Ex Parte Urbanek

Patent Trials and Appeals Board

Jun 20, 2019

14060719 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,719 10/23/2013
28003 7590 06/24/2019
SPRINT
6391 SPRINT PARKWAY
KSOPHTOI01-Z2100
OVERLAND PARK, KS 66251-2100
FIRST NAMED INVENTOR
Robert E. Urbanek
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IDF 9327 (4300-35600) 8353
EXAMINER
LAFONTANT, GARY
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
06/24/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
6450patdocs@sprint.com
steven.j.funk@sprint.com
SprintMail@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. URBANEK
Appeal2018-000170
Application 14/060, 719 1
Technology Center 2600
Before JEAN R. HOMERE, HUNG H. BUI, and MICHAEL M. BARRY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-5, 7-12, and 16-20, which are all
the claims pending in the application. App. Br. 6. Claims, 6, and 13-15
have been canceled. Claims App'x. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART. 3
1 According to Appellant, Sprint Communications Company L.P. is the real
party in interest. App. Br. 4.
2 Appellant inaccurately indicates that no claim has been canceled. App. Br.
6.
3 Our Decision refers to Appellant's Appeal Brief filed April 20, 2017
("App. Br."); Reply Brief filed October 4, 2017 ("Reply Br."); Examiner's
Answer mailed August 28, 2017 ("Ans."); Final Office Action mailed
Appeal2018-000170
Application 14/060, 719
STATEMENT OF THE CASE
Appellant's invention relates to methods and systems for provisioning
and/or customizing a mobile device. Spec. ,r 20. After the mobile device is
purchased, customization content ( e.g., graphics, images, audio files,
customer service numbers, messaging platforms and IP addresses) is used to
complete provisioning and/or activation processes on the mobile device. Id.
The provisioning process is initiated when a provisioning payload including:
(1) instructions; and (2) one or more file locators, is delivered to the mobile
device. Spec. ,r,r 20-21.
According to Appellant, "[b ]y accessing customization content via the
file locator, the amount of content that is included in the provisioning
payload, and therefore the size of the provisioning payload, may be reduced"
and "the transfer time of the provisioning payload may be reduced." Id.
,r 21. Customization content is downloaded from a remote location to the
mobile device, and is then used to complete the provisioning process so as to
enable, and change branding of the mobile device as well as re branding and
customization activities. Spec. ,r,r 23, 25, and 26.
Claims 1, 3-5, 7-12, and 16-20 are pending on appeal. Claims 1, 11,
and 17 are independent. Claims 1 and 17 are illustrative of Appellant's
invention, as reproduced below with the disputed limitation in italics:
1. A method for provisioning a mobile device
perfr1rmed by a processor of the mobile device, comprising:
during an initial set-up of the mobile device after the
mobile device is purchased by a user and before the mobile
device is provisioned, wirelessly receiving a provisioning
payload in accordance ,vith open mobile alliance device
January 26, 2017 ("Final Act."); and original Specification filed October 23,
2013("Spec.").
2
Appeal2018-000170
Application 14/060, 719
management protocol) [ l] the provisioning payload
comprising at least one jUe locator and provisioning
instructions for use in an provisioning process of the mobile
device to cornplete an initial provisioning q(the mobile device
to enable the rnobi!e device to operate on a 1vireless netvvork
associated ivirh a wireless seri.,ice pro-vider and an initial
branding (?{ the mobile device to a wireless sen>ice brand of
the ivireless service provider:
[2] during the provisioning process of the mobile de1'ice:
accesshH! a remote!v hosted location based on the at
1_. ••·
l C' • ·1 n .· '"'' r::1 C' 1 ·-- •. -1 n ,. d cClS1 ... Ile l c uca ... J, an
downloading, to the mobile device, at least a pmiion of
branding content corresponding to the wireless service brand
of the wireless service provider from the remote1y hosted
location based on the at least one file locator, the at least the
portion of the branding content referenced by the at least one
file locator comprising one or more of a graphic) an image) an
audio file, a splash screen~ an opening screen, a background,
or a ring tone for the wireless service brand of the wireless
service provider; and
completing the initial provisioning of the mobile device
enabling the mobile device to operate on the wireless network
by adjusting settings ofthe mobile device stored in the mobile
device and completing the initial branding of the mobile
device to the wireless service brand of the wireless service
provider using the provisioning payload inc1uding the
provisioning instmctions and the downloaded one or more of
the graphic, the image1 the audio file, the splash screen, the
opening screen, the background, or the ring tone for the
wireless service brand of the wireless service provider
accessed and downloaded based on the at least one file focator
in the provisioning payload.
App. Br. 30 (Claims App.).
3
Appeal2018-000170
Application 14/060, 719
17 A method fi..)r customizing a mobile device ,.__.
performed by a processor of the mobile device, comprising:
during an initial set-up of the mobile device after the
mobile device is purchased by a user and before the mobile
device is provisioned, receiving a provisioning payload in
accordance with open mobile aHiance device management
protocol, [1] the provisioning payload cornprising [i] a first
.file locator, [ii] a second .file locator, and provisioning
instn1ctions for use in an provisioning process of the mobile
device to complete an initial provisioning ofthe mobile device
to enable the mobile device to operate on a wireless network
associated with a vvireless service provider and an initial
branding of the mobile device to a ,vireless service brand of
the wireless service provider;
during the provisioning process q/the mobile device:
[2] accessing pre-loaded branding content based on
the first file locator, 1 .. vherein the first file locator directs to
one or more pre-loaded branding content if.ems on the mobile
device, and ivherein the pre- loaded branding content
referenced by the first file locator is associated with a
1,vireless service brand cf the vvire!ess sen>ice provider;
accessing a remotely hosted location based on the
second file locator; and
downloading. to the mobile device, branding content
..,_)/ , t.,..,,
corresponding to the wireless service brand of the wireless
service provider from the remotely hosted location based on
the second file locator~ the branding content referenced by the
second file locator comprising one or more of a graphic, an
image, an audio file, a spfash screen, an opening screen1 a
background. or a ringtone for with the wireless service brand
.._, / l_,
of the ,vireless service provider; and completing the initial
provisioning of the mobile device enabling the mobi1e device
to operate on the wire1ess network by adjusting settings of the
mobile device stored in the mobile device; and
4
Appeal2018-000170
Application 14/060, 719
completing the initial branding of the mobile device to the
wireless service brand of the wireless service .provider using
<..,
the provisioning payload including the provisioning
instructions) the pre-loaded branding content accessed based
on the first file locator in the provisioning paylowJ) and the
down 1oaded one or more of the graphic, the image1 the audio
file, the splash screen, the opening screen, the background, or
the ring tone for the wireless service brand of the vvire1ess
<...·
service provider accessed and downloaded based on the
second file locator in the provisioning payload.
App. Br. 35 (Claims App.).
Evidence Considered
Knowles et al. ("Knowles") US 2011/0208865 Al Aug. 25, 2011
Wadhwa et al. ("Wadhwa") US 2012/0030512 Al Feb.2,2012
Siu et al. ("Siu") US 2010/0311391 Al Dec. 9, 2010
Baek et al. ("Baek") KR 2006/039974 A May 10, 2006
Natarajan et al. ("Natarajan") US 2008/0155275 Al June 26, 2008
Suri US 8,855,012 Bl Oct. 7, 2014
Examiner's Rejections
(1) Claims 1, 3-5, 7-9, and 17-20 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Knowles, Wadhwa, and Siu.
Final Act. 10-28.
(2) Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Knowles, Wadhwa, Siu, and Baek. Final Act. 28-29.
(3) Claims 11 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Knowles, Wadhwa, Siu, and Natarajan. Final Act. 29-38.
(4) Claim 12 stands rejected under 35 U.S.C. § 103 as being
5
Appeal2018-000170
Application 14/060, 719
unpatentable over Knowles, Wadhwa, Siu, Natarajan, and Suri. Final Act.
38-39.
ANALYSIS
35 U.S.C. § 103(a): Claims 1, 3-5, 7-9, 11, and 16
In support of the obviousness rejection of claims 1 and 11, the
Examiner finds Knowles' system and method for provisioning a remote
resource for an electronic device (i.e., mobile device) discloses most aspects
of Appellant's claimed invention, including the disputed limitations:
the provisioning payload comprising at least one file locator
and provisioning instructions for use in an provisioning
process of the mobile device to complete an initial
provisioning of the mobile device to enable the mobile
device to operate on a wireless network associated with a
wireless service provider and an initial branding of the
mobile device to a wireless service brand of the wireless
service provider;
during the provisioning process of the mobile device:
accessing a remotely hosted location based on the at least one
file locator.
See App. Br. 10-11 (citing Spec. ,r,r 4, 20, 21, 23, 37, 41, 46); Final Act. 11-
12 (citing Knowles ,r,r 40-41, 99, 104, Figs. 4, and 7B).
In particular, the Examiner finds Knowles teaches "provisioning
payload" by disclosing "data transmission through data packets" that
includes "text information about the resource and the access information
may be a link to a web page associated with the resource." See App. Br. 22;
Final Act. 11 ( citing Knowles ,r,r 5-6, 10, 23 and 40). According to the
Examiner, "[t]he provisioning method in Knowles is similar as the
application in term of directing the mobile device with a set of provisioning
6
Appeal2018-000170
Application 14/060, 719
instruction[ s] that the device can process and look for further provisioning
data" and "provisioning in Knowles is done remotely through remote web
sites provided in some form of text with embedded web links." Ans. 6
( citing Knowles ,r,r 48, 64, and 72) ( emphasis omitted).
Appellant acknowledges Knowles is directed to "provisioning/
updating a resource (e.g., a help application) to an electronic [mobile] device
based on a data transmission once the mobile device is provisioned." App.
Br. 19 (citing Knowles ,r,r 38, 40, 44, and 101-104). However, Appellant
argues: (1) Knowles does not disclose a remotely hosted location is
accessed based on a link during a provisioning process of the mobile device
because Knowles only teaches that "resource is accessed after the electronic
[mobile] device is provisioned and in response to a user navigating to a
menu option associated with a help resource;" (2) "the provisioning
discussed in Knowles in conjunction with the data transmission is merely the
provisioning of a resource, not the provisioning of the mobile device itself;"
and (3) Knowles merely teaches that a data transmission can be "created and
provided" responsive to detection of new devices to the network, but does
not teach data transmission in terms of accessing a remotely hosted location.
App. Br. 19-21 ( emphasis omitted). In addition, Appellant argues that
"timing and context recited in the pending claims are important and different
than in Knowles," and that "resource is accessed [in Knowles] after the
electronic device is provisioned and in response to a user navigating to a
menu option associated with a help resource." Reply Br. 5 ( emphasis
omitted).
We do not find Appellant's arguments persuasive. For example,
Knowles discloses that data packet is received during an initial set-up of the
7
Appeal2018-000170
Application 14/060, 719
mobile device, shown in Figure 7 A, as reproduced below with additional
markings for illustration.
700
Start 702
'-------·----------------
ave any triggers
occurred to send a
data packet for the
resource
704
y
N
~
ild a new data packet containing
access and text information 706
~ - .. ~ .......... ..
Provide the data packet to the
communication network for
transmission to device 708
Fig. 7A
. .
L),1.,~-.~~·"-···,'- ~.,, ~·~"-· \' •••L<"{~L~.l.~~
Knowles' Figure 7 A shows a flow chart of provisioning dynamic resources
through a central server for a mobile device when providing a data packet
relating to a resource to the mobile device.
As shown in Knowles' Figure 7 A, "[a]fter the server has been
activated at step 702, it monitors its trigger conditions to determine whether
a trigger condition has been activated to generate and send a data packet at
step 704." Knowles ,r 104 (emphasis omitted). According to Knowles, new
data packets are transmitted when trigger conditions are met, e.g., access
8
Appeal2018-000170
Application 14/060, 719
parameter has changed or a new device has been detected. Id. Further,
Knowles teaches that an addition trigger "that initiated upon startup of
device 10 is 'Device Not Yet Provisioned."' Id. ( emphasis omitted). That
is, new data packets are transmitted to the mobile device that has not been
provisioned to allow the mobile device to be provisioned by accessing the
contexts within the new data packets during the provisioning process. The
timing of the data packets during the initial set-up to enable the mobile
device to operate on a wireless network is more evident as Knowles teaches
a scenario where the service record, i.e., data packet is received from a
registration server when "device ... is delivered to a user" and "[a]fter
obtaining the device, the user enables the communication system of the
device" so that the "communication system detects the presence of at least
one of the networks 36 and uses the stored address of the registration server
34 to send a registration request to the registration server." Knowles ,r 85
( emphasis omitted). Therefore, the received service record is not used to
update resources, but is rather used to provision mobile device itself.
Resources extracted from the data packet are associated with a service
provider, and thus, would enable the device to operate on the wireless
network associated with the wireless service provider. Knowles ,r,r 9, 90,
and 94. Moreover, when the mobile device is enable to operate within a
wireless service provider network, accessing resources brands the mobile
device with a wireless service brand (e.g., ATT, Sprint, or Verizon) of the
wireless service provider as recited in Appellant's claims.
In addition, Knowles also teaches that a data packet includes
collection of parameters such as URL and descriptive text associated with
each external resource. Knowles ,r 87. The descriptive text is described as
9
Appeal2018-000170
Application 14/060, 719
"[a]ny particular information required by device on how to access resource
32." Knowles ,r 49 (emphasis omitted). Therefore, the descriptive text
included in each data packet as described by Knowles teaches "provisioning
instructions for use in a provisioning process of the mobile device," as
recited in Appellant's claims. The descriptive text and URL in the data
packet are extracted and displayed so that the mobile device can retrieve the
website information and fetch the information from the server. Knowles ,r
105. As such, Knowles' data packets are used to access a remotely hosted
location, i.e., server to access resources.
For these reasons, Appellant's arguments have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner's obviousness
rejection of claims 1 and 11, and dependent claims 3--4, 7, 10, and 16 argued
solely based on their dependency. App. Br. 21, and 27-28.
Claim 5
With respect to claim 5, the Examiner finds Knowles teaches the
disputed limitation: "the customization content delivered in the provisioning
payload comprises a customer service number" because "the customer
service number is just an information among the other information provided
and does not have any weight on the functionality of the method." Id. at 31,
(Claims App.). Regardless, the Examiner concludes such information would
have been obvious to a skilled artisan because Knowles teaches that "the
content of the provision which can be any type of info including custom data
that can be used to streamline the process," including "customization content
such as providing a customer service number." Ans. 9 ( citing Knowles ,r,r
40, 54).
10
Appeal2018-000170
Application 14/060, 719
We find the Examiner's position reasonable. Knowles teaches
"resources may relate to general help information and specific help
information for specific application." Knowles ,r,r 44, 67. The customer
service is help information.
For these reasons, Appellant's arguments have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner's obviousness
rejection of claim 5.
Claim 8
With respect to claim 8, the Examiner finds Knowles teaches
"wherein the downloading is completed incrementally" and "wherein the at
least the portion of the branding content is prioritized and downloaded in
priority order." Final Act. 18 (citing Knowles ,r,r 26, 76, 81-84, 87, and Fig.
7B (step 722)).
Appellant contends that although the cited paragraphs of Knowles
discuss priority/ranking, "the priority/ranking in Knowles is merely with
respect to presentation of information within a GUI." Reply Br. 12; App.
Br. 25.
We agree with Appellant. Knowles teaches:
When two or more service records 38 are received by [mobile]
device 10, the prioritization protocol, if implemented, ranks the
service records 38 according to a preset ranking scheme.
Following the scheme, the presentation arrangement in the GUI
for the received and extracted links from the service records
may be presented in an order reflecting the ranking.
Knowles ,r 82 ( emphasis omitted). In other words, although the service
records are prioritized, Knowles does not disclose that the service records
are "downloaded in priority order" as recited in Appellant's claim 8. For
11
Appeal2018-000170
Application 14/060, 719
this reason, we do not sustain the Examiner's obviousness rejection of
claim 8.
Claim 9
With respect to claim 9, the Examiner finds Knowles teaches
"downloading is only partially completed when the mobile device is
connected to the network via a roaming connection" based on a premise that:
(1) "content can get downloaded from different resource points and new
communication network connection required new data packet" (Final Act.
19 (citing Knowles ,r,r 26; Steps 714 and 716 of Pig. 7)); and (2) Knowles's
"mobile device can roam from one network to another network and
download information as provided." Ans. 11; Knowles ,r 105. Appellant
argues that "recent appearance of the device to a communication network
associated with the resource" disclosed in Knowles "does not necessarily
mean that the device is connected to the communication network via a
roaming connection." App. Br. 26 (emphasis omitted) (citing Knowles ,r
26). Appellant also argues that "[ w ]hile Knowles may discuss roaming to a
new carrier, Knowles does not disclose that any downloading is only
partially completed when the device is connected to a network via a roaming
connection." Reply Br. 14.
We agree with Appellant. Even if Knowles' s mobile device can roam
from one network to another network and can download information,
Knowles does not teach or suggest "downloading is only partially completed
when the mobile device is connected to the network via a roaming
connection" as recited in Appellant's claim 9. For this reason, we do not
sustain the Examiner's obviousness rejection of claim 9.
12
Appeal2018-000170
Application 14/060, 719
35 U.S.C. § 103(a): Claim 12
In support of the obviousness rejection of claim 12, the Examiner
finds the combination of Knowles, Wadhwa, Siu, and Suri teaches all the
claim limitations. Final Act. 38-39. In particular, the Examiner finds Suri
teaches the disputed limitations: "returning the mobile device to factory
default settings, wherein the branding content persists in the carrier memory
partition of the mobile device through the return to factory default settings"
recited in Appellant's claim 12. Id. (citing Suri 16:22-26). The Examiner
also finds "Suri teaches that default configuration and backup data are
maintained in a device even after factory default is restored." Ans. 14--15.
Appellant argues that although Suri may discuss restoring factory
defaults, Suri does not disclose that disputed limitation because "Suri does
not disclose that any content persists in the mobile device after the mobile
device is returned to the factor default/backup and default configuration,
much less that branding content persists in a carrier memory partition of the
mobile device after the mobile device is returned to factory default settings."
Reply Br. 16 ( emphasis omitted); App. Br. 28.
We do not agree with Appellant. Suri teaches that default
configuration and backup of the system configuration are maintained and
restored based on the input from the connected devices. Suri 16:22-26.
This system configuration enables the mobile device to upload the data to
pre-configured web servers or trigger notifications. Suri 12:58---63. Because
the system configuration enables the mobile device to access the network,
the system configuration is related to configuration that enable the mobile
device to be compatible to the service provider and its network. That is, the
system configuration includes branding contents, and configuration options
13
Appeal2018-000170
Application 14/060, 719
and operating information serve as resources that identify the service
provider. Knowles ,r,r 9, 65, 90, and 94. Therefore, Suri in combination
with Knowles teaches the disputed limitation recited in Appellant's claim
12.
For these reasons, we sustain the Examiner's obviousness rejection of
claim 12.
35 U.S.C. § 103(a): Claims 17-20
In support of the obviousness rejection of claim 17, the Examiner
finds the combination of Knowles, W adhwa, and Siu teaches all the claim
limitations. Final Act. 19-26. In particular, the Examiner finds Knowles
teaches most aspects of Appellant's claimed method including the disputed
limitations: "the provisioning payload ... compris[ing] a first file locator, a
second file locator" and "during the provisioning process of the mobile
device[,] ... accessing pre-loaded branding content based on the first file
locator[], ... wherein the first file locator directs to one or more pre-loaded
branding content items on the mobile device[,] ... and wherein the pre-
loading content []referenced by the first file locator is associated with a
wireless service brand .... of the wireless service provider." Final Act. 20-
22 (citing Knowles ,r,r 10, 18, 26, 40, 43, 49, 68, 76, 81, and 84).
Appellant argues Knowles does not disclose these disputed limitations
because Knowles: (1) does not disclose that both the first access
information and the second access information are provided in the same data
transmission; (2) does not disclose "any access information directs to pre-
loaded content (much less pre-loaded branding content) on the mobile
device;" and (3) does not disclose "pre-loaded help information is branding
14
Appeal2018-000170
Application 14/060, 719
content associated with a wireless service brand of a wireless service
provider." App Br. 22-23.
In response, the Examiner takes the position that Knowles teaches a
"second resource that can be provided to a [mobile] device through other
server or text information" and that "[i]f a resource can be provided through
web link data, multiple one also can be specified for the device to process
and access their related server." Ans. 7. Further, the Examiner finds that
Knowles also teaches "pre-loaded data on the [mobile] device that may be
access through trigger event." Id.
We do not agree with the Examiner. Appellant's claim 17 recites,
inter alia: "provisioning payload comprising a first file locator, a second file
locator, and provisioning instructions" and that the first file locator is used to
access "pre-loaded branding content" on the mobile device while the second
file locator is used to access "a remotely hosted location."
As recognized by the Examiner, Knowles discloses maintaining some
resources on the mobile device while accessing some resources remotely, i.e.
"some local resources managed by an embodiment may be stored locally on
[mobile] device 10 []additional resources 32 may be accessed remotely from
[mobile] device 10." Knowles ,I49 (emphasis omitted). However, when
data packet is received from the [remote] server, Knowles discloses that the
data packet includes parameters such as "an URL and descriptive text
associated with each external resource 32." Knowles ,r 87 (emphasis
omitted). That is, received information, whether in the form of a link or text,
is only used to access the external resources. Such a link or text does not
point to the resource stored locally on the mobile device. Further, even
though Knowles teaches that resources 32 are associated with two different
15
Appeal2018-000170
Application 14/060, 719
data elements, i.e., "remote resource 32 typically has at least two data
elements associated with it in device 10: access information for the resource;
and any ancillary text that is to be displayed through the GUI for the
resource 32," Knowles does not teach or suggest that such data elements are
both file locators that are provided in the same data packet. Knowles ,r,r 71-
74 (emphasis omitted). As such, Knowles does not teach or suggest the
disputed limitation recited in Appellant's claim 17.
For these reasons, we do not sustain the Examiner's obviousness
rejection of claim 17, and dependent claims 18-20 argued based on their
dependency. App. Br. 23-24.
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 8-9 and 17-20 under 35 U.S.C. § 103(a),
but has not demonstrated the Examiner erred in rejecting claims 1, 3-5, 7,
11-12, and 16 under 35 U.S.C. § 103(a).
DECISION
As such, we affirm the Examiner's Final Rejection of claims 1, 3-5, 7,
10-12, and 16 under 35 U.S.C. § 103(a) and reverse the Examiner's Final
Rejection of claims 8-9 and 17-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
16