Ex Parte Trauberg

Patent Trial and Appeal Board

Mar 20, 2015

11597140 (P.T.A.B. Mar. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARKUS TRAUBERG
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Appeal 2012-012691
Application 11/597,140
Technology Center 2600
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Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 18–35. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding Lindell and Nadarajah collectively teach “assigning the user data
object an access parameter permitting a user of the telecommunications
terminal access to the user data object depending on which
Appeal 2012-012691
Application 11/597,140

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telecommunications network the telecommunications terminal is registered
into,” as recited in independent claim 18 (emphases added).
1

The Examiner cites Lindell for the italicized claim limitation. See
Ans. 6. Specifically, the Examiner maps Lindell’s application to the recited
“user data object,” and Lindell’s service requirements of an application to
the recited “parameter.” See Ans. 6.
We agree with Appellant the service requirements of Lindell’s
application are intrinsic properties of the application and therefore, do not
require any assignment. See App. Br. 8. Indeed, the cited portions of
Lindell do not teaching assigning the service requirements to the application,
because the application inherently possesses such service requirements. See
Lindell, Fig. 2, ¶¶ 21, 30, 37, 38. The Examiner does not provide any
explanation in response to Appellant’s argument.
Accordingly, we are constrained by the record to reverse the
Examiner’s rejection of independent claim 18 and corresponding dependent
claims. For similar reasons, we reverse the Examiner’s rejection of
independent claim 33 and corresponding dependent claims.
We note the Examiner relies on additional references for dependent
claims 25–29, 31, 32, 34, and 35. See Ans. 12–18. However, the Examiner
relies on Lindell in the same manner discussed above in the context of claim
18, and does not rely on the additional references in any manner that
remedies the deficiencies discussed above with respect to Lindell.

1
Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to address the additional
arguments.
Appeal 2012-012691
Application 11/597,140

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DECISION
The Examiner’s decision rejecting claims 18–35 is reversed.

REVERSED

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