Ex Parte Burcham et al

Patent Trials and Appeals Board

May 10, 2019

13468028 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/468,028 05/09/2012
28003 7590 05/14/2019
SPRINT
6391 SPRINT PARKWAY
KSOPHTOI01-Z2100
OVERLAND PARK, KS 66251-2100
FIRST NAMED INVENTOR
Robert H. Burcham
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.
IDF 8208 (4300-15900) 1098
EXAMINER
COSME, NATASHA W
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
05/14/2019 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):
6450patdocs@sprint.com
steven.j.funk@sprint.com
SprintMail@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. BURCHAM and M. JEFFREY STONE
Appeal 2018-000062
Application 13/468,028 1
Technology Center 2400
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-15 and 17-21 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Sprint Communications Company L.P. as the real party
in interest. App. Br. 5.
2 Claim 16 is cancelled. See App. Br. 7.
Appeal 2018-000062
Application 13/468,028
BACKGROUND
THE INVENTION
Appellants describe the invention as follows:
A mobile phone that is delivered by an original equipment
manufacturer in an unbranded state. The mobile phone comprises
a near-field-communication radio transceiver, a memory, a
processor, and an application stored in the memory. When
executed by the processor, the application reads brand
information, using the near-field communication radio
transceiver, from a radio frequency identity (RFID) tag coupled
to the mobile phone during an order fulfillment process in a
distribution center of a communication service provider and,
based on the brand information, loads brand firmware into the
memory, whereby the mobile phone presents a branded look and
feel.
Abstract.
Illustrative independent claim 1 is reproduced below.
1. A mobile phone that is delivered by an original equipment
manufacturer in an unbranded state, comprising:
a near-field-communication (NFC) radio transceiver;
a non-transitory memory;
at least one processor; and
a self-branding application stored in the non-transitory
memory that, when executed by the at least one processor while
the mobile phone is at a distribution center and prior to the
mobile phone being provided to a retail store or an end user, reads
a state of a branding flag stored in the non-transitory memory,
determines that the state of the branding flag is an unbranded
state,
in response to determining that the branding flag is in the
unbranded state, reads an identification of a brand that is
associated with a communication service provider, using the
NFC radio transceiver, from a radio frequency identity (RFID)
tag, the RFID tag with the identification of the brand being
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Application 13/468,028
coupled to the mobile phone in the distribution center, where the
communication service provider is different from the original
equipment manufacturer,
based on the identification of the brand, selects and loads
brand firmware into the non-transitory memory,
activates the brand firmware that configures the mobile
phone to a branded state, and
after activating the brand firmware, sets the state of the
branding flag to a branded state.
REFERENCES AND REJECTIONS
1. Claims 1, 2, 4, 6-8, 10, 13-15, and 17-21 stand rejected under
35 U.S.C. § 103(a) over Vanderlinden (US 2010/0222047 Al, published
Sept. 2, 2010), Brede (US 2009/0036165 Al, published Feb. 5, 2009) and
Chang (US 2006/0208071 Al, published Sept. 21, 2006). Final Act. 4-19.
2. Claims 3 and 9 stand rejected under 35 U.S.C. § 103(a) over
Vanderlinden, Brede, Chang, and Maguid (US 2010/0133335 Al, published
June 3, 2010). Final Act. 19-21.
3. Claims 5 stand rejected under 35 U.S.C. § 103(a) over
Vanderlinden, Brede, Chang and Kim (US 2003/0031235 Al, published
Feb. 13, 2003). Final Act. 21-22.
4. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) over
Vanderlinden, Brede, Chang and Carolan (US 6,753,887 B2, issued June 22,
2004). Final Act. 22-24.
DISCUSSION
Claim 1
Claim 1 recites "a self-branding application" that "reads a state of a
branding flag stored in the non-transitory memory [ and] determines that the
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Application 13/468,028
state of the branding flag is in an unbranded state." The Examiner finds
Vanderlinden teaches software applications that include a device locking and
branding module for locking and branding the device for a particular carrier,
which teaches "a self-branding application," as claimed. Ans. 9; see
Vanderlinden ,i,i 17-18. Vanderlinden's device applications may be loaded
into a volatile store such as RAM, "which [the Examiner finds] reads upon
reads a state of a branding flag stored in the non-transitory memory."
Ans. 9. The Examiner further finds that Vanderlinden teaches that the
device may be locked and branded for one carrier or another and that "[t]he
locking and branding the device for a particular carrier is tantamount to the
branding flag as claimed." Ans. 9 (citing Vanderlinden ,i 26).
Appellants argue the cited paragraphs of Vanderlinden "do not speak
of a branding flag or any other electronic storage of a branding state." App.
Br. 21. According to Appellants:
a brand is determined by installation of a SIM card in a mobile
phone at a retail store by a customer service agent. See
Vanderlinden at ,i [0030]. It also appears that any provisioning,
activation, and/ or branding that may or may not be disclosed by
Vanderlinden are initiated by the POS system to which the
mobile phone of Vanderlinden is connected. See, e.g., id. at
,i,i [0026], [0027]. This is not surprising, because Vanderlinden
is not about self-identification of a brand but instead about
branding-via an external system at the time of purchase-and
most importantly locking the phone afterwards.
App. Br. 21-22.
We agree with Appellants. We do not discern from the cited portions
of Vanderlinden that it teaches a self-branding application that "reads a state
of a branding flag stored in the non-transitory memory [ and] determines that
the state of the branding flag is in an unbranded state." We disagree with the
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Examiner that Vanderlinden's teaching that its software applications being
loaded in memory teaches or suggests a branding flag or that Vanderlinden's
act of locking and branding an unbranded device to a carrier is tantamount to
a branding flag.
Accordingly, we do not sustain the Examiner rejection of independent
claim 1. For the same reason, we also do not sustain the Examiner's
rejections of claims 2-6 and 21, which depend from claim 1.
Claims 7 and 13
Claim 7 recites "providing a component to the portable electronic
device in the distribution center, wherein the component comprises a brand
identification," and "scanning the component to determine the brand
identification, wherein the scanning is performed by an electronic scanner in
the distribution center; determining, via the component, the brand
identification in response to the scanning." (App. Br. 39-40). Claim 13
similarly recites "receive brand identity information associated with a
communication service provider from an electronic scanner that reads the
brand identity information from a component provided to the mobile
electronic device in the distribution center." (App. Br. 42).
The Examiner finds Vanderlinden and Brede teach or suggest the
aforementioned limitations. Specifically, the Examiner finds Vanderlinden
teaches providing branding firmware to a portable electronic device. Final
Act. 10 ( citing Vanderlinden ,i 1 ). The Examiner further finds Brede teaches
scanning a component to determine the brand identification. Final Act. 11
(citing Brede Figs. 1, 2). Brede's Figures 1 and 2 illustrate a mobile device
with RFID reader 80 and a SIM card that receives information from the
RFID reader and transmits data on a WLAN to a server. The Examiner finds
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Brede's teaching of an RFID reader that reads an identifier and content data
from an RFID tag and transmits the data to a local network for further
processing teaches, in combination with Vanderlinden, the claimed
limitations of "scanning the component to determine the brand
identification, wherein the scanning is performed by an electronic scanner in
the distribution center"; and "determining, via the component, the brand
identification in response to the scanning." Ans. 19-20 (citing Brede ,i 50).
Appellants argue "while Brede may discuss an RFID tag 40, Brede
does not disclose that the RFID tag 40 is scanned to determine a brand
identification, much less that branding firmware is selected from a data store
based on determining the brand identification from the component." App.
Br. 28; see also App. Br. 30. Instead, according to Appellants, "Brede
merely discloses that an identifier is read from the RFID tag 40, which is
used to obtain supplementary information from a local server." App. Br. 28
(citing Brede ,i 38); see also App. Br. 30.
We agree with Appellants. Vanderlinden teaches that a newly
purchased device may be locked and branded at a retail point of sale.
Vanderlinden ,i 26. The Examiner does not clearly explain whether this is
done by use of a component of the device. See Final Act. 10 ( citing
Vanderlinden ,i,i 16, 17, 26, 33). The Examiner does, however, rely on
Brede as teaching "scanning the component to determine the brand
identification." Final Act. 11. Here we note that the components illustrated
in Brede's Figure 1 include an RFID reader and a SIM card. However,
Brede does not disclose that any of these components are scanned to
determine the brand identification of a device, as required by claims 7 and
13. Nor are we able to determine, based on the Examiner's explanation,
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how Brede's RFID reader or SIM card would be combined with
Vanderlinden' s teachings of locking and branding a device, to teach the
disputed "scanning" limitations.
Accordingly, we do not sustain the Examiner rejection of independent
claims 7 and 13. For the same reasons we do not sustain the Examiner's
rejections of claims 8-12, 14, 15, 17-20 which depend from one of claims 7
and 13.
DECISION
The Examiner's rejection of claims 1-15 and 17-21 is reversed.
REVERSED
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