Ex Parte Abraham et al

Patent Trial and Appeal BoardSep 9, 2014

12259268 (P.T.A.B. Sep. 9, 2014)

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. 12/259,268 10/27/2008 Charles Abraham 3875.2190004 1678 26111 7590 09/10/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER ISSING, GREGORY C ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 09/10/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHARLES ABRAHAM, FRANK VAN DIGGELEN, and MATTHEW RIBEN ____________________ Appeal 2012-003118 Application 12/259,2681 Technology Center 3600 ____________________ Before ANTON W. FETTING, BART A. GERSTENBLITH, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Broadcom Corporation. App. Br. 3. Appeal 2012-003118 Application 12/259,268 2 We AFFIRM-IN-PART. According to the Specification, Appellants invented “a method and apparatus for generating and distributing satellite tracking information through a network or communications link.” Spec. 2 ¶ 2. Claims 1 and 11 are independent claims. We reproduce below claim 1, as illustrative of the claims on appeal. 1. A method for creating long-term- satellite-tracking data, the method comprising: a) extracting from satellite-tracking data initial model parameters representing a current orbit of at least one satellite-positioning-system satellite by a circuit; b) computing an orbit model using the initial model parameters, wherein a duration of the orbit model is longer than a duration of validity of the satellite-tracking data; c) comparing, for an overlapping period of time, the orbit model to the satellite-tracking data; and d) adjusting the orbit model to match the satellite-tracking data for the overlapping period of time so as to form an adjusted orbit model, wherein the adjusted orbit model comprises the long-term-satellite-tracking data. REJECTION AND PRIOR ART2 The Examiner rejects claims 1, 2, 8–14, and 17–20 under 35 U.S.C. § 102(b) as anticipated by Kyrtsos (US 5,430,657, iss. July 4, 1995). 2 The Examiner withdraws the rejections, made in the final Office Action, of claims 1–4 and 7–10 under 35 U.S.C. §§ 101 and 112, first paragraph. Ans. 4. Appeal 2012-003118 Application 12/259,268 3 ANALYSIS Independent claim 1 includes the following limitations: a) extracting from satellite-tracking data initial model parameters representing a current orbit of at least one satellite-positioning-system satellite by a circuit; [and] b) computing an orbit model using the initial model parameters, wherein a duration of the orbit model is longer than a duration of validity of the satellite tracking data. App. Br., Clms. App’x. In the Appeal Brief, Appellants argue the Examiner does not establish that Kyrtsos teaches the limitation “a duration of the orbit model is longer than a duration of validity of the satellite-tracking data.” App. Br. 7. Specifically, Appellants state: The Office Action states that[,] “The duration of the best fit curve approximat[]ion is not limited by time and therefore is longer than the duration of use defined by the ephemeris data.” Appellant submits that the conclusion does not follow from the premise. In other words, it does not follow that it is longer in duration than the validity of the satellite-tracking data. App. Br. 7. Initially, we note that the final Office Action mailed August 20, 2010 (“the final Office Action”), which appears to set forth a different rationale for the rejection of the claims, does not include the phrase quoted by Appellants.3 Nonetheless, Appellants’ argument appears to be rendered moot by the Examiner’s statements that Kyrtsos teaches an orbit model with a duration of “just under 6 hours,” which is shorter than a satellite-tracking 3 The Examiner’s January 13, 2010, non-final Office Action, however, included this statement. Office Action (mailed Jan. 13, 2010) at 5. Appeal 2012-003118 Application 12/259,268 4 data duration of “2–4 hours.” See Ans. 5–6. Appellants do not argue against these statements made by the Examiner, in the Reply Brief. Thus, Appellants’ argument is not persuasive. In the Examiner’s Answer, the Examiner further states, with reference to column and line numbers in Kyrtsos, that: Receiver system 400 receives and decodes the navigation signals from the satellites (6:17+). The receiver decodes the GPS navigation signal message (including satellite tracking data in the form of almanac and ephemeris portion of the message) and extracts ephemeris data therefrom (6:62+). The GPS ephemeris data defined by the standard GPS navigation message consists of Keplerian model parameters that define the orbit and equates to the “model parameters.” Ans. 5 (emphasis added); see also id. at 7, 9. Thus, the Examiner relies on Kyrtsos’ extracted ephemeris data to teach the claimed “extract[ed] . . . initial model parameters,” which claim 1 requires is used to “comput[e] an orbit model.” Appellants argue that, contrary to the Examiner’s statement, Kyrtsos’ extracted ephemeris data is not used to compute an orbit model, as is required by the independent claim 1. For example, Appellants point out that the first line of Kyrtsos’ Abstract states, “[t]he position of a satellite in a satellite based navigation system is determined without reliance on satellite ephemeris data.” Reply Br. 6 (citing Kyrtsos, Abstract). However, the rejection of claim 1 states that the claim limitation “computing an orbit model using the initial model parameters” is taught by Kyrtsos as follows: “Figure 8 (11:8–12:5) describes the prediction of a Appeal 2012-003118 Application 12/259,268 5 satellite elliptical orbit using initial satellite position, which is based on initial model parameters.” Ans. 5. Kyrtsos explains the portion cited by the Examiner describes “a first embodiment . . . [in which] the position of a satellite is determined with indirect reliance on the ephemeris data.” Kyrtsos, col. 11, ll. 3–5. Thus, Appellants’ argument the Kyrtsos does not teach computing an orbit model with extracted ephemeris data is not persuasive. Based on the foregoing, we sustain the rejection of independent claim 1. We also sustain the rejection of independent claim 11, which Appellants argue is patentable for the same reasons as claim 1. See App. Br. 7–8, Reply Br. 5–7. Appellants do not argue separately the patentability of claims 8, 9, 14, and 17–19, which depend from independent claims 1 and 11. Thus, we sustain the rejection of these dependent claims, for the same reasons as the independent claims. Appellants separately argue claims 2, 10, 12, 13, and 20, which depend from independent claims 1 and 11. Neither the Examiner’s Answer nor the final Office Action sets forth the Examiner’s rationale for rejecting the claims.4 Although the Examiner apparently responds to Appellants’ arguments as to claims 2, 10, and 20, see Ans. 10–12, in the absence of factual findings and analysis as to how the art describes these claims, we are 4 While the Final Rejection refers back to earlier Office Actions, the only earlier action, the first non-final action, did not provide findings as to these claims. We note also that MPEP 1207.02 (Eighth Edition, v. 8, July 2010) as in effect at the time of the Answer, states: “An examiner’s answer should not refer, either directly or indirectly, to any prior Office action without fully restating the point relied on in the answer.” Appeal 2012-003118 Application 12/259,268 6 not in a position to review the basis for the rejection. Thus, we agree with Appellants that the Examiner has not established that Kyrtsos teaches the limitations of the claims. We therefore do not sustain the rejection of claims 2, 10, 12, 13, and 20. DECISION5 The Examiner’s rejection of claims 1, 8, 9, 11, 14, and 17–19 under 35 U.S.C. § 102(b) is AFFIRMED. The Examiner’s rejection of claims 2, 10, 12, 13, and 20 under 35 U.S.C. § 102(b) is REVERSED. 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). AFFIRMED-IN-PART pgc 5 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.