Ex Parte Wang

Patent Trial and Appeal Board

Jul 13, 2016

11183199 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111183,199 07/15/2005
15093 7590 07115/2016
Kilpatrick Townsend & Stockton/Qualcomm
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Eugene Wang
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.
143127 (899534) 9046
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
ipefiling@kilpatricktownsend.com
ocpat_uspto@qualcomm.com
qcomins t@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE WANG 1
Appeal2014-005302
Application 11/183,199
Technology Center 2600
Before JEAN R. HOMERE, JASON V. MORGAN, and JOHN R. KENNY,
Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
T , 1 , • 1mroaucnon
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-21. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies Hewlett-Packard Development Company, LP, a
wholly-owned affiliate of Hewlett-Packard Company having HPQ Holdings,
LLC, as the general or managing partner, as the real party in interest. App.
Br. 2.
Appeal2014-005302
Application 11/183,199
Invention
Appellant's invention relates to a mobile device that performs
localization and customization using update packages retrieved from a
subscriber identification module (SIM)/Smart card in the mobile device or
downloaded from a content server or a device management (DM) server.
Abstract.
Exemplary Claims
Claims 1, 4) 6, 7, and 12, reproduced below with key limitations
emphasized, are exemplary:
1. A device manufactured to be operated in a network in a first
locale, the device capable of being modified to be operated at a
second locale, the device comprising:
code configured to operate the device in the network in
the first locale;
a programmed card that is one of a SIM card or a
Smartcard, the programmed card configured to operate the
device in the second locale;
wherein the device retrieves [a] localization code
associated with the second locale from the programmed card
when the device is activated for the first time at the second
locale; and
wherein the device updates the code using the
localization code in order to modify the device from being
operational at the first locale to being operational at the second
locale.
4. The device of claim 2 wherein the device retrieves a
reference to the localization code from the programmed card
when the device is activated for the first time at the second
locale and subsequently downloads the localization code using
the reference.
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6. The device of claim 1 wherein the localization code updates
the code of the device from being configured to operate in the
first locale with a first language to being configured to operate
in the second locale with a second language.
7. A method of localization of a mobile device that is
configured to operate in a first country and is communicatively
coupled to a management server, the method comprising:
detecting, at the mobile device, that the mobile device is
being used in a second country that is different than the first
country in which the mobile device is configured to operate;
in response to the detecting, the mobile device retrieving
from a server a localization update package associated with the
second country;
incorporating, by a management client in the mobile
device, the localization update package in order to change
software and firmware in the mobile device from being
operational in the first country to being operational m the
second country; and
reporting, by the management client, a status to the
management server.
12. A device management server, comprising:
a processor communicatively coupled to a mobile device,
wherein the mobile device includes code that configures the
mobile device for use in a first locale or a first country, the
processor operating to:
determine that the mobile device is being used in a
second locale or a second country;
provide the mobile device with a localization
update package associated with the second locale or the
second country where the mobile device is being used;
and
instruct the mobile device to install the localization
update package in order to change the mobile device
from being configured to operate in the first locale or the
first country to being configured to operate in the second
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locale or the second country where the mobile device is
being used.
Rejections
The Examiner rejects claims 1, 2, 4---6, and 12-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Jeal (US 2007/0226805 Al; Sept. 27,
2007), Okkonen (US 2004/0166839 Al; Aug. 26, 2004), and Griesmer (US
5,878,124; Mar. 2, 1999). Final Act. 4--11.
The Examiner rejects claims 7-9 under 35 U.S.C. § 103(a) as being
unpatentable over Jacobi (US 2004/0226008 Al; Nov. 11, 2004) and
Griesmer. Final Act. 11-13.
The Examiner rejects claims 3, 20, and 21under35 U.S.C. § 103(a) as
being unpatentable over Jeal, Jacobi, Okkonen, and Griesmer. 2 Final Act.
14--15.
The Examiner rejects claims 10 and 11under35 U.S.C. § 103(a) as
being unpatentable over Jacobi, Jeal, and Griesmer. 3 Final Act. 15-16.
2 The Examiner does not list Okkonen and Griesmer in the statement of the
rejection for claims 3, 20, and 21. Final Act. 14. However, claim 3 depends
from claim 2 while claims 20 and 21 depend from claim 12. The Examiner
rejects both claims 2 and 12 as being obvious over Jeal, Okkonen, and
Griesmer. Final Act. 4. Thus, the Examiner should have identified
Okkonen and Griesmer in the statement of the rejection for dependent claims
3, 20, and 21. Appellant does not raise this as an issue (App. Br. 19), and we
hold this typographical error harmless.
3 The Examiner does not list Griesmer in the statement of the rejection for
claims 10 and 11. Final Act. 15. However, these claims depend from claim
8, which the Examiner rejects as being obvious over Jacobi and Griesmer.
Id. at 11, 13. Thus, the Examiner should have identified Griesmer in the
statement of the rejection for dependent claims 10 and 11. Appellant does
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ISSUES
1. Did the Examiner err in finding the combination of Jeal, Okkonen,
and Griesmer teaches or suggests: ( 1) "wherein the device retrieves [a]
localization code associated with the second locale from the programmed
card when the device is activated for the first time at the second locale" and
(2) "wherein the device updates the code using the localization code in order
to modify the device from being operational at the first locale to being
operational at the second locale," as recited in claim 1?
2. Did the Examiner err in finding the combination of Jeal, Okkonen,
and Griesmer teaches or suggests "wherein the device retrieves a reference
to the localization code from the programmed card when the device is
activated for the first time at the second locale and subsequently downloads
the localization code using the reference," as recited in claim 4?
3. Did the Examiner err in finding the combination of Jeal, Okkonen,
and Griesmer teaches or suggests "wherein the localization code updates the
code of the device from being configured to operate in the first locale with a
first language to being configured to operate in the second locale with a
second language," as recited in claim 6?
4. Did the Examiner err in finding the combination of Jacobi and
Griesmer teaches or suggests: (1) "detecting, at the mobile device, that the
mobile device is being used in a second country that is different than the first
country in which the mobile device is configured to operate" and (2) "in
response to the detecting, the mobile device retrieving from a server a
not raise this as an issue (App. Br. 19), and we hold this typographical error
harmless.
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localization update package associated with the second country," as recited
in claim 7?
5. Did the Examiner err in finding the combination of Jeal, Okkonen,
and Griesmer teaches or suggests "determin[ing] that the mobile device is
being used in a second locale or a second country," as recited in claim 12?
ANALYSIS
Claims 1-3 and 5
In rejecting claim 1, the Examiner finds Jeal's use of a SIM card for
storage of programs and data, in combination with Okkonen's determination
that a SIM card has changed and Griesmer's use of home country
information a smart card, teaches or suggests: (1) wherein a device retrieves
a localization code associated with a second locale from a programmed
card when the device is activated for the first time at the second locale and
(2) wherein the device updates code (configured to operate the device in a
network in a first locale) usim.! the localization code in order to modifv the
/ L.J J~
device from being operational at the first locale to being operational at the
second locale. Final Act. 4--5 (citing, e.g., Jeal i-fi-132-38; Okkonen Abstract;
Griesmer Abstract, col. 1, 11. 30-51, col. 2, 11. 3-19, and col. 4, 11. 39-59).
Appellant contends the Examiner erred because "Jeal expressly
teaches re-registering a SIM when the device moves to another country."
App. Br. 12; see also Reply Br. 2-3. Appellant argues that Jeal "never
retrieves [a] localization code from the SIM card so the device can use the
localization code to update the code .... " App. Br. 13. Appellant similarly
argues that Okkonen's and Griesmer's teachings and suggestions are "very
different from claim 1 which recites the device retrieves [a] localization code
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'from the programmed card' so the device can use the localization code to
update the code .... " Id.
Appellant's arguments, as they relate to Jeal individually, are
unpersuasive because they fail to address the Examiner's reliance on
Griesmer' s use of home country data obtained from a card. See Griesmer
col. 1, 11. 46-49. Moreover, as the Examiner correctly finds, Jeal teaches or
suggests obtaining data from SIM 12, rather than merely re-registering the
SIM. Ans. 18 (citing Griesmer i-f 48).
Appellant's arguments, as they relate to Okkonen and Griesmer, are
unpersuasively conclusory. In particular, Appellant does not persuasively
distinguish the claimed retrieval of a localization code from Griesmer's use
of home country data obtained from a smart card.
We further note that although claim 1 recites retrieving a localization
code from the programmed card when the device is activated for the first
time at the second locale, claim 1 does not require that the device have
ascertained that it is at a second locale. Nor does claim 1 limit the claimed
retrieval to occur only when the device is activated at a second locale. Thus,
a reasonably broad interpretation of the claimed invention, in light of the
Specification, encompasses a device that retrieves a localization code (e.g.,
Griesmer's home country information) from the programmed card when the
device happens to be activated for the first time at a second locale (e.g.,
when a SIM card is newly inserted, per Okkonen, before activating the
device for the first time at a second locale).
For these reasons, we agree with the Examiner that the combination of
Jeal, Okkonen, and Griesmer teaches or suggests: (1) "wherein the device
retrieves [a] localization code associated with the second locale from the
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Application 11/183,199
programmed card when the device is activated for the first time at the second
locale" and (2) "wherein the device updates the code using the localization
code in order to modify the device from being operational at the first locale
to being operational at the second locale," as recited in claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2 and 5, which Appellant does not argue separately.
App. Br. 13. Appellant does not provide additional arguments with respect
to claim 3. Id. at 19. Therefore, we also sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 3.
Claim 4
In claim 4, rather than merely retrieving a localization code from the
programmed card, as recited in claim 1, a reference to the localization code
is retrieved and the localization code itself is retrieved through a download
using the reference. In rejecting this claim, the Examiner finds Jeal's use of
authentication information on a SIM teaches or SUQJ.!ests wherein a device ._,._,
retrieves a reference to a localization code from a programmed card when
the device is activated for the first time at a second locale and subsequently
downloads the localization code using the reference. Final Act. 9 (citing
Jeal iii! 32-35). That is, the Examiner finds that the cited portions of Jeal
teach or suggest the retrieval of a reference to data for the download of data,
thus, modifying the combined teachings and suggestions of Jeal, Okkonen,
and Griesmer (which otherwise teach or suggest retrieval and use of a
localization code in the manner of independent claim 1 ).
Appellant contends the Examiner erred because "the device in J eal
was already configured to operate in these plural networks .... Such a
download is not needed since the device in Jeal is configured to operate in
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the network." App. Br. 14. Appellant's arguments, however, fail to show
error in the Examiner's finding that Jeal teaches or suggests the claimed
retrieval and use of a reference to data for the download of data. Moreover,
Appellant's arguments do not persuasively distinguish the claimed download
(i.e., a retrieval) and use of a localization code from the retrieval and the use
of data such as Griesmer' s home country information, as discussed above.
Therefore, we agree with the Examiner that the combination of Jeal,
Okkonen, and Griesmer teaches or suggests "wherein the device retrieves a
reference to the localization code from the programmed card when the
device is activated for the first time at the second locale and subsequently
downloads the localization code using the reference," as recited in claim 4.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 4.
Claim 6
In rejecting claim 6, the Examiner finds that Jeal, by teaching a
"device registered to [a] network, management or transaction manager
wherein [a] transmission of the SIM is extracted from [the] SIM and allows
a management session to take place between [the] device and [the]
network," teaches or suggests wherein a localization code updates code of a
device from being configured to operate in a first locale with a first
language to being configured to operate in a second locale with a second
language. Final Act. 9-10 (citing Jeal i-f 41--48).
Appellant contends the Examiner erred because, rather than teaching
or suggesting "[a] localization code [that] updates the code of the device
from being configured to operating in the first locale with a first language to
being configured to operate in the second locale with a second language"
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(App. Br. 14--15), the cited portions of Jeal merely "relate to authenticating a
PC or a user in order to access content at a secure web page" (id. at 15).
We agree with Appellant that the Examiner erred. In particular, the
Examiner provides insufficient findings or explanation showing that the
cited portions of Jeal relate to the configuration of a device in first and
second languages. See, e.g., Ans. 16-20. The Examiner also does not show
that Okkonen or Griesmer cures this deficiency in Jeal. Therefore, the
Examiner's findings do not show the combination of Jeal, Okkonen, and
Griesmer teaches or suggests "wherein the localization code updates the
code of the device from being configured to operate in the first locale with a
first language to being configured to operate in the second locale with a
second language," as recited in claim 6.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 6.
Claims 7-11
In rejecting claim 7, the Examiner finds Jacobi's updating of a mobile
handset firmware/software based upon information contained in at least one
update package retrieved from a server teaches or suggests detecting, at a
mobile device, that the mobile device is being used in a second country that
is different than a first country in which the mobile device is configured to
operate. Final Act. 12 (citing Jacobi i-f 48). The Examiner finds Griesmer's
reading of home country information from a smart card teaches or suggests
in response to the detecting, the mobile device retrieving from a server a
localization update package associated with the second country. Final Act.
7 (citing Griesmer col. 1, 11. 45-51, col. 4, 11. 18-22 ).
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Appellant contends the Examiner erred because the cited paragraph of
Jacobi merely "teaches a server that includes firmware/software updates for
a mobile handset," while Griesmer merely teaches "that when a caller inserts
a smart card into a phone, the caller's home country information is read from
the card." App. Br. 17-18.
We agree with Appellant that the Examiner erred. As Appellant
correctly notes, Griesmer's teaches or suggests reading home country
information when a caller inserts a smart card. See App. Br. 17-18 (citing
Griesmer col. 1, 11. 45-51, col. 4, 11. 18-22). However, the Examiner's
findings do not show that Griesmer, even in combination with Jacobi,
teaches or suggests retrieving home country information in response to
detecting that a mobile device is being used in the second country, rather
than merely in response to a caller inserting a smart card. See Final Act. 12;
Ans. 20. Therefore, the Examiner's findings do not show the combination of
Jacobi and Griesmer teaches or suggests: (1) "detecting, at the mobile
device, that the mobile device is being used in a second country that is
different than the first country in which the mobile device is configured to
operate" and (2) "in response to the detecting, the mobile device retrieving
from a server a localization update package associated with the second
country," as recited in claim 7.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 7, and claims 8 and 9, which are similarly rejected. The
Examiner's findings do not show that Jeal cures the noted deficiency of
Jacobi and Griesmer. Therefore, we also do not sustain the Examiner's 35
U.S.C. § 103(a) rejections of claims 10 and 11.
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Application 11/183,199
Claims 12-21
In rejecting claim 12, the Examiner finds Griesmer's reading of home
country information from a smart card teaches or suggests determining that
a mobile device is being used in a second locale or a second country. Final
Act. 7 (citing Griesmer col. 1, 11. 45-51, col. 4, 11. 18-22).
Appellant contends the Examiner erred because Griesmer merely
teachings reading home country information when a caller inserts a smart
card, rather than determining that the mobile device is being used in a
second locale or a second country. App. Br. 16 (citing Griesmer col. 1, 11.
45-51, col. 4, 11. 18-22).
We agree with Appellant that the Examiner erred. The Examiner
provides insufficient findings or explanation showing that insertion of a
smart card, and the detection thereof, teaches or suggests determining where
a mobile device is being used. See, e.g., Final Act. 7; Ans. 21. The
Examiner also does not show Jeal or Okkonen cure the noted deficiency of
Griesmer. Therefore, the Examiner's findings do not show the combination
of Jeal, Okkonen, and Griesmer teaches or suggests "determin[ing] that the
mobile device is being used in a second locale or a second country," as
recited in claim 12.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 12, and claims 13-19, which contain the disputed
recitation. Furthermore, the Examiner does not show Jacobi cures the noted
deficiency of Jeal, Okkonen, and Griesmer. Therefore, we also do not
sustain the Examiner's 35 U.S.C. § 103(a) rejection of claims 20 and 21.
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DECISION
We affirm the Examiner's decision rejecting claims 1-5.
We reverse the Examiner's decision rejecting claims 6-21.
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.
§ 41.50(±).
AFFIRMED-IN-PART
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