Ex Parte Caruana et al

Patent Trial and Appeal Board

Aug 19, 2016

13121534 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/121,534 04/20/2011
21839 7590 08/23/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jean-Paul Caruana
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.
1032326-000535 9914
EXAMINER
HSIEH, PING Y
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-PAUL CARUANA and GREGORY CAPOMAGGIO
Appeal2014-008814
Application 13/121,5341
Technology Center 2600
Before JEAN R. HOMERE, JASON V. MORGAN, and SHARON
PENICK, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge PENICK.
Opinion Dissenting filed by Administrative Patent Judge HOMERE.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-3 and 5-13. (Appeal Br. 1.) Claims 4 has been
cancelled. (Id. at 15.) An oral hearing for this appeal was held August 4,
2016. We have jurisdiction under 35 U.S.C. § 6(b)(l).
We reverse.
1 Appellants identify Gemalto SA as the real party in interest. (Appeal Br.
2.)
Appeal2014-008814
Application 13/121,534
Invention
Appellants' invention relates to communicating data with a subscriber
identification module (SIM) device through a radio frequency (RF) interface
fitted in the device. RF signals are extracted from the carrier current of the
device and injected into the SIM device through the RF interface. (Spec.
12:4--14; 14:10-21.)
Illustrative Claim
Claims 1 and 7 ~ reproduced below with key limitations emphasized,
are rnustrative:
1. A method for personalizing a subscriber identity module,
compnsmg:
- installing a radio frequency interface RF with electrical
contacts in the subscriber identity module,
- receiving radio frequency signals containing
personalization data for the subscriber identity module, and
- injecting the received radio frequency signals in the RF
interface via the electrical contacts, and
= personalizing the subscriber identity module using the
personalization data in the injected signals.
7. An electronic device comprising:
- a subscriber identity module comprising:
- a radio frequency interface with electrical
contacts connected to the subscriber identity module,
wherein said subscriber identity module is
configured to personalize said subscriber identity module
based on the personalization data contained in a radio
frequency signal received from the RF interface.
Rejections
The Examiner rejects claims 1, 7, and 12 under 35 U.S.C. § 103(a) as
obvious over Sharma (US 2006/0063654 Al; Mar. 23, 2006) and Yen et al.
(US 2009/0036166 Al; Feb. 5, 2009). (Final Action 2-3.)
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Application 13/121,534
The Examiner rejects claims 2, 3, 5, 6, 8-11, and 13 under 35 U.S.C.
§ 103(a) as obvious over Sharma, Yen, and Watanabe et al. (US
2007 /0249398 Al; Oct. 25, 2007). (Final Action 3---6.)
Issue
Did the Examiner err in finding that Yen teaches "installing a radio
frequency interface RF with electrical contacts in the subscriber identity
module" and "injecting ... received radio frequency signals in the RF
interface via the electrical contacts" as recited in claim 1?
We address only this issue, which is dispositive. Consequently, we do
not reach additional, non-dispositive issues raised by Appellants' arguments.
ANALYSIS
The Examiner finds that Yen teaches installation of a radio frequency
interface with electrical contact in the subscriber identity module (SIM) in
the connection shown between the antenna 15 and Combi-SIM 13 in Yen's
Figure 1, and the injection of received radio frequency (RF) signals in the
RF interface via these electrical contacts in Yen's paragraph 50. (Final
Action 3.) The Examiner finds that an RF signal received at Yen's antenna
15 is "processed and forwarded" to Combi-SIM 13, and thus is injected into
an RF interface of a SIM card. (Advisory Action 2.)
Appellants argue that in Yen, the RF signal is not received at contacts
of the SIM card, but that the processing cited by the Examiner converts the
signal from an RF signal to a digital logic signal, which is not an RF signal.
(Appeal Br. 5---6.)
The Examiner finds that "the claim does not limit the received RF
signal not to be processed before input to the SIM card" and that "the data
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Application 13/121,534
contained in the signal are the same and should be considered the same
signal." (Answer 6.) Thus, the Examiner finds that, in Yen, the received
radio frequency signals are injected into the RF interface via the electrical
contacts. (Id.)
We agree with Appellants. While an RF signal can be sent as a digital
logic signal, e.g., via pulse code modulation or some other manner of
quantizing an analog signal, Yen does not teach or suggest that the RF signal
is sent in this way to Combi-SIM 13.
With respect to the Examiner's finding that "the data contained in the
signal [provided to Combi-SIM 13] are the same and should be considered
the same signal" (Answer 6) we note that Claim 1 specifies that "received
radio frequency signals" are injected into a "radio frequency interface RF
with electrical contacts in the subscriber identity module." Thus, it is not the
data from the RF signal but the RF signal that, according to the claim, is
"injected" into the SIM.
While the Examiner describes how RF signals received by Yen's non-
contacting antenna 15 and non-contacting transceiver 14 may represent
certain digital data (Answer 7-8), the Examiner's findings do not show that
Yen teaches or suggests sending the received signal, as opposed to the
digital data represented by the received signal, to Combi-SIM 13.
Moreover, non-contacting transceiver 14 sends data received from master
controller 16 (a source of non-RF signal data) along the same path (d) used
to send data to Combi-SIM 13 from non-contacting antenna 15, thus
teaching or suggesting non-contacting transceiver 14 sending the data
represented by the RF signals, rather than a digital representation of the RF
signals themselves, to Combi-SIM 13. The Examiner does not rely on
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Application 13/121,534
Sharma to teach or suggest the disputed recitation. Thus, we are persuaded
the Examiner's findings fail to show that Yen, in combination with Sharma,
teaches or suggests the disputed limitations as recited in independent claim
1. Therefore we reverse the rejection of claim 1 as obvious in view of
Sharma and Yen, and the rejections of dependent claims 2, 3, 5, and 6,
dependent therefrom and including these limitations.
Claim 7 recites commensurate limitations and is argued on
substantially the same basis. (Appeal Br. 8-9.) The Examiner finds the
claimed electrical contacts to be taught by the contacts of smart card chip 12
in the Combi-SIM 13. However, absent a teaching of these contacts as an
RF interface which receive a radio frequency signal, we again find for the
same reasons that this teaching or suggestion is not sufficient. We therefore
reverse the rejection of claim 7 as obvious in view of Sharma and Yen, and
the rejections of dependent claims 8-13, dependent therefrom and including
these limitations.
DECISION
We reverse the Examiner's decision rejecting claims 1, 7, and 12
under 35 U.S.C. § 103(a) as obvious over Sharma and Yen.
We reverse the Examiner's decision rejecting claims 2, 3, 5, 6, and 13
under 35 U.S.C. § 103(a) as obvious over Sharma, Yen, and Watanabe.
REVERSED
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Appeal2014-008814
Application 13/121,534
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-PAUL CARUANA and GREGORY CAPOMAGGIO
Appeal2014-008814
Application 13/121,534
Technology Center 2600
Before JEAN R. HOMERE, JASON V. MORGAN, and SHARON
PENICK, Administrative Patent Judges.
HOMERE, Administrative Patent Judge, dissenting.
I write separately to voice my disagreement with the majority's
decision to reverse the Examiner's rejection of claim 1 on the basis that the
combination of Yen and Sharma allegedly fails to teach or suggest injecting
RF signals into an RF interface of a SIM card. In particular, the majority
finds the following:
While an RF signal can be sent as a digital logic signal, e.g., via
pulse code modulation or some other manner of quantizing an analog
signal, Yen does not teach or suggest that the RF signal is sent in this
way to Combi-SIM 13 ....
While the Examiner describes how RF signals received by
Yen's non-contacting antenna 15 and non-contacting transceiver 14
may represent certain digital data (Answer 7-8), the Examiner's
findings do not show that Yen teaches or suggests sending the
received signal, as opposed to the digital data represented by the
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Application 13/121,534
received signal, to Combi-SIM 13. Moreover, non-contacting
transceiver 14 sends data received from master controller 16 (a source
of non-RF signal data) along the same path (d) used to send data to
Combi-SIM 13 from non-contacting antenna 15, thus teaching or
suggesting non-contacting transceiver 14 sending the data represented
by the RF signals, rather than a digital representation of the RF signals
themselves, to Combi-SIM 13.
Maj. Dec. 4.
Because these findings are not supported by substantial evidence, I
take exception thereto, and respectfully dissent from the majority's ensuing
reversal decision. Although the majority correctly recognizes that
converting an analog RF signal into its digital equivalent does not change
the nature of the signal, the majority finds Yen discloses injecting into the
Combi-SIM only the data portion of the RF signal, but not the control
portion thereof. Id. This reading of Yen's teaching is simply inaccurate.
Instead, Yen teaches injecting into the Combi-SIM the data portion and the
control portion of the RF signal via interface paths c and d, respectively. Yen
,-i,-i 49-50, Fig. 1. Accordingly, one of ordinary skill would have readily
appreciated that the cited Yen's disclosure teaches the disputed claim
limitation.
Further, it is worthy to note that the delineation that the majority
seems make between injecting into the Combi-SIM only the data portion of
the signal, and not the control portion thereof is not even argued by
Appellants. Instead, it is raised sua sponte by the majority on behalf of
Appellants. As correctly noted above by the majority, Appellants' main
argument is that because the RF signal has been digitized, it has been
changed to something other than an RF signal. Therefore, according to
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Appellants, Yen's disclosure of injecting into the Combi-SIM the digitized
equivalent of RF signal does not teach injecting the RF signal therein.
Although the majority finds this line of argument unpersuasive, it
nonetheless opts to reverse the Examiner's rejection on an alternate ground,
which is neither factually nor legally supported by the record before us.
Consequently, affirming the Examiner's rejection is the more suitable course
of action on this record.
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