Ex Parte Deas et al

Patent Trial and Appeal Board

Dec 22, 2014

11312990 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/312,990 12/19/2005 David A. Deas 7785-69 (CP2044) 5417
92384 7590 12/23/2014
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
HO, HUY C
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
12/23/2014 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 DAVID A. DEAS, MICHAEL F. GRANNAN,
UMESH M. DESAI, ANIL K. DORADLA,
LALITHA SURYANARAYANA, DAVID R. WOLTER, and
DINESH NADARAJAH
____________

Appeal 2012-008971
Application 11/312,990
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 5–15, which are all the claims pending in the
application. Claims 3, 4, and 16–22 were cancelled during prosecution. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2012-008971
Application 11/312,990

2
Invention
The claimed invention on appeal “relates generally to service
management centers, and more specifically to a method for acquiring
services on a multiplicity of devices.” (Spec. 1 ¶ l.)

Representative Claim
Independent claim 1 is representative of the invention on appeal:

1. A non-transitory computer-readable storage medium in a
service management center for managing operations of a plurality of service
centers, comprising computer instructions at least for:

enabling a selection of at least one service of the service centers on a
select one of a plurality of devices according to a single identification
reference supplied by an end user to collectively enable any services of the
service centers subscribed to by the end user;

receiving from the select one of the devices the single identification
reference in response to a request for service by the end user, wherein the
single identification reference is not associated with the select one of the
devices, wherein the single identification reference is inputted into the select
one of the devices by the end user when the request for service is generated;

selecting the at least one service associated with the single
identification reference;

enabling the at least one services on the selected one of the devices;

authenticating the single identification reference;

determining if the service requested is enabled for the end user on a
device different from the selecte [sic.] one of the devices; and

upon a finding that the single identification reference is valid and
there are no services enabled for the end user on a device other than the
Appeal 2012-008971
Application 11/312,990

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select one of the devices, searching for at least one services associated with
the single identification reference.

(Contested limitations emphasized.)

Evidence Relied Upon

US Patent 7,113,765 B2 Minear Sept. 26, 2006
US Pub. 2004/0254993 A1 Mamas Dec. 16, 2004
US Patent 7,003,481 B2 Banka Feb. 21, 2006
US Pub. 2004/0002878 A1 Maria Hinton Jan. 1, 2004
US Pub. 2007/0038931 A1 Allaire Feb. 15, 2007
US Pub. 2008/0005064 A1 Sarukkai Jan. 3, 2008

Rejections
A. Claims 1, 2, 5, 6, and 10–12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
Minear, Mamas, Banka, and Maria.
B. Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Minear,
Mamas, Banka, Maria, and Allaire.
C. Claims 8, 9, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Minear, Mamas, Banka, Maria, and Sarukkai.

Appeal 2012-008971
Application 11/312,990

4
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of rejection A
of claims 1, 2, 5, 6, and 10–12 on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2004).1 We address rejections B and C separately,
infra.
Contentions
Appellants contend, inter alia:
Minear does not disclose or suggest receiving a single
identification reference from the select one of the devices where
the single identification reference is inputted into the select one
of the devices by the end user when the request for service is
generated as in claim 1.

(App. Br. 8; see also similar argument Reply Br. 7–8.)
The Examiner disagrees:
Minear teaches and discloses the claimed feature in column 8
lines 12-48, i.e., the removable user identification module
RUIM, thus the single identification reference. Therefore,
Minear teaches and discloses the argued claimed features
"single identification reference" in claims 1 and 10.

(Ans. 14.)

1 Appellants filed a Notice of Appeal on June 2, 2011. The date of filing the
Notice of Appeal determines which set of rules applies to an ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board rules published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed.,
Rev. 8, July 2010.
Appeal 2012-008971
Application 11/312,990

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In the Reply Brief (8), Appellants respond: “It is respectfully asserted
that a Removable User Identification Module (RUIM) is not a single
identification reference as recited in claim 1, but rather is a removable
hardware component of a wireless device.” (Emphasis added).
However, we find Minear’s RUIM includes a “single identification
reference” falling within the scope of Appellants representative claim 1:
“Generally, a RUIM's serial number or a subscriber identification number
(SID) are used to identify a subscriber and the RUIM's serial number and
SID are stored in a server.” (Minear, col. 8, ll. 19–22, emphasis added.)
In the Reply Brief, Appellants contest additional limitations not
allegedly taught by the RUIM alternative embodiment.2 (Reply Br. 8;
Minear, col. 8, ll. 11–22.) However, we note the Examiner relies on other
embodiments in the Minear reference in combination with the other cited
references for teaching or suggesting these additional contested features.
(Ans. 5–6.) Regarding the Examiner’s reliance on Minear’s RUIM
alternative embodiment (Ans. 14–15), our reviewing court guides that
“[c]ombining two embodiments disclosed adjacent to each other in a prior

2 See Reply Br. 8: “Moreover, Minear does not describe enabling a selection
of at least one service of the service centers on a select one of a plurality of
devices according to a RUIM supplied by an end user to collectively enable
any services of the service centers subscribed to by the end user and
receiving the RUIM from the select one of the devices. Further, Minear
does not describe the RUIM being inputted into the select one of the devices
by the end user when the request for service is generated.”
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Application 11/312,990

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art patent does not require a leap of inventiveness,” Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Nor do we find Appellants various “teaching away” arguments
persuasive. (See, e.g., App. Br. 10–11; Reply Br. 8–9.) A reference does
not teach away if it merely expresses a general preference for an alternative
invention from amongst options available to the ordinarily skilled artisan,
and the reference does not discredit or discourage investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for representative independent claim 1. Accordingly, we
sustain rejection A of representative claim 1, and we sustain rejection A of
all grouped claims which fall with claim 1. See Claim Grouping supra.

Rejections B and C under § 103
Appellants contend the additional cited secondary reference(s) do not
overcome the deficiencies of the base combination of references relied on by
the Examiner in support of rejection A. (App. Br. 12–13.) However, we
find no deficiencies regarding rejection A for the reasons discussed above.
Therefore, for the same reasons discussed above regarding claim 1, we also
sustain all claims rejected under rejections B and C.

Appeal 2012-008971
Application 11/312,990

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DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, and 5–15
under §103.
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.
§ 41.50(f).
AFFIRMED

cdc