Ex Parte Buckley

Patent Trial and Appeal Board

Jul 22, 2013

11174079 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ADRIAN BUCKLEY
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Appeal 2011-002628
Application 11/174,079
Technology Center 2600
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Before JOHN A. JEFFERY, BRYAN F. MOORE, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-24 and 34-41. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention manages network lists in a wireless device by
downloading only those only network list data entries relevant to geographic
region information from the device’s removable storage device. See
generally Abstract. Claim 1 is illustrative with disputed limitations
emphasized:
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Application 11/174,079

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1. A method for managing network lists in a wireless
device, comprising:
scanning by said wireless device for discovering at least
one network;
determining geographic region information based on
identity information of said at least one network discovered by
said wireless device via scanning; and
downloading only those network list data entries relevant to
said geographic region information from a removable storage
module (RSM) operable to be coupled to said wireless device, said
network list data entries for facilitating network selection by said
wireless device.

THE REJECTION
The Examiner rejected claims 1-24 and 34-41 under 35 U.S.C.
§ 103(a) as unpatentable over Casaccia (US 2004/0192304 A1; Sept. 30,
2004) and Coles (US 2006/0217153 A1; Sep. 28, 2006; filed Nov. 25,
2003). Ans. 3-7.1

CONTENTIONS
The Examiner finds that Casaccia’s method of managing wireless
device network lists has every recited element of claim 1, but does not
explicitly teach downloading only network list data entries relevant to
determined geographic region information. Ans. 3-4. The Examiner,
however, cites Coles as teaching this feature in concluding that the claim
would have been obvious. Ans. 4, 7-11.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 23,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed September 16, 2010
(“Ans.”); and (3) the Reply Brief filed November 16, 2010 (“Reply Br.”).
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Application 11/174,079

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Appellant argues the prior art does not teach or suggest downloading
only those network list data entries relevant to the geographic region
information from a removable storage module. App. Br. 6-17; Reply Br. 2-
8. According to Appellant, the Examiner’s reliance on Coles is misplaced
since Coles merely changes the order of preferred networks downloaded to a
mobile device depending on the device’s current location, but only the first
entry is guaranteed to be relevant to that location. Id.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Casaccia and Coles collectively would have taught or suggested
downloading only those only network list data entries relevant to determined
geographic region information from a removable storage module?

ANALYSIS
We begin by noting that since this dispute hinges on the Examiner’s
reliance on Coles for teaching the downloading limitation above, we confine
our discussion to that reference.
It is undisputed that Coles downloads entries from a list of preferred
networks (i.e., preferred public land mobile networks (PLMNs)) from a
removable storage module (subscriber identity module (SIM) 34). See App.
Br. 8-11 (discussing Coles’ Figures 4 and 5). Nor is it disputed that Coles
changes the order of these preferred networks depending on the device’s
location, such that at least the first listed entry is from the current country
and therefore “relevant” to that location, but there is no guarantee about the
other entries which, in one example, is seven additional preferred networks.
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Application 11/174,079

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See App. Br. 10-11, 14, 16; Reply Br. 4-5; Ans. 7-10. We emphasize
“preferred” here, for this preference is why the Examiner finds the
associated entries are “relevant” to the location which is said to broadly
mean “appropriate, suitable, and pertinent” to that location. Ans. 7 (citing
dictionary definition of “relevant”).
We see no error in this position. Notably, Appellant acknowledges
that there may be some situations in Coles where all entries downloaded to
the mobile device are relevant to the location—even under Appellant’s
somewhat narrower definition of the term. Reply Br. 4. But even if seven
of the eight entries (i.e., all except the first entry) in Coles’ example are
networks in locations different from the first entry, they are still “relevant” at
least in the sense that these networks—like the first network—are preferred
as the Examiner indicates. Ans. 10. By listing preferred networks that
cooperate with a particular network provider or otherwise offer favorable
roaming conditions, Coles’ system increases the chance that networks within
this preferred group will be used when roaming, and not those of a
competitor. See Ans. 10 (citing Coles ¶ 0020); see also Coles ¶ 0009.
In short, although Coles’ seven remaining downloaded entries may
not be as relevant to the location as the first entry, that does not mean that
they are irrelevant as Appellant contends: they are still relevant at least
regarding promoting preferred networks when roaming to and from a
location.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-24 and 34-41 not separately argued with
particularity.

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Application 11/174,079

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CONCLUSION
The Examiner did not err in rejecting claims 1-24 and 34-41 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-24 and 34-41 is affirmed.
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).

AFFIRMED

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