Ex Parte Tuilier et al

Patent Trial and Appeal Board

Sep 13, 2017

14379832 (P.T.A.B. Sep. 13, 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.
14/379,832 08/21/2014 Edmond Tuilier 1032326-000654 4242
21839 7590 09/15/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
LETT, THOMAS J
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMOND TUILIER and JEAN-REMI QUIRICONI
Appeal 2017-005434
Application No. 14/379,8321
Technology Center 2600
Before MARC S. HOFF, DENISE M. POTHIER, and
JASON M. REPKO, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention is a method of personalizing a security element
embedded in an apparatus, specifically downloading to the security element
data that is related to a subscription to a network of a mobile telephony
operator. The method comprises (i) connecting the card to a card reader; (ii)
reading from the card operator data corresponding to at least one
1 The real party in interest is Gemalto SA.
Appeal 2017-005434
Application No. 14/379,832
subscription to a network of a mobile telephony operator; (iii) transmitting
the operator data from the reader to an operator network; (iv) transmitting
from the operator network to a subscription manager a request for
transferring data related to the subscription to the mobile telephony operator
network; and (v) transmitting, from the manager to the security element, the
data related to the subscription to the mobile telephony operator network.
See Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A method for personalising a security element embedded in an
apparatus, said personalisation including downloading data, which relates to
a subscription to a network of a mobile telephony operator, in said security
element, comprising:
i - connecting said apparatus to a card reader;
ii - reading, from a card connected to said card reader, operator data
corresponding to at least one subscription to a network of a mobile
telephony operator;
iii - transmitting said operator data from the reader to an operator
network;
iv - transmitting, from the operator network to a subscription manager,
a request to transfer said data relating to the subscription to said mobile
telephony operator network; and
v - transmitting, from the subscription manager to said security
element, the data relating to the subscription to said mobile telephony
operator network.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Julin US 5,557,679 Sept. 17, 1996
Claims 1—7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Julin.
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Appeal 2017-005434
Application No. 14/379,832
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Aug. 9, 2016), the Reply Brief (“Reply Br.,” filed Feb. 14,
2017), and the Examiner’s Answer (“Ans.,” mailed Dec. 15, 2016) for their
respective details.
ISSUE
Does Julin disclose a method for personalizing a security element
embedded in an apparatus, including connecting said apparatus to a card
reader?
ANALYSIS
Independent claim 1 recites a “method for personalizing a security
element embedded in an apparatus,” including “connecting said apparatus to
a card reader.” The Examiner finds that Julin discloses this limitation,
remarking that he “does not see clear support for an embedded card or
security element in an apparatus” in the disclosure and states that in the
Specification’s drawings, “a security element embedded within an apparatus
is not shown to be within any apparatus.” Ans. 6—7.
We disagree with the Examiner’s findings. In contrast to the
Examiner’s allegation that Appellants’ Specification lacks support for an
embedded security element, we find that Appellants disclose that “the
security element cannot necessarily be extracted from the apparatus” (Spec.
1:15—16); “security element may also be in the form of an integrated circuit
soldered in an apparatus” (Spec. 1:19-21); “this solution is not applicable in
the case where the security element is embedded fixedly in an apparatus”
(Spec. 2:22-24).
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Appeal 2017-005434
Application No. 14/379,832
Contrary to the Examiner’s finding that Julin discloses the limitation
at issue, Julin discloses SIM card 11 as being removably inserted in reader
10. See Julin col. 3:63—64, Fig. 1. Julin therefore does not disclose a
security element embedded2 in an apparatus that is mapped to terminal 9.
Ans. 3. As a result, Julin cannot disclose connecting an apparatus, in which
a security element is embedded, to a card reader as proposed.
Based on the record, Julin does not disclose all the limitations of
independent claim 1. We do not sustain the Examiner’s § 102(b) rejection
of claim 1, or of claims 2—7 dependent therefrom.
CONCLUSION
Julin does not disclose a method for personalizing a security element
embedded in an apparatus, including connecting said apparatus to a card
reader.
ORDER
The Examiner’s decision to reject claims 1—7 under 35 U.S.C.
§ 102(b) is reversed.
REVERSED
2 An ordinary meaning of “embed” includes “to enclose closely in or as if in
a matrix” and “to make something an integral part of.” Embed, Merriam-
Webster Online Dictionary, available at https://www.merriam-
webster.com/dietionary/embed (defs. la and lb) (last visited September 12,
2017).
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