Ex Parte Lee

Patent Trial and Appeal BoardJun 23, 2014

11443787 (P.T.A.B. Jun. 23, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/443,787 05/31/2006 Sean S. Lee PD-205090 5386 20991 7590 06/24/2014 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER TORRES, MARCOS L ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 06/24/2014 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 SEAN S. LEE ____________ Appeal 2011-012927 Application 11/443,787 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-19, 21-31, and 33. App. Br. 2; Ans. 3. Claims 20 and 32 are canceled. Id.; see also App. Br. 26 and 32. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-012927 Application 11/443,787 2 REJECTIONS The Examiner rejected claims 1-5, 7, 8, 10-16, 18, 19, 22-25, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 5,565,909 to Thibadeau and U.S. Pub. No. 2002/0042276 A1 to Hakalin. Ans. 5-14. The Examiner rejected claim 21 under § 103(a) as unpatentable over Thibadeau, Hakalin, and U.S. Pub. No. 2002/0060747 A1 to Nonomura. Id. at 14. The Examiner rejected claims 6, 17, and 27 under § 103(a) as unpatentable over Thibadeau, Hakalin, and U.S. Pub. No. 2005/0186931 A1 to Laiho. Id. at 14-15. The Examiner rejected claim 9 under § 103(a) as unpatentable over Thibadeau, Hakalin, and U.S. Pub. No. 2002/0072361 A1 to Knoblach. Id. at 15-16. The Examiner rejected claim 26 under § 103(a) as unpatentable over Thibadeau, Hakalin, and U.S. Patent No. 6,334,059 B1 to Stilp. Id. at 16. The Examiner rejected claims 30 and 31 under § 103(a) as unpatentable over Thibadeau, Hakalin, and Yanchao Zhang et al., Secure Localization in Wireless Networks, University of Florida Oct. 17, 2005, p. 6. Id. at 16-17. The Examiner rejected claim 33 under § 103(a) as unpatentable over Nonomura, Thibadeau, and Hakalin. Id. at 17-18. OBVIOUSNESS REJECTION OF CLAIMS 1-5, 7, 8, 10-16, 18, 19, 22-25, 28, AND 29 OVER THIBADEAU AND HAKALIN Appellant presents arguments under separate headings for various groupings of claims 1-5, 7, 8, 10-16, 18, 19, 22-25, 28, and 29. Each Appeal 2011-012927 Application 11/443,787 3 argument either pertains to independent claim features addressed below or relies on dependencies to the independent claims. The below analysis thus addresses all issues presented for claims 1-5, 7, 8, 10-16, 18, 19, 22-25, 28, and 29. Appellant’s arguments present a principal issue of whether claimed control of a mobile device traversing a buffer zone is suggested by the Examiner’s proposed combination of Thibadeau’s and Hakalin’s teachings. Independent claim 1 recites the buffer zone as “around” a first area and “overlapping” a second area. Claim 1 recites the control as follows: controlling . . . so that when the mobile device moves from the first area to the second area within the buffer zone, signals corresponding to the first area control a mobile device output and when the mobile device moves outside the hysteresis buffer zone within the second area, signals corresponding to the second area control the mobile device output. The remaining independent claims recite comparable restrictions. Appellant’s Specification discloses, as context for the invention, a mobile satellite television moving from a first local TV channel region (e.g., Ch. 7–District of Columbia) to a second local TV channel region (e.g., Ch. 7–Baltimore). See Spec. ¶¶ [0004] and [0037]. The Specification further discloses the following example. Referring now to Figure 6E, the GPS point 110E is on the boundary of the polygon. In this case the GPS point will be defined as being inside the polygon. Because the boundary of one polygon is likely to be the boundary of an adjacent polygon, the GPS point 110E may be a member of multiple regions when it lies on the boundary lines between the areas of interest. This may be confusing for a system. Therefore, if the mobile device is within the polygon and is moving toward the Appeal 2011-012927 Application 11/443,787 4 boundary, hysteresis buffer zone 116 may be provided around the polygon so that not until the vehicle or mobile device leaves the buffer zone 116 would the behavior of the mobile device change. Id., ¶ [0052]. As reflected supra, the Examiner finds the above features are suggested by Thibadeau and Hakalin. Before addressing the proposed combination of Thibadeau’s and Hakalin’s teachings, we briefly summarize their respective inventions. Thibadeau localizes advertising (and other messages) for cable TV consumers, particularly by determining the location (e.g., via GPS) of a consumer’s set-top unit (SU), determining a geographic region of interest (ROI) around the SU (e.g., a zip code region), and restricting the SU’s display of advertisements to proprietorships of the ROI. Thibadeau, col. 7, l. 35–col. 8, l. 44; col. 9, ll. 27-37; Abstract. Thibadeau also selectively extends a “marginal edge[]” around the ROI as follows: “Depending upon whether the user (or transmitter) wishes to err by omission of marginal edges or by inclusion of excess area around the region 140, either method can be used.” Id. at col. 9, ll. 16-19. Hakalin improves handoff of a cellular device from one base station (BS) to another, particularly by adjusting the size of cellular sector so as to achieve a desired handover margin (HOM). Hakalin, ¶ [0035]; Abstract. Hakalin is cited as evidence of an HOM, generally, for preventing handoff “ping-pong[ing]” of a mobile device when betwixt two service regions (e.g., between two cellular sectors). Ans. 6-7 (citing Hakalin ¶ [0024]). In the context of a cellular system’s HOM, handoff occurs only if the current BS’s Appeal 2011-012927 Application 11/443,787 5 signal strength (at the mobile device) dips the threshold HOM-amount below the next BS’s signal strength. Hakalin ¶¶ [0024]-[0025]. In determining the claimed invention is unpatentable over Thibadeau and Hakalin, the Examiner finds inter alia that Thibadeau’s system selects an ROI if the SU (a) is positioned inside the ROI, or (b) has exited the ROI but not the surrounding marginal edge. Ans. 6. The Examiner further finds that, in view of Hakalin, it would have been obvious to hand off a mobile SU in accord with an HOM and thereby prevent ping-ponging between ROI’s. Id. 6-7. In the Examiner’s words: Thibadeau does disclose using stored fixed boundaries and the teachings of Hakalin are added to Thibadeau. The combination is really simple, adding a handover margin to a moving device to delay the area change even if the mobile device begins entering in a second area. Id. at 24. Thus, the proposed combination of teachings adds a ubiquitous mobile/handoff capability to Thibadeau’s SU. And in view of Hakalin, the combination implements Thibadeau’s marginal edge as an HOM so as to prevent handoff ping-ponging. Appellant argues: [Thibadeau’s i]nclusion or exclusion of marginal edges does not teach a buffer zone. Paragraph [0050] of the present application describes the buffer zone as being a zone where the channel would not be changed when the mobile device leaves the polygon or designated marketing area. App. Br. 10; see also id. at 11 (paragraph stating: “Claim 1 was previously amended to recite that . . . .”). The argument fails to address the Thibadeau- Hakalin combination, particularly insofar that the claimed buffer is read on the implementation of Thibadeau’s marginal edge as an HOM. Appeal 2011-012927 Application 11/443,787 6 Appellant argues: “[I]t appears that the error areas described in the Thibadeau reference are not intentional buffer zones . . . but rather unintentional consequences. . . . Thibadeau . . . therefore teaches away from a buffer zone.” App. Br. 11. The argument is factually incorrect. Thibadeau’s marginal edges are intentionally included, particularly “depending upon whether the user (or transmitter) wishes to err . . . by inclusion of excess area around the region.” Thibadeau, col. 9, ll. 16-19 (emphasis added). Appellant argues: [E]ven though the [claimed] memory is not stated as being within the mobile device, the boundaries are broadcast to the mobile device and they are received by the mobile device[. T]herefore, it only makes sense that the step of storing in a memory is performed at the receiving device. App. Br. 14-15. And, Appellant further argues: “There is no teaching or suggestion for storing a first boundary, second boundary and a hysteresis buffer zone in the [SU’s] memory in the Thibadeau reference.” Id. at 12. The argument is not persuasive for three reasons. First, the argument neglects that the Thibadeau-Hakalin combination implements Thibadeau’s marginal edge as an HOM in view Hakalin. According to Hakalin, a cellular device performs a handoff based on the HOM and measured BS signals. Hakalin ¶¶ [0025] and [0039]. An ordinarily skilled artisan would therefore infer that the HOM is stored within the cellular device for comparison against the device’s measured BS signals. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art Appeal 2011-012927 Application 11/443,787 7 would reasonably be expected to draw therefrom”). In light of this understanding, it would have been obvious to store Thibadeau’s marginal edge within the SU for comparison against the SU’s measured position (e.g., GPS position). Second, the argument presents no reasoning why–and it is not self- evident–the claimed mobile device’s receiving of the boundaries and buffer in turn requires the device to store the boundaries and buffer; but rather states that “it only makes sense.” App. Br. 14-15. Such mere assertions are unpersuasive. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case.” (Citations omitted); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Third, by explicitly reciting that the mobile device receives the boundaries and buffer, but conversely not reciting that the mobile device stores the boundaries and buffer, Appellant has expressly indicated that the claimed storing is not necessarily performed within the mobile device. See, e.g., Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (“Here, dependent claims limiting the claim to a single cable confirm that the independent claims may encompass more than one cable.”). Thus, the claim language controverts the asserted intent to require storing of the boundaries and buffer within the mobile device. We cannot cure such a claim drafting error. See, e.g., Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) (“[I]nterpret[ing] the claim differently just to cure a drafting error . . . would unduly interfere with the Appeal 2011-012927 Application 11/443,787 8 function of claims in putting competitors on notice of the scope of the claimed invention.”). Appellant argues: “[Thibadeau’s device] does not know that it is inside or outside of the region being approximated . . . . Therefore, the difference between the boundary of the boxes and the actual boundary has no controlling or potential for controlling the receiving device.” App. Br. 12. The argument neglects that the Thibadeau-Hakalin combination implements Thibadeau’s marginal edge as an HOM and that, as evidenced by Hakalin, it would have been obvious to accordingly store the marginal edge within the SU for comparison against the SU’s measured position. See supra 6-7. Appellant argues: [Hakalin’s] handover margin . . . is based upon a signal strength and is not based upon a geographical location such as a hysteresis buffer zone that is stored in a memory of a mobile device as recited in claim 1. Appellant does admit that the device does not request handover until it approaches the outer boundaries 508 illustrated in Figure 5 of the Hakalin reference. However, Appellant respectfully submits that the size is not a fixed certain size since the signal strength can vary depending on various environmental factors or the like. Using signal strength is thus not the same as using fixed boundaries that are stored within a memory such as that recited in claim 1. Id. at 13; see also id. at 15 (“[Hakalin’s HOM] . . . is based upon a signal strength and thus is not a certain size or certain boundaries[.]”). The argument neglects that the Thibadeau-Hakalin combination implements Thibadeau’s marginal edge as an HOM in view Hakalin. That is not to say the marginal edge must be equivalent to Hakalin’s described HOM; i.e., Appeal 2011-012927 Application 11/443,787 9 must be based on measured signal strengths. See, e.g., Orthopedic Equipment Co., Inc. v. U.S., 702 F.2d 1005, 1013 (1983) Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference. What matters . . . is whether a person of ordinary skill in the art, having all of the teachings of the references before him, is able to produce the structure defined by the claim. (Citations omitted). Appellant argues: “[T]here are not three distinct areas in the Thibadeau reference such as the first boundary area, the second boundary area, and the hysteresis buffer zone.” App. Br. 14. The argument neglects that the claimed boundaries and buffer are read on Thibadeau’s system as modified in view of Hakalin. To implement Thibadeau’s marginal edge as an HOM, the modified system distinguishes between a first boundary area surrounded by the marginal edge, a second boundary area extending from the first boundary area, and a hysteresis buffer comprised by the marginal edge. Appellant additionally argues in the Reply Brief: The Examiner states that claim 1 does not require fixed boundaries. However, boundaries are provided for the various areas. The boundaries are never described in the [S]pecification or the claims as moving boundaries. Therefore, Appellant respectfully requests the Board to interpret the claims as actual boundaries and thus fixed boundaries. Reply Br. 3. The argument is not persuasive for two reasons. First, the argument neglects that the Thibadeau-Hakalin combination implements Thibadeau’s fixed marginal edge as an HOM. Thibadeau’s Appeal 2011-012927 Application 11/443,787 10 modified system in turn implements a fixed first boundary area, fixed second boundary area, and fixed buffer. Second, the argument presents no persuasive reason to restrict the claimed boundaries to fixed boundaries. Rather, the argument merely cites Specification support for fixed boundaries, which is insufficient. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]he PTO should only limit the claim based on the specification . . . when those sources expressly disclaim the broader definition.”); see also Spec. ¶ [0060] (“While particular embodiments of the invention have been shown and described, numerous variations and alternate embodiments will occur to those skilled in the art. Accordingly, it is intended that the invention be limited only in terms of the appended claims.”). OBVIOUSNESS REJECTION OF CLAIM 21 OVER THIBADEAU, HAKALIN, AND NONOMURA Appellant’s separate argument for claim 21 is moot in view of claim 21 depending from claim 20, which is canceled. App. Br. 27. OBVIOUSNESS REJECTION OF CLAIMS 6, 17, AND 27 OVER THIBADEAU, HAKALIN, AND LAIHO Appellant’s separate argument for claim 6 asserts that Laiho does not disclose a claimed broadcasting of boundaries. App. Br. 18. However, the claimed broadcasting of boundaries is read on the Thibadeau-Hakalin sub combination. The claimed composition of a terrestrial source comprising a cell tower is read on Knoblach. Ans. 14-15. The argument is therefore not persuasive. Appellant’s separate argument for claim 27 asserts that Laiho does not disclose a claimed “integrated receiver decoder,” as found by the Examiner. Appeal 2011-012927 Application 11/443,787 11 Id. The Examiner’s response clarifies, and we agree, that item 4 of Laiho’s Figure 2 constitutes an integrated receiver. Ans. 28; cf., Ans. 15 (citing Laiho’s Figure 2, but not item 4). Appellant’s Reply Brief does not respond the Examiner’s clarification. The argument is therefore not persuasive. OBVIOUSNESS REJECTION OF CLAIM 9 OVER THIBADEAU, HAKALIN, AND KNOBLACH Appellant’s separate argument for claim 9 asserts that Knoblach does not disclose a claimed broadcasting of boundaries. App. Br. 18-19. However, the claimed broadcasting of boundaries is read on the Thibadeau- Hakalin sub combination. The claimed broadcasting from a stratospheric platform is read on Knoblach. Ans. 15-16. The argument is therefore not persuasive. OBVIOUSNESS REJECTION OF CLAIM 26 OVER THIBADEAU, HAKALIN, AND STILP Appellant’s separate argument for claim 26 relies solely on dependencies to other claims addressed above. App. Br. 19. The argument is therefore not persuasive. OBVIOUSNESS REJECTION OF CLAIMS 30 AND 31 OVER THIBADEAU, HAKALIN, AND ZHANG Appellant’s separate argument for claims 30 and 31 relies solely on dependencies to other claims addressed above. Id. The argument is therefore not persuasive. Appeal 2011-012927 Application 11/443,787 12 OBVIOUSNESS REJECTION OF CLAIM 33 OVER NONOMURA, THIBADEAU, AND HAKALIN Appellant’s separate argument for claim 33 asserts that Nonomura does not teach claimed “corresponding” of a mobile device to a first area, particularly until exiting from a surrounding buffer to a second area. Id., at 19-20. However, the claimed “corresponding” is read on the Thibadeau- Hakalin sub combination. Ans. 17-18. The argument is therefore not persuasive. Appellant additionally argues via the Reply Brief: [Nonomura’s cited teachings] describe that a “New York” identified signal may be selected related to the current position of the device. There is no teaching or suggestion in Nonomura that a first designated marketing area, a second designated marketing area, and a buffer zone are used in the reception of a signal. Nonomura merely teaches that a signal may be received relative to a particular location. Further, Nonomura does not describe a designated marketing area with boundaries per se. Reply Br. 3-4. This argument also asserts that Nonomura does not teach the claimed corresponding of a mobile device to a first area, which is rather read on the Thibadeau-Hakalin sub combination. Appeal 2011-012927 Application 11/443,787 13 DECISION For the foregoing reasons, the Examiner’s decision rejecting claims 1- 19, 21-31, and 33 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)(v). AFFIRMED gvw