Ex Parte Warsta et al

Board of Patent Appeals and Interferences

May 25, 2012

10528018 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARKUS WARSTA, MARIOS ANAPLIOTIS,
ANETTE DOLKER, PETRI AALTO, and JUHA RONTU
____________________

Appeal 2010-002870
Application 10/528,018
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and JENNIFER S.
BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002870
Application 10/528,018
2
SUMMARY
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10-13, 15, and 17-41. Claims 9, 14, and 16 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-5, 10-13, 15, 19-25, 28, 29, 32-36, and 39-41 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Boivin (US 2003/0092436
A1; May 15, 2003 (filed Nov. 8, 2002) (provisional filed Nov. 9, 2001)).
Ans. 4-7.
Claims 6-8, 26, 27, 30, 31, 37, and 38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boivin and Kowarsch (US 2004/0132449 A1;
July 8, 2004 (filed June 6, 2001)). Ans. 8-10.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boivin and Coad (2003/0190913 A1; Oct. 9, 2003 (filed
Feb. 7, 2003) (claiming priority to Aug. 2, 2001)). Ans. 10-12.
We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to a method of managing subscriber data
in a communications network. Spec. 1-5. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method, comprising:
receiving at a routing register a message associated with
an inactive subscriber of a communications network and
including data relating to the identity of said subscriber;

based on the identity of said subscriber and on routing
information stored at said routing register, selectively routing
said message from said routing register to an inactive subscriber
register for storing subscriber data for inactive subscribers; and
Appeal 2010-002870
Application 10/528,018
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updating said routing information associated with the
subscriber at the routing register to route subsequent signaling
associated with the subscriber to an active subscriber register,
which after the receipt of said message at the inactive
subscriber register is provisioned with subscriber data required
by the active subscriber register to service said subscriber.

Appellants argue that the Boivin published application is not properly
prior art because its filing date, November 8, 2002, is after the claimed
priority date of this application, September 18, 2002.1 Br. 15. Further,
Appellants assert that the subject matter of the one page provisional
application to which Boivin claims priority, filed November 9, 2001, does
not anticipate the claimed invention. Br. 16.
The Examiner responds that the Boivin provisional application
“provides language that describes at least Figs. 2-3 in the Boivin non-
provisional application as well as language to support the rejection of at least
independent claims 1, 19, 20, 21, 22, 23, 32, and 41.” Ans. 14.

ISSUE
Did the Examiner err in finding that, for purposes of the rejections at
issue, the 35 U.S.C. § 102(e) critical reference date of Boivin is the filing
date of the provisional application, November 9, 2001?

1 The Examiner does not dispute that Appellants are entitled to the filing
date of September 18, 2002—the date on which the PCT application was
filed.
Appeal 2010-002870
Application 10/528,018
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ANALYSIS
On this record, we agree with Appellants that the Boivin provisional
application does not reasonably support the Examiner’s rejections. Boivin’s
published application constitutes prior art only for subject matter properly
supported by the provisional application in accordance with 35 U.S.C. § 112,
first paragraph. See In re Giacomini, 612 F.3d 1380, 1383-85 (Fed. Cir.
2010); see also Ex parte Yamaguchi, 88 USPQ2d 1606, 1609 (BPAI 2008)
(precedential); MPEP §§ 2136.03(III), 706.02(VI)(D).
The Examiner relies on Figures 2 and 3 (reproduced below) and
paragraphs 18, 20, 25, 26, 28, and 30 of Boivin to support the rejection of
claim 1. The paragraphs of the Boivin published application that the
Examiner relies on describe the implementation of the invention in detail,
including a description of the registers used for data storage and the
movement of data between registers. As an example, paragraph [0018]
states:
Associated with each MSC 104A-C is a visitor location register
(VLR) 118. Each MSC 104A-C typically has its own VLR 118,
but this is not required. VLR 118 stores selected data relating to
mobile telephones 112A-B that are visiting within the network
associated with VLR 118 and its MSC 104A-C. The data stored
in VLR 118 is transferred from the home location register of the
home network to VLR 118 for each mobile telephone 112A-B
within the network of the VLR. This data can include the
international mobile station identity (IMSI), the mobile station
international ISDN number, and other information, including
the current geographic location of the mobile telephone 112A-
B, and the services available to the mobile telephone 112A-B,
for example supplementary voice services or data services.

The Boivin provisional application, on the other hand, is a sparse, one
page document. It does not contain any figures. And the text contained in the
Appeal 2010-002870
Application 10/528,018
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provisional application does not refer to any registers or describe any details
of how the invention is implemented. In its entirety, the provisional
application states:
Title:
This is a method to allow re-use of the same terminating
telephone number when a subscriber of a disposable cell phone
obtains another disposable phone and wants to keep the same
number.
Description:
One-time use recyclable/disposable cell phones (RDP) can
receive calls by using a prepaid server platform (PSP) to assign
telephone numbers. A number is assigned to a first time
subscriber using an Interactive Voice Response (IVR) in the
PSP. Subsequent RDP purchases are determined by the IVR and
the subscriber has the choice of retaining his previous number.
The method is as follows:
1. A subscriber purchases an RDP for the first time.
2. The phone is activated and the subscriber makes his first
outgoing call.
3. Regardless of the digits dialed, the call is connected by the
Mobile Switching Center (MSC) based on Mobile
Identification Number range (MIN) to the PSP via a 1-800
number.
4. The PSP is aware that this is a newly activated RDP.
5. The PSP's IVR interrogates the subscriber and determines if
this is subscriber is a new subscriber or a previous
subscriber wishing to keep his same number.
6. If the subscriber wishes to keep his same number, the subscriber is
prompted for his previous number and the IVR confirms the
number entered.
7. The PSP then determines that the telephone number requested has
been used and is currently inactive.
8. The PSP sends the Directory/MIN combination to the MSC and the
number is now activated.
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Appeal 2010-002870
Application 10/528,018
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The Examiner does not explain how these two figures alone, or the
brief disclosure of the Boivin provisional, without supplement by the text of
the Boivin published application, disclose any of the limitations of claim 1.
For example, it is unclear what in the Boivin provisional equates to the
“routing register” and “subscriber register” recited in claim 1. Thus, we find
that the Boivin application is not properly prior art for the rejection of claim
1 and we do not sustain that rejection. For the same reasons, we do not
sustain the anticipation rejections of claims 2-5, 10-13, 15, 19-25, 28, 29,
32-36, and 39-41. In addition, because the obviousness rejections also
depend on Boivin as a reference, we do not sustain the obviousness
rejections of claims 6-8, 17, 18, 26, 27, 30, 31, 37, and 38.
DECISION
The Examiner’s decision rejecting claims 1-8, 10-13, 15, and 17-41 is
reversed.

REVERSED

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