Ex Parte Wegdam

Patent Trial and Appeal Board

May 9, 2013

11301425 (P.T.A.B. May. 9, 2013)

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.
11/301,425 12/13/2005 Maarten Wegdam Wegdam 2 (LCNT/127488) 8419
46363 7590 05/09/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
BETIT, JACOB F
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
05/09/2013 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 MAARTEN WEGDAM
____________

Appeal 2010-011644
Application 11/301,425
Technology Center 2100
____________

Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and
MIRIAM L. QUINN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
According to Appellant, the invention relates to the fields of searching
and networking, and, in particular, relates to improving location-based
searches in location-based networks. Spec. 1, ll. 6-8. 1 The subject matter
on appeal involves a location-based search engine that uses a ranking
algorithm that combines clickthrough measurements with implicit user
location, where the location is passed to the search, without requiring
explicit user input of the location. Spec., Abstract. Details of the appealed
subject matter are recited in illustrative independent claim 1, reproduced
below from the Claims Appendix of the Appeal Brief:2
1. A method for providing location-based services, the
method comprising:
receiving, from a user device, a request for a location-based
service, the request comprising a search query;
determining the user’s location with a predetermined
accuracy to maintain the user’s privacy; and

1 References to Appellant’s Specification (“Spec.”) are directed to the
specification filed on December 13, 2005.
2 References to the Appeal Brief (“App. Br.”) are directed to
Appellant’s Appeal Brief filed on April 19, 2010, and references to the
Reply are directed to Appellant’s Reply Brief filed on August 20, 2010.
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providing the determined location without violating the
user’s privacy together with the search query toward a search
engine configured to combine clickthrough measurements and
the implicit location of the user to determine and rank a
plurality of location-based results of the request, wherein the
plurality of location-based results comprise one or more results
previously selected by other user devices submitting requests
similar to the request received from the user device such that
the previously selected results are ranked higher than remaining
of the plurality of location-based results.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following reference at pages 3 to 10 of the Answer:3
Zellner US 6,738,808 B1 May 18, 2004
Ge US 2005/0065916 A1 Mar. 24, 2005
McDonnell US 6,799,032 B2 Sept. 28, 2004
The Examiner provides the following ground of rejection, of which
Appellant seeks review: claims 1-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zellner, Ge, and McDonnell (Ans. 4-6).
ISSUES
Based on Appellant’s arguments, the dispositive issues on appeal are:
1) Whether the Examiner erred in rejecting independent claims 1, 8, and
16 under 35 U.S.C. § 103(a) because the combination of Zellner, Ge, and
McDonnell fails to teach the following limitations (with disputed language,
where applicable, in italics):

3 References to the Examiner’s Answer (“Ans.”) are directed to the
Answer mailed on July 8, 2010.
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a) “providing the determined location without violating the user’s
privacy together with the search query toward a search engine
configured to combine clickthrough measurements and the implicit
location of the user to determine and rank a plurality of location-
based results of the request, wherein the plurality of location-based
results comprise one or more results previously selected by other
user devices submitting requests similar to the request received
from the user device such that the previously selected results are
ranked higher than remaining of the plurality of location-based
results” (App. Br. 7-9, 11); and
b) “determining the user’s location with a predetermined accuracy to
maintain the user’s privacy” (App. Br. 11); and
2) Whether the Examiner improperly combined Zellner, Ge, and
McDonnell (App. Br. 11-13).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contention. Further, we have reviewed the Examiner’s response to
Appellant’s arguments. 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 Appellant’s Appeal Brief. We concur with the conclusions
reached by the Examiner. We highlight the following arguments for
emphasis.
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Issue 1a
Appellant contends that the cited references do not disclose or suggest
“providing the determined location without violating the user’s privacy
together with the search query toward a search engine,” a limitation that is
recited in independent claims 1, 8, and 16. App. Br. 7-8. In particular,
Appellant argues that the Examiner admits Zellner does not teach the
limitation, but summarily finds that paragraphs 31-33, 36, and 38 in Ge does
teach it. App. Br. 8-9. We are not persuaded that the Examiner erred.
First, Appellant’s argument does not squarely address the grounds of
rejection, which relies on a combination with McDonnell, not Ge, as
teaching the disputed limitation. Ans. 5, 12-13. And we do not find error in
the Examiner’s findings that McDonnell teaches the limitation “providing
the determined location without violating the user’s privacy together,” as
stated on pages 18 to 19 of the Answer.
Moreover, we find the Examiner’s reliance on the cited paragraphs in
Ge is not in error. Those paragraphs addressed other limitations in the
claim, such as the following claim language:
a search engine configured to combine clickthrough
measurements and the implicit location of the user to
determine and rank a plurality of location-based results of the
request, wherein the plurality of location-based results
comprise one or more results previously selected by other
user devices submitting requests similar to the request
received from the user device such that the previously
selected results are ranked higher than remaining of the
plurality of location-based results

Ans. 4, 7, and 9.
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The subject matter described in Ge at paragraphs 31-33, 36, and 38
reasonably appraises Appellant of the claimed features found in the prior art,
and the Examiner’s detailed explanation in the Answer provides an
abundance of notice as to how Ge discloses the subject matter recited in
Appellant’s claims. See Ans. 14-17. In particular, we note the extensive
Examiner’s findings, with which we agree, in the Answer at pages 16 to 17
addressing Appellant’s argument that the Examiner did not give patentable
weight to the claim language, “such that the previously selected results are
ranked higher than remaining of the plurality of location-based results.”
Accordingly, having considered all of Appellant’s arguments made in
sections A.1.1 through A.1.3 of the Appellant’s Appeal Brief and
corresponding arguments in the Reply Brief, we are not persuaded the
Examiner erred.4
Issue 1b
Appellant further contends that the cited art fails to disclose the
limitation of “determining the user’s location with a predetermined accuracy
to maintain the user’s privacy.” App. Br. 10-11. Appellant argues that the
Examiner failed to consider the proper construction of the disputed claim
language. App. Br. 10. Appellant urges that the Specification provides for a

4 As a point of clarification, the Board does not review allegations of
the Examiner’s non-compliance with a requirement, such as that alleged by
Appellant’s argument that the Examiner’s rejection did not comply with
MPEP §§ 707.05, 707.05, and 37 C.F.R. § 1.104. App. Br. 8-9; Reply 5-7.
The Examiner’s alleged non-compliance is petitionable matter. See 37
C.F.R. § 1.181. Petitionable issues are not subject to review by the Board.
See In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002). Accordingly, we
have no opinion concerning the matter.
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person of ordinary skill in the art to understand the disputed claim language
to comprise “a city and a state.” App. Br. 10-11. We are not persuaded.
The broadest reasonable interpretation consistent with the
Specification of the claim language “determining the user’s location with a
predetermined accuracy to maintain the user’s privacy” does not limit the
scope of the claim to “a city and a state,” even if the Specification provides
for that embodiment. We are instead in agreement with the Examiner’s
findings and conclusions, at pages 18 to 20 of the Answer, addressing that
the teachings in McDonnell disclose the disputed limitation and that the
Specification does not define a predetermined accuracy to be either a city or
a state, but that “rather[,] a general location with a predetermined accuracy is
given instead of a specific location of the user” (Ans. 19).
Accordingly, having considered all of Appellant’s arguments made in
section A.1.4 of the Appellant’s Appeal Brief and corresponding arguments
in the Reply Brief, we are not persuaded the Examiner erred.
Issue 2
Appellant contends that Zellner, Ge, and McDonnell cannot be
combined because the proposed combination would not yield predictable
results (App. Br. 11-12) and because the Examiner used improper
motivation to make the suggested combinations (App. Br. 13-14). We have
considered all of Appellant’s arguments and are not persuaded that the
Examiner erred. Specifically, Appellant argued that the functionalities of
McDonnell and Ge are incongruous because Ge requires more location
precision than McDonnell requires. App. Br. 12. The Examiner finds this is
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not the case and provides a detailed analysis in pages 20-21 of the Answer.
We agree with the Examiner’s findings and conclusions.
Further, Appellant argues that the Examiner’s proffered motivation to
combine the art is erroneous because it allegedly improperly relies on
“general benefits of the suggested combinations.” App. Br. 13. However,
the Examiner responds to Appellant’s argument with a detailed and well-
reasoned rationale for combining Zellner, Ge, and McDonnell (Ans. 21-22)
and Appellant’s have not provided sufficient evidence or argument to
persuade us of error. Finding no error in the Examiner’s findings and
conclusion therewith, we are not persuaded by Appellant’s arguments
otherwise.
CONCLUSION
For the foregoing reasons and adopting the findings and conclusions
of the Examiner, we conclude that the Examiner did not err in rejecting the
independent claims 1, 8, and 16 under 35 U.S.C. § 103(a) over Zellner, Ge,
and McDonnell. Consequently, we sustain the Examiner’s rejection thereto.
Because Appellant argues the patentability of dependent claims stand or fall
with the patentability of independent claim 1 (App. Br. 23), we also sustain
the rejection of claims 2-7, 9-15, and 17-20.
DECISION
We affirm the Examiner’s decision to reject claims 1-20.
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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