Ex Parte Thill et al

Patent Trial and Appeal Board

Nov 27, 2017

13380571 (P.T.A.B. Nov. 27, 2017)

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.
13/380,571 12/23/2011 Michel Thill GMT0316 8711
41754 7590 11/29/2017
THF TANSSON FTRM
EXAMINER
3616 Far West Blvd UNELUS, ERNEST
Ste 117-314
AUSTIN, TX 78731 ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
lawfirm @ thej anssonfirm. com
Pehr@thejanssonfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL THILL, JOSEPH LEIBENGUTH,
and OLIVIER JOFFRAY1
Appeal 2017-004262
Application 13/380,571
Technology Center 2100
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
JON M. JURGOVAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Gemalto N.V.
See Appeal Br. 1.
Appeal 2017-004262
Application 13/380,571
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—8, and 10-17. Claims 2, 9, and 18—23 have been cancelled;
claims 24—33 have been withdrawn from consideration. App. Br. 22, 24, 26.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
formating added):
1. A portable electronic device comprising:
a. electric input means for receiving electric power from a
manufacturing equipment,
b. an application loaded into the portable electronic device, by
using a personalization machine during a post­
manufacturing personalization phase in which the
portable electronic device is configured for a specific
entity, the application being stored in a memory of the
portable electronic device, the application set
i. to be triggered when power is supplied to said electric
input means by the manufacturing equipment, and
ii. to communicate solely with entities internal to the
portable electronic device during a personalization
phase of the portable electronic device,
wherein the application is further set
iii. to configure the portable electronic device during the
personalization phase of the portable electronic
device when said application is triggered, and
iv. to be successfully executable not more than one time,
said one time occurring during the personalization
phase of the portable electronic device.
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Appeal 2017-004262
Application 13/380,571
Examiner’s Rejections
The Examiner rejected claims 1, 3, 7, 8, and 10—17 under 35 U.S.C.
§ 102(b) as being anticipated by Lazaridis (US 2006/0135138 Al; pub. June
22, 2006).2
The Examiner rejected claims 4—6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Lazaridis and Kruis et al. (US
2012/0021719 Al; pub. Jan. 26, 2012).3
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated because
Lazaridis fails to disclose the argued limitations?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief) that the Examiner has erred.
Appellants contend4 that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because
Lazaridis’ call forwarding program executes potentially
every time that the mobile device is connected to a PC. Thus, it
does not satisfy “to be successfully executable not more than
one time.'” However, applicants have further clarified this
limitation by stating “said one time occurring during the
2 As to claims 3,7, 8, and 10—17, our decision as to claim 1 is determinative.
Except for our ultimate decision, these claims are not discussed further
herein.
3 As to claims 4—6, our decision as to claim 1 is determinative. Except for
our ultimate decision, these claims are not discussed further herein.
4 These contentions are determinative as to the rejection of claim 1.
Therefore, Appellants’ other contentions are not discussed herein.
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Appeal 2017-004262
Application 13/380,571
personalization phase of the portable electronic device” which
certainly is not the time when Lazaridis’ call forwarding program
executes.
App Br. 17 (emphasis added).
The Examiner responds “see paragraph 0048 and fig. 5, which
disclose the handshaking process to take place only once.” Ans. 4.
Appellants further argue
[T]he Examiner relies on the Examiner’s statement that “the
handshaking process to take place only once.” However, that is
not true. The handshaking process takes place every time that a
handset is connected to a host. Thus, the handshaking process
cannot be considered to be limited to be successfully executable
no more than one time.
Reply Br. 4.
As to Appellants’ above contention, we agree with Appellants that
Lazaridis does not describe the claim 1 limitation of “to be successfully
executable not more than one time, said one time occurring during the
personalization phase of the portable electronic device” (emphasis added).
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 3, 7, 8, and 10-17 as being anticipated under 35 U.S.C. § 102(b).
(2) Appellants have established that the Examiner erred in rejecting
claims 4—6 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 1, 3—8, and 10-17 have not been shown to
be unpatentable.
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Appeal 2017-004262
Application 13/380,571
DECISION
The Examiner’s rejections of claims 1, 3—8, and 10-17 are reversed.
REVERSED
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