Ex Parte Basir

Patent Trials and Appeals Board

Aug 14, 2014

11245488 - (D) (P.T.A.B. Aug. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OTMAN ADAM BASIR
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Appeal 2012–000583
Application 11/245,4881
Technology Center 2600
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–9, 11–21, 23–27, 29 and 30. Appellant has previously
canceled claims 10, 22 and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the real party in interest is Intelligent Mechatronic
Systems Inc. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellant's invention relates to a spatial calendar in which a user can
associate an event reminder to a location in space which "can be fed into the
device manually, from a map unit, GIS address book unit, or from the
current reading of the GPS unit, as well as any other source of GPS location
media." Abstract.
Exemplary Claims
Claims 1, 5, 9, 11, 17, 23, and 26, reproduced below, are
representative of the subject matter on appeal (emphases added to disputed
limitations):
1. A system for generating spatially-triggered
reminders comprising:
a database of events, each event including a space
condition, wherein at least a first space condition of the space
conditions is a category of locations, the category of locations
including a plurality of geographically-separated locations;
a position-determination system determining a current
location; and
an event manager comparing the space conditions of the
events to the current location and generating a notification
based upon the comparison of the space conditions and the
current location, the event manager generating the notification

2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Apr. 4, 2011); Reply Brief ("Reply Br.," filed Aug. 22, 2011); Examiner's
Answer ("Ans.," mailed June 22, 2011); Final Office Action ("Final Act.,"
mailed Aug. 4, 2010); and the original Specification ("Spec.," filed
Oct. 6, 2005).
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based upon the current location matching any of the plurality of
geographically-separated locations included in the category of
locations.
5. The system of claim 3 wherein the mobile device
includes a data cache storing the events and wherein the events
are also stored on a central server.
9. The system of claim 6 wherein the space condition
includes another mobile device.
11. The system of claim 6 wherein the event manager
compares the current location with the space condition using
hysteresis.
17. The method of claim 12 further including the steps
of:
f) determining a vehicle location while present at the
vehicle location; and
g) storing the vehicle location as the space condition.
23. The system of claim 1 wherein the first space
condition is "any grocery store."
26. The system of claim 1 wherein the event manager
generates the notification based upon a velocity of a rate of
change of the current location.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hoffberg US 6,429,812 B1 Aug. 6, 2002
Salmimaa et al.
("Salmimaa")
US 6,668,177 B2 Dec. 23, 2003
Orwant et al.
("Orwant")
US 2005/0227711 A1 Oct. 13, 2005
(filed Mar. 31, 2004)
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Rejections on Appeal
R1. Claims 1–9, 11–17, 19–21, 23, 24, 26, 27, 29 and 30 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Orwant. Ans. 5.
R2. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Orwant and Hoffberg. Ans. 9.
R3. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Orwant and Salmimaa. Ans. 10.
GROUPING OF CLAIMS
Based on Appellant's arguments (App. Br. 4–7), we decide the appeal
of the various rejections on the basis of the following claim groupings:
Rejection R1
Group A: Claims 1–4, 12–16, 18, 19–21, 24 and 27 on the basis of
representative claim 1;
Group B: Claims 5–8 on the basis of representative claim 5;
Group C: Claim 9 stands or falls alone;
Group D: Claim 11 stands or falls alone;
Group E: Claims 23 and 29 on the basis of representative claim 23;
Group F: Claims 26 and 30 on the basis of representative claim 26;
and
Group G: Claim 17 stands or falls alone.
We address remaining claims 18 and 25 in rejections R2 and R3, not
argued separately, infra.
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ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We agree with Appellant's
contentions with respect to claims 26 and 30. However, we disagree with
Appellant's contentions with respect to claims 1–9, 11–21, 23–25, 27 and 29,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner's Answer in
response to Appellant's Arguments. We highlight and address specific
findings and arguments regarding claims 1, 5, 9, 11, 17, 23 and 26 for
emphasis as follows.
1. Rejection R1 of Claims 1–4, 12–16, 18, 19–21, 24 and 27 (Group A)
Issue 1
Appellant argues (App. Br. 4, 5; Reply Br. 1, 2) the Examiner's
rejection of claims 1–4, 12–16, 18, 19–21, 24 and 27 under 35 U.S.C.
§ 102(b) as being anticipated by Orwant is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
limitations of "a database of events, each event including a space condition,
wherein at least a first space condition of the space conditions is a category
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of locations, the category of locations including a plurality of
geographically-separated locations," as recited in claim 1?
Analysis
With respect to claim 1, Appellant contends:
Orwant does not disclose categories of locations (e.g., "grocery
store"). In Orwant, a specific grocery store is selected. As
disclosed in paragraph 36, the location is limited to a specific
grocery store that is chosen by a wife at a specific location
along Route 100 near XYZ street. When a husband in this
instance arrives at this intersection, a reminder message will be
delivered. However, this message is limited to the particular
grocery store selected by the wife and not a category of
locations, such as grocery stores in general. Additionally,
Orwant does not disclose a plurality of geographically separated
locations. Claim 1 is not anticipated.
App. Br. 4, 5.3
In response, the Examiner finds,
Orwant discloses a database of events with rules, each event is
associated with a "LOCATION TYPES" field, wherein location
can be a street address ("Street"), for example (paragraph 98
and Fig. 5). A street address is a category of locations
and such a category of locations can include a
plurality of geographically-separated locations, i.e., different
"LOCATIONS" as disclosed by Orwant in Table No.1 in Fig. 5.
Therefore, Orwant discloses categories of locations
("LOCATION TYPES") and a plurality of geographically
separated locations ("LOCATIONS").
Ans. 11 (emphasis added).

3 We note Appellant's subheading heading "A" under the "Arguments"
section (App. Br. 4) incorrectly states " Obviousness of Claims 1-9, 11-17,
19-21, 23, 24, 26, 27, 29 and 30 based on Orwant." We point out the
pertinent rejection is for anticipation under § 102(b), and not obviousness.
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In the Reply Brief, Appellant contends "[a] specific address is not a
'category of locations.' In Orwant, a specific . . . store is selected (paragraph
36), and a reminder message is delivered when a person arrives . . . [and the]
message is limited to the particular . . . store and not a category of locations
. . . as the Examiner contends." Reply Br. 1, 2 (emphases added).
During examination, a claim must be given its broadest reasonable
interpretation consistent with the specification, as it would be interpreted by
one of ordinary skill in the art. Because the applicant has the opportunity to
amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.”).
In this appeal, the Examiner finds Orwant's Table 1 (see Orwant,
Fig. 5) discloses a plurality of location types which include, for example, a
street, city, latitude/longitude, or name. In Orwant, a "street" is said to be a
"location type," which we find to be equivalent to the recited "category of
location types." See Orwant ¶ 98.
Appellant's arguments cited above center on the mistaken notion that
the claimed "plurality of geographically-separated locations" are required to
be identified by the same "category of locations," e.g., "grocery store."
However, the plain language of claim 1 levies no such requirement. Instead,
claim 1 merely requires there be a plurality of geographically-separated
locations (which Orwant Table 1 discloses), and that "at least a first space
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condition of the space conditions is a category of locations." There is no
requirement in claim 1 that there be a plurality of locations of the same type,
e.g., multiple grocery stores. Accordingly, under the broadest reasonable
interpretation standard, we agree with the Examiner that Orwant anticipates
claim 1.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1 and other
remaining claims in Group A.
2. Rejection R1 of Claims 5–8 (Group B)
Issue 2
Appellant argues (App. Br. 5) the Examiner's rejection of claims 5–8
under 35 U.S.C. § 102(b) as being anticipated by Orwant is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses, "the
mobile device includes a data cache storing the events," as recited in
claim 5?
Analysis
Appellant contends:
Orwant does not disclose that events are stored on the units 20
and 30, which can be a mobile telephone (paragraph 87). In
contrast, in Orwant, the events are all stored on the central base
station 10, which can be a server (paragraph 88). The units 20
and 30 repeatedly report the position to the central base station
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10, and when the location matches the criteria, a message is
then sent to the units 20 and 30 by the central base station 10.
Claim 5 is not anticipated by Orwant.
App. Br. 5.
For context, we note Appellant's Specification states:
In Figure 2, an intermediate mobile space-time data cache 30 is
used to keep the logic between mobile event management
service 26 and locator service 28 consistent with their
counterparts on the server 24. This mobile data cache 30 also
helps to minimize response time by avoiding wireless
communication when local memory permits. Queries against
large datasets, including address lookups may be passed
directly through to the fixed server 24.
Spec. ¶ 32. Similarly, in Orwant, "[t]he control unit 23 can be designed to
transmit the position data immediately to the server, or to store in
memory 22 the position data for a predetermined number of positions and
then to transmit the data for all such positions as part of a batch
transmission." Orwant ¶ 85.
Based on the above observations, the Examiner finds, and we agree,
"Orwant discloses a memory device for storing data entries (event reminder)
and location information and the data is transmitted to server . . . [such that]
Orwant discloses a data cache storing the events." Ans. 12, 13 (citing
Orwant ¶¶ 84, 85, and 88).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claims 5 and 8 in Group B.
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3. Rejection R1 of Claim 9 (Group C)
Issue 3
Appellant argues (App. Br. 5; Reply Br. 2) the Examiner's rejection of
claim 9 under 35 U.S.C. § 102(b) as being anticipated by Orwant is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses, "the space
condition includes another mobile device," as recited in claim 9?
Analysis
Appellant contends, "[c]laim 9 recites that the space condition
includes another mobile device. That [is], a distance relative to another
mobile device can be specified. Orwant does not disclose this feature.
Therefore, claim 9 is not anticipated by Orwant." App. Br. 5. In the Reply,
Appellant nearly identically argues, "[c]laim 9 recites that the space
condition includes another mobile device. That is, a space condition relative
to another mobile device can be specified. Orwant does not disclose this
feature." Reply Br. 2.
We first note Appellant's arguments are not commensurate with the
scope of claim 9. As pointed out by the Examiner (Ans. 13), we find claim 9
does not require any determination of "distance" as argued by Appellant.
App. Br. 5.
Further, with respect to Orwant's disclosure, we agree with the
Examiner that the embodiment discussed in paragraphs 71–75, i.e., "[a]n
auxiliary location constraint can be imposed, such as specifying that a
message should not be delivered to John if Steve is near John when both are
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within the region," anticipates the limitation in dispute because Orwant
discusses implementation of various embodiments, including such desired
non-delivery, as being between mobile devices.4
We further note Appellant merely recites portions of the claim
limitations and contends the reference does not teach the limitations without
further analysis. App. Br. 5; Reply Br. 2. Such statements are not
considered to be arguments. 37 C.F.R. § 41.37(c)(1)(vii) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."). Thus, we do
not find Appellant's arguments to be persuasive.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of claim 9 in Group C.

4 "Each of the mobile objects is assumed to be equipped with a portable
signaling unit having a position-determining device that periodically reports
its position to a central base station . . . ." Orwant ¶ 26. Orwant's disclosure
is replete with examples of the client being a mobile cell phone. See Orwant
¶¶ 32, 33, 36 and 87.
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4. Rejection R1 of Claim 11 (Group D)
Issue 4
Appellant argues (App. Br. 5) the Examiner's rejection of claim 11
under 35 U.S.C. § 102(b) as being anticipated by Orwant is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses, "the event
manager compares the current location with the space condition using
hysteresis," as recited in claim 11?
Analysis
Appellant contends, "[c]laim 11 recites that the event manager
compares the currently location with the space condition using hysteresis.
There is not disclosure of using hysteresis in Orwant. Therefore, claim 11 is
not anticipated." App. Br. 5.
Similar to claim 9, supra, we note Appellant merely recites portions
of the claim limitations and contends the reference does not teach the
limitations without further analysis. App. Br. 5; Reply Br. 2. Such
statements are not considered to be arguments. See 37 C.F.R.
§ 41.37(c)(1)(vii). We further note the Examiner responds to Appellant's
general allegation of Orwant's alleged deficiencies with specificity by
finding Orwant discloses tracking a user's position, and equating such
position tracking to the use of the claimed hysteresis. Ans. 13 (citing
Orwant ¶¶ 35 and 36).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
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the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of claim 11 in Group D.
5. Rejection R1 of Claims 23 and 29 (Group E)
Issue 5
Appellant argues (App. Br. 5–6; Reply Br. 2) the Examiner's rejection
of claim 23 under 35 U.S.C. § 102(b) as being anticipated by Orwant is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
limitation of "wherein the first space condition is 'any grocery store,'" as
recited in claim 23?
Analysis
Appellant contends, "Orwant does not disclose categories of locations
(e.g., 'grocery store') as a first space condition . . . [and] a specific grocery
story is selected." App. Br. 5–6. "However, the Example of paragraph 36 is
limited to a specific grocery store that is chosen . . ." App. Br. 6. "[A]
reminder message will be delivered . . . [h]owever, this message is limited to
the particular grocery store and not a category of locations, such as grocery
stores in general." Id. In the Reply, Appellant contends, "[a] grocery store
means a specific grocery store, not 'any grocery store' as claimed." Reply
Br. 2.
In response, the Examiner finds, and we agree, "[c]laim 23 recites the
first space condition is 'any grocery store. ' Orwant discloses the space
condition is a grocery store (paragraph 36). A grocery store is one of 'any
grocery store.'" Ans. 14.
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Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of claims 23 and 29 in Group E.
6. Rejection R1 of Claims 26 and 30 (Group F)
Issue 6
Appellant argues (App. Br. 6; Reply Br. 2) the Examiner's rejection of
claim 26 under 35 U.S.C. § 102(b) as being anticipated by Orwant is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
limitation of "wherein the event manager generates the notification based
upon a velocity of a rate of change of the current location," as recited in
claim 26?
Analysis
The Examiner finds:
Orwant discloses generating notifications based on radius
(paragraph 98 and Fig. 5, "RADIUS" field). As the mobile
device is moves faster (rate of change is faster), the notification
is generated sooner, and vice versa. Therefore, Orwant
discloses "the notification is based upon a rate of change of the
current location. "
Ans. 14.
Appellant contends, "Orwant still does not disclose a notification
based upon rate of change. In Orwant, a notification is generated when the
unit 20 and 30 reaches a designated location (abstract)." Reply Br. 2.
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We disagree with the Examiner's finding cited above that a
notification based upon a radius or distance is equivalent under § 102 to the
recited "rate of change," as required by claim 26.
Accordingly, we cannot sustain the anticipation rejection of claims 26
and 30 in Group F.
7. Rejection R1 of Claim 17 (Group G)
Issue 7
Appellant argues (App. Br. 6) the Examiner's rejection of claim 17
under 35 U.S.C. § 102(b) as being anticipated by Orwant is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
limitations of "determining a vehicle location while present at the vehicle
location" and "storing the vehicle location as the space condition," as recited
in claim 17?
Analysis
Appellant contends,"[c]laim 17 recites the steps of determining a
vehicle location while present at the vehicle location and storing the vehicle
location as the space condition. Orwant also does not disclose this feature."
App. Br. 6.
Appellant merely argues that Orwant does not disclose the recited
claim limitations. Id. Such statements are not considered to be arguments.
37 C.F.R. § 41.37(c)(1)(vii) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold
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that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Accordingly, we sustain the Examiner's anticipation rejection of
claim 17.
8. Rejections R2 and R3 of Claims 18 and 25
In view of the lack of any substantive or separate arguments directed
to the unpatentability rejections of claims 18 and 25 under § 103 (see App.
Br. 7), we sustain the Examiner's unpatentability rejections of these claims,
as they fall with their respective independent claims 1 and 12. Arguments
not made are considered waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir 2008) ("When the appellant fails to contest a ground of rejection to
the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no
burden on the Board to consider the merits of that ground of rejection. . . .
[T]he Board may treat any argument with respect to that ground of rejection
as waived."). Further, when Appellants do not separately argue the
patentability of dependent claims, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Accordingly, we sustain
the rejection of claims 18 and 25.
REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 1–3) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
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93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
CONCLUSIONS
(1) The Examiner did not err with respect to the anticipation
rejection of claims 1–9, 11–17, 19–21, 23, 24, 27, and 29 under 35 U.S.C.
§ 102(b) over Orwant, and we sustain the rejection.
(2) The Examiner erred with respect to the anticipation rejection of
claims 26 and 30 under 35 U.S.C. § 102(b) over Orwant, and we do not
sustain the rejection.
(3) The Examiner did not err with respect to the unpatentability
rejections of claims 18 and 25 under 35 U.S.C. § 103(a) over the cited
combinations of prior art of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–9, 11–21, 23–
25, 27, and 29.
We reverse the Examiner's decision rejecting claims 26 and 30.
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)(2011).
AFFIRMED–IN–PART

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