Ex parte Gerth et al.

Board of Patent Appeals and Interferences

Aug 30, 2001

08344390 (B.P.A.I. Aug. 30, 2001)

The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD M. GERTH, YOGEESH H. KAMATH,
and TIMOTHY J. ROONEY
____________
Appeal No. 1998-2986
Application No. 08/344,390
____________
ON BRIEF
____________
Before THOMAS, DIXON, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appellants' invention relates to a method and system for
detecting cloning fraud in a mobile cellular telephone
environment. Specifically, a plurality of registration
notification (REGNOT) records each including a mobile
Appeal No. 1998-2986
Application No. 08/344,390
2
identification number (MIN), a time stamp of the REGNOT, and
originating indicia identifying a cell where the REGNOT
originated are collected. First and second REGNOT records are
compared to determine if a time difference between the time
stamps of the two REGNOT records is less than the time needed
to travel between the cells identified by the originating
indicias contained in the two REGNOT records. Claim 13 is
illustrative of the claimed invention, and it reads as
follows:
13. A method for detecting cloning fraud in a mobile
telephone environment, comprising the steps of:
receiving a plurality of registration notification each
identifying a same particular mobile user; and
determining, as a function of a time of creation of each
of said plurality of registration notifications and a location
identified as the location of a mobile telephone that caused
the creation of each of said plurality of registration
notifications, whether an instance of cloning fraud has
occurred.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Teare et al. (Teare) 5,243,652 Sep. 07, 1993
Cooper et al. (Cooper) 5,335,265 Aug. 02, 1994
(filed Jun. 30, 1993)
Appeal No. 1998-2986
Application No. 08/344,390
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Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Cooper in view of Teare.
Reference is made to the Examiner's Answer (Paper No. 18,
mailed March 11, 1998) for the examiner's complete reasoning
in support of the rejection, and to appellants' Brief (Paper
No. 17, filed December 19, 1997) and Reply Brief (Paper No.
19, filed
May 11, 1998) for appellants' arguments thereagainst.
Appeal No. 1998-2986
Application No. 08/344,390
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OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 20.
Claim 13, which appears to be the broadest claim,
requires receiving plural registration notifications for a
particular mobile user and determining from the times of
creating the registration notifications whether cloning fraud
has occurred. As admitted by the examiner (Answer, page 4),
Cooper does not disclose that registration notifications are
used to determine the existence of cloning fraud. Cooper,
rather, compares the time of a call's origination with the
time of a previous call's origination. The examiner,
nonetheless, asserts (Answer, page 4) that "it is well known
in the art to utilize registration notifications for
authentication and fraud purposes."
The examiner cites Teare as evidence to support his
statement that registration notifications have been used for
authentication. In particular, the examiner contends (Answer,
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Application No. 08/344,390
5
page 4) that Teare teaches sending position and time
information at regular intervals for authentication.
Therefore, the examiner concludes that it would have been
obvious to use registration notifications in the method of
Cooper "to prevent unnecessary charges to the user."
Appellants argue (Brief, page 8) that Teare fails to
provide the missing limitations of Cooper. Appellants point
out (Brief, page 8) that Teare sends periodic position and
time records to a central facility where it is compared
against previously stored, preset position and time profiles.
If the information matches, then authorization is granted.
Even if one considers the information sent by Teare to be
registration notification, Teare still does not disclose or
suggest comparing such registration notification against
previously sent registration notification records, as Teare
compares the information with preset records. Accordingly, we
find no motivation in the prior art of record to take Cooper's
method of comparing the time of a call with the time of a
previous call by the same mobile phone and to modify it to
compare a registration notification record for a particular
phone with other registration notification records for the
Appeal No. 1998-2986
Application No. 08/344,390
6
same phone. The only rationale we can find is in appellants'
specification. Therefore, the examiner has failed to
establish a prima facie case of obviousness. Accordingly, we
cannot sustain the rejection of claim 13. Further, since all
of the remaining claims include limitations similar to the
ones we have found lacking from the combination of Cooper and
Teare, we likewise cannot sustain the rejection of claims 1
through 12 and 14 through 20.
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Application No. 08/344,390
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CONCLUSION
The decision of the examiner rejecting claims 1 through
20 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1998-2986
Application No. 08/344,390
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