Uwe Baeder et al.

Patent Trials and Appeals Board

Feb 4, 2020

14796038 - (D) (P.T.A.B. Feb. 4, 2020)

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.
14/796,038 07/10/2015 Uwe Baeder R117.0002US1 9513
27367 7590 02/04/2020
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1100
121 South Eighth Street
MINNEAPOLIS, MN 55402
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
docketing@wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UWE BAEDER and HOLGER JAUCH
____________

Appeal 2018-005120
Application 14/796,038
Technology Center 2600
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
MATTHEW J. McNEILL, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 Rohde &
Schwarz GmbH & Co. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention tests mobile communications devices by (1)
transmitting a Universal Integrated Circuit Card (UICC) testing profile to the
device that activates the profile; (2) setting the device’s configuration to a
testing mode according to information in the profile; and (3) testing the
device while in the testing mode. See Abstract. Claim 1 is illustrative:
1. A testing method for testing a mobile communication device, the
method comprising:
transmitting, by a testing front end module, a testing profile of a
Universal Integrated Circuit Card (UICC) that emulates subscriber-specific
information to a mobile communication device, wherein the UICC is
external to the mobile communication device and arranged in the testing
front end module;
activating the testing profile on the mobile communication device;
setting, by a testing controller, the configuration of the mobile
communication device to a testing mode according to the information of the
activated testing profile of the UICC; and
performing operational tests on the mobile communication device
using a testing front end module of a testing system while the configuration
of the mobile communication device is set to the testing mode.

THE REJECTIONS
The Examiner rejected claims 1, 2, 4, 7, 8, and 10–14 under 35 U.S.C.
§ 103 as unpatentable over Doshi (US 2013/0078996 A1; published Mar. 28,
2013), Merrien (US 2013/0283047 A1; published Oct. 24, 2013), Reed (US
2013/0273853 A1; published Oct. 17, 2013), and Buchsbaum (US
2015/0333397 A1; published Nov. 19, 2015). Ans. 2–13.2

2 Throughout this opinion, we refer to (1) the Appeal Brief filed December
6, 2017 (supplemented January 9, 2018) (“Appeal Br.”); (2) the Examiner’s
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The Examiner rejected claims 3, 5, 6, and 9 under 35 U.S.C. § 103 as
unpatentable over Doshi, Merrien, Reed, Buchsbaum, and Haggerty (US
2012/0331292 Al; published Dec. 27, 2012). Ans. 14–15.

THE OBVIOUSNESS REJECTION OVER DOSHI, MERRIEN, REED,
AND BUCHSBAUM

Regarding independent claim 1, the Examiner finds that Doshi
discloses, among other things, a method for testing a mobile communication
device where a “testing front end module,” namely a system simulator,
transmits a UICC testing profile to the mobile device that activates the
profile. Ans. 3–4. Although the Examiner finds that Doshi’s UICC card (1)
does not emulate subscriber-specific information; (2) is not external to the
mobile device; and (3) is not arranged in the testing front end module, the
Examiner cites Merrien, Reed, and Buchsbaum for teaching these respective
features. Ans. 4–8. The Examiner also finds that Doshi’s mobile device
operational tests are not performed while the device’s is set to the testing
mode, but the Examiner nonetheless takes Official Notice that this feature is
well known in the art to use the appropriate device operational mode. Ans.
4. Based on these collective teachings, the Examiner concludes that the
claim would have been obvious. See Ans. 3–8.
Appellant argues the Examiner’s reliance on Buchsbaum is misplaced
because not only is the reference non-analogous art, but Buchsbaum does
not disclose a UICC, let alone a UICC in a testing front end module as
claimed. Appeal Br. 11–13; Reply Br. 6. Appellant adds that ordinarily

Answer mailed April 5, 2018 (“Ans.”); and (3) the Reply Brief filed April
12, 2018 (“Reply Br.”).
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skilled artisans would not have been motivated to modify Doshi based on
Buchsbaum to rearrange parts as the Examiner proposes because, among
other things, the Examiner’s parts rearrangement rationale lacks articulated
reasoning with rational underpinning, and such a rearrangement would not
likely result in the claimed invention. Appeal Br. 14–16; Reply Br. 7.

ISSUES
I. Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Doshi, Merrien, Reed, and Buchsbaum collectively would have taught
or suggested arranging a UICC in a testing front end module?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion? This issue turns on whether
Buchsbaum is analogous art.

ANALYSIS
We begin by noting that the Examiner’s findings regarding Doshi,
Merrien, and Reed are undisputed, including the Examiner’s equating
Doshi’s system simulator in Figure 1 to the recited “testing front end
module.” See Ans. 3. Rather, as noted above, this dispute turns on the
Examiner’s reliance on Buchsbaum to cure Doshi’s acknowledged
deficiency, namely arranging a UICC in a testing front end module, and the
proposed rationale to do so.
Our emphasis on the word “in” above underscores the claim’s
requirement that the UICC is in the testing front end module. As the
Examiner acknowledges, Doshi does not say whether the UICC is in the
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system simulator, namely the “testing front end module” under the
Examiner’s mapping, nor does Doshi specify exactly where the UICC is
located. See Doshi ¶¶ 2, 9–16, 20–35. Doshi does, however, explain that a
parser engine parses various entries from a UICC. See Doshi ¶¶ 24–25. As
shown in Doshi’s Figure 1 below, the parser engine is located in an
unlabeled device that includes an automation engine and logging tool, where
this device is connected to the system simulator and device under test via
Ethernet and USB connections, respectively.

Doshi’s Figure 1 showing device with parser engine connected to system
simulator and device under test via Ethernet and USB connections

Although Doshi does not specify the UICC’s exact location, the fact
that its four entries shown in the shaded boxes in Figure 1 above are parsed
by the parser engine at least suggests that the UICC may be in the unlabeled
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device that includes this engine, particularly given the entries’ four
corresponding lines that each converge on that device.
Therefore, assuming, without deciding, that Doshi’s UICC is in the
unlabeled device with the parser engine (“the parser engine device”), the
question is whether it would have been obvious to arrange the UICC in the
system simulator instead of the parser engine device as the Examiner
proposes in light of Buchsbaum. On this record, we answer “yes” to this
question.
As shown in Buchsbaum’s Figure 1, mobile telephone 100 includes a
module 109 that can be a Subscriber Identity Module (SIM) card, which the
Examiner equates to a UICC (Ans. 7), on which various components,
including secure element (SE) 105, front-end 104, and further components
106, can be arranged. See Buchsbaum ¶¶ 19–20, 27. Our emphasis on the
word “on” underscores that Buchsbaum’s UICC-based SIM card is not
arranged in the front-end 104 or other such components; rather, these
components are arranged on this UICC. The Examiner’s finding, then, that
Buchsbaum teaches arranging the UICC in the front end (Ans. 6–7, 16) is
somewhat puzzling at first blush given the front-end 104’s arrangement on
Buchsbaum’s UICC-based module 109 in Figure 1.
Nevertheless, we see no reason why Doshi’s UICC could not be
arranged in the system simulator, or “testing front end module,” as the
Examiner proposes, particularly given Buchsbaum’s teaching of arranging
the UICC within mobile telephone 101 in Figure 1, and the fact that Doshi’s
system simulator is connected directly to the parser engine device via an
Ethernet connection as shown in Figure 1. To the extent that Appellant
contends that arranging Doshi’s UICC in the system simulator instead of the
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parser engine device would somehow render the parser engine incapable of
parsing the UICC’s entries via the Ethernet connection or otherwise render
Doshi unsuitable for its intended purpose, there is no persuasive evidence on
this record to substantiate such a contention. On this record, we find the
Examiner’s proposed enhancement that effectively rearranges the UICC
from the parser engine device to the system simulator uses prior art elements
predictably according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
To the extent that Appellant contends that the Examiner’s proposed
enhancement to Doshi would be uniquely challenging or otherwise beyond
the skill level of ordinarily skilled artisans, there is no persuasive evidence
on this record to substantiate such a contention. See id.; see also Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Appellant’s arguments regarding the alleged inadequacy of the
Examiner’s parts rearrangement rationale (Appeal Br. 14–16; Reply Br. 7)
are unavailing. To be sure, nearly any device or system modification
rearranges parts and, such a rationale, standing alone, can be problematic in
some circumstances as Appellant indicates. Appeal Br. 15. But where, as
here, the Examiner merely proposes to arrange the UICC in Doshi’s system
simulator instead of the parser engine device, such a parts rearrangement
would have been merely an obvious variation, particularly given the
simulator’s direct Ethernet connection to the parser engine device as shown
in Figure 1. In short, this enhancement uses prior art elements predictably
according to their established functions—an obvious improvement. See
KSR, 550 U.S. at 417.
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We also find Buchsbaum is analogous art despite Appellant’s
arguments to the contrary. See Appeal Br. 11–13; Reply Br. 15–16. Prior
art is analogous if it is (1) from the same field of endeavor regardless of the
problem addressed, or (2) reasonably pertinent to the particular problem with
which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). Here, because Buchsbaum pertains to a mobile telephone and
associated communication functionality, it is at least reasonably pertinent to
Appellant’s problem, namely testing a mobile communication device, which
can include mobile telephones. See Spec. ¶ 23. That Buchsbaum’s
paragraph 36 notes that the manufacturer of the module or communication
device does not need any test systems for contactless communication does
not change our conclusion. Leaving aside the fact that such unnecessary test
systems are not only limited to manufacturers, but also contactless
communication as emphasized above, Buchsbaum’s paragraph 30
nonetheless teaches that module manufacturers typically require contactless
test systems to verify the module. In any event, the Examiner cites
Buchsbaum for a very limited purpose, namely to show that arranging a
UICC in a front end would have been obvious, and that ordinarily skilled
artisans would have applied such a teaching to a testing front end module,
such as that disclosed in Doshi. See Ans. 6–8. Therefore, Appellant’s
arguments regarding Buchsbaum’s paragraph 36 are unavailing, for
Buchsbaum’s teachings regarding mobile communications devices are at
least reasonably pertinent to Appellant’s invention that likewise involves
mobile communications devices. Accordingly, we find Buchsbaum is
analogous art.
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On this record, then, we find that the Examiner’s proposed
combination of the cited references is supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion.
Lastly, although Appellant argues for the first time on pages 3 to 6 of
the Reply Brief that the Examiner’s Official Notice is improper, these
arguments were not raised in the Appeal Brief and are, therefore, waived as
untimely. See 37 C.F.R. § 41.41(b)(2). Nor has good cause been shown to
raise these new arguments in the first instance in the Reply Brief.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4, 7, 8, and 10–14 not argued separately with
particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 3, 5,
6, and 9. Ans. 14–15. Because these rejections are not argued separately
with particularity, we are not persuaded of error in these rejections for the
reasons previously discussed.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7,
8, 10–14
103 Doshi, Merrien,
Reed, Buchsbaum
1, 2, 4, 7,
8, 10–14

3, 5, 6, 9 Doshi, Merrien,
Reed, Buchsbaum,
Haggerty
3, 5, 6, 9
Overall
Outcome
1–14

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).

AFFIRMED