Ex Parte Aerrabotu et al

Board of Patent Appeals and Interferences

Jan 5, 2009

10295977 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NAVEEN AERRABOTU,
CHARLES PHILIPP BINZEL,
and BHARAT SRINIVASAN
________________

Appeal 2008-5746
Application 10/295,977
Technology Center 2600
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Decided: January 5, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-3, 6-16, 19-21, 24, and 25. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants invented an improved system and method for establishing
emergency communications service using a mobile communication device.
According to the invention, the mobile communication device includes a
subscriber identity module (SIM). The SIM is programmed to block, i.e.,
prohibit, the mobile communication device from being used for
communications service. When certain information is entered into the
blocked mobile communication device an emergency service signal
identifying an emergency service communication request is sent from the
mobile communication device to a communication network having a home
service center. Upon receiving and authenticating the emergency
communication request signal, the home service center directs the
communication network to send a mobile communication subscriber
identification information signal authorizing the SIM to permit
establishment of a network connection for emergency communications
service.1 Claim 1 is illustrative:

1. A method of establishing a network connection for a mobile
communication device in a mobile communication network,
comprising:

entering a blocked mode of the mobile communication device;

sending an emergency service access call identifier identifying an
emergency service communication request to a home service center;

accessing the subscriber identification information on a blocked
subscriber identity module, the subscriber identity module located on

1 See generally Spec. 3:7-16, and 7:5-8:7; Figs. 2 and 5.
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the mobile communication device; and

sending mobile communication subscriber identification information,

wherein when the subscriber identity module is blocked, the
subscriber identity module blocks access to user information and
allows access to the subscriber identification information for the
emergency service communication.

The Examiner relies upon the following as evidence in support of
rejections:
King US 5,864,755 Jan. 26, 1999
Parker US 6,124,799 Sep. 26, 2000
Raith US 6,477,362 B1 Nov. 5, 2002
Carley US 6,574,484 B1 Jun. 3, 2003
(filed Dec. 2, 1999)

1. Claims 1, 7-9, 12-15, 20, 21, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Carley and Parker.
2. Claims 2, 3, 16, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carley, Parker, and King.
3. Claims 6, 10, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carley, Parker, and Raith.
Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Brief and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by

2 Appellants did not file a Reply Brief. We, therefore, refer to (1) the
Appeal Brief filed May 9, 2007; and (2) the Answer mailed August 28, 2007
throughout this opinion.
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Appellants. Arguments that Appellants could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants’ Arguments
Appellants do not separately argue the individual claims within the
Examiner’s groups of rejections. Instead, Appellants argue that “Carley and
Parker, alone or in combination, do not disclose accessing and sending
subscriber identification information on or from a blocked subscriber
identity module, as recited in independent claim 1 and [as] similarly recited
in independent claims 15 and 24” (Br. 5) (underlining deleted). Appellants
conclude by asserting that “[t]he remaining claims depend from the
independent claims … and therefore also define patentable subject matter”
(Br. 7). We, accordingly, select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Have Appellants shown that the Examiner erred by combining
the cited prior art to arrive at the claimed invention? The issue turns
on whether there is an apparent reason to combine the respective
teachings in the fashion claimed, and whether the Examiner has
provided articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.

FINDINGS OF FACT
The following Findings of Fact (FF) are supported by a preponderance
of the evidence on the record before us:
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1. A method for establishing emergency telecommunications service
using a mobile telephone that is locked to disable service until an
access code is entered to unlock the telephone is taught by Carley
(Carley, Abstract).
2. Carley’s method bypasses a requirement to input an access code to
a locked mobile telephone by allowing a user to input an
emergency call number to the locked telephone that is compared
to emergency call numbers stored in memory. If there is a match,
a controller in the telephone directs establishment of a network
connection for emergency telecommunications service (Carley,
col. 4, ll. 49-65; Fig. 5).
3. Parker teaches a method for establishing restricted
telecommunications service using a mobile telecommunications
handset that is locked to disable service until an access code is
entered to unlock the handset (Parker, col. 1, ll. 17-40; col. 3, ll.
57-67).
4. Parker’s method “permit[s] activation and unlocking of a pre-
locked device to be conducted remotely (e.g., over-the-air), and to
permit remote transmission to the device of a modifier or other
code for use in the unlocking the device” (Parker, col. 4, ll. 53-
57).
5. The Parker handset device includes a subscriber identification
module (SIM), and this handset device is taught as being able,
when locked using the SIM, to transmit an information signal to a
station having a customer service center. Upon verification of the
received information signal, the customer service center directs
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transmission of a remote activation signal from the station to
authorize restricted use of the handset device for communications
(Parker, col. 8, l. 15-col. 9, l. 39; Figs. 3 and 4).

PRINCIPLES OF LAW
An Examiner must establish a factual basis to support a legal
conclusion of obviousness in rejecting claims under 35 U.S.C. § 103. See In
re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The factual determinations
that the Examiner must make are set forth in Graham v. John Deere Co., 383
U.S. 1, 17 (1966).
To address obviousness questions involving combinations of known
elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
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improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires:
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))
(internal quotation marks omitted).
When the Examiner’s burden is met there is a shift to the
Appellants in the burden to overcome the Examiner’s prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).

ANALYSIS
Obviousness Rejection Based on Carley and Parker
The Examiner finds the representative independent claim 1
recited limitations taught in Carley except for having “subscriber
identification information on a blocked subscriber identity module
[(SIM)], the [SIM] located on the mobile communication device;
wherein when the [SIM] is blocked, the [SIM] blocks access to user
information and allows access to the subscriber identification
information for the emergency service communication” (Ans. 4-5).
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We, as does the Examiner, find that Carley teaches a method for
establishing emergency telecommunications service using a locked
mobile telephone that is disabled until a controller in the telephone
directs establishment of a network connection (FF 1 and 2). The
Examiner further finds that Parker teaches the limitations from claim
1 that are not taught in Carley (Ans. 5-6).
Appellants assert that the Examiner “admits Carley fails to
disclose accessing subscriber identification information on a blocked
subscriber identity module” (Br. 5). Following this assertion,
Appellants argue that Parker (1) “only discloses locking a handset”
and “does not disclose anything about a ‘blocked subscriber identity
module’” (Id.); and (2) “locking a handset is not equivalent to
blocking an identity module” (Id.).
The Examiner responds that the Parker disclosures are in the
“same field of endeavor” (Ans. 5). We concur with the Examiner, and
find that Parker teaches establishing restricted telecommunications
service using a locked mobile telecommunications handset that is
disabled until an access code is entered (FF 3). Further, the Examiner
finds Parker teaching “accessing … subscriber identification
information on a blocked (e.g., locked) subscriber identity module
(SIM 16), the subscriber identity module (16) located on the handset
(10) … (see col. 6, lines 19-26; Figs. 3 and 5), where the SIM is used
to lock and unlock the handset” (Ans. 5). We note that Parker
discloses a handset located SIM that is used to disable the handset (FF
5), and that Appellants’ assertions concerning Parker deficiencies,
therefore, have not persuasively rebutted the Examiner’s findings.
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We additionally find Parker teaches a method to “permit activation
and unlocking of a pre-locked device to be conducted remotely (e.g.,
over-the-air), and to permit remote transmission to the device of a
modifier or other code for use in the unlocking the device” (FF 4).
Appellants further assert non-equivalence of the recited
“blocked” mobile communication device and Parker’s “locked”
telecommunications handset (Br. 5-6). What Appellants argue is that
(1) Parker “teaches the purpose of locking … is [to] furnish[] [a
handset] under a subsidy;” and (2) the filed Specification “teach[es]
an identity module may block access … for security purposes” (Br. 6).
Appellants then conclude that “Parker does not teach accessing or
sending subscriber identification information on or from a blocked
subscriber identity module” because of “the different purposes of
locking a handset for subsidy purposes as opposed to blocking a
subscriber identity module based on improper attempts to access data
on the subscriber identity module[, i.e., security purposes]” (Id.). This
security feature, however, is not recited in either representative claim
1, or in other appealed claims, and, therefore, we are not persuaded
that the recited “blocked” subject matter is distinguished from
Parker’s “locked” condition.3 Accordingly, we are not persuaded that

3 “Though understanding the claim language may be aided by explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
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the Examiner erred in finding that the claimed subject matter reads on
Parker.
We further find no error in the Examiner’s apparent reasoning for the
asserted combination obviousness rejection of representative claim 1 based
on the collective teachings of Carley and Parker. As noted in the Findings of
Fact section above, Carley teaches a method for establishing an emergency
service mobile telephone network connection by allowing a user of a locked
mobile telephone to input an emergency call number that is compared to
memory stored emergency numbers (FF 2). Parker, as also noted in the
Findings of Fact, is in the same field of endeavor, and discloses a SIM
equipped locked handset device for implementing a taught method
“permit[ting] activation and unlocking of [the] pre-locked device to be
conducted remotely (e.g., over-the-air), and to permit remote transmission to
the device of a modifier or other code for use in the unlocking [of] the
device” (Parker, col. 4, ll. 53-57) (FF 3-5). We, accordingly, see no error in
the Examiner’s position that ordinary skilled artisans would have apparent
reasons from the references’ teachings to combine Carley’s method for
establishing emergency communication service with Parker’s method for
using a SIM locked mobile communication device in the fashion claimed
(Ans. 4-6).
For the reasons indicated, we are not persuaded by Appellants’
arguments. Furthermore, in combining the teachings of Carley with Parker,
we find the Examiner has provided reasoning with some rational
underpinning to support the legal conclusion of obviousness (Ans. 4-6).
Appellants have simply not persuasively rebutted the Examiner’s position in
this regard – a position that we find reasonable.
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For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and also claims 7-9, 12-15,
20, 21, and 24 which fall with claim 1, as admitted by Appellants (Br. 5 and
7).
Obviousness Rejections of Claims 2, 3, 6, 10, 11, 16, 19, and 25
Regarding the obviousness rejections of (1) claims 2, 3, 16, and 25
over Carley, Parker, and King (Ans. 13-15); and (2) claims 6, 10, 11, and 19
over Carley, Parker, and Raith (Ans. 15-19), we find that Appellants have
not persuasively rebutted the Examiner’s prima facie case of obviousness for
these claims, but merely alluded that the additional references fail to cure the
Appellants’ previously-noted deficiencies of Carley and Parker (Br. 6-7).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner’s prima
facie case. See Oetiker, 977 F.2d at 1445. Since Appellants did not
particularly point out errors in the Examiner’s reasoning to persuasively
rebut the Examiner’s prima facie case of obviousness, the rejections are
therefore sustained.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in combining
Carley and Parker to arrive at the invention as indicated in the rejection of
representative claim 1 under § 103. Also, Appellants have not shown error
in the Examiner’s obviousness rejections of claims 2, 3, 6-16, 19-21, 24, and
25.
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DECISION
We have sustained the Examiner’s rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-3, 6-16,
19-21, 24, and 25 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

KIS

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