Qiang Li et al.

Patent Trials and Appeals Board

Sep 16, 2019

15399085 - (D) (P.T.A.B. Sep. 16, 2019)

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.
15/399,085 01/05/2017 Qiang Li 4015-9778 / P42119-US2 1708
24112 7590 09/16/2019
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
AUNG, SAI
ART UNIT PAPER NUMBER
2416
MAIL DATE DELIVERY MODE
09/16/2019 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 QIANG LI and JUSTUS PETERSSON
____________

Appeal 2018-006883
Application 15/399,0851
Technology Center 2400
____________

Before JOHN A. EVANS, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, 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 1–18, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Telefonaktiebolaget L M Ericsson (publ) as the real
party in interest. App. Br. 2.

Appeal 2018-006883
Application 15/399,085

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STATEMENT OF THE CASE
Introduction
The present invention relates to “methods and devices of a
communication network for managing subscriptions for wireless connection
of a radio device having an embedded Universal Integrated Circuit Card
(eUICC).” Spec. ¶ 2. Claim 1 is exemplary:
1. A method performed by a card embedded in a radio
device in a communication network, the method comprising:
storing a fall-back policy based on a fall-back policy
message received from a connectivity service platform that is
separate from the radio device and in the communication
network;
receiving, from the connectivity service platform, an
event message indicating disablement, deactivation, or
termination of a subscription of the radio device with a network
operator, the event message being received from the
connectivity service platform via a wireless network connection
of the subscription; and
responsive to determining that the radio device will lose
the wireless network connection of the subscription due to the
disablement, deactivation, or termination, obtaining a different
wireless network connection for the radio device using a
different subscription in order to fall back in accordance with
the stored fall-back policy.

Appeal 2018-006883
Application 15/399,085

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References and Rejection2
Claims 1–18 are rejected under 35 U.S.C. § 103 as being unpatentable
over Bienas (US 2010/0062779 A1; published March 11, 2010) and Lisak
(US 2014/0370886 A1; published December 18, 2014). Final Act. 7–21.3

ANALYSIS4
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 the cited portions of Bienas
teach “receiving, from the connectivity service platform, an event message
indicating disablement, deactivation, or termination of a subscription of the
radio device with a network operator,” as recited in independent claim 1
(emphasis added). See App. Br. 9–10.
It is well established that during examination, claims are given their
broadest reasonable interpretation consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art, but without importing limitations from the
specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters.,

2 Throughout this opinion, we refer to the (1) Final Office Action dated
September 22, 2017 (“Final Act.”); (2) Appeal Brief dated February 20,
2018 (“App. Br.”); (3) Examiner’s Answer dated May 30, 2018 (“Ans.”);
and (4) Reply Brief dated June 13, 2018 (“Reply Br.”).
3 The Examiner cites pre-AIA 35 U.S.C. § 103(a) for the rejections, but the
correct basis for the rejections is 35 U.S.C. § 103. We note Appellants do
not contend the discrepancy caused prejudice.
4 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to reach the additional arguments.
Appeal 2018-006883
Application 15/399,085

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Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, the Specification does not
specifically define the claimed “network operator.”
The Examiner maps the claimed “network operator” to Bienas’s
Home Node B (HNB). See Final Act. 8; Ans. 8. Bienas explains Home
Node B (HNB) is a type of Node B base station:
“Node B” mobile communication network element is a
base transceiver station that typically contains radio frequency
transmitters and receivers used to communicate directly with
mobile devices, such as mobile telephones, that move freely
within a communication range of one or more such Node B
base stations. A type of Node B base station, known as a
“Home Node B” (HNB) may soon be added to many mobile
communication networks. A “Home Node B” is a modified
Node B, for use in buildings or home environments, in order to
increase the in-building coverage of the network. A typical use
for such a I-Home Node B may be, for example, in the home or
apartment of a mobile phone user. The user would use a
broadband (possibly wired) network connection, such as a
conventional digital subscriber line (DSL) connection to
connect a Home Node B to his operator’s core network.
Bienas ¶ 1 (emphasis added).
Because Bienas’s Home Node B (HNB) is a type of Node B base
station (Bienas ¶ 1), we agree with Appellants that one skilled in the art
would not understand the HNB to be a network operator. See App. Br. 9–
10. As a result, the Examiner fails to provide sufficient evidence or
explanation to support the rejection, and we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Each of independent claims 8, 9, and 18 also recites a “network
operator.” See claims 8, 9, and 18. Therefore, for similar reasons, we
reverse the Examiner’s rejection of independent claims 8, 9, and 18.
Appeal 2018-006883
Application 15/399,085

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We also reverse the Examiner’s rejection of corresponding dependent
claims 2–7 and 10–17.

DECISION
We reverse the Examiner’s decision rejecting claims 1–18.

REVERSED