11161051 (P.T.A.B. Mar. 17, 2015)

Ex Parte Sela

Patent Trial and Appeal BoardMar 17, 2015

11161051 (P.T.A.B. Mar. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/161,051 07/21/2005 Yossy Sela US.MPG.001 2050 59301 7590 03/18/2015 YOSSY SELA 39 SHESHET HAYAMAMIM JERUSALEM, 97804 ISRAEL EXAMINER HUYNH, CHUCK ART UNIT PAPER NUMBER 2644 MAIL DATE DELIVERY MODE 03/18/2015 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 YOSSY SELA ____________ Appeal 2012-005793 Application 11/161,051 Technology Center 2600 ____________ Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner twice rejecting claims 1–19 and 21–25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally “to a gateway device and methods that enable communication between a mobile phone (MP) and a second communication network.” Spec. ¶ 4. Appeal 2012-005793 Application 11/161,051 2 Claim 1 is illustrative: 1. A mobile phone gateway apparatus for providing wireless communication capabilities through at least second communication network in accordance with at least second communication protocol, to a mobile phone operative on at least first communication network in accordance with at least first communication protocol, said mobile phone gateway comprising: means for protocol conversion between at least said first protocol and said second protocol; means for data/signaling communication between said mobile phone gateway and said mobile phone through an electrical signaling transmission medium; means for controlling and wrapping SIM (subscriber identification module) functionalities, said SIM functionalities provided to said mobile phone and to said mobile phone gateway by one or more SIM card logics, said SIM card logics may be the same or different. Appellant appeals the following rejections: 1 R1. Claims 1–8, 10–12, 14, 17–19, and 21–25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zehavi (US 6,990,082 B1, Jan. 24, 2006) and Laurila (US 6,591,116 B1, July 8, 2003); R2. Claims 9 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zehavi, Laurila, and Kuisma (US 6,259,929 B1, July 10, 2001); and R3. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zehavi, Laurila, and Kirkup (US 7,076,239 B2, July 11, 2006). 1 The Examiner indicates that claim 20 would be allowable if it includes all of the limitations of the base claim and any intervening claims (see Ans. 27). Appeal 2012-005793 Application 11/161,051 3 Claim Groupings Based on Appellant’s arguments in the Appeal Brief, we will decide the appeal on the basis of claim 1, as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). ANALYSIS Claims 1–19 and 21–25 Issue: Did the Examiner err in finding that the combined cited art, particularly Laurila, teaches and or suggests means for controlling and wrapping SIM functionalities and SIM functionalities provided to the mobile phone and to the mobile phone gateway, as set forth in claim 1? Appellant contends that “‘knowing the capabilities’ of a SIM is not a ‘SIM functionality’ as disclosed and claimed in the present application” (App. Br. 15). Appellant further contends that “Laurila’s ‘BS’ 30/Zehavi’s Gateway 100 neither controls nor wraps the SIM functionalities, as the mobile device/‘controller’ 18 has full control and direct access to the SIM functionalities” (App. Br. 17). Additionally, Appellant contends that “the mobile device treats ‘BS’ 30/Zehavi’s Gateway as the network side and therefore, does not provide access to SIM functionalities unless authentication succeeds. But this means that ‘BS’ 30/Zehavi’s Gateway neither controls nor wraps SIM functionalities” (App. Br. 17). We disagree with Appellant’s contentions. We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Appeal 2012-005793 Application 11/161,051 4 Specifically, the Examiner finds: In response, Examiner respectfully disagree[sic] and would like to point out that due to the broadness of the claim language, said SIM functionalities provided to said mobile phone and gateway merely means that information regarding the SIM functionalities are provided to said mobile and mobile phone gateway. Appellant seems to be implying that the mobile and the gateway can use the functionalities of the SIM, which the claim does not clearly disclose nor clarify what functionalities entail. Even if the claim is read that way, Laurila still reads on the fact that the functionality of the SIM can be used by the mobile device and gateway, because a SIM functionally communicates with the mobile device and the gateway for example during authentication. Ans. 21. Here, the Examiner interprets, and we agree, that the claimed said SIM functionalities provided to said mobile phone and to said mobile phone gateway “merely is the communication of said capabilities of the SIM to the mobile device and gateway” (Ans. 23). Contrary to Appellant’s contentions, the language of claim 1 does not require that the SIM functionalities themselves be directly accessed or used by the mobile phone gateway (see claim 1). Claim 1 requires that the SIM functionalities be provided to the mobile phone and mobile phone gateway. We find that this recitation reads on any one of providing a list of functionalities, providing information about the functionalities, providing the functionalities via a controller of the mobile phone, etc. Consistent with our interpretation, Laurila discloses “methods and apparatus for enabling the network 32 or 32’ to obtain information about the capabilities of the SIM/USIM 28” (col. 6, ll. 13–15). Further, although Appellant’s contend that “the mobile device treats ‘BS’ 30/Zehavi’s Gateway as the network side and therefore, does not Appeal 2012-005793 Application 11/161,051 5 provide access to SIM functionalities unless authentication succeeds” (see App. Br. 17), we find that providing SIM functionalities after authentication still provides SIM functionalities to the gateway, albeit after an initial step of authentication success. So, in essence, Appellant admits that the combined references teach providing SIM functionalities to the mobile phone and mobile phone gateway. Additionally, we agree with the Examiner that many of Appellant’s contentions are not commensurate with the scope of the claims (see Ans. 25– 27). For at least these reasons, we are not persuaded the Examiner erred in finding that the cited art discloses the invention as recited in independent claim 1 and in commensurately recited independent claim 19, not separately argued. Therefore, the Examiner did not err in rejecting claims 1–19 and 21–25 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s § 103(a) rejections of claims 1–19 and 21– 25. 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). AFFIRMED msc