Ex Parte Haber-Land-Schlosser et al

Patent Trial and Appeal Board

Apr 22, 2013

10517018 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KNUT HABER-LAND-SCHLOSSER, UDO GOERTZ,
MATTHIAS LUCK, KLAUS RATEITSCHEK, REZA SERAFAT,
WOLFGANG THEIMER, PETER WEINGART, and JAKKE MAKELA
____________

Appeal 2010-012239
Application 10/517,018
Technology Center 2400
____________

Before JOHNNY A. KUMAR, LARRY J. HUME, and LYNNE E.
PETTIGREW, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 13-14, 16, 19-22, 25 and 26. Claims 12, 15, 17, 18, 23, and 24
have been canceled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a method for the dynamic generation
of a mobile homepage. (See Spec. page 3, ll. 4-5).
Claim 1 is illustrative of the invention and reads as follows:
1. A method, comprising:
automatically determining information about environmental
conditions indicating actual weather conditions of a location of a
mobile telephone device, and automatically adapting a mobile
homepage in accordance with said determined information about said
environmental conditions indicating actual weather conditions of the
location of said mobile telephone device.

The Examiner’s Rejections
Claims 1-7, 8, 11, 19-21, 25 and 26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kehr (“Look Ma’, My
Homepage is Mobile!” Journal of Personal Technologies, HP Labs, Vol. 4,
(2000)) in view of Schwoegler (U.S. Patent Publication Number
2001/0030624 A1, Oct. 18, 2001). Ans. 4-8.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kehr, Schwoegler, and further view of Nagaoka (U.S.
Patent Publication Number 2002/0180579 A1, Dec. 5, 2002). Ans. 8-9.
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Claims 11 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kehr, Schwoegler, and further view of Kanevsky (US
6,496,949 B1, Dec. 17, 2002). Ans. 9-10.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kehr, Schwoegler, and further view of Largman (U.S.
Patent Publication Number 2002/0188887 A1, Dec. 12, 2002). Ans. 10-11.
Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kehr, Schwoegler, and further view of Venkatraman (US
5,956,487, Sep. 21, 1999). Ans. 11-13.
Claim 16 stands rejected under 35 U.S.C. § 101 based on a new
ground of rejection in the Examiner's Answer, in which the rejection was
properly presented in the Examiner's Answer and approved by the
Technology Center Director. Ans. 13-14, and 21. The Appellants did not
respond, as is required under 37 CFR § 41.39(b) to maintain the appeal with
regard to these claims. Accordingly, the appeal is dismissed sua sponte as to
claim 16, leaving only the rejection of claims 1-11, 13-14, 19-22, 25 and 26
before us.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Schwoegler requires that
forecasts be “downloaded to the mobile terminal from the weather
forecasting service,” whereas in the claimed invention because
“there is an ‘automatic’ determination, no downloading is
necessary.” Br. 6.
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2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Kehr and Schwoegler do not
teach or suggest that the “mobile telephone comprises elements
capable of sensing the environment in which the mobile telephone
is located.” Br. 6 (emphasis added).
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 4-12.
Dispositive Issue: Did the Examiner err in finding that the
combination of Kehr and Schwoegler teaches or suggests “automatically
determining information about environmental conditions indicating actual
weather conditions of a location” of the mobile telephone device, as recited
in claim 1? 1
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
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
Regarding Appellants’ contention 1, we find that Appellants’
arguments are not commensurate with the scope of the claims. Claim 1 does
not preclude downloading forecasts from the weather forecasting service to
the mobile terminal. See also Ans. 17.

1 Similarly, claim 19 recites “a processor configured to determine
information about environmental conditions indicating actual weather
conditions of a location of said mobile telephone device.”
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The Examiner finds that:
Furthermore, the cited passage (Pg. 10, lines 20-22 of the
specification) does not even support this implied function. The
passage merely states that "[m]ore sophisticated mobile terminal
devices may further add information about the location of the mobile
phone, or can comprise information about the environment like
temperature, humidity and atmospheric pressure." The passage does
not state how the mobile device actual [sic] obtains weather
information.

Ans. 17. (Emphasis added).

We agree with the Examiner that Appellants’ Specification does not
provide any definition giving special meaning and thereby limiting the scope
of “automatically determining…actual weather conditions.” Ans. 16-18.
The Specification only states that “the mobile homepage can comprise
information such as a small map indicating the actual position of the mobile
terminal device, or other elements indicating e.g. actual weather conditions
such as temperature, atmospheric pressure, and humidity.” Spec. page 3, ll.
10-13. (Emphases added). Therefore the phrase “automatically
determining…actual weather conditions” is to be given its plain meaning
unless inconsistent with the Specification. See In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1372 (Fed. Cir. 2004).
The Examiner has found the phrase “automatically
determining…actual weather conditions” to encompass gathering or
receiving that information from an external source, such as the Internet,
without the user direct user input. Ans. 18. We find this construction of the
“automatically determining…actual weather conditions” claim element to be
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both reasonable and consistent with the Specification.2 Id. Appellants have
not presented evidence or argument sufficient to persuade us that the
Examiner’s interpretation of “automatically determining…actual weather
conditions” is in error.
Given the above construction, the Examiner correctly finds (Ans. 5)
that the combination of Kehr and Schwoegler teaches automatically
determining information about environmental conditions indicating actual
weather conditions of a location of the mobile telephone device (citing to
Schwoegler, Fig 4, ¶[0059]). Ans. 5.
Regarding Appellants’ contention 2, although Appellants admit that
“the claim language does not explicitly recite a sensing of the environment
by the mobile telephone,” they nonetheless argue that implicitly “the
claimed mobile telephone comprises elements capable of sensing the
environment in which the mobile telephone is located.” Br. 6.
The Examiner finds (and we agree) that there is nothing implicit
within the specification or the state of mobile phone technology at the time
the invention was created to suggest that the mobile phone senses the
environmental conditions of the specific location of the mobile device. Ans.
17. The Examiner also finds that nothing related to "sensing" or "reading"
weather conditions using only the mobile phone is found within the
specification. Id.
As such, we agree with the Examiner and find that Appellants’
arguments are not commensurate with the scope of the claims because claim

2 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification.)
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1 does not recite that the “mobile telephone comprises elements capable of
sensing the environment in which the mobile telephone is located.”
Claim 19 recites, inter alia, “a processor configured to determine
information about environmental conditions indicating actual weather
conditions of a location of said mobile telephone device.” (Emphases
added).
Appellants contend that “it would have been clear to those of ordinary
skill in the art that no downloading of the information from the Internet, as in
Schwoegler, for example, is necessary because the processor in the mobile
telephone device itself determines the information about the environmental
conditions at the location of the device.” Br. 8. (Emphasis added).
We find that Appellants’ arguments are not commensurate with the scope of
the claims because the recited term “configured” does not exclude
downloading.
As such, for reasons similar to claim 1 above, claim 19 does not
preclude downloading forecasts from a weather forecasting service to the
mobile terminal.
Appellants argue the patentability of claims 2-11, 13-14, and 22,
based on the same arguments presented for claims 1 and 19 (see Br. 9-12),
which we found to be unpersuasive. Therefore, for the same reasons stated
above with respect to claims 1 and 19, we conclude that the Examiner did
not err in rejecting claims 1-11, 13-14, 19-22, 25 and 26 under 35 U.S.C.
§ 103(a).

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CONCLUSION
On the record before us, we conclude that, because the combination of
references teaches or suggests all the claim limitations, the Examiner has not
erred in rejecting claims 1-11, 13-14, 19-22, 25 and 26 as being unpatentable
under 35 U.S.C. § 103(a).

DECISION
The appeal of claim 16 is dismissed.
The Examiner’s rejection of claims 1-11, 13-14, 19-22, 25 and 26 is
affirmed.

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

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