Ex Parte 6496776 et al

Patent Trial and Appeal Board

Mar 30, 2015

95001437 (P.T.A.B. Mar. 30, 2015)

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.
95/001,437 09/01/2010 6496776 SMTR-001/06US
195688-2023
6496
22903 7590 03/30/2015
COOLEY LLP
ATTN: Patent Group
Suite 700
1299 Pennsylvania Avenue, NW
Washington, DC 20004
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/30/2015 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 APPEALS BOARD
____________________

BOOPSIE, INC., ZILLOW, INC., HOTPADS, INC.,
IDX, INC., REALPAGE, INC., PRIMEDIA, INC.,
CONSUMER SOURCE, INC., TRULIA, INC., and ZIP REALTY, INC.
Requesters and Cross Appellants,

v.

SMARTER AGENT, LLC,
Owner and Appellant

____________________

Appeal 2014-008887
Reexamination Control 95/001,437
United States Patent No. 6,496,776 B1
Technology Center 3900
____________________

Before DENISE M. POTHIER, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
Requesters made a third party request for inter partes reexamination of
U.S. Patent No. 6,496,776 B1 (“the ’776 patent”) issued to Brad W. Blumberg and
Eric M. Blumberg, entitled Position-Based Information Access Device and
Method. The patent issued December 17, 2002 and is assigned to Smarter Agent,
LLC. Patent Owner (PO) App. Br. 1.
Owner has stated there are three related proceedings concerning the ’776
patent. They are styled as Smarter Agent LLC v. Boopsie Inc. et al., Civil No.
1:10-cv-00245-LPS, Smarter Agent LLC v. DoApp Inc. et al., Civil No. 1:11-cv-
00161-LPS, and Smarter Agent LLC v. Mobilerealtyapps LLC et al., Civil No.
1:11-cv-00915-LPS, all of which have been stayed pending reexamination. PO
App. Br. 1–2; Requesters (3PR) Resp. Br. 1.
Additionally, although not mentioned by Owner or Requester, two related
reexaminations, Reexamination Control Nos. 95/001,435 and 95/001,436, have
been appealed to the Board and have been assigned Appeal Nos. 2014-007256 and
2014-007276 respectively. Opinions for these proceedings were mailed September
29, 2014. Owner requested rehearing of both these opinions on October 29, 2014.
In the instant proceeding, Owner appeals from the decision in the
Examiner’s Right of Appeal Notice (RAN) rejecting claims 1–47. PO App. Br. 2.
Requesters filed a Responsive Brief disputing the contentions by Owner and
supporting the Examiner’s decision. 3PR Resp. Br. 2–21. Owner also filed a
Rebuttal Brief, responding to Requesters’ position. PO Reb. Br. 2–15.
Requesters filed a cross appeal contending the Examiner erred in not
adopting various different rejections covering claims 27–47. 3PR App. Br. 6-7.
Owner filed a Responsive Brief disputing the contentions by Requesters and
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supporting the Examiner’s decision. PO Resp. Br. 3–13. Requesters also filed a
Rebuttal Brief, responding to Owner’s position. 3PR Reb. Br. 1-13.
The Examiner’s Answer relies on the RAN mailed October 1, 2012,
incorporating it by reference. See Ans. 1.
An order vacating a scheduled oral hearing was mailed December 22, 2014.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.
Original claim 27 and new claim 29 on appeal read as follows with
emphases added:
27. A method of locating a landmark, comprising:
providing geographic position information of a wireless device to an
information system, the information system including at least a first location
identifier, said first location identifier being representative of a first
landmark proximate to said geographic position and having associated first
location-centric information including at least one attribute descriptive of
said first landmark;
receiving from said information system, a second location identifier
representative of a second landmark, said second location identifier having
associated second location-centric information including said at least one
attribute.

29. A method of retrieving location-centric information, comprising:
providing information related to a geographic position of a wireless
device to an information system;
receiving from said information system a plurality of location identifiers
based on said geographic position information, at least one location
identifier from said plurality of location identifiers being representative of a
landmark for sale proximate to said geographic position, said information
system including location-centric information related to a plurality of
landmarks for sale; and
receiving location-centric information from said information system, said
location-centric information related to one landmark for sale proximate to
the geographic position.
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PO App. Br. 35, Claims App’x.
A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Brown US 5,794,216 Aug. 11, 1998
DeLorme US 5,802,492 Sept. 1, 1998
Sealand US 6,484,176 B1 Nov. 19, 2002
Dowling US 6,522,875 B1 Feb. 18, 2003
Fan US 6,552,682 B1 Apr. 22, 2003

Jonathan Broadbent & Patrizia Marti, Location aware mobile interactive guides:
usability issues, 4th Int’l Conf. on Hypermedia and Interactivity in Museums 1-15
(1997) (“Broadbent”)

M.J. O'Grady et al., A Tourist-Centric Mechanism for Interacting with the
Environment (Final Draft), 1st Int'l Workshop on Managing Interactions in Smart
Envs. 1-12 (1999) (“O'Grady”).

B. The Adopted Proposed Rejections
The Examiner maintains the following rejections:
Reference(s) Basis Claims RAN
O’Grady § 102(a) 1, 3, 8–12, 17–20, 25 37
O’Grady and DeLorme § 103(a) 2, 4–7, 13–16, 21–24, 26 37–38
O’Grady and Brown § 103(a)
2, 4–7, 13–16,
21–24, 26,
29–45
38–39,
49
Dowling § 102(e) 1, 3, 4, 8–12, 17–20, 25 40–41
Dowling and DeLorme § 103(a) 2, 5–7, 13–16, 21–24, 26 41
Dowling and Brown § 103(a) 2, 4–7, 13–16, 21, 23, 24, 26,
41–42,
51
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29–45
Broadbent § 102(b)
1–3, 8–12,
17–23, 25, 27,
28, 46, 47
42–43,
47
Broadbent and DeLorme § 103(a) 4–7, 13–16, 21–24, 26 43–44
Broadbent and Brown § 103(a) 4–7, 13–16, 21–24, 26 44–45
Fan § 102(e) 1, 3, 8–12, 17–20, 25 45–46
Fan and DeLorme § 103(a) 4–7, 13–16, 21–24, 26 46
Fan and Brown § 103(a)
4–7, 13–16,
21–24, 26,
29–45
46–47,
50
O’Grady and Sealand § 103(a) 29–36, 39–45 50

Of those rejections, Owner seeks review of the following rejections and claims:
Reference(s) Basis Claims
O’Grady and DeLorme § 103(a) 5–7, 13–16, 24, 26
O’Grady and Brown § 103(a) 5–7, 13–16, 24, 26, 29–45
Dowling and DeLorme § 103(a) 5–7, 13–16, 24, 26
Dowling and Brown § 103(a) 5–7, 13–16, 24, 26, 29–45
Broadbent § 102(b) 27, 28, 46, 47
Broadbent and DeLorme § 103(a) 5–7, 13–16, 24, 26
Broadbent and Brown § 103(a) 5–7, 13–16, 24
Fan and DeLorme § 103(a) 5–7, 13–16, 24, 26
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Fan and Brown § 103(a) 5–7, 13–16, 24, 26, 29–45
O’Grady and Sealand § 103(a) 29–36, 39–45

PO App. Br. 7-8.
C. The Non-Adopted Rejections
The Examiner refused to adopt several rejections of claims 27-47 appealed
by Requesters. The non-adopted rejections follow here:

Reference(s) Basis Claims
O’Grady § 102(a) 27–28
O’Grady and DeLorme § 103(a) 29–47
O’Grady and Brown § 103(a) 46–47
O’Grady and Sealand § 103(a) 46–47
Dowling § 102(e) 27–28
Dowling and DeLorme § 103(a) 29–47
Dowling and Brown § 103(a) 46–47
Fan § 102(e) 27–28
Fan and DeLorme § 103(a) 29–47
Fan And Brown § 103(a) 46–47

3PR App. Br. 6-7.
II. ISSUES ON APPEAL
The main issues on appeal are:
(1) Under §§ 102 or 103, has the Examiner erred in rejecting claim 27 by
finding that the cited references would have taught or suggested the recited
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“receiving from said information system, a second location identifier” step that
includes the “second location identifier representative of a second landmark . . .
[and] having associated location-centric information including said at least one
attribute” descriptive of the first landmark?
(2) Under § 103, has the Examiner erred in rejecting claim 29 by finding that
Dowling or Fan combined with Brown would have taught or suggested the recited
“receiving” steps?
(3) Under § 103, are the cited references properly combinable?

III. ANALYSIS
A. Claim Construction
i. proximate
Illustrative claim 27 of the ’776 patent recites “said first location identifier
being representative of a first landmark proximate to said geographic position [of a
wireless device].” PO App. Br. 35, Claims App’x. Owner and Requesters dispute
how the term “proximate” is construed. During reexamination, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” See In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). As such, we construe the disputed term, “proximate,” in light of the
disclosure, as interpreted by an ordinarily skilled artisan.
The Examiner states “proximate” does not mean the user is at the property,
but rather “within a certain large but undisclosed number of miles from an exact
pinpoint location.” RAN 4. The Examiner finds the claims do “not require the
location of the device to be an exact physical location of the landmark or device”
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or that “the user is necessarily ‘present at’ a particular location.” Id. The
Examiner also notes that the ’776 patent incorporates by reference the subject
matter of U.S. Patent No. 7,072,665, which is the subject of Control No.
95/001,436.1 RAN 5. The Examiner further provides an example of adjacent
houses to a large ranch may be hundreds of miles away to support the construction
of the term “proximate” consistent with the disclosure, has no “definite limiting
spatial range with respect to proximity of a location,” but includes an undisclosed
number of miles from a location. Id.
Requesters agree with the Examiner’s construction, stating this interpretation
is not unreasonably broad and is consistent with the disclosure of the ’776 patent.
3PR Resp. Br. 2–3. Requesters further note “proximate” is a relative term and its
meaning depends on the context. 3PR Resp. Br. 2.
Owner counters that the Examiner’s construction of the term, “proximate,”
distorts its plain meaning, is unreasonably broad, and is not consistent with the
’776 patent’s disclosure. PO App. Br. 8-10; PO Reb. Br. 3–4. Owner contends
that the Examiner has not considered the declaration of Mr. John Moring (“the
Moring declaration”), which addresses the meaning of “proximate.” PO App. Br.
9–11. Specifically, Owner argues that the term, “proximate,” would have been
understood to mean “that there exists some spatial relationship between the
landmark and the user device” and “that the landmark is nearest or next to the user
device.” PO App. Br. 9–10 (underlining omitted) (citing the Moring Decl. ¶¶ 22,

1 The ’776 patent incorporates by reference both U.S. Application Nos. 09/639,265
and 09/774,119, which issued as U.S. Patent Nos. 6,385,541 and 7,072,665
respectively. The ’776 patent 1:6–18. Reexamination proceedings for both these
patents were ordered and have been assigned Control Nos. 95/001,435 and
95/001,436 respectively.
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77 at PO App. Br. 10 n. 72). Owner asserts that the Examiner’s construction
imparts no spatial relationship between the landmark and the user device. PO App.
Br. 10.
For the first time in the Rebuttal Brief, Owner provides evidence with
dictionary definitions2 that the term, “proximate,” means “very near or close.” PO
Reb. Br. 3 n. 2. Given the definitions, we find that being close to an object is more
aligned with the ordinary understanding of the term, “proximate.” This
interpretation disagrees with the part of the Moring declaration stating that the
phrase “proximate” means “one at which the user is currently located” or “being
physically present at the location.” The Moring Decl. ¶ 19 (underlining omitted)
(citing the ’776 patent 1:36).
We must also consider the broadest reasonable construction of “proximate”
in light of the ’776 patent’s disclosure. Although the Moring Declaration points to
various parts of the disclosure for support (the Moring Decl. ¶ 19 (citing the ’776
patent 1:29, 36, 41; 2:47, 51; 7:61; 8:11, 53; 9:6, 43, 53)), the term, “proximate,” is
not located in the disclosure other than in the claims. See generally the ’776
patent. For example, columns 1 and 2 of the ’776 patent cited by Mr. Moring
discuss the background of the invention and do not articulate what “proximate”
means. These columns discuss obtaining information about a particular “location”
or “in the proximity of the user.” The ’776 patent 1:29-30; 2:59; see also the ’776

2 Owner provides two definitions of “proximate.” The first, “1. Very near or next,
as in space, time or order,” comes from The American Heritage Dictionary of the
English Language, 4th ed. 1412 (2000). The second, “1. Next; nearest;
immediately before or after in order, place occurrence, etc. 2. Close; very near,"
comes from Random House Unabridged Dictionary, 2nd ed. 1557 (2001).

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patent 8:49–53; 9:3–7. Additionally, although we do not find that the Moring
declaration supports that the ordinary meaning of “proximate” is where the
landmark is “nearest or next to the user device” (PO App. Br. 10 n. 72 (citing the
Moring Decl. ¶¶ 22, 70)), we accept that the term “proximate” in the context of
claim 27 requires “that there exists some spatial relationship between the [first]
landmark and the [wireless] device[‘s geographic location].” PO App. Br. 9
(underlining omitted).
Also, the ’776 patent provides a description of a location-centric information
system, which provides “possible location identifiers corresponding to the several
entries within a predetermined or random radius of the geographical position of
wireless device 102,” such as location identifiers indicating the street address of
“the houses in the general vicinity.” The ’776 patent 7:59–61, 64–65; Fig. 3; the
Moring Decl. ¶ 19. For example, Figure 3 shows three identifiers retrieved based
on the wireless device’s geographical location. The ’776 patent 7:50–65.
Additionally, the ’776 patent also describes retrieving information “about a
particular landmark near which they are located” including “similar properties in
the area.” The ’776 patent 10:43–45, 50. Figure 12 discloses feature 1202 where
the search results can be sorted by proximity to the user’s present location. The
’776 patent 10:21–26; Fig. 12. This passage, however, fails to explain what
properties are “proximate” to the user. As such, the disclosure contemplates that
the term “proximate” includes within a predetermined or random radius of the
geographical position of the wireless device or in the general vicinity of the device.
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The ’776 patent also incorporates by reference the subject matter of U.S.
Patent No. 6,385,541 and 7,072,665 (hereafter the ’541 and ’665 patents).3 The
’776 patent 1:6–18. Reexamination proceedings for the ’541 and ’665 patents
were ordered.4 We construed the word “proximate” in these opinions to mean near
to or within the vicinity of the wireless device’s geographic position.5 Notably, the
’776 patent, the ’541 patent, and the ’665 patent each include a figure (e.g., Fig. 3,
Figs. 3a, Fig. 3 respectively) where multiple location identifiers (e.g., three
addresses – namely 101, 103, and 105 Oak Street) are provided, each suggesting
that the received information from an information system related to a landmark
need not be the exact location of the landmark or at the wireless device’s precise
geographic position. See id.
When considering the above ordinary meaning of “proximate” coupled with
the disclosure of the ’776 patent, we find that a broad, but reasonable construction
of “proximate” includes distances near to or distances in the vicinity of the wireless
device, which is greater than at the wireless device’s location or very close to the
wireless device’s location. Granted, what the meaning of “near” or “in the vicinity

3 The ’776 patent incorporates by reference both U.S. Application Nos. 09/639,265
and 09/774,119, which became the ’541 and ’665 patents respectively.
4 The ’541 and ’665 patents were assigned Control Nos. 95/001,435 and
95/001,436 respectively; each proceeding was appealed to the Board and was
docketed Appeal Nos. 2014-007256 and 2014-007276 respectively.
5 See Boopsie, Inc. et al v. Smarter Agent LLC, Appeal No. 2014-007256, slip op.
at 9–10 (PTAB Sept. 29, 2014) (citing the ’541 patent 1:11-15 (discussing
accessing a database based upon the property located near the user), 4:20-30
(discussing displaying several addresses in the vicinity of the user); Fig. 3a); see
also Boopsie, Inc. et al v. Smarter Agent LLC, Appeal No. 2014-007276, slip op. at
8–9 (PTAB Sept. 29, 2014) (citing the ’665 patent 7:59-67(discussing providing
identifiers related to entries in the general vicinity of the wireless device’s
geographic location, such as street addresses); Fig. 3).
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of” a user’s wireless device is relative, and its meaning varies from person to
person. See 3PR Resp. Br. 2. Even Owner acknowledges “that the meaning of the
term ‘proximate’ depends on context.” PO Reb. Br. 3. For that reason, we must
allow for some flexibility as to what distances an ordinarily skilled artisan would
have considered are included within the meaning of “proximate.” Additionally,
landmarks occupying a large space (see RAN 5; the ’776 patent 5:1–11) will be
proximate to many other locations. Even so, we do not find that the record
supports “proximate” to include some undisclosed number of miles from an exact
location.
Accordingly, we find an ordinarily skilled artisan would have understood the
term “proximate” in the context of the claims to mean near to or within the vicinity
of the wireless device’s geographic position.
ii. attribute
Owner also disputes that the cited prior art fails to teach “an attribute” as
recited in claim 27. PO App. Br. 13. We construe the broadest reasonable
construction of the term “attribute” in light of the disclosure, as one of ordinarily
skill would have understood.
Requesters argue the broadest, reasonable meaning of “attribute” recited in
the claims is “a type of information provided about an object.” 3PR Resp. Br. 3
n. 2 (emphasis omitted). Requesters assert that the content or value of the
information is distinct from its attribute or type, such as a media type of the
location-centric information, including textual data, voice, photographs, or video or
feature type (e.g., landscaping, windows, door, and design). 3PR Resp.
Br. 3–5 (citing the ’776 patent 5:54–64, 11:24–29). Owner counters that one
skilled in the art would not construe “attribute” to mean a type of information as
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Requesters urge but includes “a specific feature descriptive of a property,” such as
home style or size with the actual content or value. PO Reb. Br. 4–5 (citing the
Moring Decl. ¶¶ 27–31 and the ’776 patent 11:11–22).
Turning to the disclosure, the ’776 patent describes an embodiment in
Figures 13–15 that allows for searching “a landmark that has similar features or
attributes.” The ’776 patent 10:53–54; Figs. 13–15. However, this passage does
not provide details as to what an attribute is. Later, the disclosure discusses
examples of attributes, including but not limited to house style, parcel lot size,
number of floors, number of bedrooms, window style, builder, landscaping, utility
features, color, sprinkler systems, pool care, and an interior, exterior, or service
feature. The ’776 patent 11:11–41; Figs. 16–19. Additionally, the ’776 patent
states the attributes are not limited to the examples provided and includes “etc.”
within its list. The ’776 patent 11:17–23.
Given the disclosure, we find the term “attribute” includes but is not limited
to the examples provided and include various, different categories of features.
Moreover, some of independent claims, such as claims 27, 28, 46 and 47 do not
recite that the landmarks are a home or, even more so, a home for sale, such that
the recited attribute of the first or second location-centric information is limited to
home features or property for sale features. See PO App. Br. 35, 38–39, Claims
App’x. Also, although we agree with Owner that the recited attribute is
“descriptive of said first landmark” as recited in claim 27, we disagree that a type
or category that has a descriptor (e.g., an interior feature, landscaping) cannot be an
“attribute descriptive of said first landmark” as broadly as recited. See PO Reb. Br.
4–5. Additionally, we agree with Requesters an “attribute” can be “quite general,”
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such as an interior feature (see 3PR Resp. Br. 4), or more specific, such as a
specific interior feature, including a window style.
Owner further asserts that the Moring declaration demonstrates that one
skilled in the art would not interpret the term “attribute” to merely mean a “type”
of information. PO App. Br. 13 and Reb. Br. 4 (citing the Moring Decl. ¶¶ 27–31).
Upon review, other than paragraph 31, the declaration fails to address what an
understanding of the term “attribute” means to one skilled in the art. See the
Moring Decl. ¶¶ 27–31. We further agree with Requesters that the discussion in
paragraphs 29 and 30 addresses whether Broadbent discloses (1) an attribute of the
first landmark, (2) a second landmark containing the same attribute, or (3) a shared
attribute of both the first and second landmark. The disputed claims, however,
recite an identifier – not the landmark – includes information having an attribute
descriptive of a landmark. See 3PR Resp. Br. 3 (addressing the Moring Decl.).
Also, paragraph 31 of the Moring declaration only refers to “an example of the
attribute search feature in a real estate context” in the ’776 patent. The Moring
Decl. ¶ 31 (emphasis added). As such, even Owner contemplates that attributes
can relate to embodiments outside of the real estate context.
Lastly, although the word “attribute” is in independent claims 27, 28, 46 and
47, the word is not located in independent claims 1, 12, 18, 23, 25, 26, 29, 34, 38,
43, and 45, which are also on appeal. Thus, to the extent that Owner argues the
prior art fails to teach an attribute for any of the rejections for claims 1, 12, 18, 23,
25, 26, 29, 34, 38, 43, and 45, we are not persuaded.
Accordingly, we find an “attribute descriptive of [a] landmark” as recited in
the claims can be a general or a specific feature that describes a landmark,
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including but not limited to interior, exterior, service, geographical, and historical
features of the landmark.
B. The Moring Declaration
Owner asserts that the Examiner did not properly consider the Moring
declaration. PO App. Br. 10–11. Notably, the Moring declaration has no
persuasive value for an anticipation rejection, such as the rejection of claims 1–3,
8–12, 17–23, 25, 27, 28, 46, and 47 based on Broadbent. Regarding the
obviousness rejections, the “obviousness inquiry centers on whether ‘the claimed
invention as a whole’ would have been obvious . . . .” Rambus Inc. v. Rea, 731
F.3d 1248, 1257-58 (Fed. Cir. 2013). The question of obviousness is resolved on
the basis of underlying factual determinations including: (1) the scope and content
of the prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406-07 (2007).
Additionally, “[t]he obviousness assessment depends on what the prior art teaches
and on what the non-prior-art evidence of ‘secondary considerations’ (or objective
indicia) may indicate about whether the invention would have been obvious at the
relevant time.” See Institut Pasteur and Universite Pierre et Marie Curie v.
Focarino and Precision Biosciences, Inc., 738 F.3d 1337, 1344 (Fed. Cir. 2013).
As indicated by the Examiner, the Moring declaration has been considered
for the obviousness rejections. RAN 3 (referring to Requesters’ response); see also
3PR Resp. Br. 5–6. Moreover, given that the Examiner maintained various
rejections, this further suggests that the declaration was found unpersuasive.
Additionally, Owner asserts that the Examiner failed to “indicate that all the
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evidence has been considered anew.” PO App. Br. 10. Yet, there is no
requirement that the Examiner explicitly indicate that the evidence was considered
anew.
We will discuss the Moring declaration in more detail below when
addressing the obviousness rejections.
C. Anticipation Rejection Based on Broadbent
Based on the evidence of record, we conclude that the Examiner has not
erred in rejecting claims 1–3, 8–12, 17–23, 25, 27, 28, 46, and 47 under § 102(b)
based on Broadbent. Except as indicated below, we adopt the Examiner’s findings
in the Answer, the RAN and the Requesters’ comments as our own. Ans. 1
(incorporating RAN, which includes RAN 42–43, 47); see also 3PR Resp. Br.
7–10. Because Patent Owner has not argued the claims separately or states claims
46 and 47 were rejected in error “[f]or similar reasons” (PO App. Br. 13), we select
independent claim 27 as representative.
Claim 27 recites, in relevant part, “providing geographic position
information of a wireless device to an information system, the information system
including at least a first location identifier, said first location identifier being
representative of a first landmark proximate to said geographic position and having
associated first location-centric information including at least one attribute
descriptive of said first landmark; [and] receiving from said information system[] a
second location identifier representative of a second landmark, said second
location identifier having associated second location-centric information including
said at least one attribute.”
Owner has two main contentions regarding this rejection. PO App. Br.
11–13. First, Owner argues Broadbent fails to teach the user is proximate a first
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landmark that has a specific attribute descriptive of the first landmark. PO App.
Br. 12. Second, Owner asserts Broadbent is silent regarding an attribute
descriptive of the first and second landmark. Owner asserts that Broadbent does
not query or receive from an information system location-centric information
associated with the second landmark that includes the one attribute descriptive of
the first landmark. See PO App. Br. 12–13 (citing the Moring Decl. ¶¶ 27–31); PO
Reb. Br. 7. Owner contends that the historical information in Broadbent is not an
attribute and even further that this information is not a common attribute
descriptive to both a first and second landmark. PO App. Br. 12–13.
As to the first contention, claim 27 requires both the first and second
location-centric information of the first and second location identifiers respectively
include an attribute descriptive of first landmark, not the landmark itself has an
attribute. 3PR Resp. Br. 3–4. Moreover, as discussed above, we agree with
Requesters that an attribute can be a feature or type of information. See 3PR Resp.
Br. 3–5, 8. Given that an attribute includes a type or feature descriptive of the first
landmark, we further concur that the information’s content can differ from its
attribute. For example, both the first and second location identifiers in claim 27
can include location-centric information having at least a geographical attribute or
feature descriptive of the first landmark (e.g., attribute describes the first and
second landmark concern a specific geographical location, such as city or location
within a city) and still have differing content related to its geography (e.g.,
different content addressing different attractions within the specific city or
location). On the other hand, claim 27 requires that both the first and second
location-centric information have the “at least one attribute descriptive of said first
landmark” or the same attribute. See PO App. Br. 12.
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Additionally, we note that the ’776 patent discusses the term “landmark”
includes physical structures, natural features, historical features, and commercial
features. The ’776 patent 5:1–12. Although this list is broad and non-limiting, we
disagree with Requesters that a reasonable understanding of a “landmark” as
recited in claim 27 includes all the commentary of “‘things that were mentioned
earlier’” in the guide. 3PR Resp. Br. 9 (referring to Broadbent 9–10). For
example, a broad, but reasonable construction of the term “landmark” in light of
the disclosure and as understood by an ordinary artisan would most likely not
include the plumbing in a residence or a specific date related to a battle field.
Claim 27 also recites the first location identifier being representative of a
first landmark proximate the geographical position of a wireless device and not
necessary proximate the user as argued. PO App. Br. 12. Even so, we further
disagree with Owner that Broadbent does not provide the wireless device’s
geographic position to the information system, query an information system for
location-centric information associated with a landmark, or receive an identifier
representative of landmarks and having information that includes an attribute
descriptive of a landmark as Owner asserts. PO App. Br. 11–12. For example,
Broadbent discusses a display screen for a Hyper-Interaction within Physical Space
(HIPS) guide to the Piazza del Campo that contains a “you are here” dot that
moves, as one moves through an area, and a plan that rotates so that the map points
in the correct direction. Broadbent 9. As such, Broadbent discloses providing
geographic position information to and querying an information system (e.g., HIPS
system) about a first landmark (e.g., the Piazza del Campo) and also receiving a
first identifier representative of a first landmark near to or close (e.g., proximate) to
the geographic position of the wireless device. See Broadbent 2–3, 9.
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Regarding Owner’s second contention, we disagree that Broadbent fails to
teach first and second location-centric information having an “attribute descriptive
of said first landmark” as recited in claim 27. For example, Broadbent discloses
various location-centric information, including a HIPS guide to the Piazzo del
Campo in Sienna, which includes brief instructions to permit each user to
customize the guide, a plan of the Piazza del Campo with a “you are here” dot, a
display screen with a list of items of interest (e.g., such as Torre del Mangia and
Palio), and commentary about the surroundings. Broadbent 9–10. As such, both
Mary and John will receive a HIPs guide containing the above information about
the Piazzo del Campo. Additionally, Broadbent states Mary’s guide discusses the
Torre del Mangia within the Piazza del Campo, while John’s guide teaches about
the Palio within the Piazzo del Campo. Broadbent 9–10. Even so, each HIPS
guide includes a map with a “you are here” dot and items of interest list at a given
location. As such, both guides include some of the same information during their
respective tours.
Furthermore, some of this same information are attributes or features
descriptive the first landmark (e.g., a geographical feature, including a map of the
Piazza del Campo, and a historical feature, including items of interest list within
Piazza del Campo). See 3PR Resp. Br. 8. Contrary to Owner’s assertion (PO Reb.
Br. 7), Broadbent further teaches a guide having a first location-centric identifier
representative a first landmark (e.g., the Piazza del Campo) and having first
location-centric information including an attribute descriptive of the first landmark
(e.g., a geographic feature, such as map with a “you are here” dot, or a historical
feature, such as an interest item list) and a second location identifier representative
of a second landmark (e.g., the Torre del Mangia within the Piazza del Campo), the
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second identifier having second location-centric information that includes the same
attribute (e.g., the same map with a location dot and items of interest list). Also, as
Requesters indicate, there is nothing in claim 27 which excludes landmarks from
overlapping spatially. 3PR Resp. Br. 8.
As discussed above, Broadbent further teaches the guides contain
commentary about the surrounding (i.e., historical or geographical content or
feature). Broadbent 9–10. Thus, even though some of the content from one
landmark (e.g., Piazza del Campo) to another landmark (e.g., Torre del Mangia
within the Piazza del Campo) differs, the presentation’s content has the same
attribute (e.g., historical or geographical in nature). See 3PR Resp. Br. 8.
Moreover, the information from both landmarks are attributes descriptive of the
Piazza del Campo. See id. We therefore agree with Requesters, under either the
broadest reasonably construction of claim 27 or Owner’s unduly narrow claim
construction, that Broadbent teaches the content of the location-centric information
associated with both the first and second landmarks HIPS guide can include the
same attribute.
Accordingly, Broadbent disclose providing geographic position information
to an information system that includes a first location identifier representative of a
first landmark proximate the geographic position and having an attribute
descriptive of the first landmark, querying the information system for a location-
centric information associated with a second landmark including the attribute
descriptive of a first landmark, and receiving from the information system a second
identifier having second location-centric information including the attribute
descriptive of the first landmark as recited in claims 27 or 46. Independent claims
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28 and 47 are similar in scope to claims 27 and 46, and we refer to the above
discussion.
Notably, no arguments are presented by Owner for claims 1–3, 8–12, 17–23,
and 25. We therefore, summarily sustain the rejection for these claims. See, e.g.,
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed., March 2014.)
Additionally, to the extent the limitations of these claims are the same or similar to
those discussed above, we refer to our previous discussion.  
For the foregoing reasons, Owner has not persuaded us of error in the
rejection of claims, 1–3, 8–12, 17–23, 25, 27, 28, 46, and 47.
D. Obviousness Rejection Based on Dowling and Brown
Claims 2, 4–7, 13–16, 21, 23, 24, 26, and 29–45 are rejected under § 103 as
obvious over Dowling and Brown. RAN 41–42 (referring to Issues 3–5 and
Request, Ex. E06), 51 (adopting rejection at RAN 41–42 and also adopting
Requesters’ Comments filed March 24, 2011 essentially as proposed). When
addressing this rejection, Owner has not argued the claims separately or has
referred to the arguments previously presented. See PO App. Br. 14–18, 27–28
(referring to Issue III.H). We select independent claim 29 as representative. See
37 C.F.R. § 41.67(c)(1)(vii).
Claim 29 recites, in pertinent part, “receiving from said information system a
plurality of location identifiers based on said geographic position information, at
least one location identifier from said plurality of location identifiers being
representative of a landmark for sale proximate to said geographic position, said
information system including location-centric information related to a plurality of
landmarks for sale.” Owner admits Dowling provides information based on the
mobile unit crossing into a locality but contends that the reference does not provide
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information regarding a landmark for sale proximate to the mobile unit’s specific
geographic position. PO App. Br. 14 (citing the Moring Decl. ¶ 25). Based on this
contention, Owner concludes that Dowling fails to teach “receiving a plurality of
location identifiers” or “receiving location-centric information” as recited in claim
29. PO App. Br. 14-15 (citing the Moring Decl. ¶¶ 67–74). Owner next asserts
that Brown fails to remedy the purported deficiencies, because Brown discloses a
computer remote from the real estate, is silent about a real estate database that
communicates information to a wireless device, and does not communicate
information about a landmark for sale proximate to a wireless device’s geographic
position. Id.
Many of these arguments attack Dowling and Brown individually. Such
individual attacks do not show nonobviousness where the rejection, such as here, is
based on combinations of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). For example, on several occasions, Owner argues that
neither Dowling nor Brown teaches the “receiving from an information system a
plurality of location identifiers” step or “receiving location-centric information
from said information system” step. PO App. Br. 14–15 (stating “neither Dowling
nor Brown discloses this specific recitation in claim 29” or “neither Dowling nor
Brown discloses or teaches a second limitation in claim 29.”)
To the extent that Patent Owner is disputing that Dowling and Brown
collectively fail to teach the disputed features in claim 29, we disagree. Notably,
we consider what the references teach collectively. Even if a limitation in claim 29
is not taught by one reference, this fact alone does not demonstrate that the feature
in the limitation is nonobvious based on the collective teachings. See RAN 32
(agreeing with Requesters’ comments quoted at RAN 31 (citing In re Merck &
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Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986) and In re Keller, 642 F.2d 413 (CCPA
1981)).
The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference; nor is
it that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.

Keller, 642 F.2d at 425.
With the exception of the recited location identifier and location-centric
information are related to “a landmark for sale,” the disputed rejection relies on
Dowling for the recited features of claim 29. See March 24, 2011 Comments After
Non-Final Action 41; see also RAN 30–32. The rejection turns to Brown to teach
the missing features. See RAN 30, 32; March 24, 2011 Comments After Non-
Final Action 41–42 (referring to Section III.C.1 of the same comments, which is
located at pages 23–25), and 3PR Resp. Br. 10–12 (citing Dowling 4:31–38, 47–
66, 12:60–13:8, 14:63–15:2 and Brown 3:30-36, 7:48–56).
More specifically, Dowling teaches controlling the flow of information to
the mobile unit based on GPS information and, when a user’s mobile unit enters a
locality, the information is downloaded to the mobile unit based on the GPS
position indication. Dowling 4:31–42, 47–62. This includes a user who desires to
buy a home that drives into an area and receives web pages related to homes in the
area. Dowling, Abstract. Additionally, Dowling discloses providing listing
information only when a user and its mobile unit (e.g., 105) are in front of a
property “for sale.” Dowling 12:60–65. Dowling further teaches downloading
information based upon the mobile unit’s current position. Dowling 14:63–15:10.
Although the Moring declaration asserts that this embodiment “is fundamentally
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different than the ’776 patent” (the Moring Decl. ¶ 89), we disagree for the above
reasons.
Given our understanding of the term “proximate” discussed above, these
examples demonstrate Dowling teaches receiving location identifiers
representative of and location-centric information related to a landmark for sale
proximate to a wireless device’s geographic position as recited in claim 29.
However, to the extent that Dowling does not teach these features, Brown also
teaches databases that include identifiers and information about a real estate
offering, including providing a set of houses, images, and home details, were
known. Brown 3:30–36, 7:48–8:5. As such, when these teachings are combined,
the combination predictably yields no more than receiving from an information
system a plurality of identifiers (e.g., real estate listings) with at least one of these
identifiers representative of a landmark for sale proximate to the wireless device’s
geographical position as well as location-centric information (e.g., images and
home details) related to one landmark for sale proximate the wireless device’s
geographic position. See 3PR Resp. Br. 12.
The Moring declaration asserts that Dowling fails to teach determining the
wireless device’s geographic position or the user’s position. The Moring Decl.
¶¶ 25, 68, 89. Although this limitation of “determining” is not found in claim 29,
we disagree and refer to our above discussion. Notably, claim 29 also does not
recite a user. Additionally, regarding the “landmark for sale” limitation, as noted
above, Dowling teaches providing information concerning a house for sale.
Dowling 12:60–65. However, to extent this does not teach the disputed
“receiving” steps, we refer to our above discussion addressing how Brown’s
disclosure when combined with Dowling teaches this disputed limitation.
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Furthermore, Owner refers to paragraphs 69 through 74 of the Moring
Declaration in arguing that Dowling fails to teach particular recitations of claim 29.
PO App. Br. 14. Many of the claims (e.g., claims 30–38, 42–45) discussed in the
Moring declaration are not disputed in the briefs. See, e.g., the Moring Decl. ¶¶
69–74. However, to the extent these claims are considered to be argued because
these claims have the same or similar limitations to those disputed for claim 29, we
refer to the above discussion.
Owner further contends that the substitution of Dowling’s database for
Brown’s does not result in the recited method of claim 29 because neither Dowling
nor Brown teach receiving at the wireless device location-centric information
about a landmark for sale proximate to the wireless device or receiving identifiers,
where at least one identifier is representative of a landmark for sale proximate the
wireless device. PO App. Br. 16. We are not persuaded for the above-stated
reasons – namely this argument attacks each reference without considering what
the collective teachings suggest. Additionally, to extent that Owner has argued
there is no motivation or evidence to combine the references (PO App. Br. 17),
Requesters and the Examiner provide at least one reason with a rational
underpinning to support an obviousness conclusion. RAN 8 (citing Section V.D
and Requesters’ Comments 25–28) and 3PR Resp. Br. 12 (discussing substituting
one known technique for another)); RAN 30–32 and 3PR Resp. Br. 12 (discussing
improving on a known technique, such as using Brown’s database that provides
real-estate landmarks based on user-queried locations with Dowling’s device that
uses location-aware techniques, yields no more than a predictable result and
enhances the Dowling system). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416–17 (2007).
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To support Owner’s argument that the references are not combinable, Owner
further relies on the Moring declaration. PO App. Br. 17 (citing Moring Decl.
¶¶ 86-90). We find this declaration unpersuasive. Specifically, paragraph 87
attacks Brown’s failure to teach a location-based query individually, without
considering Dowling’s teaching on this subject and the collective teachings. See
Moring Decl. ¶ 87. The Moring declaration also states that the rationale for
combining Dowling and Brown “seems to equate” properties for sale with gas
stations and restaurants. The Moring Decl. ¶ 88. We disagree. Rather, the analysis
in the Action Closing Prosecution (ACP) (see the Moring Decl. ¶ 86 (citing ACP
29)) discusses properties for sale, gas stations, and restaurants are all landmarks
and uses the references to show they both relate to providing points-of-interest
information based on a geographic position. We further are unpersuaded by the
arguments presented in paragraphs 87, 89, and 90 of the declaration for reasons
previously stated.
Additionally,
Owner submits that it is clear, reading the claim in light of the specification
that the recitations “receiving from said information system a plurality of
location identifiers based on said geographic position information” and “at
least one location identifier from said plurality of identifiers being
representative of a landmark for sale proximate to said geographic position”
are to be interpreted as being “reliant” on the geographic position of the
wireless device.

PO App. Br. 16. Claim 29 requires that the received identifiers are based on
geographic position information of the wireless device. We further agree with
Requesters that Owner’s argument concerning being reliant on the wireless
device’s geographic position are taught by Dowling. 3PR Resp. Br. 12 (citing
Dowling 4:31–38, 11:25–56, 11:66–12:11).
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Owner further argues that Dowling and Brown are not combinable, because
they are not from the same field of endeavor and “the objectives and environments
of Dowling and Brown are distinct from one another.” PO App. Br. 16–17 (citing
the Moring Decl. ¶¶ 86–90). We disagree. Owner describes some differences
between the references and the claimed invention but does not indicate what the
field of endeavor is. See PO App. Br. 16-17. The focus should be on whether the
cited references are in the same field of endeavor as the invention in the ’776
patent. See In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
The disclosure of the ’776 patent states the field of the invention includes a
device for obtaining location-centric information regarding a physical location
using a processing device. See the ’776 patent 1:23–24, 3:18–22. We thus agree
with Requesters that the inventor’s field of endeavor relates to a system for
“providing location-centric information related to a landmark to a user of a
computer or other type of processing device.” 3PR Resp. Br. 12. The Examiner
further finds that both Dowling and Brown provide information related to a
landmark located at a specific location (e.g., location-centric information). RAN 9,
29-30 (citing for Dowling, Request, Ex. E4 (citing Dowling 4:31–38, 11:25–56,
11:66–12:11 for the limitation “providing” step) and Brown 7:29–40).
Additionally, the Examiner finds both Dowling and Brown maintain databases that
contain information relevant to various landmarks. RAN 9, 30. These findings are
unrebutted. See generally PO Reb. Br. On the record, Dowling and Brown are
within the inventors’ field of endeavor.
Notably, no arguments are presented for claims 2, 4, 21, and 23. We
therefore, summarily sustain the rejection for these claims. See MPEP § 1205.02.
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To the extent the limitations of these claims are the same or similar to those
discussed above, we refer to the previous discussion
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law. Accordingly, for the foregoing reasons,
Owner has not persuaded us of error in the rejection of independent claim 29 and
claims 2, 4–7, 13–16, 21, 23, 24, 26, and 28–45 not argued separately with
particularity.
E. Obviousness Rejection based on Fan and Brown
Claims 4–7, 13–16, 21–24, 26, and 29–45 are obvious over Fan and Brown
under 35 U.S.C. § 103(a). RAN 46–47, 50. Owner argues these claims
collectively or refers to the discussion of claims 29–45. See PO App. Br. 23–26,
30. We select claim 29 as representative.
Similar to the rejection based on Dowling and Brown, Owner argues that
Fan fails to teach any information related to a landmark for sale and Brown teaches
accessing information with a device remote from the real estate. See PO App. Br.
23–24. Owner also contends that neither Fan nor Brown teach a plurality of
location identifiers where at least one the location identifiers is representative of a
landmark for sale proximate to the wireless device’s geographic position. PO App.
Br. 24. Once again, these arguments attack the references individually, failing to
consider the collective teachings. See 3PR Resp. Br. 17.
As Requesters note, Brown is cited to teach the landmark for sale and
plurality of identifiers features and Fan is cited for the remaining limitations of
claim 29, including the received information is representative of a landmark
proximate the wireless device’s geographic position. Id.; see also RAN 46–47, 50
(citing Issue 10, Request, Ex. E12, and the March 24, 2011 Comments).
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Additionally, to extent that the specific recitation, “a plurality of identifiers” has
been argued, the rejection relies upon Brown. See Request, Ex. E12 at p. 3 (citing
Brown 7:48–8:24 and discussing a list of houses as identifiers); see also 3PR Resp.
Br. 17. Thus when these teachings are combined, they predictably yield no more
than an ordinarily skilled artisan would have expected or the two “receiving” steps
in claim 29. See RAN 26–27; March 24, 2011 Comments 36–37.
Furthermore, Owner refers to paragraphs 59 through 66 of the Moring
Declaration to support that Fan and Brown fail to teach “this recitation in claim
29.” PO App. Br. 24. Because Owner discusses several recitations (PO App. Br.
23–24), we are not clear to what recitation Owner is referring. However, we
disagree for the above reasons. Also, many of the claims (e.g., claims 30–38, 42–
45) discussed in the Moring declaration are not disputed in the briefs. See the
Moring Decl. ¶¶ 61–66. To the extent the claims have the same or similar
limitations to those disputed for claim 29, we refer to the discussion in this section.
Also, to extent that Owner has argued there is no motivation or evidence to
combine the references (PO App. Br. 25 (citing the Moring Decl. ¶¶ 98–103)),
Requesters and the Examiner provide at least one reason with a rational
underpinning to support an obviousness conclusion. As indicated by the rejection
and above, Fan teaches receiving information from an information system related
to a landmark proximate to the wireless device’s geographic location but does not
specifically describe receiving information related to landmark for sale or a
plurality of identifiers as recited in claim 29. 3PR Resp. Br. 17 (discussing
enhancing or improving Fan’s system to provide another class of location-centric
information, such as landmarks for sale); see also RAN 46–47, 50 (citing Issue 10,
Request, Ex. E12, and the March 24, 2011 Comments (discussing providing more
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flexible options at Request, Ex. E12 at pp. 4–5) and discussing at RAN 13, 15
motivations for combining Brown with Fan is similar to those reasons for
combining O’Grady with Brown, such as providing location-aware functionality to
real estate queries). See also KSR, 550 U.S. at 416–17.
Additionally, Brown teaches that an information database with various types
of information, including images and text and more preferably, real estate data, are
known. See Brown 1:50-55, 3:30-36. Even further, the Examiner states that Fan
teaches the database includes location-relevant information, such as advertising of
local business and events of local interest. See RAN 26-27; see also PO App. Br.
25 (discussing Fan teaches location-relevant information includes advertising of
local interest). These location-relevant categories of Fan suggest to an ordinarily
skilled artisan including other information, such as properties for sale advertising,
within Fan’s device, and Brown further suggests a known database, which includes
such other information, such as properties for sale. As such, the combination of
Fan and Brown teaches and suggests the claimed transmitting to a wireless device
a plurality of location identifiers, where at least one identifier is representative of a
landmark for sale located proximate the wireless device’s geographic position as
recited in claim 29.
Accordingly, any argument that Brown does not provide information related
to points of interest or landmarks proximate to a specific geographic position fail to
consider the collective rejection. See the Moring Decl. ¶¶ 99, 102. Moreover, just
as discussed above when addressing the rejection of Dowling and Brown, this
rejection and the rationale for combining does not equate properties for sale with
gas stations. See the Moring Decl. ¶ 100. Moreover, given how we construe the
term “proximate,” we disagree that Fan fails to teach receiving real-estate
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information about properties or landmarks proximate to or based on a geographic
position. See the Moring Decl. ¶ 101. Lastly, even if Fan and O’Grady differ, we
agree that Fan is similar to O’Grady in that both relate to location-aware
functionality of processing devices. See the Moring Decl. ¶ 103.
Next, Owner asserts that Fan cannot be combined with Brown, because they
are not from the same field of endeavor and “the objectives and environments of
Fan and Brown are distinct from one another.” PO App. Br. 24. We disagree.
Owner describes some differences between the references and the claimed
invention but does not indicate what the field of endeavor is. See PO App. Br. 24-
25. To determine whether Fan and Brown are analogous art, the focus should be
on whether the cited references are in the same field of endeavor as the invention
in the ’776 patent.
We have stated previously that the field of the invention for the ’776 patent
is a device for obtaining location-centric information regarding a physical location
using a processing device and agree with Requesters that the inventor’s field of
endeavor relates to a system for “providing location-centric information related to
a landmark located at a specific location to a user of a computer or other type of
processing device.” 3PR Resp. Br. 17. We also refer to our above discussion of
Brown on this topic when addressing the combination of Dowling and Brown and
how Brown relates to providing information related to a landmark located at a
specific location. See Brown 7:29–40. The Examiner further finds that Fan
provides location-aware technology and receiving information about properties and
landmarks where the user is present. RAN 25–27 (agreeing with Requesters’
comments and citing Request, Ex. E10 (citing Fan 2:4–9, 59–66, 7:15–21, 12:9–
25; Fig. 13 at Ex. E10 at pp. 1–4)); see also Fan 1:23–25, 3:12–18. Fan states the
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invention is a method of distributing “location-relevant information to a mobile
client based upon the position of the client.” Fan 1:24–25 (cited in PO App. Br.
25). On the record, we therefore find that both Dowling and Brown are within the
inventors’ field of endeavor.
No arguments are presented for claims 4 and 21–23. We therefore,
summarily sustain the rejection for these claims. To the extent the limitations of
these claims are the same or similar to those discussed above, we refer to the
previous discussion
We thus, disagree with Owner that, even when combined and considering
the Moring declaration, the cited references fail to render obvious the disputed
limitations. The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law. Accordingly, for the foregoing reasons,
Owner has not persuaded us of error in the rejection of claims 4–7, 13–16, 21–24,
26, and 29–45 not argued separately with particularity.
F. Obviousness Rejection Based on Fan and DeLorme
Claims 4–7, 13–16, 21–24, and 26 are rejected also under § 103 as obvious
based on Fan and DeLorme. RAN 46 (referring to Request, Ex. E11), 50 (referring
to Section III.B). Owner has not argued the claims separately (PO App. Br. 29-
30), and we select independent claim 26 as representative.
Owner argues that the Examiner has failed to establish a prima facie case of
obviousness because Fan and DeLorme are not properly combinable. PO App. Br.
29. In particular, Owner contends Fan discloses a system that receives information
based on its location when the user of the mobile device sends a query, and
DeLorme does not disclose or suggest receiving location-centric information
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related to a landmark proximate to the user’s geographic position. Id. (citing the
Moring decl. ¶¶ 96–97). We are not persuaded.
Claim 26 fails to recite receiving information based on the user’s position
but rather the wireless device’s geographic position. See PO App. Br. 34, Claims
App’x. Even so, and even if DeLorme does not teach receiving location-centric
information proximate to the user’s geographic position, this reason alone does not
demonstrate that DeLorme cannot be combined with Fan. That is, Fan teaches
receiving location-centric information based on the wireless device being
proximate a geographic position, including local advertising and tourist attraction,
restaurants, and services locations within the immediate vicinity of the user and the
user’s device. 3PR Resp. Br. 20 (referring to Section VII.8 at 3PR Resp. Br. 17
(citing Fan 1:53-59, 3:12-18, 35-38, 5:9-12, 7:14-21; Figs. 1, 13)); see also Fan
12:9-25; Fig. 14. Additionally, contrary to the Moring declaration, Fan teaches
“proximate” when given its broadest reasonable construction in light of the ’776
patent. The Moring Decl. ¶ 97. Accordingly, when combining Fan with DeLorme,
the combination yields receiving information related to real estate information near
or close to the wireless device’s geographic position.
Also, although claim 26 fails to recite “a landmark” (PO App. Br. 29), we
further find that the returned information in Fan is “real estate information for a
particular unit” as broadly as claim 26 recites in its preamble, given that restaurants
are properties consisting of land or buildings. Even so, DeLorme is relied upon to
teach real estate database for particular units of real estate are known to ordinarily
skilled artisans. See RAN 46 (referring to Request, Ex. E11 (referring to claims 1,
4, 5 and citing DeLorme 14:18–25, 31:66–32:2, 56:63–57:1, 53:9–22 to address
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real estate information, including street address information, at pp. 16–19)); see
also DeLorme 38:38–54. These particular findings are not disputed by Owner.
Also, there is evidence in the record regarding the combinability of Fan and
DeLorme. PO App. Br. 29. As noted above, the adopted rejected refers to Exhibit
E11, which discusses the combinability of these references. See Request, Ex. E11
at pp. 25 (referring to claims 1, 4, 5), 6 (discussing substituting one known element
for another to obtain a predictable result), 17 (additionally discussing adding a real-
estate functionality for real estate proximate the user’s location). See also KSR,
550 U.S. at 416–17. Given that real estate databases, such as DeLorme, are
known, combining DeLorme’s teaching of a known database specifically stated to
have real estate information with Fan’s system would predictably yield no more
than one would expect from such a combination – receiving real estate information
relating to a particular unit of real estate proximate to the wireless device’s
geographic position, including a street address, based on the wireless device’s
geographic position as claim 26 recites.
No arguments are presented for claims 4 and 21–23. We therefore,
summarily sustain the rejection for these claims. To the extent the limitations of
these claims are the same or similar to those discussed above, we refer to the
previous discussion
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law. Accordingly, for the foregoing reasons,
Patent Owner has not persuaded us of error in the rejection of claims 4–7, 13–16,
21–24, and 26 not argued separately with particularity.
G. Remaining Rejections and Non-Adopted Rejections
Notably, claims 1, 3, 4, 8–12, 17–20, and 25 are rejected under 35 U.S.C.
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§ 102(e) based on Dowling; claims 1, 3, 8–12, 17–20, and 25 are rejected under 35
U.S.C. § 102(e) based on Fan. Although not argued in the briefs, we summarily
sustained these rejections. To extent the arguments presented for the above-
discussed rejections apply to these anticipatory rejections, we refer to the above
discussion.
Also, our conclusion that the Examiner did not err in rejecting claims 1-47
based on the adopted rejections discussed above renders it unnecessary to reach the
propriety of the remaining rejections. See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984); cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009). We further decline to reach the non-adopted rejections. See 37 C.F.R.
41.77 (a) (“The Patent Trial and Appeal Board … may affirm or reverse each
decision of the examiner on all issues raised on each appealed claim . . . .) and
Gleave, 560 F.3d at 1338.

IV. CONCLUSION
Owner did not demonstrate that the Examiner erred in rejecting claims 1-47.
The Examiner’s decision to reject claims 1-47 is affirmed.

V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
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on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983

AFFIRMED

FOR PATENT OWNER:

Cooley, LLP
Attn: Patent Group
Suite 700
1299 Pennsylvania Ave., NW
Washington, DC 20004

FOR THIRD-PARTY REQUESTERS:

Kirupa Pushparaj
Perkins Coie, LLP
Patent – SEA
P.O. Box 1247
Seattle, WA 98111-1247