim limitations in connection with the obviousness rejection, but rather what the cited references’ collective teachings would have suggested to ordinarily skilled artisans. See Merck, 874 F.2d at 807 (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”) (internal quotation marks omitted; emphasis added); see also Intellectual Ventures, 786 F. App’x at 1034 (concluding that substantial evidence supported the Board’s finding that a cited prior art reference taught or suggested a disputed limitation despite not disclosing that limitation expressly or inherently). To the extent Appellant contends that Paetsch’s SIM-based functionality is somehow limited to tablets and modems that can only transfer data and cannot send and receive phone calls (see Appeal Br. 8-9), Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 12 such a contention is unsubstantiated on this record and, therefore, is mere attorney argument with low probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Moreover, Appellant’s contention is not only overstated, but it ignores the fact that using Paetsch’s relied-upon functionality in connection with devices that can use an assigned local telephone number to send and receive calls as the Examiner proposes would have been at least an obvious variation to ordinarily skilled artisans. Therefore, we are not persuaded that the Examiner erred in rejecting claim 2, and claims 1, 5, 16, 17, 19, and 20 not argued separately with particularity. Claim 4 We also sustain the Examiner’s rejection of claim 4 reciting, in pertinent part, verifying the subscriber identity information in a subscriber database, where that information is verified prior to sending that information to the authentication server. Despite Appellant’s arguments to the contrary (Appeal Br. 10-13), Appellant does not persuasively rebut the Examiner’s reliance on the functionality of Castrogiovanni’s SIM librarian for at least suggesting the recited verification. In the rejection, the Examiner maps the recited subscriber identity information verification to Castrogiovanni’s determining an address for a requested SIM based on a SIM identifier, such as an International Mobile Subscriber Identity (IMSI), in SIM librarian computing Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 13 system 34. See Final Act. 53. The Examiner also finds that this verification occurs before the subscriber identity information is sent to an authentication server, namely the requesting SIM server 26. See id. We see no error in these findings. As Castrogiovanni explains in paragraph 76, SIM librarian system 34 communicates with SIM servers 26 to provide computer-routable address information for various requested SIMs. In the embodiment of Figure 10, after receiving a request for a SIM address from a SIM server in step 304, an address is determined for the requested SIM based on computer-recognizable SIM identifier in step 308. Castrogiovanni ¶ 143. The address is then returned to the requesting SIM server in step 310. Id. This determination that is based at least partly on subscriber identity information, such as an IMSI, at least suggests verifying that information in a subscriber database in step 308 before that information is sent to an authentication server in step 310. See Castrogiovanni ¶ 143; Fig. 10. We reach this conclusion noting that the ’689 patent does not define the term “database” unlike at least one other term whose concrete definition leaves no doubt as to its meaning. See, e.g., ’689 patent, col. 6, ll. 56-59 (defining the term “foreign” explicitly). We, therefore, construe the term “database” with its plain meaning in the art, namely “any electronically-stored collection of data.” See In re Comiskey, 554 F.3d 967, 981 (Fed. Cir. 2009) (quoting this definition from a computer dictionary). To the extent Appellant contends that Castrogiovanni lacks such an electronically-stored data collection or associated subscriber identity information (see Appeal Br. 12-13), such arguments are unavailing Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 14 and not commensurate with the scope of the claim that does not preclude the associated functionality of Castrogiovanni’s SIM librarian that at least suggests these elements and the associated verification. That Castrogiovanni labels this functionality as a SIM librarian-a term that itself suggests database functionality5-only further weighs in favor of the Examiner in this regard. Nor does Appellant squarely address-let alone persuasively rebut- the Examiner’s additional reliance on the functionality in Castrogiovanni’s paragraphs 5 and 68 in connection with defined relationships associated with subscriber identity information that are used by the SIM librarian in its operation. See Ans. 7-8. Accordingly, the weight of the evidence on this record favors the Examiner. Therefore, we are not persuaded that the Examiner erred in rejecting claim 4. Claim 6 We also sustain the Examiner’s rejection of claim 6 reciting, in pertinent part, determining a local wireless account to associate with the foreign wireless communication client or an extension unit, the local wireless account having a corresponding local telephone number. Our emphasis on the word “to” underscores that the local wireless account is not actually associated with a foreign wireless communication client or 5 See Wiley EE Dictionary at 418 (defining “library” as “[a] collection of routines, programs, files, or storage media”); see also Comiskey, 554 F.3d at 981 (defining “database” as “any electronically-stored collection of data”) (emphases added). Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 15 extension unit under the terms of the claim, but rather the local wireless account is merely determined so that it may be associated with that client or unit at some future time. Nevertheless, despite Appellant’s arguments to the contrary (Appeal Br. 13-14), we see no error in the Examiner’s reliance on the cited prior art for at least suggesting the recited limitations for the reasons noted above and by the Examiner. Final Act. 56-58; Ans. 8-9 (citing Paetsch 1, 5-6, 10). We reach this conclusion even assuming, without deciding, that (1) there is no inherent link between a SIM card and the information regarding it and a telephone number, and (2) Paetsch does not explicitly or inherently disclose that a new SIM card being changed to has an associated telephone number as Appellant contends. See Appeal Br. 13-14. As noted previously, Appellant’s inherency-based arguments are inapposite to the Examiner’s obviousness rejection that does not rely on inherency in connection with the recited limitations, but rather what the cited references’ collective teachings would have suggested to ordinarily skilled artisans. See Merck, 874 F.2d at 807 (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”) (internal quotation marks omitted; emphasis added); see also Intellectual Ventures, 786 F. App’x at 1034 (concluding that substantial evidence supported the Board’s finding that a cited prior art reference taught or suggested a disputed limitation despite not disclosing that limitation expressly or inherently). That one could imagine that Paetsch’s new SIM card might have no associated telephone number, and the old SIM card’s telephone number Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 16 would be transferred to the new card after authentication as Appellant surmises (Appeal Br. 14) does not change our conclusion. Our emphasis underscores the speculative nature of this “imaginative” theory that is unsubstantiated by any persuasive evidence on this record and, therefore, is unavailing. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 6. Claims 7 and 18 We do not sustain the Examiner’s rejection of claim 7 reciting the first request for authentication information further comprises at least one of (1) a unique subscriber identifier; (2) a wireless communication client identifier; (3) a password; and (4) a current location of the foreign wireless communication client or the extension unit. Our decision in this regard is premised on our conclusion that the recited phrase “at least one of . . . and” in connection with the four recited elements means one or more of each element is present in the claim. That is, the claim requires (1) at least one unique subscriber identifier; (2) at least one wireless communication client identifier; (3) at least one password; and (4) at least one current location of the foreign wireless communication client or the extension unit. This understanding of the claim language flows from the Federal Circuit’s analysis of another claim in this patent (i.e., claim 8). See SIMO Holdings, 983 F.3d at 1376-77 (citing SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 886-88 (Fed. Cir. 2004)). Specifically, in reaching its conclusion, the Federal Circuit summarized Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 17 SuperGuide’s conclusion that “at least one of” followed by a list of elements separated by “and” was properly construed as requiring “one or more of each item.” Id. (citing SuperGuide, 358 F.3d at 886 (articulating a similar construction)). On this record, we are persuaded that the same logic applies to the phrase recited in claim 7, and so we reach a consistent conclusion. Turning to the rejection, we first note that the Examiner’s reliance on the functionality disclosed in Paetsch’s pages 3, 5, 7, 8, and 10 for teaching the first request for authentication information recited in claim 1 from which claim 7 depends (Final Act. 33-35) is undisputed. That is, Appellant does not dispute that Paetsch teaches the first request for authentication information in claim 1. Rather, Appellant disputes the Examiner’s reliance on the cited prior art for teaching that request’s particular content, namely all four elements in claim 7. On this record, we cannot say-nor has the Examiner shown-that Paetsch’s request contains the four request-based elements required by the claim, namely (1) at least one unique subscriber identifier; (2) at least one wireless communication client identifier; (3) at least one password; and (4) at least one current location of the foreign wireless communication client or extension unit. Notably, the Examiner’s rejection in this regard is not a model of clarity, for it does not squarely address each of the request’s four requisite elements enumerated above, much less map those elements to corresponding elements in Paetsch. See Final Act. 58-59. Rather, the rejection merely quotes various passages from Paetsch’s pages 5 and 8 with no accompanying explanation or analysis, let alone identify each of the four recited elements that are purportedly taught or suggested in those cited Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 18 passages. See id. These omissions and ambiguities in the rejection make our task of discerning the Examiner’s findings in this regard all the more difficult. To be sure, as noted on page 8, Paetsch’s request not only identifies the cellular network to which a requested SIM card should belong, but also has “other data” that identifies (1) a specific SIM card, or (2) a specific class of SIM cards. As noted previously, a SIM card not only identifies a user, but can also store information, such as telephone numbers, under the term’s meaning in the art. See Wiley EE Dictionary at 711. Given this identifying information associated with a particular SIM card-a particular SIM card identified in the request itself-identifying unique subscriber and wireless communication identifiers in Paetsch’s request would not have been a leap of inventiveness, particularly given the request’s identification of a specific SIM card and cellular network noted above. See Paetsch at 8. That is, given Paetsch’s teachings in light of the well-known identification elements associated with SIM cards, it would have been obvious to ordinarily skilled artisans, namely those with (1) an electrical engineering degree (or equivalent training and experience), and (2) two years of experience in the mobile telecommunication field, see PTAB Inst. Denial Dec. 8-9, to include (1) the unique subscriber identifier, and (2) wireless communication client identifier in the request. But this accounts for only two of the four elements of the request required by claim 7. On this record, we cannot say-nor has the Examiner shown-that it would have also been obvious to add the other two recited Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 19 elements in Paetsch’s request, namely (1) a password, and (2) a current location of the foreign wireless communication client or extension unit. Not only does the rejection fail to explain why including these two additional elements in the request would have been obvious, the Examiner’s reliance on the authentication functionality of Castrogiovanni’s mobile telephone switching center (MSC) on pages 11 to 14 of the Answer is likewise unavailing in this regard. Even if we were to accept the Examiner’s conclusion that it would have been obvious to implement Castrogiovanni’s authentication features in Paetsch’s system so that Paetsch’s SIM card can be authenticated at the start of each call (Ans. 13), the Examiner still fails to squarely identify each of the four elements of the request in claim 7 in connection with this authentication functionality, let alone explain why it would have been obvious to include all four of those elements in a single associated request, including a password and the foreign client’s or extension unit’s current location. Nor will we speculate in that regard here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting (1) claim 7, and (2) claim 18 that recites commensurate limitations. THE REMAINING OBVIOUSNESS REJECTION We sustain the Examiner’s obviousness rejection of claim 3 over Paetsch, Castrogiovanni, and Walton. Final Act. 63-68. Despite nominally arguing this claim separately, Appellant reiterates similar arguments made in connection with claim 2. Appeal Br. 10. We are not persuaded by these arguments for the reasons previously discussed. Appeal 2022-001642 Reexamination Control 90/014,392 Patent US 9,736,689 B2 20 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-7, 16-20 103 Paetsch, Castrogiovanni 1, 2, 4-6, 16, 17, 19, 20 7, 18 3 103 Paetsch, Castrogiovanni, Walton 3 Overall Outcome 1-6, 16, 17, 19, 20 7, 18 REQUESTS FOR EXTENSIONS OF TIME Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART FOR PATENT OWNER: AMPACC LAW GROUP, PLLC 6100 219TH STREET SW, STE. 580 MOUNTLAKE TERRACE, WA 98043 FOR THIRD-PARTY REQUESTER: FISH & RICHARDSON P.C. P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022