Ex Parte Waltermann et al

Patent Trial and Appeal Board

May 30, 2018

11772221 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/772,221 06/30/2007
58127 7590 05/31/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Rod D. Waltermann
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.
RPS92007 l O l 3US 1
(710.039)
9197
EXAMINER
NEALON, WILLIAM
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
05/31/2018 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
Exparte RODD. WALTERMANN, SCOTT E. KELSO, JOHN C. MESE,
NATHAN J. PETERSON, and ARNOLDS. WEKSLER
Appeal2017-011752
Application 11/772,221
Technology Center 2600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18-20, 24, and 25, which are all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Lenovo (Singapore) PTE. LTD. as the real party in
interest. App. Br. 3.
Appeal2017-011752
Application 11/772,221
Introduction
Appellants describes the invention as "relat[ing] to methods and
arrangements for tracking and locating portable computers such as laptops."
Spec. 1 :4--5.
Claim 1 is illustrative of the claims on appeal:
1. A method comprising:
obtaining data relating to a location of a mobile device
using a receiver that receives the data from wireless
transmitting devices in a vicinity of the mobile device, wherein
the mobile device obtains an identifier broadcast from each of
the wireless transmitting devices and the mobile device does
not connect to a communications network through the wireless
transmitting devices;
storing the data including the broadcast identifiers of the
wireless transmitting devices within the mobile device; and
thereafter establishing a communications network
connection and transmitting the data including the broadcast
identifiers of the wireless transmitting devices.
App. Br. 19 (Claims App'x).
Rejections2 & References
Claim 25 stands rejected under pre-AIA 35 U.S.C. § 112, ,r 1, as
failing to comply with the written description requirement. Final Act. 4.
Claims 1, 2, 5, 6, 8, 11, 12, 15, 16, 19, and 20 stand rejected under
pre-AIA 35 U.S.C. § I03(a) as unpatentable over Zhang (US 7,768,982 B2;
Aug. 3, 2010) and Edge (US 2007/0121560 Al; May 31, 2007). Final Act.
6-9.
2 After Appellants filed the Appeal Brief, the Examiner withdrew rejections
of claim 20 under 35 U.S.C. §§ 101 and pre-AIA § 112, ,r 2. See Ans. 2 and
Final Act. 2-5.
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Application 11/772,221
Claims 9, 18, and 24 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Zhang, Edge, and Hendrickson (US 6,754,470 B2; June
22, 2004). Final Act. 9-10.
Claim 25 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Zhang, Edge, and Roese (US 2003/0217137 Al; Nov. 20,
2003). Final Act. 10.
ANALYSIS
35 U.S.C. § 103(a) Rejection of Claims 1, 11, and 20
Appellants argue independent claims 1, 11, and 20 together as a
group. App. Br. 3 15-17. We select claim 1 as representative of the group.
37 C.F.R. § 4I.37(c)(l)(iv) (2016).
In rejecting claim 1, the Examiner relies on Zhang for teaching all
limitations. Final Act. 6-7 (citing Zhang 5:63---67, 6:1--4, 6:57-57, 8:6-17,
8:41--46). The Examiner additionally cites Edge as teaching "scanning for
wireless transmitting devices in a vicinity of the mobile device wherein the
transmitting device broadcasts an identifier and is not connected to the
mobile device." Final Act. 7 (citing Edge ,r 80, Figs. 1, 10) (explaining that
Edge explicitly teaches this feature, which Zhang impliedly teaches).
Appellants argue the Examiner errs because the combination of Zhang
and Edge do not teach or suggest obtaining step, as recited in claim 1. App.
Br. 15 ( emphasizing that Zhang and Edge fail to teach that "the mobile
device does not connect to a communications network through the wireless
transmitting device"). Appellants contend that Zhang, by disclosing "a
mobile device [is] configured to discover network information related to
3 Herein we site to the Appeal Brief filed February 21, 2017.
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networks to be visited using a knowledge server ... said mobile device
being configured to act as a scout and collect information in or related to the
networks it visits as part of its use of the networks" (Zhang 5:63-6:1),
teaches the opposite of the claimed requirement. App. Br. 15 (bracketing in
original).
Appellants' argument is unpersuasive because Appellants read Zhang
too narrowly. Contrary to Appellants' arguments, Zhang teaches more than
collecting network information "related to networks to be visited" (App. Br.
15}-Zhang teaches "collect[ing] a broad range of information about the
networks it detects or uses." Zhang 8:41--42 (emphasis added); see also id.
at 8:42-9:13 (explaining the amount of information collected varies, e.g.,
depending on whether the mobile device actually connects to a network).
Appellants further argue the Examiner errs in finding a teaching that
the obtained information is "thereafter transmit[ ed]." App. Br. 16 (bracketed
change in original). This argument is also unpersuasive-Appellants do not
explain how or why the Examiner errs in the specific finding that Zhang
teaches this by disclosing a "mobile device being configured to make the
collected information available to other mobiles by reporting the collected
information to a knowledge server that maintains accumulated collected
information reported by mobiles." Zhang 6: 1-5 ( cited at Final Act. 6).
Appellants also argue the Examiner errs because Edge's disclosure
that "cells detected by the terminal may include cells whose coverage
included the current location of the terminal" (Edge ,r 80) is irrelevant to
"obtain[ing] an identifier broadcast from each of the wireless transmitting
devices and the mobile device does not connect to a communications
network through the wireless transmitting devices," as recited. App. Br. 16.
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This argument is unpersuasive-an ordinarily skilled artisan would plainly
have understood the mobile device of Edge detects identities of neighboring
cells that provide coverage at the mobile device's location but through which
the device has no connection to a communications network. We agree with
the Examiner that Zhang expressly discloses obtaining and recording
identifiers of wireless transmitting devices. Ans. 6; see also Zhang ,r,r 79-84
( also disclosing detecting identification information both from wireless local
area network (WLAN) signals, e.g., using "unsolicited broadcast" signaling,
i.e., without connecting to the WLANs).
Appellants furthermore argue the Examiner errs in combining the
teachings of Zhang and Edge because "the proposed combination would
appear to change Zhang's principle of operation," because "altering Zhang
to report on network devices that are not 'part of its use of the networks,'
Zhang at Col. 6, line 1, would appear to imply Zhang should include data
reporting on networks that are not related to 'Autonomous and
Heterogeneous Network Discovery and Reuse.' Zhang, Title ( emphasis
added)." App. Br. 16-17. This argument is unpersuasive. As discussed
above, Zhang teaches collecting and reporting information from network
devices to which it does not connect. We note Zhang's use of "reuse" in its
title is entirely consistent with reusing information about networks to which
the device did not connect.
Regarding the teaching away argument, we agree with the Examiner
that it is unclear how collecting identifiers as taught by Edge would alter the
operation of Zhang. To teach away, a reference must actually criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of
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Application 11/772,221
more than one alternative does not constitute teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed."). Appellants' contention that
Zhang and Edge are "in wholly different fields of endeavor and the
secondary reference would change the primarily reference's principal
operation" is unpersuasive. Reply Br. 17. Appellants do not explain how or
why Zhang and Edge, both of which include core teachings related to
identifying location information for mobile devices using both cellular and
WLAN technologies, and which both are categorized in the same 370/388
patent classification group/subgroup, are "in wholly different fields of
endeavor." See, e.g., Zhang 1 :26-4:29 and Edge ,r,r 2-12. We agree with
the Examiner that "one of ordinary skill in the art at the time of the invention
would have been able to merge the features of Edge with the system of
Zhang without undue experimentation." Ans. 7. 4
Appellants do not point to any evidence of record that the
combinations would be "uniquely challenging or difficult for one of ordinary
skill in the art" or "represented an unobvious step over the prior art."
Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
4 We also note that even if Zhang were to teach away from its use with Edge,
the obviousness rejection can stand on the teachings of Zhang alone. See,
e.g., In re Kronig, 539 F.2d 1300, 1302---03 (CCPA 1976) (explaining the
Board may rely upon less than all cited references in affirming an
obviousness rejection).
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Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We are persuaded the claimed
subject matter exemplifies the principle that "[t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1. In doing so, we adopt as our own the Examiner's findings and
reasons set forth in the final rejection and in the Answer for this claim. We
also, accordingly, sustain the§ 103(a) rejections of claims 11 and 20, which
Appellants argue together with claim 1, and of claims 2, 5, 6, 9, 12, 15, 16,
18, 19, 24, and 25, for which Appellants offer no arguments separate from
those for claim 1.
35 U.S.C. § 103(a) Rejection of Claim 8
Claim 8 recites "[t]he method according to Claim 1, further
comprising ascertaining a location based on information transmitted in said
transmitting." App. Br. 20 (Claims App'x). Appellants argue the Examiner
errs in rejecting claim 8 because Zhang and Edge "fail to disclose
'ascertaining a location based on information transmitted in said
transmitting,"' as recited. App. Br. 17. This argument is unpersuasive. The
Examiner responds, and we agree, "Edge teaches a number of methods for
obtaining identifiers and/or measurements used in the location determination
that may be performed in the terminal and/or in the network." Ans. 5---6
(citing Edge ,r,r 75-80, 130, 134, Figs. 10, 12). For example, Edge discloses
obtaining information from a WLAN by receiving "location information
from the network entity" and then determining "the location of the terminal
based on the location information." Edge Fig. 12; see also Edge ,r,r 133-36.
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Appellants further argue the Examiner errs in rejecting claim 8
because "nowhere in Edge is 'transmitting information using the open access
point used for the connection to the communications network connection'
disclosed." App. Br. 17. This argument is unpersuasive because it is not
commensurate with the scope of the claim. (It appears that here, Appellants
argue claim 8 based on a limitation from claim 12.)
Accordingly, we sustain the 35 U.S.C. § I03(a) rejection of claim 8.
35 U.S.C. § 112 f 1 Rejection of Claim 25
Claim 25 recites "[t ]he method of claim 1, wherein the mobile device
cannot connect to a communications network through at least one of the
wireless transmitting devices." App. Br. 22 (Claims App'x). We agree with
Appellants that the Examiner errs in this rejection. App. Br. 13-14 (citing
Spec. ,r,r 27, 29-31 5).
"[T]he test for sufficiency [ of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane). "And while the description requirement does not
demand any particular form of disclosure, or that the specification recite[ s]
the claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement." Id. at 1352 (internal
citations omitted).
FM radio stations are an example in the Specification of wireless
transmitting devices about which information is collected and transmitted.
5 References to paragraph numbers of Appellants' Specification are to the
published application, US 2009/0003292 Al (Jan. 1, 2009).
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See Spec. ,r 29. We find the Specification describes that the inventors had
possession of the claimed subject matter of claim 25 because artisans of
ordinary skill would have understood collecting data about an FM radio
station from a wireless device such as a laptop generally does not include an
ability of the laptop to connect to a communications network through the
FM radio station.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112 ,r 1
rejection of claim 25.
DECISION
For the above reasons:
We sustain the rejections of claims 1, 2, 5, 6, 8, 9, 11, 12, 15,
16, 18-20, 24, and 25 under pre-AIA 35 U.S.C. § 103(a) and
We do not sustain the rejection of claim 25 under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. § 112 ,r 1.
Because we sustain a ground of rejection of each pending claim, we
designate our decision as an affirmance.
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
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