Sanjeev K. Singh et al.

Patent Trials and Appeals Board

May 18, 2020

2018008363 (P.T.A.B. May. 18, 2020)

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.
15/085,685 03/30/2016 Sanjeev K. Singh 4100-817412-US 2827
114592 7590 05/18/2020
Nokia Technologies Oy
C/O Davidson Sheehan LLP
6836 Austin Center Blvd.
Suite 320
Austin, TX 78731
EXAMINER
GAO, JING
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
Nokia.IPR@nokia.com
docketing@ds-patent.com
nokia@ds-patent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANJEEV K. SINGH and THOMAS WOO
____________

Appeal 2018-008363
Application 15/085,685
Technology Center 2600
____________

Before MARC S. HOFF, JENNIFER L. McKEOWN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest
as Alcatel-Lucent USA, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates generally to
wireless communication systems and, more particularly, to smart cards
implemented in wireless communication systems.” Spec. ¶ 1.2 The
Specification explains that “[a] first smart card in a first wireless
communication device receives a first profile that indicates a subscription to
provide wireless connectivity to a user,” and “[t]he first profile is a copy of
at least a portion of a second profile previously established by the user and
stored on a second smart card in a second wireless communication device.”
Id. at 20 (Abstract). The Specification further explains that “[t]he first
wireless communication device then establishes a first wireless connection
with a network using the subscription indicated by the first profile.” Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method comprising:
receiving, at a first wireless communication device that
includes a first smart card, a first profile that indicates a
subscription to provide wireless connectivity to a user,

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 30, 2016; “Final Act.” for the Final Office Action,
mailed October 5, 2017; “Advisory Act.” for the Advisory Action, mailed
February 8, 2018; “Appeal Br.” for the Appeal Brief, filed April 27, 2018;
“Ans.” for the Examiner’s Answer, mailed July 6, 2018; and “Reply Br.”
for the Reply Brief, filed August 21, 2018.
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wherein the first profile is a copy of at least a
portion of a second profile previously established by
the user and stored on a second smart card in a second
wireless communication device, and
wherein the first profile is not provided to
the second wireless communication device; and
establishing a first wireless connection between the
first wireless communication device and a network using the
subscription indicated by the first profile.3
Appeal Br. 14 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:

3 In the event of continued prosecution, the Examiner should consider the
propriety of a rejection under 35 U.S.C. § 112(b). The requirement in
claim 1 that “the first profile is not provided to the second wireless
communication device” does not specify any particular time when the first
profile is “not provided” to the second wireless communication device.
Thus, that requirement conflicts with the other requirement in claim 1 that
the first profile is “stored” in the second wireless communication device.
The other independent claims include similarly conflicting requirements.
In addition, claim 5 depends indirectly from claim 1 and specifies that
“receiving the first profile comprises receiving the first profile via a second
wireless connection between the first wireless communication device and the
second wireless communication device.” Thus, claim 5 indicates that the
second wireless communication device provides the first profile to the first
wireless communication device.
Chan et al. (“Chan”) US 2014/0137101 A1 May 15, 2014
Gao et al. (“Gao”) US 2015/0237496 A1 Aug. 20, 2015
Park et al. (“Park”) US 2016/0050557 A1 Feb. 18, 2016
Benn US 2016/0330608 A1 Nov. 10, 2016
(filed July 7, 2016)
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The Rejections on Appeal
Claims 1–6, 8–10, and 13–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Park, Gao, and Benn. Final Act. 3–15.
Claims 7, 11, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Park, Gao, Benn, and Chan. Final Act. 15–17.
ANALYSIS
We have reviewed the § 103 rejections in light of Appellant’s
arguments that the Examiner erred. For the reasons explained below, we
concur with the Examiner’s conclusions concerning unpatentability under
§ 103. We adopt the Examiner’s findings and reasoning in the Final Office
Action, Advisory Action, and Answer. See Final Act. 3–17; Advisory
Act. 2; Ans. 3–7. We add the following to address and emphasize specific
findings and arguments.
Claim 1: “The First Profile Is Not Provided
to the Second Wireless Communication Device”
As noted above, the § 103 rejection of claim 1 rests on Park, Gao, and
Benn. See Final Act. 3–5; Advisory Act. 2. Appellant argues that the
Examiner erred in rejecting claim 1 because “the cited combination of Park,
Gao, and Benn does not disclose all the features” in claim 1, in particular,
“the first profile is not provided to the second wireless communication
device.” Reply Br. 3; see Appeal Br. 6–11. Specifically, Appellant asserts
that Park discloses profiles that “must be stored in the primary device” so
they can “be downloaded from the primary device to a wearable device.”
Appeal Br. 8 (emphasis omitted); see Reply Br. 2–3. Appellant also asserts
that Benn discloses a profile that “must be communicated to the primary
subscriber wireless communication unit so that the primary subscriber
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wireless communication unit can transmit the profile to the secondary
wireless communication unit.” Appeal Br. 10 (emphasis omitted).
Appellant’s arguments do not persuade us of Examiner error because
they attack the references individually. Where, as here, a rejection rests on
the combined disclosures in the references, an appellant cannot establish
nonobviousness by attacking the references individually. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner finds that Gao discloses a “flexible and
convenient” method for transferring a profile corresponding to a subscription
associated with an embedded universal integrated circuit card. Ans. 4–5
(citing Gao ¶¶ 6, 106, 111). In particular, Gao explains that “[a]n embedded
universal integrated circuit card (eUICC) is a non-pluggable smart card that
can be used in a user equipment (UE).” Gao ¶ 3; see Final Act. 4. Gao’s
subscription-transfer method includes “receiving a subscription transfer
request message sent by a first UE or a second UE, where the first UE is a
target UE to which an eUICC subscription is transferred, and the second UE
is a source UE from which the eUICC subscription is transferred.” Gao
¶¶ 6, 103, Fig. 5; see id. ¶ 111, code (57); Ans. 4. In response to the
subscription-transfer request message, a subscription manager “generate[s]
a new [profile] for the first UE, and sends the generated [profile] to the first
UE.” Gao ¶ 111, Fig. 5; see id. ¶ 106; Ans. 5. The subscription manager
sends the generated profile directly to the first UE and does not provide the
generated profile to the second UE. Gao ¶¶ 110, 145, Fig. 5 (item S505),
Fig. 6B (item S617); see Ans. 5. Thus, Gao teaches or suggests that “the
first profile is not provided to the second wireless communication device”
according to claim 1.
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Benn also teaches or suggests that “the first profile is not provided to
the second wireless communication device” according to claim 1. In
particular, Benn discloses several alternative methods “for provisioning a
secondary wireless communication unit from a primary subscriber wireless
communication unit.” Benn ¶¶ 100, 113–117, Figs. 5–6; see Ans. 5–6. In
one provisioning method, a subscription manager downloads a profile to a
primary unit, and the primary unit transmits the profile to a secondary unit.
Benn ¶¶ 110, 117, Figs. 5–6; see Final Act. 9–10; Appeal Br. 10. But in
another provisioning method, a subscription manager transmits a profile
“utilizing an internet protocol (IP) connection” directly to a secondary unit
and does not provide the profile to a primary unit. Benn ¶ 107, Fig. 5 (item
560). The provisioning method utilizing an IP connection teaches or
suggests that “the first profile is not provided to the second wireless
communication device” according to claim 1.
For the reasons discussed above, the combined disclosures in Park,
Gao, and Benn teach or suggest the disputed limitation in claim 1.
Claim 1: Rendering References
Inoperable for Their Intended Purposes
Appellant argues that the Examiner erred in rejecting claim 1 because
“modifying the cited references so that a copy of the first profile stored in a
first wireless communication device is provided to a second wireless
communication device without providing the copy of the first profile to the
first wireless communication device would render the cited references
inoperable for their intended purposes.” Appeal Br. 11 (emphasis omitted);
see Reply Br. 3.
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In particular, Appellant contends that Park’s intended purpose is to
“allow wearable devices to download profiles from a primary device without
accessing a network server.” Appeal Br. 11. Appellant also contends that
to “achieve this intended purpose, Park discloses” that the wearable-device
profiles “must be stored in the primary device.” Id. (emphasis omitted).
Appellant asserts that modifying Park “so that the available profiles are not
provided to the primary device” would render Park “inoperable for its
intended purpose because the wearable device would not be able to
download a profile directly from the primary device.” Id.
In addition, Appellant contends that Benn’s intended purpose is to
“provide profiles to secondary devices directly from a primary device
instead of a subscription manager.” Appeal Br. 11 (emphasis omitted).
Appellant asserts that modifying Benn “so that the secondary profile is not
provided to the primary device” would render Benn “inoperable for its
intended purpose because the primary device would not have the secondary
profile available to forward to the secondary device.” Id. at 11–12.
Appellant’s arguments do not persuade us of Examiner error because
Appellant (1) mischaracterizes the intended purpose in both Park and Benn
and (2) overlooks alternative ways disclosed in Park to achieve Park’s
intended purpose.
Park addresses “technique[s] to manage, such as remotely install or
delete, mobile communication subscriber information in or from an
embedded UICC [universal integrated circuit card] (eUICC).” Park ¶ 2.
Park explains that a user may have a primary device, e.g., a smartphone, and
multiple wearable devices, e.g., a watch and glasses, and that each device
may have an eUICC. Id. ¶ 9. Park also explains that “[w]hen a single user
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has many wearable devices, an excessive burden may arise” if each wearable
device individually downloads a profile through a network server. Id. Thus,
Park discloses methods for “installing profiles in a plurality of devices
without requiring each device to directly perform a profile download
through a network server.” Id. ¶ 12; see id. ¶¶ 24, 27, 30, 34, Figs. 4, 7,
10, 14; Appeal Br. 11.
Avoiding each wearable device individually downloading a profile
does not require that the wearable-device profiles “be stored in the primary
device,” contrary to Appellant’s contention. See Appeal Br. 11 (emphasis
omitted). For instance, Park discloses a primary device transmitting a group
request to a subscription manager, and the subscription manager
simultaneously provisioning every wearable device in the group. Park
¶¶ 125, 129, Fig. 11A (item 1106), Fig. 11B (item 1114); see id. Fig. 10.
Moreover, contrary to Appellant’s contention, Benn does not
primarily aim to “provide profiles to secondary devices directly from a
primary device instead of a subscription manager.” See Appeal Br. 11
(emphasis omitted). Instead, Benn notes that “[t]here has also been a recent
trend for machine to machine (M2M) communication modules to be
integrated directly into target (M2M) devices” and for M2M devices to
include an “embedded universal integrated circuit card (eUICC).” Benn ¶ 4.
Benn also notes that as a “mandatory step” in the eUICC production process
and before eUICC shipment, an eUICC manufacturer “must register each
eUICC at a selected subscription manager” so that each eUICC includes a
provisioning profile before shipment. Id. ¶ 16; see id. ¶¶ 17–18, Fig. 2.
Benn describes the eUICC registration process as “inefficient” and seeks to
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avoid registering eUICCs at a subscription manager before shipment. Id.
¶ 19.
Avoiding registering eUICCs at a subscription manager before
shipment does not require “provid[ing] profiles to secondary devices directly
from a primary device,” contrary to Appellant’s contention. See Appeal
Br. 11 (emphasis omitted). For example, as discussed above, Benn discloses
a subscription manager transmitting a profile “utilizing an internet protocol
(IP) connection” directly to a secondary unit without providing the profile to
a primary unit. Benn ¶ 107, Fig. 5 (item 560).
Summary for Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 under § 103 based
on Park, Gao, and Benn. In our view, the claimed subject matter exemplifies
the principle that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Thus, we sustain the § 103 rejection of claim 1.
Independent Claims 8, 13, and 18–20 and
Dependent Claims 2–7, 9–12, and 14–17
Appellant does not argue patentability separately for independent
claims 8, 13, and 18–20 or dependent claims 2–7, 9–12, and 14–17. See
Appeal Br. 5–12; Reply Br. 2–3. Thus, we sustain the § 103 rejections of
these claims for the same reasons as claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.
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In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
13–20 103 Park, Gao, Benn
1–6, 8–10,
13–20
7, 11, 12 103 Park, Gao, Benn, Chan 7, 11, 12
Overall
Outcome 1–20
TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED