Ex Parte Sullivan et al

Patent Trial and Appeal BoardNov 5, 2012

11030983 (P.T.A.B. Nov. 5, 2012)

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. 11/030,983 01/10/2005 Mark C. Sullivan SBTZ.0060004 8811 34611 7590 11/05/2012 LAW OFFICE OF DUANE S. KOBAYASHI P.O. Box 4160 Leesburg, VA 20177 EXAMINER MANCHO, RONNIE M ART UNIT PAPER NUMBER 3664 MAIL DATE DELIVERY MODE 11/05/2012 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 MARK C. SULLIVAN and JAMES B. KILFEATHER ________________ Appeal 2010-011222 Application 11/030,983 Technology Center 3600 ________________ Before CHARLES N GREENHUT, MICHAEL L. HOELTER and JAMES P. CALVE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011222 Application 11/030,983 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 37, 38, 40, 42-44, 46 and 49-52 (App. Br. 6-8). Claims 1-36 have been canceled (App. Br. 5-6) and claims 39, 41, 45, 47 and 48 have been withdrawn (App. Br. 6-8). Appellants’ representative presented oral argument on October 18, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. SUBJECT MATTER The disclosed subject matter is directed to “methods and systems for tracking the location of devices near the surface of the Earth.” Spec. para. [0002]. Independent claim 37 is illustrative of the claims on appeal and is reproduced below: 37. A location determination system, comprising a communication satellite; a mobile terminal, including: a processor that controls a collection of code phase measurements from signals received from a plurality of GPS satellites, and an identification of an area of interest from a terrestrial based wireless signal communicating over said area of interest in which said mobile terminal resides, said area of interest being smaller than a convergence zone area, wherein a size of said convergence zone area is a size of an area around a current location of a mobile terminal in which an initial position point must lie to guarantee that an iterative position calculation starting with said initial position point will converge to said current location of said mobile terminal, and a transmitter for transmission of said code phase measurements and said identification of said area of interest to said communication satellite; and Appeal 2010-011222 Application 11/030,983 3 a service operations center that receives said plurality of code phase measurements and said identification of said area of interest from said communication satellite, said service operations center including a position calculation module that iteratively calculates a position solution using said plurality of code phase measurements starting with a selected initial position point in said area of interest, wherein identification of said area of interest guarantees that a final position point produced by said position calculation module, after starting with said selected initial position point, is said current location of said mobile terminal. REFERENCE RELIED ON BY THE EXAMINER Wickstrom US 6,408,178 B1 Jun 18, 2002 THE REJECTIONS ON APPEAL 1. Claims 42 and 50 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 3. 2. Claims 37, 38, 40, 42-44, 46 and 49-52 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Ans. 4. 3. As understood, claims 37, 38, 40, 42-44, 46 and 49-52 are rejected under 35 U.S.C. § 102(e) as being anticipated by Wickstrom. Ans. 5. ANALYSIS REJECTION 1 – The Rejection of Claims 42 and 50 for failing to comply with the enablement requirement Dependent claims 42 and 50 are similar in that they both recite the additional limitation that an iterative calculation is made “on only a single candidate location point.” The Examiner has determined that these claims Appeal 2010-011222 Application 11/030,983 4 contain “subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.” Ans. 3. The Examiner references their common limitation1 and contrasts that claim language with Appellants’ Specification which recites “the processor calculates candidate position solutions for each initial point …and discards any candidates not satisfying the screening.” Ans. 3 referencing Spec. para. [0010], see also Ans. 10. The Examiner determined that “[t]he claimed limitation is new matter since there is iterative calculation on more than a single candidate location point in the specification as opposed to ‘iterative calculation on only a single candidate …point’ as claimed.” Ans. 4, 10. The Examiner concludes that “the claimed limitation is not in the original disclosure.” Ans. 4, 10. In reply, Appellants describe the operation of their claimed invention and refer to page 15, lines 15-19 of the Specification (i.e. Paragraph [0076]2) for support that “if the area of interest is small enough, then the additional range measurement and the screening process are unnecessary, and a unique solution would result from an initial estimate at the center of the area of 1 Both claims 42 and 50 were added by amendment dated July 30, 2007. Claim 50, when added, lacked the limitation of “only a single candidate location point.” Claim 50 was subsequently amended into its present form on February 18, 2008. 2 Paragraph [0076] reads in its entirety: “It should be noted that if the area of interest is small enough (i.e., within the 20 guaranteed convergence zone), such as a very narrow satellite beam, an area or city covered by an aircraft platform, or a cellular tower coverage zone, then the additional range measurement and the screening process are unnecessary, and a unique solution will result from an initial estimate at the center of the area of interest.” Appeal 2010-011222 Application 11/030,983 5 interest.” App. Br. 15-17, Reply Br. 3. Appellants state that “[t]he single initial point will produce[] the unique solution that can be used as the current location of the mobile terminal” and further that “Appellants therefore submit that the claimed ‘only a single candidate location point’ is fully enabled by Appellants’ specification.” App. Br. 17, see also Reply Br. 3. Appellants also contend that the Examiner’s reliance on Paragraph [0010] of the Specification is a reference to “only one aspect of Appellants’ invention” and does not address a “second technique” described in Paragraph [0076]. Reply Br. 3. When rejecting a claim for lack of enablement, as here, “the [Examiner] bears an initial burden of setting forth a reasonable explanation as to why [the Examiner] believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application ….” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223- 24 (CCPA 1971)). In other words, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth eight factors to be considered to evaluate whether a disclosure would require undue experimentation). The Examiner’s rejection does not explain why the disclosure, as filed, is not sufficiently complete to enable a skilled artisan to make and use the subject matter of claims 42 and 50 without undue experimentation. See Ans. 3-4, 10. Although the Examiner is not required to discuss all Wands factors, the record does not reflect that the Examiner considered any Wands factors or other evidence in terms of whether undue Appeal 2010-011222 Application 11/030,983 6 experimentation is required to make and use the claimed invention. See In re Hillis, 2012 WL 1817636, at *4 (Fed. Cir. May 21, 2012). As such, we cannot sustain the stated rejection of claims 42 and 50 for lack of enablement. REJECTION 2 – The Rejection of Claims 37, 38, 40, 42-44, 46 and 49-52 as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention The Examiner has rejected all the claims as being indefinite stating that both independent claims 37 and 44 each recite different areas and the Examiner asks “[w]hich area is which area? Applicant needs to make a distinction between the areas recited in the claim.”3 Ans. 4, see also 10-11. Regarding independent claim 37 and its dependent claims 38, 40, 42 and 43, these claims require “identification of an area of interest from a terrestrial based wireless signal communicating over said area of interest in which said mobile terminal resides.” Appellants explain that it is the same “area of interest” and that they have used “proper antecedent basis.” App. Br. 17-18. Regarding the claim limitation of a “convergence zone area” being “a size of an area around a current location of a mobile terminal,” Appellants contend that “[i]n this description, the generic term ‘area’ is unambiguous in its reference to the ‘convergence zone area.’” App. Br. 18. 3 More specifically, the Examiner states “[c]laims 37 and 44 each recite, ‘an identification of an area of interest from a terrestrial based wireless signal’ and ‘said area of interest in which said mobile terminal resides’. That is, the claims recite, ‘an area of interest from a terrestrial based wireless signal’; ‘said area of interest in which said mobile terminal resides’; [and] ‘an area around a current location of a mobile terminal’.” Ans. 4, 10-11. Appeal 2010-011222 Application 11/030,983 7 Appellants present similar arguments regarding independent claim 44 and its dependent claims 46 and 49-52. “A decision on whether a claim is invalid under § 112, 2d ¶, requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Here, Appellants’ Specification and drawings distinguish between a convergence zone (Spec. para. [0058]) and an area of interest which is smaller than a convergence zone (Spec. para. [0076]). See also Figs. 3(A) and (B). We are not persuaded that one skilled in the art would fail to understand what is being claimed. Accordingly, we reverse the rejection of claims 37, 38, 40, 42-44, 46 and 49-52 as being indefinite. REJECTION 3 – The Rejection of Claims 37, 38, 40, 42-44, 46 and 49-52 (as understood) as being anticipated by Wickstrom “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Claims 37, 38, 40 and 43 Appellants argue these claims as a group. App. Br. 19. We select independent claim 37 for review with claims 38, 40 and 43 standing or falling with claim 37. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants describe the operation of their claimed invention and contend that “Wickstrom does not disclose a location determination system in a mobile terminal that collects an identification of an area of interest from a terrestrial based wireless signal communicating over the area Appeal 2010-011222 Application 11/030,983 8 of interest in which the mobile terminal resides and transmitting the identification of the area of interest to a communication satellite.” App. Br. 19-20. The Examiner has identified Wickstrom’s mobile terminal 400 as corresponding to the claimed “mobile terminal,” Wickstrom’s spot-beam area 136 as corresponding to the claimed “convergence zone area” and the Examiner has identified the claimed “area of interest” as being “smaller than a convergence zone area 136.” Ans. 5. Wickstrom also teaches that “[o]nce mobile terminal 400 determines the location of the current spot-beam in which it is located, it generates a list of positions within the current spot- beam geographic coverage area to use as a set of trial positions for computing position fixes (block 424).” Wickstrom 9:47-51, see also Fig. 6. In other words, Wickstrom teaches a location determination system in which a mobile terminal determines the area in which it is located and generates positions located within this area for use in computing position fixes. Wickstrom’s Figure 4 discloses mobile terminal 400 communicating via satellite. Understanding that an area of interest is merely “smaller than” Wickstrom’s spot beam area 136 (i.e. “convergence zone area”), we are not persuaded that Wickstrom does not disclose a location determination system in which the mobile terminal collects information identifying an area of interest in which it resides and transmits this information to a satellite as Appellant contends. Regarding Appellants’ contention concerning the limitation of identifying an area of interest “from a terrestrial based wireless signal communicating over said area of interest,” Appellants contend that Wickstrom does not disclose that “the area from which an initial position point is taken is an area identified from a terrestrial based wireless signal Appeal 2010-011222 Application 11/030,983 9 received by the mobile terminal.” App. Br. 20, 24, Reply Br. 5. More specifically, Appellants contend that Wickstrom’s “communication satellite spot-beam area is not identified from a terrestrial based wireless signal received by the mobile terminal.” App. Br. 24. The Examiner disagrees and references Wickstrom’s Figures 2 and 4. Ans. 5, 12, 13-14. Wickstrom teaches that “[a] satellite 126 and coverage area 136 may serve a function similar to that of a base station 26 and cell 24, respectively, of the terrestrial wireless communication system 20.” Wickstrom 2:13-16. Appellants’ contention is not persuasive. Appellants further contend that Wickstrom discloses two separate radiotelephones and not a single radiotelephone that can perform as claimed. App. Br. 21. Appellants are referencing Wickstrom’s Figure 1 (App. Br. 21) which is a figure not relied on by the Examiner and Appellants do not address Wickstrom’s Fig. 4 illustrating a single mobile terminal 400 as identified by the Examiner. Ans. 5. Appellants’ contention is not persuasive. Accordingly, we sustain the Examiner’s rejection of claims 37, 38, 40 and 43 as being anticipated by Wickstrom. Claims 42 and 50 Appellants separately argue claims 42 and 50, but Appellants arguments for these two claims are similar and thus we address them together. App. Br. 24, 36. Both claims have the limitation that “said position calculation module performs an iterative calculation on only a single candidate location point.” Appellants contend that Wickstrom “discloses a system for determining a position of a mobile terminal using a plurality of trial positions” and does not disclose a system that “processes Appeal 2010-011222 Application 11/030,983 10 only a single candidate position point” as claimed. App. Br. 24, 27, 36, 38. The Examiner disagrees stating that Wickstrom teaches “an iterative calculation on only a single candidate location” and also notes that these claims are subject to the § 112 rejection discussed supra. Ans. 7, 9, 15, 17- 18. We are not persuaded by the Examiner’s determinations. Wickstrom teaches that “[t]rial positions, i.e., candidate mobile terminal positions,” are selected and that in one embodiment “at least two” candidates are generated. Wickstrom 4:42-43, 4:59-61, see also 9:47-57. Wickstrom also discloses reducing the number of trial positions (Wickstrom 4:49-53) but there is no teaching of reducing this number to only one. Further, the passages in Wickstrom relied on by the Examiner do not persuade us that Wickstrom teaches the use of only a single point nor are we persuaded of anticipation by the Examiner’s reliance on arguments previously presented with respect to § 112. Ans. 7, 9, 15, 17-18. We agree with Appellants that claims 42 and 50 call for using only a single point within an area of interest to perform an iterative position calculation to determine the current location of the mobile terminal. App. Br. 25-26, 37. The Examiner has not established that Wickstrom discloses this feature by a preponderance of evidence. Accordingly, we reverse the Examiner’s rejection of claims 42 and 50 as being anticipated by Wickstrom. Claims 44, 46, 49, 51 and 52 Appellants argue these claims as a group. App. Br. 27 and 33. We select independent claim 44 for review with claims 46, 49, 51 and 52 standing or falling with claim 44. Appellants again describe the operation of their claimed invention and repeat arguments similar to those discussed Appeal 2010-011222 Application 11/030,983 11 above with respect to claim 374. Appellants also rely on an “area of interest” different from that identified by the Examiner. App. Br. 35. We are not persuaded by Appellants contentions and accordingly, we sustain the Examiner’s rejection of claims 44, 46, 49, 51 and 52 as being anticipated by Wickstrom. DECISION The rejection of claims 42 and 50 under 35 U.S.C. § 112, first paragraph, as not being enabled is reversed. The rejection of claims 37, 38, 40, 42-44, 46 and 49-52 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed. The rejection of claims 37, 38, 40, 43, 44, 46, 49, 51 and 52 as being anticipated by Wickstrom is affirmed. The rejection of claims 42 and 50 as being anticipated by Wickstrom 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). AFFIRMED-IN-PART Klh 4“Wickstrom does not disclose a location determination system in a mobile terminal that collects an identification of an area of interest that is smaller than a convergence zone area and transmitting the identification of the area of interest to a communication satellite.” App. Br. 28. Further, “Wickstrom does not disclose a location determination system in a mobile terminal that collects an identification of an area of interest that is smaller than a convergence zone area and transmitting the identification of the area of interest to a communication satellite.” App. Br. 29.