Ex Parte Hiltunen et al

Board of Patent Appeals and Interferences

Jan 28, 2008

10363742 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MISKIA HILTUNEN and HEIKKI TUOMINEN
_____________

Appeal 2007-2752
Application 10/363,742
Technology Center 2600
______________

Decided: January 28, 2008
_______________

Before ANITA PELLMAN GROSS, ROBERT E. NAPPI, and MARC S. HOFF,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 6(b) (2002) of the final
rejection of claims 1 through 19. We affirm.

INVENTION

The invention is directed to a portable radio phone system where one device
can make use of the Subscriber Identification Module (SIM) in another device
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without removing the SIM. See pages 1 and 2 of Appellants’ Specification. Claim
1 is representative of the invention and reproduced below:
1. A system comprising a first device and a second device having an
electronic data card associated therewith, information on the electronic data
card being usable by and accessible by the first device; a wireless link for
enabling communication between the first device and the second device;
wherein the first device is arranged to control the operating characteristics of
the electronic data card of the second device via the wireless link.

REFERENCES

Ritter US 6,859,650 B1 Feb. 22, 2005
Beaujard US 6,557,753 B1 May 6, 2003
Hohle US 6,101,477 Aug. 8, 2000

REJECTIONS AT ISSUE
Claims 1, 6 through 13, and 16 through 181 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Ritter. The Examiner’s rejection is set forth on
pages 3 and 4 of the Answer.
Claims 2, 3, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ritter in view of Beaujard. The Examiner’s rejection is set forth
on pages 5 and 6 of the Answer.

1 The statement of the rejection only includes claims 1 and 11 through 13; however
the analysis supporting the rejection identifies claims 6 through 10 and 16 through
18 as being included in the rejection. Appellants’ Brief, page 9 also identifies that
claims 16 through 18 are included in the anticipation rejection based upon Ritter.
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Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ritter in view of Hohle. The Examiner’s rejection is set forth on
page 6 of the Answer.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ritter in view of Beaujard and Hohle. The Examiner’s rejection is set forth
on pages 7 and 8 of the Answer.

Throughout the opinion, we make reference to the Brief (received September
19, 2006), Reply Brief (received February 13, 2007), and the Answer (mailed
December 13, 2006) for the respective details thereof.

ISSUES
Rejection under 35 U.S.C. § 102(e) based upon Ritter.
Appellants’ arguments on pages 10 and 11 of the Brief, directed to the
claims rejected under 35 U.S.C. § 102(b) as being anticipated by Ritter, address the
claims as one group (i.e., Appellants’ arguments do not address the individual
claims separately). Thus, in accordance with 37 C.F.R. § 41.37 (c)(1)(vii) we
group claims 1, 6 through 13, and 16 through 18 together and select claim 1 as
representative of the group.
Appellants contend, on pages 10 and 11 of the Brief, that the Examiner’s
rejection of claim 1 is in error. Appellants reason that Ritter teaches two way
transmission of data and programs to or from a chip card in a mobile apparatus, but
that Ritter does not teach that the first device is arranged to control the operating
characteristics of the electronic data card of a second device. Brief 10. Appellants
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assert that operating characteristics are different than data. Brief 11. Appellants
further state:
[O]ne skilled in the art would understand that controlling the "operating
characteristics of the electronic data card" as claimed would be controlling
how the electronic data card "operates" or functions. This understanding
that the "invention is directed [to] how the data card functions rather than the
content of the information read to or from the data card” is clarified in the
specification in lines 11-20 on page 2 of the specification:
Some examples of the operating characteristics that may be
controlled by the first device are: the power supply of the
electronic data card (e.g. power up/down, voltage etc); the
resetting of the electronic data card; the clock rate of the
electronic data card; the baud rate of the electronic data card;
the stopping of the clock to the electronic data card; this can
also be viewed as the operational characteristics of the card
reader associated with the electronic data card. The operating
characteristics relate to the operation/function of the electronic
data card... This invention is directed [to] how the data card
functions rather than the content of the information read to
or from the data card.

Reply Brief 2.
Thus, Appellants’ contentions directed to the Examiner’s anticipation
rejection based upon Ritter present us with the issue of whether the Examiner erred
in finding that Ritter teaches a first device arranged to control the operating
characteristics of the electronic data card of a second device via the wireless link as
claimed.

Rejection under 35 U.S.C. § 103(a) based upon Ritter in view of Beaujard.
Appellants’ arguments on pages 12 and 13 of the Brief directed to the claims
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ritter in view of
Beaujard address the claims as one group. While Appellants’ arguments do
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identify the individual claims, they merely identify the limitations of each claim.
Such statements are not considered separate arguments under 37 C.F.R. § 41.37
(c)(1)(vii). Thus, we group claims 2, 3, 14, and 15 together and select claim 2 as
representative of the group.
Appellants contend that the Examiner’s rejection is in error for the same
reasons discussed above with respect to the rejection of claim 1. Further,
Appellants argue that while Beaujard discloses commands such as switching a card
on or off, “nothing in Beaujard discloses any of the features of claims 2-3 or 14-15
wherein the operating characteristics are controlled via a wireless link.” Brief 12.
Additionally, on page 13 of the Brief, Appellants assert that the Examiner’s
rejection lacks motivation provided by either Ritter or Beaujard to combine the
references.
Thus, Appellants’ contentions directed to the rejection based upon Ritter in
view of Beaujard present us with the same issue discussed with respect to claim 1
and, in addition, whether Beaujard teaches that the additional limitation of
representative claim 2 is an obvious modification of Ritter.

Rejection under 35 U.S.C. § 103(a) based upon Ritter in view Hohle
Appellants’ arguments on pages 13 through 16 of the Brief directed to the
claims rejected under 35 U.S.C. § 103(a) as being unpatentable over Ritter in view
of Hohle address the claims in one group. While Appellants’ arguments do
identify the individual claims they merely identify the limitations of each claim,
such statements are not considered separate arguments under 37 C.F.R. § 41.37
(c)(1)(vii). Thus, we group claims 4 and 5 together and select claim 5 as
representative of the group.
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Appellants contend that the Examiner’s rejection is in error for the same
reasons discussed above with respect to the rejection of claim 1. Further,
Appellants argue that while Hohle discloses physical connections for a clock,
“nothing in Hohle discloses any of the features of claims 4-5 wherein the operating
characteristics are controlled via a wireless link.” Brief 14. Appellants argue that
the disclosure of connections for a clock does not disclose, teach, or suggest
altering a clock rate or baud rate of an electronic data card. Additionally, on page
15 of the Brief, Appellants assert that the Examiner’s rejection lacks the motivation
provided by either Ritter or Hohle to combine the references.
Thus, Appellants’ contentions directed to the rejection based upon Ritter in view of
Hohle present us with the same issue discussed with respect to claim 1 and, in
addition, whether Beaujard teaches that the additional limitation of representative
claim 5 is an obvious modification of Ritter.

Rejection under 35 U.S.C. § 103(a) based upon Ritter in view of Beaujard
and Hohle.
Appellants argue on page 15 of the Brief that “for at least the reasons listed
above with respect to independent claims 1 and 11-13, Applicants submit that
Ritter does not teach, disclose or suggest at least this feature [changing the
operating characteristic of a card from another device] of independent claim 19.”
Appellants argue that Beaujard and Hohle do not make up for this argued
deficiency. Further, on page 16 of the Brief, Appellants argue that the Examiner
has not presented proper motivation to combine the references as discussed with
respect to the other rejections under 35 U.S.C. § 103(a).
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Thus, Appellants’ contentions with respect to the rejection of claim 19
present the same issues as presented with respect to the other rejections based upon
35 U.S.C. § 103(a).
FINDINGS OF FACT
1. Ritter teaches a system with a mobile device (i.e. telephone),
including a SIM chip card which has data processing means which stores
information including data identifying a subscriber in a GSM mobile radio
network. The telephone has a wireless interface, separate from the GSM
system, through which the SIM card can communicate. Abstract.
2. Ritter’s system allows the two way transmission of data and programs
to or from the chip card in the telephone. Col. 2, ll. 61-64; col. 7, l. 65- col.
8, l. 9.
3. Ritter teaches that the data on the SIM card may include an amount of
money, and that the wireless interface may be used to interact with a point of
sale (POS) device. Col. 9, ll. 7-20.
4. Ritter describes the point of sale transaction as one where a) the POS
transmits an amount of money to be deducted from the SIM card, b) the SIM
card saves the transmitted amount, c) the SIM card executes a routine so that
the amount to be paid is indicated on the display of the apparatus, and d)
when the user agrees to the charge by pressing a key to acknowledge the
charge, the SIM card transmits a confirmation command to the POS
terminal. Col. 9, ll. 24-40.
5. Beaujard teaches a mobile device, telephone, which includes two
smart cards. Abstract.
6. Beaujard teaches that one of the commands that can be applied to a
smart card is to turn off. Col. 2, ll. 43-44, col. 3, ll. 58-60.
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7. Hohle teaches a smart card which can integrate travel related
applications into one card. Abstract.
8. Hohle teaches that one of the commands that can be issued to a card is
a reset. Col. 25, ll. 27-29.
9. Another command Hohle teaches can be issued to the card is to
modify the baud rate. Col. 26, ll. 25-30.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in
a claim ‘is not to be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d
1343, 1348, (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053 (Fed. Cir. 1989)).
However, the Examiner need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84,
(Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, (Fed. Cir. 2004) and our
decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005).
On the issue of obviousness, the Supreme Court has recently stated that
“[t]he obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741 (2007). Further, the Court stated “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
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than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1739 (2007).
When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason, if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. . . . [A] court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.

Id. at 1740. “One of the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of the invention a known
problem for which there was an obvious solution encompassed by the patent’s
claims.” Id. at 1742.
ANALYSIS
Rejection under 35 U.S.C. § 102(e) based upon Ritter.
Appellants’ arguments have not persuaded us that the Examiner erred in
rejecting representative claim 1. Claim 1 recites “wherein the first device is
arranged to control the operating characteristics of the electronic data card of the
second device via the wireless link.” Appellants assert that we should interpret the
term “operating characteristics” as limited to “how the electronic data card
‘operates’ or functions.” Reply Brief 2. We note that the examples given in
Appellants’ Specification of these operations or functions includes not just settings
which control operations (e.g. setting baud rate) but also commands that control
operation (i.e. initiating a power down or a reset). Thus, we find that in the context
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of the claim, the scope of the limitation “control[ling] the operating characteristics”
includes controlling the electronic data card to execute commands.
We find that Ritter teaches a system where a device can control the SIM
card in another device. Fact 4. Ritter’s system makes use of a wireless link
between the two devices to execute this control. Facts 1 and 3. Ritter teaches that
the system can be used to transfer data and programs. Fact 2. We find that one
skilled in the art would recognize, based upon Ritter’s disclosure of the operation
with the POS terminal, that the data or programs transferred do control an
operating characteristic of the SIM card. In the example of the POS terminal, the
transmission of a sum of money to be deducted from the SIM card (step a of Fact
4) is an event that changes how the electronic data card is operating or functioning
in that it causes (commands) the SIM card to execute operations to prompt the user
(steps c and d of Fact 4). Thus, we find that Ritter teaches the first device (for
example the POS terminal) is arranged to control the operating characteristics of
the electronic data card of the second device via the wireless link. Appellants’
arguments have not persuaded us that the Examiner erred. We therefore affirm the
Examiner’s rejection of claims 1, 6 through 13, and 16 through 18.

Rejection under 35 U.S.C. § 103(a) based upon Ritter in view of Beaujard.

Appellants’ arguments have not persuaded us that the Examiner erred in
rejecting representative claim 2. Claim 2 is dependent upon claim 1 and recites
“wherein the first device is operable to control the power supply to the electronic
data card.” Thus, the scope of claim 2 includes that the operating characteristic
controlled includes the power supply to the card (i.e. whether the card is on or off).
As discussed supra, we find that Ritter teaches the first device (for example, the
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POS terminal) is arranged to control the operating characteristics of the electronic
data card of the second device via the wireless link. Ritter does not discuss that
one of the commands issued to the electronic data card is to turn off. However, we
find that Beaujard teaches that one of the commands issued to a data card can be to
turn on or off. Fact 6. We note that Appellants’ argument, that the rejection does
not provide motivation from Ritter and Beaujard, is not persuasive as the Supreme
Court has stated that obviousness cannot be confined to the concept of motivation.
Rather, we must look to see if the claim is a combination of familiar elements. KSR
Int’l Co. v. Teleflex Inc., at 1739 (2007). In this case, Beaujard teaches that it was
known in the art that one of the commands that can be given to devices with data
cards is to turn the data card on or off. In combination with Ritter, this merely
provides another command which can be executed, with the predicable result of
allowing the card to be turned on or off. Thus, we consider the combination to
have been obvious as it is nothing more than the combination of familiar elements
that yields predictable results. In summary, we find that Ritter teaches the first
device (for example, the POS terminal) is arranged to control the operating
characteristics of the electronic data card of the second device via the wireless link;
Beaujard teaches the additional limitation of representative claim 2; and the
combination would have been obvious as it would yield predictable results. Thus,
Appellants’ arguments have not persuaded us that the Examiner erred. We
therefore affirm the Examiner’s rejection of claims 2, 3, 14, and 15.

Rejection under 35 U.S.C. § 103(a) based upon Ritter in view of Hohle
Appellants’ arguments have not persuaded us that the Examiner erred in
rejecting representative claim 5. Claim 5 is dependent upon claim 1 and recites
“wherein the first device is operable to change the baud rate of the electronic data
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card in the second device.” We note that Appellants’ arguments address the “clock
rate” limitation of claim 4. However, as discussed supra, Appellants’ arguments
directed to this rejection group claims 4 and 5, and we select claim 5, which does
not contain the clock rate limitation. As such, Appellants’ arguments directed to
Hohle’s teachings concerning clock rate are moot as they are not commensurate in
scope with the representative claim.
As discussed supra, we find that Ritter teaches that the first device (for
example, the POS terminal) is arranged to control the operating characteristics of
the electronic data card of the second device via the wireless link. Ritter does not
discuss that one of the commands issued is a command to adjust the baud rate of
the data card. Hohle teaches that it was known in the art that one of the commands
that can be given to devices with data cards is to adjust the baud rate of the data
card. Fact 9. In combination with Ritter, this merely provides another command
which can be executed, with the predicable result of allowing the baud rate of the
data card to be adjusted. Thus, we consider the combination to have been obvious
as it is nothing more than the combination of familiar elements that yields
predictable results. In summary, we find that Ritter teaches that the first device
(for example, the POS terminal) is arranged to control the operating characteristics
of the electronic data card of the second device via the wireless link; Hohle teaches
the additional limitation of representative claim 5; and the combination would have
been obvious as it would yield predictable results. Thus, Appellants’ arguments
have not persuaded us that the Examiner erred. We therefore affirm the Examiner’s
rejection of claims 4 and 5.

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Rejection under 35 U.S.C. § 103(a) based upon Ritter in view of Beaujard
and Hohle.
Appellants’ arguments have not persuaded us that the Examiner erred in
rejecting claim 19. As discussed supra, we find that Ritter teaches the first device
(for example, the POS terminal) is arranged to control the operating characteristics
of the electronic data card of the second device via the wireless link. Further, as
discussed supra, the combination of Beaujard and Hohle is nothing more than the
combination of familiar elements that yields predictable results. Thus, Appellants’
arguments have not persuaded us that the Examiner erred. We therefore affirm the
Examiner’s rejection of claim 19.
CONCLUSION

Appellants’ arguments have not persuaded us of error in the Examiner’s
rejections of claims 1, 6 through 13, and 16 through 18 under 35 U.S.C. § 102(e)
and claims 2 through 5, 15, and 19 under 35 U.S.C. § 103(a).

DECISION

The Examiner’s decision to reject claims 1, 6 through 13, and 16 through 18
under 35 U.S.C. § 102(e) and claims 2 through 5, 14, 15, and 19 under 35 U.S.C.
§ 103(a) is affirmed.
The decision of the Examiner is affirmed. 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. § 1.136(a)(1)(iv).
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AFFIRMED

eld

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