Appeal No. 2004-1677
Application 09/028,726
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chavez and Wang, further in view of ETSI.
We refer to the final rejection (Paper No. 25) (pages
referred to as "FR__") and the examiner's answer (Paper No. 30)
for a statement of the examiner's rejection, and to the brief
(Paper No. 29) (pages referred to as "Br__") and reply brief
(Paper No. 32) (pages referred to as "RBr__") for a statement of
appellant's arguments thereagainst.
OPINION
Claims 1-4, 6, and 7
The issue to be decided is one of claim interpretation.
Appellant argues that "data specific to that terminal" requires
terminal-specific data, where (Br6)
Terminal-specific means that the information has been
created [with] only that one specific terminal in mind. The
information is unique to that terminal and potentially
different from corresponding information specific to all
other terminals. This is what the present invention is
about. In Chavez and the like, the information about
allowable base stations pertains to certain terminals,
because it is common to these terminals that they all must
behave according to the rules laid down in said pertaining
information. But since the rules, i.e., the list of
allowable base stations, is the same for all of these
terminals, it is not terminal-specific.
The examiner responds (EA4):
Examiner maintains that the claimed limitation of 'data
specific to that terminal' does not require nor indicate
that the information has been created with only that
terminal in mind' and as such Chavez's teaching of a
wireless terminal consulting an internal list of base
stations on which it is allowed to register, this list being
transmitted from the wireless switching system (network)
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