Ex Parte Madsen et al

Patent Trial and Appeal Board

Dec 3, 2013

11848173 (P.T.A.B. Dec. 3, 2013)

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.
11/848,173 08/30/2007 Jens-Ole Madsen 00002-5296 3321
72165 7590 12/04/2013
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT 004770
1100 13TH STREET
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
MYERS, PAUL R
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
12/04/2013 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 JENS-OLE MADSEN and RUNE LINDHOLM

____________

Appeal 2011-004835
Application 11/848,173
Technology Center 2100
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Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/848,173

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-34. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to an interface having a
single data connection, the interface arranged to transfer data between user
equipment and an identity module. The data transferred over the interface is
synchronized by at least one clock signal. Abstract.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An interface, comprising:
a single data connection, arranged to transfer data between
user equipment and an identity module,
wherein the data transferred is arranged to be synchronized
by at least one clock signal, and wherein the data transferred
comprises universal serial bus protocol data.

REFERENCES and REJECTIONS
1. The Examiner rejected claims 1-30, 33, and 34 under 35 U.S.C. § 103
as unpatentable over McAlear (U.S. 6,697,372 B1; Feb. 24, 2004) in
view of Sion (U.S. 6,715,678 B1; Apr. 6, 2004). Ans. 3-5
2. The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103 as
unpatentable over McAlear in view of Sion and further in view of
Govindaraman (U.S. 6,810,484 B2; Oct. 26, 2004). Ans. 5

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ISSUES
The issues are whether the Examiner:
1. erred in finding that the combination of McAlear and Sion teaches or
suggests the limitation of “a single data connection, arranged to
transfer data between user equipment and an identity module” as
recited in claim 1; and
2. reasonably combined McAlear and Sion.

ANALYSIS
Claims 1-30, 33, and 34
Appellants argue that Sion does not disclose an interface between an
identity module 5 and user equipment (i.e., the personal computer in Sion)
(App. Br. 8). Appellants explain that one of ordinary skill in the art would
consider the portable reader of Sion a necessary element in the system of
Sion (App. Br. 8). Thus, in the context of the disclosure of Sion, one of
ordinary skill in the art simply would not consider directly inserting the
identity module (e.g., SIM card 5) into the personal computer (App. Br. 8).
We do not agree with Appellants’ argument. We agree with the
Examiner that one skilled in the art at the time of the invention would insert
Sion’s portable reader including the identity module into the USB port of
McAlear (Ans. 7). We also agree with the Examiner that, when the portable
reader including the identity module is inserted into the USB port 82 of
McAlear, the Ethernet connection (i.e., LAN link 90) to hub (80) teaches the
claimed interface (Ans. 7; see McAlear’s Fig. 7).
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Appellants further argue (App. Br. 8), Sion teaches that “due to the
small memory capacities and processing speed of such modules [i.e., identity
modules], these programs are limited in memory size and execution
speed” (Sion, col. 1, ll. 25-26). Therefore, according to Appellants, an
object of Sion is to provide a detachable portable reader with a higher
memory capacity than the memory identity module itself (App. Br. 8).
Appellants assert that this is in stark contrast to embodiments of the present
invention, where the problem addressed is efficient and quick transmission
of a large amount of data from the identity module to the user equipment
directly (App. Br. 8). Thus, in accordance with the disclosure of Sion,
because there is only limited information that can be stored on identity
modules, there is no incentive to provide a faster data transmission rate (via
an interface) between the identity module and the user equipment (App. Br.
8). Appellants conclude that, due to the limited information being provided,
one skilled in the art would see no advantage in providing an interface, such
as the interface between the user equipment and the identity module (App.
Br. 8).
We do not agree. The Examiner’s articulated combination does not
exclude Sion’s detachable portable reader with the higher memory capacity,
but rather, includes the detachable portable reader with the identity module
which is inserted into the USB port 82 of McAlear (Ans. 7). Thus, the
combination would allow for storage of a large amount of data and
McAlear’s faster transmission interface would be an advantage to the
exchange of data.
Furthermore, we note that the Examiner’s articulated rationale of
remote access to the identity module and transferring of data in the standard
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format used by telephone systems constitutes a rational underpinning
supporting the legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
Accordingly, we affirm the Examiner’s rejections of claim 1 and for
the same reasons the rejections of claims 2-30, 33, and 34 which were not
separately argued.
Claims 31 and 32
We also affirm the Examiner’s rejections of claims 31and 32 for the
reasons as stated supra, because no separate arguments for patentability have
been presented.

CONCLUSIONS
The Examiner:
1. did not err in finding that the combination of McAlear and Sion
teaches the limitation of “a single data connection, arranged to
transfer data between user equipment and an identity module” as
recited in claim 1; and
2. reasonably combined McAlear and Sion.

DECISION
The Examiner’s decision rejecting claims 1-34 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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