Jagannath Ghoshal et al.

Patent Trials and Appeals Board

Oct 11, 2019

15063383 - (D) (P.T.A.B. Oct. 11, 2019)

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.
15/063,383 03/07/2016 Jagannath Ghoshal IDF 10583A (4300-54002) 1220
28003 7590 10/11/2019
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
TAYLOR, BARRY W
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
6450patdocs@sprint.com
SprintMail@dfw.conleyrose.com
steven.j.funk@sprint.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAGANNATH GHOSHAL, ROBERT L. SPANEL,
BRET D. SUMNER, and ROBERT E. URBANEK
____________________

Appeal 2018-009131
Application 15/063,383
Technology Center 2600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 This Decision uses the following abbreviations: “Spec.” for the original
specification, filed March 7, 2016, which claims the benefit of an earlier
filed U.S. patent application; “Final Act.” for the Final Office Action, mailed
January 18, 2018; “Appeal Br.” for Appellant’s Appeal Brief, filed
June 14, 2018; “Ans.” for Examiner’s Answer, mailed July 10, 2018; and
“Reply Br.” for Appellant’s Reply Brief, filed August 31, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Sprint
Communications Company L.P. Appeal Br. 3.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to a
dynamic subscriber identity module (SIM) that selects a carrier applet based
on the mobile network identified by the SIM. Spec. ¶¶ 5–8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of dynamically changing a mobile communication
device by communicative coupling with a dynamic subscriber identity
module (SIM), the method comprising:
identifying, via a communication transceiver of the mobile
communication device that is executing at least one processor, a
mobile communication network;
polling, by the mobile communication device from the dynamic
SIM executing at least one processor, an identification of an active
carrier applet on the dynamic SIM, wherein the dynamic SIM is
removably engaged with the mobile communication device and
comprises a non-transitory memory that is segmented into a plurality
of separate memory partitions, wherein at least some of the plurality
of separate memory partitions comprise a different carrier applet, and
wherein the active carrier applet is one of a plurality of carrier
applets stored in one of the plurality of separate memory partitions on
the dynamic SIM; and
in response to the polling, directing, via execution of a steering
applet of the dynamic SIM, the dynamic SIM to switch the active
carrier applet to another carrier applet of the plurality of carrier
applets based on the identification of the mobile communication
network, wherein each carrier applet of the plurality of carrier
applets is maintained in parallel storage in different memory
partitions on the dynamic SIM while the active carrier applet is
switched.
Appeal Br. 24 (Claims App.) (emphasis added).
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THE REJECTIONS
R1. Claims 1–8 stand rejected under 35 U.S.C. § 103 as obvious
over Brown (US 2005/0164737 A1, published July 28, 2005), Cormier
(US 2015/0312873 A1, published October 29, 2015), and Tagg
(US 2017/0150435 A1, published May 25, 2017). Final Act. 2–7.
R2. Claims 9–20 stand rejected under 35 U.S.C. § 103 as obvious
over Brown, Cormier, Tagg, and Lhamon (US 2015/0271662 A1, published
September 24, 2015). Final Act. 7–23.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1–8
Claim 1 recites a dynamic subscriber identity module (SIM) that
“comprises a non-transitory memory that is segmented into a plurality of
separate memory partitions.” Appeal Br. 24 (Claims App.). The claim
provides that “each carrier applet of [a] plurality of carrier applets is
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maintained in parallel storage in different [ones of the] memory partitions.”3
Id. The claim also recites “directing, via execution of a steering applet . . . ,
the dynamic SIM to switch the active carrier applet4 to another carrier applet
of the plurality of carrier applets.” Id. (footnote added).
The Examiner rejected claim 1 as obvious over Brown, Cormier, and
Tagg. Final Act. 2–4. Specifically, the Examiner found Brown stores, in
separate memory portions, different sets of subscription parameters (each set
including an IMSI, an ICCID, and other parameters), and the Examiner
found this teaches a plurality of “carrier applets” in different “memory
partitions.” Id. at 3 (citing Brown, Fig. 1, ¶¶ 14, 19, 20, 36); see also id.
at 23 (explaining that because multiple service provides can use the same
SIM, Brown’s subscription parameters are stored in separate partitions).
Further, the Examiner found Brown switches the active set of the
subscription parameters, and Cormier describes “a Roaming Applet (522)
[that] steers the dynamic SIM to a first carrier applet (USIM1) or a second
carrier applet (USIM2).” Id. at 3–4 (citing Brown ¶¶ 30, 33; Cormier,
Fig. 5)).
Appellant contends the Examiner’s rejection is in error because the
references fail to teach or suggest “memory partitions” that store a plurality
of “applets,” as required by claim 1. Appeal Br. 15–18. In addition,

3 The reference to “memory partitions” in this phrase refers to the
previously recited “plurality of memory partitions.” See Appeal Br. 24
(Claims App.) (claim 1). Accordingly, we have added the phrase “ones of
the” before “memory partitions” for clarity.
4 The claim also specifies that “the active carrier applet is one of [the]
plurality of carrier applets stored in one of the plurality of separate memory
partitions.” Appeal Br. 24 (Claims App.).
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Appellant contends that the Examiner failed to establish a prima facie case
of obviousness. Id. at 18–20. For the reasons provided below, Appellant’s
arguments do not persuade us of Examiner error.
Prima Facie Case
Appellant contends the Examiner failed to establish a prima facie case
because the Final Office Action explains the rejection using terminology that
differs from the language recited in the claim. Appeal Br. 18–20. For
example, Appellant notes that the Final Office Action refers to memory
“portions” when explaining how the reference teaches the claimed memory
“partitions” and adds a phrase not present in the claim language (i.e.,
“plurality of carrier sub-partitions”). Id. at 18–19. According to Appellant,
this “muddle[s] the explicit language of Appellant’s claim.” Id. at 20. We
disagree.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). An Examiner’s rejection establishes a
prima facie case when it provides notice of the reasons for the rejection, and
the rejection is deficient when it of “is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
The Examiner provided sufficient notice of the reasons for the
rejection by identifying the relevant portions of the cited references and by
explaining how the references disclose the claim limitations. See Final
Act. 2–4. Although the Final Office Action explains the rejection using
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different terminology, the relevant claim language is also clearly identified
in the rejection. See id. Moreover, the differences between the claim
language and the terminology used in the explanation (individually and
collectively) neither “muddle” the claim language nor create undue
confusion. Accordingly, the rejection is sufficient to make a prima facie
case, and we are not persuaded by Appellant’s argument to the contrary.
Carrier Applets Limitation
Appellant contends the Examiner’s rejection is in error because the
references fail to teach or suggest a plurality of “carrier applets,” as required
by claim 1. Appeal Br. 17–18. Appellant contends, “[A]pplets comprise
instructions or logic executable by a processor.” Id. at 17 (citing Spec.
¶ 34). According to Appellant, Brown’s IMSI and ICCID fail to teach an
applet because these are “numbers” or “static data” rather than executable
instructions or logic. Id. Appellant argues, “While Cormier may discuss a
UICC storing multiple identities (USIMs), Cormier does not disclose that
the UICC comprises a plurality of separate memory partitions . . . much less
that at least some of the plurality of separate memory partitions comprise a
different applet.” Id. at 17–18.
Appellant’s arguments do not persuade us of error. In particular, the
Examiner found that Cormier’s USIM1 and USIM2 disclose the claimed
carrier applets (see Final Act. 4; Ans. 4–5), and we perceive no error in this
finding. Appellant does not expressly argue that Cormier’s USIMs fail to
teach the claimed carrier applets. Rather, Appellant characterizes the
USIMs as “identities” and states that an identity is not the same thing as an
applet. See Appeal Br. 17–18 (asserting that Cormier stores identities);
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Reply Br. 7 (arguing that the Examiner “unreasonably equates carrier applets
with identities”). However, Cormier explains that a USIM is an
“application” that is “used for subscriber identity verification” to allow
access to a cellular provider’s network. Cormier ¶ 3; see also e.g., id. ¶¶ 4,
17, 20, 101, 103, Fig. 5 (showing commands sent to and from USIM1 and/or
USIM2). Indeed, Cormier’s Figure 5 shows commands sent to and from
USIM1 and/or USIM2, which demonstrates that USIM1 and USIM2 must
include executable instructions or logic. Cormier, Fig. 5 (cited by Final
Act. 4). Appellant does not address this teaching of Cormier, and Appellant
fails to explain why Cormier’s USIMs do not teach the claimed carrier
applets. Accordingly, we are not persuaded by Appellant’s argument that
the references fail to teach or suggest this limitation.5
Memory Partitions Limitation
Appellant contends the Examiner’s rejection is in error because the
references fail to teach or suggest “memory partitions” that store the carrier
applets, as required by claim 1. Appeal Br. 16–18. Appellant submits that
the term “memory partition” is “well understood in the information
technology arts.” Id. at 16. Specifically, Appellant states, “Separate
memory partitions are understood to be separated either by hardware (e.g.,
separate integrated circuits or physically separated blocks of memory) or by
software, as by operating system restrictions.” Id. (citing Spec. ¶ 34).
According to Appellant, Brown “does not discuss memory partitions” (id.),

5 Because we determine that the Examiner correctly found that Cormier
teaches the claimed carrier applets, we need not evaluate the Examiner’s
finding that this claim limitation is also taught by Brown.
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and “Cormier does not disclose that the UICC comprises a plurality of
separate memory partitions” (id. at 17).
Appellant’s arguments do not persuade us of error. The Examiner
pointed to Brown for the claimed “memory partitions,” explaining that
Brown describes separate sets of parameters that are stored, in parallel, in
different portions of memory. Final Act. 3–4 (citing Brown, Fig. 1, ¶¶ 14,
19, 20, 36). The Examiner further found Brown teaches that the same SIM
is used by multiple service providers, which further supports the Examiner’s
finding. Id. at 23. Appellant does not specifically respond to these findings
(see Appeal Br. 16–18), and consequently, does not show error in them.
Moreover, even if we were to find that Brown merely teaches
simultaneous storage of parameters in the SIM’s memory (see Brown ¶ 20,
Fig. 1), Appellant fails to explain why it would not have been obvious to
segregate Brown’s memory into partitions, each configured to store a
different set of parameters. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”). Brown explains that each set
of parameters corresponds to a different user identification, and only one set
is selected and activated at a time. Brown ¶¶ 13, 14, 19, 20, 30, 32, 33. A
person of ordinary skill in the art would be familiar with memory
partitioning, would understand that it can be used to separate different sets of
information (such as Brown’s identities), and would know how to segregate
a memory into partitions. See Appeal Br. 16 (acknowledging that a
“memory partition” is “well understood in the information technology arts”);
see generally Spec. (omitting detailed explanation of memory partitions or
how they are created or implemented). Appellant does not contend that use
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of partitions in this context would be beyond the level of skill of one of
ordinary skill in the art, and Appellant does not submit that segregating
Brown’s memory into partitions would yield undesirable, unpredictable, or
unexpected results. Indeed, Appellant’s arguments focus only on the explicit
disclosure of Brown, rather than addressing what is—or is not—suggested
by this reference. See Appeal Br. 16 (“[A]n electronic word search of
Brown for ‘memory partition’ produced no results.”). Accordingly,
Appellant has not shown that Brown fails to suggest the claimed partitions.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1. Claims 2–8 each depend from claim 1, and Appellant
does not separately argue the patentability of these claims. Appeal Br. 20.
Accordingly, we also sustain the Examiner’s obviousness rejection of
dependent claims 2–8.
Obviousness Rejection R2 of Claims 9–20
The Examiner rejects claims 9–20 over a combination of Brown,
Cormier, Tagg, and Lhamon. Final Act. 7–23. For independent claims 9
and 17, Appellant relies on the arguments made with respect to independent
claim 1, and Appellant does not separately argue the patentability of the
dependent claims. Appeal Br. 20–22. These arguments are not persuasive
for the reasons discussed above. Consequently, we find Appellant’s
arguments do not show error in the Examiner’s factual findings and the
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conclusion of obviousness of independent claims 9 and 17, or their
respective dependent claims (i.e., claims 10–16 and 18–20).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8 103 Brown, Cormier, Tagg 1–8
9–20 103 Brown, Cormier, Tagg,
Lhamon
9–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED