Ex Parte Ge

Patent Trial and Appeal BoardAug 30, 2013

11874192 (P.T.A.B. Aug. 30, 2013)

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. 11/874,192 10/17/2007 Zhengkai Ge 4202-12300 2010 97698 7590 08/30/2013 Huawei Technologies Co., Ltd. c/o Conley Rose, P.C. 5601 Granite Parkway, Suite 500 Plano, TX 75024 EXAMINER EDWARDS, JAMES A ART UNIT PAPER NUMBER 2448 MAIL DATE DELIVERY MODE 08/30/2013 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 GE ZHENGKAI ____________ Appeal 2011-003336 Application 11/874,192 Technology Center 2400 ____________ Before KARL D. EASTHOM, MICHAEL R. ZECHER, and BRIAN J. McNAMARA, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003336 Application 11/874,192 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-3, 6-14, 17-25, 28-32, and 35-40. Br. 3. Claims 4, 5, 15, 16, 26, 27, 33, and 34 were cancelled. Claims Appendix. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention Appellant invented a method and system for sending a location service request to a network user. Abstract. The disclosed invention includes the following steps: (1) receiving a network client initiated location request that includes information associated with a first and second event; (2) processing the location request; (3) if the second event is determined to occur by the network system, the network system sends an event message to the network user that includes information associated with the first event; and (4) returning a second receipt acknowledgment of the event message to the network client. Id. In an alternative embodiment, the disclosed invention sends a cancellation of a previously deferred location request to the network user. Id. Illustrative Claim Claims 1, 12, 17, 23, 24, 31, 35, and 39 are independent claims. Claims 2, 3, and 6-11 directly or indirectly depend from independent claim 1, claims 13 and 14 directly or indirectly depend from independent claim 12, claims 18-22 directly or indirectly depend from independent claim 17, claims 25 and 28-30 directly or indirectly depend from independent claim 24, claim 32 directly depends from independent claim 31, claims 36-38 directly depend from independent claim 35, and claim 40 directly depends Appeal 2011-003336 Application 11/874,192 3 from independent claim 39. Independent claim 1 is illustrative of the disclosed invention and is reproduced below. 1. A method for a network system to send location request to a network user, the method comprising: receiving a location request from a network client, the location request including information associated with a first event detected by the network user to trigger a location report to the network client and information associated with an identification of the network user capable of being attached by the network system event; processing the location request; determining whether the network user is capable of being attached by the network system; if it is determined that the network user is capable of being attached by the network system, sending an event message to the network user, the event message including information associated with the first event; and returning a receipt acknowledgment of the event message to the network client. Prior Art Relied Upon Zhu US 2004/0253964 A1 Dec. 16, 2004 Shim US 2006/0120320 A1 June 8, 2006 Burroughs US 2006/0258369 A1 Nov. 16, 2006 Rejections on Appeal Claims 1-3, 10-14, 17, 18, 21, 23-25, 28, 30-32, 35, 36, 39, and 40 were rejected under 35 U.S.C. § 102(b) as being anticipated by Shim. Ans. 4-21. Claims 6, 7, 9, 19, 20, 22, 29, 37, and 38 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shim and Zhu. Id. at 22-25. Appeal 2011-003336 Application 11/874,192 4 Claim 8 was rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shim and Burroughs. Id. at 25-27. Examiner’s Findings and Conclusions The Examiner finds that Shim discloses all the claim limitations recited in independent claim 1. Ans. 4-5. In particular, the Examiner finds that Shim discloses identifying the Location Service (“LCS”) client because the LCS client receives information in a communication network with a location service, and the LCS client is named and classified as a client. Id. at 5 (citing to Shim, Fig. 5; ¶¶ [0004], [0006], [0032]). Based on those cited disclosures, the Examiner finds that Shim describes “determining whether the network user is capable of being attached by the network system,” as claimed. Id. Appellant’s Contentions Appellant disagrees with the Examiner’s position regarding Shim’s LCS client. Br. 11. Appellant argues that the claimed “determining whether the network user is capable of being attached by the network system” amounts to determining what state the network user is in or returns to—not identifying the name and classification of the LCS client, as asserted by the Examiner. Id. Appellant relies upon the same arguments presented against the anticipation rejection of independent claim 1 to rebut the anticipation rejection of independent claims 12, 17, 23, 24, 31, 35, and 39. See Br. 10- 13. II. ISSUE Has the Examiner erred in determining that Shim describes “determining whether the network user is capable of being attached by the Appeal 2011-003336 Application 11/874,192 5 network system,” as recited in independent claims 1 and 12, and similarly recited in independent claims 17, 23, 24, 31, 35, and 39? III. ANALYSIS 35 U.S.C. § 102(b) Rejection—Shim Claims 1, 12, 17, 23, 24, 31, 35, and 39 Based on the record before us, we discern error in the Examiner’s anticipation rejection of independent claims 1 and 12, each of which recite, inter alia, “determining whether the network user is capable of being attached by the network system.” We also discern error in the Examiner’s anticipation rejection of independent claims 17, 23, 24, 31, 35, and 39, each of which recite a similar claim limitation. The Examiner finds that tracking of the client is part of the service provided by Shim’s network system. Ans. 28. The Examiner then finds that the client must be capable of being attached by Shim’s network system so that it can be tracked. Id. at 28-29 (citing to Shim, Fig. 5; ¶¶ [0035-36]). The Examiner also finds that Shim’s network system is able to send event messages because the client is capable of being attached to the system and tracked. Id. at 29. Based on these findings, the Examiner takes the position that Shim describes the disputed claim limitation. On this record, we are unable to determine how the Examiner’s position with respect to Shim describes the disputed claim limitation. For instance, it is not apparent to us how Shim’s LCS client describes the claimed “network user.” Shim discloses that LCS client sends a location information request about a specific terminal to the location server. Shim, ¶ [0032]. Based on that disclosure, it seems more logical to us that Shim’s Appeal 2011-003336 Application 11/874,192 6 LCS client constitutes the claimed “network client” because it sends a location request, whereas Shim’s terminal constitutes the claimed “network user” because its location is being tracked. Even if we were to credit the Examiner with a finding that Shim’s terminal constitutes the claimed “network user” (see, e.g., Ans. 4), the Examiner does not explain adequately how Shim’s location service provision system “determin[es] whether the network user is capable of being attached by the network system,” as recited in independent claims 1 and 12, and similarly recited in independent claims 17, 23, 24, 31, 35, and 39. In particular, the Examiner takes the position that Shim’s LCS client must be capable of being attached by the network system (Ans. 28-29), but the Examiner does not explain how or when Shims location service provision system “determin[es] whether the network user is capable of being attached,” as claimed. Emphasis added. Consequently, the Examiner has not presented sufficient evidence to support a finding that Shim describes the disputed claim limitation. We need not reach the merits of Appellant’s other arguments because the Examiner’s reliance on Shim does not account properly for the disputed claim limitation. It follows that the Examiner erred in determining that Shim anticipates independent claims 1, 12, 17, 23, 24, 31, 35, and 39. Claims 2, 3, 10, 11, 13, 14, 18, 21, 25, 28, 30, 32, 36, and 40 The Examiner erred in rejecting dependent claims 2, 3, 10, 11, 13, 14, 18, 21, 25, 28, 30, 32, 35, and 40 for the same reasons set forth in our discussion of independent claims 1, 12, 17, 24, 31, 35, and 39 because each of these dependent claims incorporates by reference the same disputed claim limitation as its underlying base claim. Appeal 2011-003336 Application 11/874,192 7 Remaining 35 U.S.C. § 103(a) Rejections Claims 6-9, 19, 20, 22, 29, 37, and 38 Claims 6-9, 19, 20, 22, 29, 37, and 38 each directly or indirectly depend from independent claims 1, 17, 24, and 35. As applied by the Examiner, neither Zhu nor Burroughs remedies the above-noted deficiency in the Examiner’s anticipation rejection of independent claims 1, 17, 24, and 35. It follows that the Examiner also erred in concluding that: (1) the combination of Shim and Zhu renders dependent claims 6, 7, 9, 19, 20, 22, 29, 37, and 38 unpatentable; and (2) the combination of Shim and Burroughs renders dependent claim 8 unpatentable. IV. CONCLUSIONS For the foregoing reasons, the Examiner erred in rejecting: (1) claims 1-3, 10-14, 17, 18, 21, 23-25, 28, 30-32, 35, 36, 39, and 40 as being anticipated under 35 U.S.C. § 102(b); and (2) claims 6-9, 19, 20, 22, 29, 37, and 38 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We reverse the Examiner’s decision to reject claims 1-3, 6-14, 17-25, 28-32, and 35-40. REVERSED ke