BREUER, Volker et al.

Patent Trials and Appeals Board

Dec 9, 2019

15508976 - (D) (P.T.A.B. Dec. 9, 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.
15/508,976 03/06/2017 Volker BREUER 0088076-000015 2787
21839 7590 12/09/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
GENACK, MATTHEW W
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VOLKER BREUER, CHRISTIAN KLAPPER, and
ANDRÉ OSTHEEREN
____________________

Appeal 2019-000214
Application 15/508,976
Technology Center 2600
____________________

Before KRISTEN L. DROESCH, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1 and 3–11, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed March 6, 2017, claiming the benefit of a foreign patent
application; “Final Act.” for the Final Office Action, mailed February 2,
2018; “Appeal Br.” for Appellant’s Appeal Brief, filed July 2, 2018; “Ans.”
for Examiner’s Answer, mailed August 8, 2018; and “Reply Br.” for
Appellant’s Reply Brief, filed October 5, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
Gemalto M2M GmbH. Appeal Br. 2.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to “a
method for interaction of a wireless communication device with an
identification unit.” Spec. 1:5–6. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for interaction of a wireless communication
device with an identification unit,
the wireless communication device being connected with said
identification unit,[3] the wireless communication device further
operating within a cellular network by means of said
identification unit,
said identification unit being configured to carry information
representing a subscription for operating a wireless
communication device in the cellular network, the wireless
communication device and the identification unit being adapted
to provide each a set of capabilities of operation within the
cellular network,
wherein the method comprises the steps of:
- determining a first set of information representing the
capabilities of the wireless communication device,
- determining a second set of information representing
the capabilities of the identification unit,
- analysing the first and the second set of information for
differences,
- carrying out measures for handling of differences, in
case differences have been detected at the analysing step,
wherein the set of capabilities comprises at least one out of:
- capability to support a group of radio access
technologies, and/or

3 The Claims Appendix also recites “(3a)” after “said identification unit” in
the text of claim 1. For clarity, we have removed this typographical error.
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- capability to support a set of services within a certain
radio access technology.
Appeal Br. 15 (Claims App.) (footnote added).
REJECTIONS
R1. Claims 1 and 9 stand rejected under 35 U.S.C. § 103 as obvious
over Hartikainen (US 2007/0259683 A1, published Nov. 8, 2007) and Shi
(US 2015/0312408 A1, published Oct. 29, 2015). Final Act. 10–16.
R2. Claim 3 stands rejected under 35 U.S.C. § 103 as obvious over
Hartikainen, Shi, and Bone (US 2014/0128028 A1, published May 8, 2014).
Final Act. 16–17.
R3. Claims 4 and 10 stand rejected under 35 U.S.C. § 103 as
obvious over Hartikainen, Shi, and Stein (US 2015/0373530 A1, published
Dec. 24, 2015). Final Act. 17–20.
R4. Claim 5 stands rejected under 35 U.S.C. § 103 as obvious over
Hartikainen, Shi, and Miao (US 2017/0127217 A1, published May 4, 2017).
Final Act. 21.
R5. Claims 6 and 11 stand rejected under 35 U.S.C. § 103 as
obvious over Hartikainen, Shi, and Salmela (US 2009/0217364 A1,
published Aug. 27, 2009). Final Act. 21–25.
R6. Claim 7 stands rejected under 35 U.S.C. § 103 as obvious over
Hartikainen, Shi, Salmela, and Gomes (US 2011/0171915 A1, published
July 14, 2011). Final Act. 25–26.
R7. Claim 8 stands rejected under 35 U.S.C. § 103 as obvious over
Hartikainen, Shi, and Geffner (US 2013/0217396 A1, published Aug. 22,
2013). Final Act. 26–27.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1 and 9
The Examiner rejected the independent claims (i.e., claims 1 and 9) as
obvious over Hartikainen and Shi. Final Act. 10–16. Appellant argues
claims 1 and 9 as a group. See Appeal Br. 9. Therefore, consistent with the
provisions of 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 1;
independent claim 9 stands or falls with claim 1.
Claim 1 recites “analysing the first and the second set of information
for differences” and “carrying out measures for handling of differences, in
case differences have been detected at the analysing step.” Appeal Br. 15
(Claims App.) (the “analyzing and handling” limitations). The Examiner
found that Hartikainen teaches the analyzing and handling limitations. Final
Act. 11–12 (citing Hartikainen ¶ 33). Specifically, the Examiner found
Hartikainen’s user module compares the equipment identity (IMEI) received
from the wireless terminal with the equipment identity stored in the user
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module, and if the values are different, the user module takes actions that
include storing the new identity. Id.
Claim 1 also recites a “set of capabilities” that can comprise
“capability to support a group of radio access technologies.” Appeal Br. 15
(Claims App.) (the “capability” limitation). The Examiner found Shi
teaches the capability limitation. Final Act. 12–13 (citing Shi ¶¶ 47, 51–52).
Specifically, the Examiner found Shi’s “UE [user equipment] is configured
to support a plurality of RATs [radio access technologies] . . . and the SIM
that is connected to that UE is configured to support one or more RATs,”
such as “LTE, GSM, and 1X.” Id. at 12.
Appellant argues that the references fail to teach or suggest the
analyzing and handling limitations and the capability limitation. Appeal
Br. 7–9. In support, Appellant contends: “Hartikainen is silent with regard
to capabilities of a SIM Card.” Id. at 7 (some emphasis omitted). Appellant
also argues “Shi does not teach or suggest analyzing the differences in
capabilities of the user equipment 106 (e.g., a wireless device) and a SIM
card.” Id. at 8–9 (emphasis omitted and added). As a result, Appellant
submits that that “nothing in either of these references teaches or suggests
carrying out measures for handling of differences between the capabilities of
the wireless communication device and the capabilities of the identification
unit.” Id. at 8 (emphasis omitted).
Appellant’s arguments do not persuade us of Examiner error.
Appellant argues that neither Hartikainen nor Shi alone teaches or suggests
all of the disputed limitations. However, this does not address the rejection
as articulated because the Examiner relied on certain combined teachings of
the prior art. See Final Act. 2–4, 10–13; see Ans. 3–5 (noting that
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Appellant’s arguments do not respond to the rejection and summarizing the
rejection). Because Appellant does not address the rejection as articulated,
Appellant’s arguments do not persuade us of error on the part of the
Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”)).
Moreover, we perceive no error in the Examiner’s finding that Shi
teaches the capability limitation. E.g., Shi ¶¶ 47, 52; see Appeal Br. 8 (“Shi
describes user equipment 106 that can support multiple radio access
technologies (RATs), such as LTE and GSM,” and “Shi's user equipment
106 can further include one or more subscriber identity modules (SIMs),
where each of these SIMs can support one or more RATs.”). We also
perceive no error in the Examiner’s finding that Hartikainen teaches the
analyzing and handling limitations. E.g., Hartikainen ¶¶ 33, 36; Appeal
Br. 7 (acknowledging Hartikainen’s user module 17 compares data and takes
an action if there is a difference).
Finally, we are not persuaded of error in the Examiner’s conclusion
that it would have been obvious to combine Hartikainen and Shi to yield the
claimed invention. See Final Act. 13 (citing Shi ¶¶ 4–7). Appellant
identifies no errors or inaccuracies in the Examiner’s rationale, does not
contend the Examiner’s proposals are beyond the level of skill of one of
ordinary skill in the art, and does not submit that the proposed combination
of references would yield undesirable, unpredictable, or unexpected results.
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In fact, Appellant does not respond to the Examiner’s obviousness
rationale. See Appeal Br. 8–9 (no mention of Examiner’s rationale); Reply
Br. 3 (same).4 Consequently, Appellant has not shown error in the
Examiner’s findings or ultimate conclusion as to obviousness. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (If an examiner presents a
prima facie case, “the burden of coming forward with evidence or argument
shifts to the applicant.”)
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1 and independent claim 9, which falls therewith.
Obviousness Rejection R2 of Claim 3
The Examiner rejected dependent claim 3 as obvious over
Hartikainen, Shi, and Bone. Final Act. 16–17. Claim 3 depends from
independent claim 1 and recites that the measures for handling differences
(recited in the analyzing and handling limitations of claim 1) comprise: “an
event message on a control interface of the wireless communication device.”
Appeal Br. 16 (Claims App.). The Examiner found Bone teaches this

4 Appellant argues “there is no suggestion, or reason, in the references”
(Reply Br. 3), but we note that an express suggestion or motivation in the
prior art is not a requirement for an obviousness determination. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (holding the teaching-
suggestion-motivation test is not a prerequisite for concluding that a claim is
obvious); see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
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additionally recited limitation. Final Act. 17 (citing Bone ¶ 24, Abstract);
see also id. at 5 (citing Bone ¶¶ 22, 24, 26).
Appellant agrees that Bone’s wireless device displays an error
message, but submits that “nothing in Bone suggests that such measure is
happening in response to finding differences in the capabilities of the user
equipment and the SIM card.” Appeal Br. 9. Appellant does not otherwise
respond to the Examiner’s factual findings or legal conclusion. See id.
We are not persuaded of Examiner error. Appellant appears to argue
that Bone fails to teach or suggest the requirements of the analyzing and
handling limitations,5 which appear in claim 1 (from which claim 3 depends)
(see Appeal Br. 9); however, as discussed above, the Examiner relied upon
Hartikainen to teach the analyzing and handling limitations (see Final
Act. 11–12, 17). Accordingly, Appellant fails to address the rejection as
articulated and, consequently, does not persuade us of error. See In re
Oetiker, 977 F.2d at 1445; In re Merck & Co., 800 F.2d at 1097.
Moreover, the Examiner found Bone teaches the claim limitations
because Bone displays an error message if there is a difference in
capabilities between the terminal and the SIM (i.e., the terminal does not
support the SIM toolkit used by the SIM). Final Act. 5 (citing Bone ¶¶ 22,
24, 26); Ans. 5–6. Appellant does not respond to this finding or explain why
it is in error (see Appeal Br. 9; see generally Reply Br.), and we perceive no
error in it.

5 Appellant fails to specifically identify the claim language that is allegedly
not taught or suggested by the references. However, we understand
Appellant’s argument to be directed to the analyzing and handling
limitations recited in claim 1.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 3, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 3.
Obviousness Rejection R3 of Claims 4 and 10
The Examiner rejected dependent claims 4 and 10 as obvious over
Hartikainen, Shi, and Stein. Final Act. 17–20. Appellant argues these
claims as a group (see Appeal Br. 10), so we limit our discussion to claim 4.
Claim 4 depends from independent claim 1 and recites that the
measures for handling differences (recited in the analyzing and handling
limitations of claim 1) comprise:
- determining the availability of at least one additional
identification unit configured to be connected with the wireless
communication device,
- in case at least one additional identification unit is determined:
- disconnecting the connection between the wireless
communication device and the identification unit,
- connecting the wireless communication device with the
determined at least one additional identification unit,
- repeating said determination and analysing steps.
Appeal Br. 16 (Claims App.) (emphasis added). The Examiner found Stein
teaches these additionally recited limitations. Final Act. 18 (citing Stein
¶¶ 168, 172–74, 253–59).
First, Appellant argues that Stein’s “wireless communication device
switches from one SIM to another,” but fails to show that “this procedure is
carried out as measures for handling the differences of capabilities of the
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SIM and the wireless communication device.” Appeal Br. 10 (emphasis
added). This argument does not persuade us of Examiner error. Appellant
appears to argue that Stein fails to teach or suggest requirements of the
analyzing and handling limitations, which appear in claim 1 (from which
claim 4 depends) (see Appeal Br. 10); however, as discussed above, the
Examiner relied upon Hartikainen to teach the analyzing and handling
limitations (see Final Act. 11–12, 17). Accordingly, Appellant fails to
address the rejection as articulated and, consequently, does not persuade us
of error. See In re Oetiker, 977 F.2d at 1445; In re Merck & Co., 800 F.2d at
1097.
Second, Appellant argues that Stein fails to teach or suggest
“repeating said determination and analysing steps,” as recited by claim 4.
Appeal Br. 10 (the disputed limitation). In particular, Appellant submits this
claim language requires repetition of limitations recited by claim 1,6 and
Appellant concludes, without additional argument or explanation, that the
“cited paragraphs of Stein . . . have nothing to do with the recited steps of
the claim.” Id.
We are not persuaded of Examiner error because Appellant fails to
address the Examiner’s findings or explain why those findings are allegedly
unclear or unsupported. By failing to do so, Appellant’s contention amounts

6 In this Decision, we have adopted Appellant’s interpretation of the claim.
However, it is not clear which determination(s) are referenced by the claim’s
reference to “said determination.” Indeed, dependent claim 4 recites
“determining the availability of at least one additional identification unit”
and independent claim 1 recites “determining a first set of information” and
“determining a second set of information.” In the event of further
prosecution, the Examiner may consider whether it is appropriate to reject
claim 4 as indefinite under 35 U.S.C. § 112(b).
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to an improper request for a de novo review of the Examiner’s findings. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more . . . than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). Moreover, we perceive no error in the Examiner’s
finding that the disputed limitation is taught or suggested by Stein. See Final
Act. 18; see also, e.g., Stein ¶ 258 (After receiving alternate SIM and
corresponding IMSI, “[t]he software system will then initiate a ‘session
reset’ process to allow for the new SIM credentials to be authenticated.
. . . [T]his process may be conducted by way of a ‘cold reset’ (physically
restarting the mobile device) . . . .”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 4, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 4
and grouped claim 10, which falls therewith.
Obviousness Rejection R4 of Claim 5
The Examiner rejected dependent claim 5 as obvious over
Hartikainen, Shi, and Miao. Final Act. 21. Claim 5 depends from
independent claim 1 and recites that the connection between the wireless
communication device and the identification unit (recited in claim 1) “is
based on a remote subscription unit access protocol.” Appeal Br. 16 (Claims
App.). The Examiner found Miao teaches this additionally recited
limitation. Final Act. 21 (citing Miao ¶¶ 58, Fig. 7C).
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Appellant argues that Miao “is silent on the mere existence of
different capabilities of SIMs.” Appeal Br. 11. Appellant does not
otherwise respond to the Examiner’s factual findings or legal conclusion.
See id.
We are not persuaded of Examiner error. Appellant appears to argue
that Miao fails to teach or suggest the capability limitation, which appears in
claim 1 (from which claim 5 depends) (see Appeal Br. 11); however, as
discussed above, the Examiner relied upon Shi to teach the capability
limitation (see Final Act. 12–13, 21). Accordingly, Appellant fails to
address the rejection as articulated and, consequently, does not persuade us
of error. See In re Oetiker, 977 F.2d at 1445; In re Merck & Co., 800 F.2d at
1097.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 5, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 5.
Obviousness Rejection R5 of Claims 6 and 11
The Examiner rejected dependent claims 6 and 11 as obvious over
Hartikainen, Shi, and Salmela. Final Act. 21–25. Appellant argues these
claims as a group (see Appeal Br. 11–12), so we limit our discussion to
claim 6.
Claim 6 depends from independent claim 1 and recites that the
measures for handling differences (recited in the analyzing and handling
limitations of claim 1) comprise:
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- sending a request to a remote provisioning server by means of
the subscription of the identification unit, said request
comprising information related to the analysed differences,
- receiving in response subscription modification records from
the remote provisioning server,
- processing received subscription modification records within
the identification unit, wherein the subscription modification
records being configured to modify the subscription stored
within the identification unit.
Appeal Br. 16–17 (Claims App.) (emphases added). The Examiner found
Salmela teaches these additionally recited limitations. Final Act. 21–23
(citing Salmela ¶¶ 33–36).
Appellant argues that Salmela does not teach a wireless device having
“different capabilities than the present SIM subscription.” Appeal Br. 11–
12 (emphasis added). We are not persuaded of Examiner error. Appellant
appears to argue that Salmela fails to teach or suggest the requirements of
the capability limitation, which appears in claim 1 (from which claim 6
depends) (see Appeal Br. 11–12); however, as discussed above, the
Examiner relied upon Shi to teach the capability limitation (see Final Act.
12–13, 22). Accordingly, Appellant fails to address the rejection as
articulated and, consequently, does not persuade us of error. See In re
Oetiker, 977 F.2d at 1445; In re Merck & Co., 800 F.2d at 1097.
Moreover, Appellant contends that Salmela fails to teach
“receiving . . . subscription modification records” that are “configured to
modify the subscription stored within the identification unit,” as recited by
claim 6. See Appeal Br. 11 (arguing Salmela “is silent about downloading
modification records that modify the subscription stored within the
identification unit”). However, Appellant fails to address the Examiner’s
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findings or explain why those findings are allegedly unclear or unsupported.
By failing to do so, Appellant’s contention amounts to an improper request
for a de novo review of the Examiner’s findings. See In re Lovin, 652 F.3d
at 1357. Moreover, we perceive no error in the Examiner’s finding that the
disputed limitation is taught or suggested by Salmela. See Final Act. 21–23;
see also, e.g., Salmela ¶ 36 (“Once the device 10 obtains new subscription
credentials, they replace its previously current subscription credentials, and
the newly obtained subscription credentials become the device’s current
subscription credentials 26.”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 6, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 6
and grouped claim 11, which falls therewith.
Obviousness Rejection R6 of Claim 7
The Examiner rejected dependent claim 7 as obvious over
Hartikainen, Shi, Salmela, and Gomes. Final Act. 25–26. Claim 7 depends
from dependent claim 6 and recites that “the received subscription
modification records relate to a subscription modification which is valid for
a limited time.” Appeal Br. 17 (Claims App.). The Examiner found Gomes
teaches these additionally recited limitations. Final Act. 25–26 (citing
Gomes ¶ 127). In particular, the Examiner found that Gomes teaches the
claimed “subscription modification” because Gomes “adds a CSG ID
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(closed subscriber group identity) to a blacklist,” which is valid for a certain
period of time. Id.
Appellant argues that the “CSG ID of Gomes does not relate to a
subscription.” Appeal Br. 12.7 In addition, Appellant argues that Gomes
fails to teach that “a downloaded subscription modification is valid for a
limited time, as in claim 7.” Id. Appellant explains that “putting entries on
a black list just describes that the CSG ID is not used for a period of time.”
Id. (emphasis added)
Appellant’s arguments do not persuade us of error. The Examiner
found: (1) Gomes “adds a CSG ID (closed subscriber group identity) to a
blacklist”; (2) this addition is valid for a certain period of time; and (3) this
addition teaches “a subscription modification.” Final Act. 25–26; Ans. 10.
Although Appellant asserts that Gomes’s CSG ID “does not relate to a
subscription,” Appellant acknowledges that the CSG provides radio
coverage to authorized subscribers without sufficiently explaining why this
does not “relate” to a subscription, under the broadest reasonable
interpretation of that term. See Appeal Br. 12 (citing Gomes ¶ 5).
Moreover, we are not persuaded by Appellant’s argument that Gomes fails
to teach “a subscription modification which is valid for a limited time”
(id.)—the Examiner pointed to the addition of the CSG ID to the blacklist,

7 Appellant also argues that Gomes “is completely unrelated to SIMs,
subscriptions, and the like.” Appeal Br. 12. However, Appellant does not
contend that Gomes is non-analogous art, and Appellant does not assert that
the combination of Gomes with Hartikainen, Shi, and Salmela is improper.
See id. Moreover, as the Examiner observed, claim 7 “does not recite a
SIM” (Ans. 10), and for the reasons explained herein, we are persuaded that
Gomes “relates” to a subscription.
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not the CSG ID itself, to teach the claimed “subscription modification”
(Final Act. 25–26; Ans. 10), and Gomes discloses that this addition is valid
for a limited time (see, e.g., Gomes ¶ 127 (“An entry in the black list may be
valid for a certain period of time . . . .”)).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 7, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 7.
Obviousness Rejection R7 of Claim 8
The Examiner rejected dependent claim 8 as obvious over
Hartikainen, Shi, and Geffner. Final Act. 26–27. Claim 8 depends from
independent claim 1 and recites:
wherein in case of detected differences:
- determining if the identification unit provides a priority
related capability, and in case said priority related capability is
determined, suppressing measures for handling of differences.
Appeal Br. 17 (Claims App.). The Examiner pointed to Geffner for these
additionally recited limitations. Final Act. 26–27 (citing Geffner ¶¶ 32–34).
The Examiner also found that Geffner’s multi-IMSI SIM card determines
when a network is directly accessible with the SIM card, allowing a
subscriber “to select which roaming agreement is most advantageous,”
which “is clearly an example of a priority related capability.” Id. at 9 (citing
Geffner ¶ 32).
First, Appellant asserts that Geffner does not teach determining if the
identification unit provides “a priority related capability” because “a
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roaming agreement is not a priority related capability.” Appeal Br. 13.
However, the Examiner did not find Geffner’s roaming agreement itself to
be a priority related capability; rather, the Examiner found the selection of a
home network (and corresponding IMSI in the multi-IMSI SIM) based on
the roaming agreement teaches or suggests identifying “a priority related
capability.” Final Act. 9, 26–27; Ans. 11. Appellant fails to sufficiently
explain why this finding is allegedly unclear or unsupported. Accordingly,
we are not persuaded of error.
Second, Appellant contends that Geffner’s decision to “not updat[e] a
SIM” does not teach or suggest “suppressing measures for handling of
differences,” as recited by claim 8. Appeal Br. 13. However, Appellant
fails to address the Examiner’s findings or explain why those findings are
allegedly unclear or unsupported. Moreover, in the Answer, the Examiner
responds that “the avoidance of roaming fees constitutes the suppression of
measures for handling of differences,” under the broadest reasonable
interpretation of that phrase. Ans. 11. Appellant elected not to respond to
this finding in its Reply Brief. See generally Reply Br. Accordingly,
Appellant fails to persuade us of Examiner error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 8, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 8.

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CONCLUSIONS
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9 103 Hartikainen, Shi 1, 9
3 103 Hartikainen, Shi, Bone 3
4, 10 103 Hartikainen, Shi, Stein 4, 10
5 103 Hartikainen, Shi, Miao 5
6, 11 103 Hartikainen, Shi, Salmela 6, 11
7 103 Hartikainen, Shi, Salmela,
Gomes
7
8 103 Hartikainen, Shi, Geffner 8
Overall
Outcome
1, 3–11

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED