Ex Parte Pugliese

Board of Patent Appeals and Interferences

Oct 20, 2008

10693470 (B.P.A.I. Oct. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIERLUIGI PUGLIESE
____________

Appeal 2008-3710
Application 10/693,470
Technology Center 2600
____________

Decided: October 20, 2008
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Before MAHSHID D. SAADAT, SCOTT R. BOALICK,
and JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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Application 10/693,470

STATEMENT OF THE CASE
Appellant invented a method for ascertaining the state of a mobile
communication device (e.g., a mobile phone) by sending specific
information from the mobile device to a service center. Specifically, data is
collected on individual components and/or procedures embedded within the
mobile device and transmitted to the service center.1 Claim 1 is illustrative:
1. A method of ascertaining a state of a mobile communication
apparatus, comprising:

collecting data on at least one of individual components and
procedures embedded within said mobile communication apparatus, based
on status quo information derived therefrom, on a subscriber information
module (SIM) card; and

radio transmitting said data from said mobile communication
apparatus via said radio network to which said mobile communication
apparatus is affiliated to a service center.

The Examiner relies on the following prior art references to show
unpatentability:
Zhang US 2001/0049263 A1 Dec. 6, 2001
Hiltunen US 2004/0042604 A1 Mar. 4, 2004
(filed Sep. 6, 2001)
Raivisto US 2004/0075675 A1 Apr. 22, 2004
(filed Oct. 17, 2002)

1. Claims 1-6 and 10-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhang and Hiltunen (Ans. 3-6).2

1 See generally Spec. ¶¶ 0002, 0009.
2 Although this rejection relies on Zhang and Hiltunen, the Examiner refers
to Raivisto in the body of the rejection (Ans. 3). The Examiner and
Appellant, however, acknowledge that this is a typographical error (Ans. 7-
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2. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Zhang, Hiltunen, and Raivisto (Ans. 6-7).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

The Rejection Over Zhang and Hiltunen
Regarding representative claim 1,4 Appellant argues that the prior art
fails to teach or suggest using a Subscriber Information Module (SIM) card
to collect data on at least one individual component or procedure embedded
within a mobile communication apparatus based on status quo information
as claimed. According to Appellant, not only does the combination of
references fail to teach or suggest this limitation, there is no motivation to
combine the references to arrive at the claimed invention as the Examiner
proposes (App. Br. 6-10; Reply Br. 2-3).

8; Reply Br. 2). Accordingly, we presume that the Examiner intended to
refer to Hiltunen—not Raivisto—in this rejection.
3 We refer to (1) the Appeal Brief filed January 18, 2007; (2) the Examiner’s
Answer mailed July 26, 2007; and (3) the Reply Brief filed September 20,
2007 throughout this opinion.
4 Appellant argues independent claims 1 and 13 together as a group, and
does not separately argue dependent claims 2-6, 10-12, and 14-25 with
particularity. See App. Br. 6-10. Accordingly, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).
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The Examiner acknowledges that the base reference, Zhang, does not
disclose a SIM card as claimed, but relies on Hiltunen for this teaching. The
Examiner emphasizes that Hiltunen’s SIM card is not a passive memory
card, but a processor card: a card that stores, among other things, data and
software used by a microprocessor to monitor or modify the phone’s
operation. This function of Hiltunen’s SIM card, the Examiner contends,
instructs the processor to collect and provide component data to the
microprocessor for monitoring purposes. The Examiner adds that there is
ample motivation to combine this teaching with Zhang so that information
contained on the SIM can be transferred from one portable phone to another
(Ans. 8-15).

The Rejection Over Zhang, Hiltunen, and Raivisto
Regarding representative claim 7,5 Appellant argues that Raivisto
does not cure the deficiencies of Zhang and Hiltunen, and that Raivisto, like
Hiltunen, is not directed to the problem of identifying and gathering data on
and providing solutions for problems in mobile phones (App. Br. 11-12).
While Appellant acknowledges that Raivisto uses a SIM card to collect data,
Appellant contends that Raivisto does not teach or suggest that a SIM card
can be provisioned or programmed to collect data on at least one individual
component or procedure embedded within the mobile communication
apparatus based on status quo information as claimed (App. Br. 12).
Appellant also argues that there is no motivation or suggestion to combine

5 Appellant argues claims 7-10 together as a group. See App. Br. 11-13.
Accordingly, we select claim 7 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).
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the references’ teachings to arrive at the claimed invention (App. Br. 12;
Reply Br. 3).

ISSUES
The issues before us, then, are:
(1) whether Appellant has shown that the Examiner erred in finding
that the collective teachings of Zhang and Hiltunen teach or suggest the
disputed limitations of representative claim 1, namely using a SIM card to
collect data on at least one individual component or procedure embedded
within a mobile communication apparatus based on status quo information
as claimed; and
(2) whether Appellant has shown that the Examiner erred in
combining the collective teachings of Zhang, Hiltunen, and Raivisto to
arrive at the invention of representative claim 7.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Zhang discloses a mobile station monitoring system that (1)
accumulates performance and error data in each mobile station 110, and (2)
transmits this data to a central location. To this end, the performance and
error data is transmitted via transmission signals 140 to a cellular network
120. The cellular network, in turn, transmits this information via
transmission signal 150 to a service center or home base of the service
provider 130 (Zhang, ¶ 0024; Abstract; Fig. 1).
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2. As shown in Figure 3, each mobile station 110 includes a number
of modules 300: (1) a maintenance task module 310; (2) a call processing
module 320; (3) a user interface 330; (4) a memory management module
340; and (5) an “other task” module 350. The maintenance task module
manages operation for the other modules when in maintenance mode
(Zhang, ¶ 0031; Fig. 3).
3. During use, each module 320, 330, 340, and 350 recognizes any
internal errors and transmits these errors to the maintenance task module 310
via transmission signals 322, 332, 342, and 352, respectively (Zhang, ¶
0033; Fig. 3).
4. Upon receipt, the maintenance task module 310 analyzes each of
these errors and transmits error information to the memory management
module 340 which maintains the appropriate performance and error data
logs (Zhang, ¶ 0035; Fig. 3).
5. During use, the maintenance task module monitors the
performance and error data logs in the memory management module. At an
appropriate time, the maintenance task module (1) retrieves the processing
and error data information from the memory management module; (2)
prepares the information for transmission; and (3) notifies the call
processing module that the information is ready for transmission (Zhang, ¶¶
0037-38).
6. After the maintenance task module provides the performance and
error information to the call processing module, the call processing module
transmits the information to the service center 130 for processing (Zhang, ¶¶
0039, 0041).
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7. Hiltunen discloses a radio telephone 206 with a transceiver 1,
microprocessor 4, and a SIM card holder 10 (memory module receiver)
contained within a handset (Hiltunen, ¶¶ 0032-33; Fig. 14).
8. In Hiltunen, a SIM card 208 is mounted in the SIM card holder 10.
The SIM card stores various subscriber related data or applications
including, among other things, function control information (Hiltunen, ¶
0033-36; Figs. 2 and 14).
9. Hiltunen’s SIM card is not a passive memory card. Rather, it is
also a processor card that includes a memory and a facility for internally
processing information. As such, data on the SIM card can be used by the
microprocessor to control, modify, or monitor the phone’s operation
(Hiltunen, ¶ 0033-36; Figs. 2 and 14).
10. Raivisto discloses a mobile device/terminal with a service panel
302 that enables a particular service to be activated via the panel. When a
service is activated, various actions can be initiated including a content
download (Raivisto, ¶ 0026, 0036, 0044; Figs. 3, 4).
11. Raivisto teaches statically provisioning a mobile terminal 508 by
configuring the terminal via a SIM card 502 or other removable memory
cards (Raivisto, ¶ 0048; Fig. 5).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
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Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007), explains:
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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1741 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Representative Claim 1
Based on the collective teachings of Zhang and Hiltunen noted in the
Findings of Fact section above, we find no error in the Examiner’s
obviousness rejection of representative claim 1 based on those collective
teachings.
First, we agree with the Examiner that Zhang discloses every
limitation of claim 1 except for collecting the data on a SIM card (FF 1-6).
In Zhang, the performance and error data for that particular mobile station
are collected and logged in the memory management module (FF 4). This
information fully meets “data on at least one of individual components and
procedures embedded within [the] mobile communication apparatus” as
claimed. Furthermore, Zhang transmits this collected data from the mobile
device to a service center (FF 1, 5, 6)—a feature that likewise fully meets
the limitation recited in the second main clause of claim 1.
We see no reason why a SIM card, such as that disclosed by Hiltunen
(FF 7-8), could not be used in Zhang’s system. As the Examiner indicates,
Hiltunen’s SIM card is not a passive memory card: it has significant
processing functionality that is used to, among other things, monitor the
phone’s operation (FF 9). Providing such a capability in conjunction with
the error and performance data logging capabilities of the memory
management module and/or the maintenance task module of Zhang would
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have been tantamount to the predictable use of prior art elements according
to their established functions—an obvious improvement. See KSR, 127
S. Ct. at 1740.
In our view, using a SIM card in conjunction with the memory
management and/or maintenance task modules in Zhang would, at a
minimum, enable the performance and error data and associated
functionality to be transferred from one similar device to another via the
SIM card—a predictable result. We therefore find the Examiner’s rejection
based on these collective teachings amply evidences articulated reasoning
with rational underpinning to support the legal conclusion of obviousness.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2-6 and 10-25
which fall with claim 1.

Representative Claim 7
We will also sustain the Examiner’s rejection of claim 7 based on the
collective teachings of Zhang, Hiltunen, and Raivisto. First, the Examiner
cited Raivisto merely to show that radio transmitting data during an
initializing menu procedure as claimed in claim 7 is well known in the art
(Ans. 6). Appellant did not persuasively rebut the Examiner’s findings in
this regard — findings based on specific identified passages from Raivisto.
Appellant’s argument that Raivisto does not teach or suggest that a
SIM card can be provisioned or programmed to collect data on at least one
individual component or procedure embedded within the mobile
communication apparatus based on status quo information as claimed (App.
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Br. 12) is simply not germane to the reason why the Examiner cited the
reference in the rejection. In any event, the collective teachings of Zhang
and Hiltunen amply teach that disputed limitation as we indicated
previously.
In short, Appellant has simply not shown error in the Examiner’s
reliance on Raivisto for the specific limitations of claim 7. Raivisto
discloses a mobile device/terminal with a service panel that enables a
particular service to be activated via the panel. When a service is activated,
various actions can be initiated including a content download (FF 10). The
Examiner’s reliance on this disclosure as suggesting performing radio
transmitting during an initializing menu procedure, at a minimum, has at
least a rational basis that is unrebutted on this record.
Moreover, since Raivisto pertains to transmitting data in connection
with a mobile terminal, we find Raivisto’s teachings constitute analogous art
and reasonably are combinable with Zhang and Hiltunen. That Raivisto
teaches statically provisioning a mobile terminal 508 by configuring the
terminal via a SIM card 502 or other removable memory cards (FF 11) only
bolsters this conclusion.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 8 and 9 which fall
with claim 7.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-6 and 10-25 under § 103 over the collective teachings of Zhang and
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Hiltunen. Nor has Appellant shown that the Examiner erred in rejecting
claims 7-9 under § 103 over the collective teachings of Zhang, Hiltunen, and
Raivisto.

DECISION
The Examiner’s decision rejecting claims 1-25 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)(1)(iv).

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AFFIRMED

eld

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