Ex Parte Cuellar et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201510497019 (P.T.A.B. Feb. 24, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte JORGE CUELLAR and MICHAEL MARHOFER _____________ Appeal 2012-010626 Application 10/497,019 Technology Center 2400 ______________ Before ROBERT E. NAPPI, BETH Z. SHAW, and JOSEPH P. LENTIVECH, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 13. We reverse. INVENTION The invention is directed to a method for checking the entitlement of a user of a telecommunication terminal. See Abstract of Appellants’ Specification. Appeal 2012-010626 Application 10/497,019 2 Claim 1 is illustrative of the invention and reproduced below: 1. A method for checking entitlement of a subscriber of a telecommunication terminal authorized for a telecommunication network to utilize a service and/or a visited telecommunication network, comprising: obtaining, by an access device of the visited telecommunication network, at least one certificate and identity data from the telecommunication terminal; checking to establish whether the certificate confirms the identity data and has a positive status with the telecommunication network by a network management device or a certification device of the visited telecommunication network; and transmitting a secret, if the identity data is confirmed and has positive status, to the access devices, encoding the secret with at least a public key of a subscriber identity module of the telecommunication terminal, and transmitting the encoded secret to the telecommunication terminal. REJECTION AT ISSUE The Examiner has rejected claims 1 through 13 under 35 U.S.C. § 103(a) as unpatentable over Geiger (US 6,463,534 B1; issued Oct. 8, 2002) and Timonen (US 6,741,848 B2; issued May 25, 2004). Answer 4–9. 1 ISSUES Appellants argue, on pages 6 through 9 of the Appeal Brief, the Examiner’s rejection of independent claims 1 and 13 under 35 U.S.C. § 103 is in error. The dispositive issue presented by these arguments is: Did the Examiner err in finding the combination of Geiger and Timonen teach the claimed limitation of transmitting the encoded secret to the telecommunication terminal? 1 Throughout this Opinion we refer to the Appeal Brief dated February 23, 2012, and the Examiner’s Answer mailed on April 9, 2012. Appeal 2012-010626 Application 10/497,019 3 ANALYSIS We have reviewed Appellants’ arguments in the Brief, the Examiner’s rejection and the Examiner’s response to Appellants’ arguments. Appellants’ arguments have persuaded us of error in the Examiner’s rejections of independent claims 1 and 13. In response to Appellants’ arguments, the Examiner finds Timonen teaches transmitting a coded message, which meets the claimed encoded secret. (Answer 10–11, citing col. 11, ll. 5–26, 44–67). Appellants argue that Timonen does not teach the coded message is transmitted to the mobile station as the coded message is generated by the APP, which is an application that is on the smart card of the mobile station. Appeal Br. 9 (citing Timonen col. 11, lines 15–43 and col. 7, lines 17–20). We have reviewed Timonen and concur with Appellants’ arguments. Thus, we will not sustain the Examiner’s rejections of independent claims 1 and 13 and the claims which depend thereupon. DECISION The decision of the Examiner to reject claims 1 through 13 is reversed. REVERSED rwk Copy with citationCopy as parenthetical citation