Ex Parte JIMÉNEZ et al

Patent Trials and Appeals Board

Jan 22, 2019

14910863 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/910,863 02/08/2016 Jaime JIMENEZ
113648 7590 01/24/2019
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ol l l-223/P39920 US 1 5308
EXAMINER
DIABY, MOUSTAPHA
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
01/24/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAIME JIMENEZ, PETRI JOKELA,
and HEIKKI MAHKONEN
Appeal2018-005242
Application 14/910,863 1
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR.,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-16. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify TELEFONAKTIEBOLAGET L M ERICSSON
(PUBL) as the real party in interest. (App. Br. 2.)
Appeal2018-005242
Application 14/910,863
THE INVENTION
Appellants' disclosed and claimed invention is directed to providing
improved inter-node communication of position specific information in a
communication network. (Spec. 2:5---6.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method performed in a node comprised in a
communication network, the method comprising:
obtaining a set of coordinates of a coordinate system used
by the communication network, which set of coordinates
specifies a geographical position held by the node;
obtaining a first identifier for the node, the identifier
comprising at least a part of the obtained set of coordinates such
that the identifier can specify to the communication network a
first geographical area in which the node is positioned; and
uploading data to a server comprised in the
communication network, said data being associated with the
obtained identifier when uploaded to the server.
REJECTIONS
The Examiner rejected claims 1, 5, 6, and 11-16 under 35 U.S.C.
§ I02(a)(l) as being anticipated by Petersen et al. (US 2012/0054011 Al,
pub. Mar. 1, 2012) (hereinafter "Petersen"). (Final Act. 8.)
The Examiner rejected claims 2 and 10 under 35 U.S.C. § 103 as
being unpatentable over Petersen and Irvine (US 2013/0061049 Al, pub.
Mar. 7, 2013). (Final Act. 12.)
The Examiner rejected claim 3 under 35 U.S.C. § 103 as being
unpatentable over Petersen and Bedi et al. (US 2007/0067389 Al, pub. Mar.
22, 2007) (hereinafter "Bedi"). (Final Act. 14.)
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Application 14/910,863
The Examiner rejected claim 4 under 35 U.S.C. § 103 as being
unpatentable over Petersen and MacNeille et al. (US 2005/0273258 Al, pub.
Dec. 8, 2005) (hereinafter "MacNeille"). (Final Act. 15.)
The Examiner rejected claim 7 under 35 U.S.C. § 103 as being
unpatentable over Petersen and Carttar et al. (US 2007/0118291 Al, pub.
May 24, 2007) (hereinafter "Carttar"). (Final Act. 15.)
The Examiner rejected claim 8 under 35 U.S.C. § 103 as being
unpatentable over Petersen and Baalu et al. (US 2013/0178965 Al, pub. July
11, 2013) (hereinafter "Baalu"). (Final Act. 16.)
The Examiner rejected claim 9 under 35 U.S.C. § 103 as being
unpatentable over Petersen, Baalu, and Schirmacher et al. (US 9,127,962 Bl,
iss. Sept. 8, 2015) (hereinafter "Schirmacher"). (Final Act. 17.)
ISSUES ON APPEAL 2
Appellants' arguments in the Appeal Brief present the following
issues 3:
Issue One: Whether the Examiner erred in finding Petersen discloses
the independent claim 1 limitation,
2 In addition to the six issues enumerated in this section, Appellants also
argue the rejection of claim 4 is in error, because the motivation set forth in
the Final Rejection "discusses modifying 'the method of Petersen with the
teaching ofBedi,' instead of 'MacNeille."' (App. Br. 11, citing Final
Rejection 15.) This typographical error is harmless, and Appellants fail to
provide any additional argument regarding the patentability of claim 4.
Accordingly, we sustain the rejection of claim 4.
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 24, 2017); the Reply Brief
(filed April 23, 2018); the Final Office Action (mailed June 20, 2017); and
the Examiner's Answer (mailed Feb. 23, 2018) for the respective details.
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Application 14/910,863
obtaining a first identifier for the node, the identifier
comprising at least a part of the obtained set of coordinates such
that the identifier can specify to the communication network a
first geographical area in which the node is positioned,
and the commensurate limitations recited in independent claims 13 and 15.
(App. Br. 6-9.)
Issue Two: Whether the Examiner erred in finding Petersen discloses
the dependent claim 11 limitation,
wherein the node is a mobile node and the obtaining a set of
coordinates comprises periodically updating the set of
coordinates, and the obtaining a first identifier comprises
updating the first identifier based on the updated set of
coordinates.
(App. Br. 9--10.)
Issue Three: Whether the Examiner erred in finding motivation to
combine Petersen and Irvine in the rejection of dependent claims 2 and 10.
(App. Br. 11.)
Issue Four: Whether the Examiner erred in finding the combination
of Petersen and Carttar teaches or suggests the dependent claim 7 limitation,
"the first identifier being constructed to comprise the same first number of
characters from each of the first and second coordinates." (App. Br. 12-13.)
Issue Five: Whether the Examiner erred in finding the combination of
Petersen and Baalu teaches or suggests the dependent claim 8 limitation,
downloading data from the server relating to a second
geographical area by using a second identifier specifying said
second geographical area for identifying the data on the server
which is associated with an identifier specifying a geographical
area comprised in or overlapping with said second geographical
area.
(App. Br. 13-15.)
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Issue Six: Whether the Examiner erred in finding the combination of
Petersen, Baalu, and Schirmacher teaches or suggests the dependent claim 9
limitation,
wherein the second geographical area is constructed by the
node from a plurality of subareas which are combined to form
the second geographical area, and the second identifier is
constructed by the node such that it specifies the constructed
second geographical area.
(App. Br. 16-17.)
ANALYSIS
First Issue
In finding Petersen discloses the claim 1 limitation at issue, the
Examiner relies on the disclosure of geographic coordinates identifying a
location within a geographic boundary that defines the interior of a store,
and mapping a geographic location identifier to an associated business entity
using a data mapping table. (Final Act. 8-9; Ans. 17; Petersen ,r,r 31, 34,
44.)
Appellants argue that in Petersen, "it is the specific geographic
location of the mobile device at the time of scanning/buying a product at a
particular store location which is determined," whereas
Appellant's disclosure and claims are not directed solely to a
specific geographic location, but also to a geographical area,
where the size of the area can be determined by the number of
characters of each of the coordinates used in the identifier, for
example.
(App. Br. 7.) Appellants contend that the "'geographic location identifier'
of Petersen never suggests that only 'a part' of the coordinates are used to
determine a location." (App. Br. 7, citing Petersen ,r 24.)
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We do not agree with Appellants. Appellants' argument regarding the
number of characters used in the identifier is not commensurate with the
scope of claim 1, which only requires "the identifier comprising at least a
part of the obtained set of coordinates such that the identifier can specify ...
a first geographical area in which the node is positioned." Nothing in the
independent claims relates the size of the geographical area to the number
characters used in the identifier.
We agree with the Examiner's findings that "Petersen requires the
complete set of GPS coordinates to determine where the mobile device is in
the physical retail store" (Ans. 15), that "the term 'at least' does not limit the
claimed invention to only 'a part' of the coordinates (Ans. 16), and that
Petersen discloses "identification of a geographic location of a computing
device may be determined based on a coordinate." (Ans. 16, quoting
Petersen ,r 7 ( emphasis omitted); see also Petersen ,r 34.)
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and independent claims 13 and 15 commensurate in scope, as well
as dependent claims 5, 6, and 12-16. We also sustain the Examiner's
rejection of claim 3, not separately argued with particularity. See App. Br.
1 1.
Second Issue
Appellants argue that "[ n Jo where is it suggested that Petersen
'periodically' updates its location so that the identifier is also updated.
Petersen uses only the geographic location identifier at the time a product is
scanned/purchased." (App. Br. 10, citing Petersen ,r,r 71, 32-33, 37, Figs. 2-
3.)
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We agree with Appellants. The Examiner finds that "as the GPS
coordinates change, the geographic location identifier, changes, and one of
routine skill in the art would understand that Petersen 'periodically' updates
its location so that the identifier is also updated." (Ans. 21, citing Petersen
,r 44.) However, as indicated by Fig. 3, the determination of the current
location, followed by the mapping of the geographic location identifier to a
business entity, occurs only after the user has manually scanned a book. See
Petersen Fig. 3, steps 300-308. Thus it is not inherent that in Petersen's
method there is a periodic update of location followed by an update of the
location identifier. Accordingly, we are constrained by the record to reverse
the anticipation rejection of claim 11.
Third Issue
Appellants argue the Examiner erred because "since Petersen requires
a user to install an app on their mobile device, as well as require a user's
input to scan or purchase an item, the user's identity would not be
anonymous." (Reply Br. 5.)
We are not persuaded of Examiner error. The Examiner finds, and we
agree, that "motivation to combine Petersen and Irvine would also provide
secure and private storage of data and shared resources for users on a
distributed system." (Ans. 22, citing Irvine ,r 103.) Appellants fail to
address and challenge the Examiner's finding in the Reply.
Accordingly, we sustain the Examiner's rejection of dependent claims
2 and 10.
Fourth Issue
In finding that the combination of Petersen and Carttar teaches or
suggests the claim 7 limitation at issue, the Examiner relies on the disclosure
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of Carttar wherein a set of coordinates comprising a first coordinate and a
second coordinate, each comprising a number of characters, the identifier
being constructed to comprise the same first number of characters from each
of the first and second coordinates. (Final Act. 16; Ans. 23; Carttar ,r,r 32-
46, Table I.)
Appellants argue the Examiner erred, because "the GEO ID of Carttar
is a fixed number of characters, where the GEO ID begins with a number that
is not from the coordinates, such as the '3' at the beginning of South
Carolina's GEO ID and the '4' at the beginning of Hawaii's GEO ID" and that
"with respect to Hawaii, the '1' at the beginning of the latitude is not
included in the GEOID, so the GEOID does not include the 'first number of
characters,' as recited in Appellant[s'] claim 7." (Reply Br. 5, citing Carttar
,r 47, Table I.)
We do not agree with Appellants. The Examiner finds, and we agree,
that "the GEO ID for South Carolina is constructed by using [six] characters
from each of the latitude and the longitude" (Ans. 23, citing Carttar Table I)
and "the claim does not state the total number of characters after
combination." (Ans. 23.) We note that algorithm used by Carttar for the
results shown in Table I ensures that in the 13 character GEOID, the first
character is a digit based on a combination of the longitude and a "quadrant
prefix", followed by a scrambling of six characters taken from each of the
longitude and latitude values, and thus the "first number of characters from
each" of the longitude and latitude coordinates is six. See Carttar ,r,r 3 6-4 7.
Accordingly, we sustain the Examiner's rejection of claim 7.
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Fifth Issue
In finding that the combination of Petersen and Baalu teaches or
suggests the claim 8 limitation at issue, the Examiner relies on the disclosure
of Petersen of multiple locations, multiple geographic areas, and multiple
geographical location identifiers. (Ans. 24; Petersen ,r,r 44, 59, 62, 67 .) The
Examiner further relies on Baalu of downloading data from a server relating
to a geographical area. (Final Act. 17; Ans. 24; Baalu ,r,r 23-26.)
Appellants argue that "[ s ]ince neither Petersen, nor Baalu, disclose
using multiple geographic locations at the same time (e.g., first, second),
there also cannot be any 'geographical area comprised in or overlapping
with said second geographical area"' (App. Br. 14 (emphasis omitted)), as
recited in claim 8. Appellants contend that "it would not make sense for
Petersen's 'geographic boundary 118' to be 'comprised in or overlapping
with' another 'geographic boundary,' because it would be practically
impossible to determine the physical store associated with the product."
(Reply Br. 6.)
that:
We do not agree with Appellants. The Examiner finds, and we agree,
Petersen discloses multiple locations, multiple geographical
areas, and multiple geographical location identifiers. Therefore,
Baalu is only shown to disclose a concept of downloading data
from the server relating to a geographical area by using an
identifier specifying said geographical area for identifying the
data on the server which is associated with an identifier
specifying a geographical area comprised in or overlapping with
said geographical area.
(Ans. 24, citing Petersen ,r,r 44, 59, 62, 67 .) The Examiner's findings are
additionally confirmed by Petersen's teaching that redirector manager 130
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(see Petersen ,r,r 44, 59, 62) "may recognize that a user is located in a
television or electronics area of a physical retail store based on a lookup in
the table" (Petersen ,r 70), thus teaching a geographical area comprised in or
overlapping with another geographical area. Further, the claim does not
exclude (1) a "geographical area" that comprises the claimed "second
geographical area" or (2) a "second identifier" that is the same as "an
identifier specifying a geographical comprised in or overlapping with said
second geographical area."
Accordingly, we sustain the Examiner's rejection of claim 8.
Sixth Issue
In finding the combination of Petersen, Baalu, and Schirmacher teach
or suggest the claim 9 limitation at issue, the Examiner relies on the
disclosure of Schirmacher of a personalized area of interest defined as any
number of locations or areas associated with user. (Final Act. 18;
Schirmacher 4:14---64, Figs. 1-3.)
Appellants argue that "Schirmacher' s method teaches away from the
prior approaches of identifying a user's location, and then using a radius
around the location ( circular) or using rectangular map views." (App. Br.
15, citing Schirmacher 2:38-65.) Appellants contend "Schirmacher uses
more than just the geographical location coordinates to determine the user's
personalized area. In addition, none of Schirmacher' s locations overlap one
another." (App. Br. 15, citing Schirmacher claim 1.)
that:
We do not agree with Appellants. The Examiner finds, and we agree,
Schirmacher discloses a concept wherein the geographical area
is constructed by the node from a plurality of subareas which are
combined to form the geographical area (col.4, 11.14-64, and
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figs.1-3) { the reference discloses a geographic area constructed
by combining a plurality of locations (102-110) associated with
the user}.
(Final Act. 18.) Appellants' contention that "Schirmacher' s method teaches
away from the prior approaches" does not meet the applicable standard to
establish any kind of teaching away4, as Appellants fail to demonstrate a
person of ordinary skill would be discouraged from following Schirmacher
or led in a direction divergent from the path taken by Appellants. Nor do
Appellants establish that constructing a geographic area by combining a
plurality of locations would "make Petersen's goals unworkable" (App. Br.
16) by interfering with Petersen's ability to specify "a first geographical area
in which the node is positioned," as recited in claim 1.
Further, Appellants' other arguments with respect to Schirmacher are
not commensurate with the scope of claim 9, which places no restrictions on
the claimed "plurality of subareas which are combined to form the second
geographical area."
Accordingly, we sustain the Examiner's rejection of claim 9.
CONCLUSION
For the reasons stated above, we:
1. affirm the anticipation rejections of claims 1, 5, 6, and 12-16;
2. reverse the anticipation rejection of claim 11; and
4 "A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
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3. affirm the obviousness rejections of claims 2--4 and 7-10.
DECISION
The Examiner's decision rejecting claims 1-10 and 12-16 is affirmed.
The Examiner's decision rejecting claim 11 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)(l )(iv).
AFFIRMED-IN-PART
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