Ex Parte Warnez et al

Patent Trial and Appeal Board

Feb 9, 2017

14182519 (P.T.A.B. Feb. 9, 2017)

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.
14/182,519 02/18/2014 Dimitri Warnez 81546349US02 4437
65913 7590
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
TRUONG, THANHNGA B
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIMITRI WARNEZ
and CLEMENS ORTHACKER
Appeal 2016-007158
Application 14/182,519
Technology Center 2400
Before THU A. DANG, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, and 4—9, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2016-007158
Application 14/182,519
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
personalizing a secure element. See generally Spec. 1. Claim 1 is
exemplary:
1. A method for enabling a personalized service comprising:
storing, in a secure element, an application, wherein the secure
element is a non-transitory computer-readable medium;
loading, in the secure element, secure credentials into the application,
wherein the secure credentials are not tied to any user of the secure element;
receiving, in the secure element, a request for a subscription to a
service corresponding to the application from a specific user; and
creating, in the secure element, a link between the secure credentials
in the secure element and the specific user after receiving the request for the
subscription from the specific user.
References and Rejections
Claims 1,2, and 4—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koh (US 2012/0130838 Al, May 24, 2012) and Yin (US
8,898,751 B2, Nov. 25,2014).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Koh teaches “loading. . .
secure credentials into the application, wherein the secure credentials are
not tied to any user of the secure element, . . . creating, in the secure
element, a link between the secure credentials in the secure element and the
specific user after receiving the request for the subscription from the specific
2
Appeal 2016-007158
Application 14/182,519
user,” as recited in independent claim 1 (emphasis added).1 See App. Br. 5—
6; Reply Br. \-A.
The Examiner cites Koh’s Figure 1A and paragraphs 72 and 73 for
teaching the italicized claim limitation. See Final Act. 3; Ans. 2—3. We
have reviewed the cited Koh portions, and they do not teach or suggest
“loading. . . secure credentials into the application, wherein the secure
credentials are not tied to any user of the secure element, . . . creating, in the
secure element, a link between the secure credentials in the secure element
and the specific user after receiving the request for the subscription from the
specific user,” as required by the claim (emphasis added). Absent further
explanation from the Examiner, we do not see how the cited Koh portions
teach or even suggest the disputed claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Each of independent claims 5 and 7 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 5 and
7. Therefore, for similar reasons, we reverse the Examiner’s rejection of
independent claims 5 and 7.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2, 4, 6, 8, and 9.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal 2016-007158
Application 14/182,519
DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, and 4—9.
REVERSED
4