Ex Parte 6677894 et al

Board of Patent Appeals and Interferences

Mar 25, 2011

90008597 (B.P.A.I. Mar. 25, 2011)

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.
90/008,597 04/18/2007 6677894 000734CIP 9912
23696 7590 03/28/2011
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
EXAMINER
CHOI, WOO H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/28/2011 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
____________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________

Ex parte QUALCOMM INCORPORATED
____________

Appeal 2010-009565
Reexamination Control 90/008,597
Patent 6,677,894 B21
Technology Center 3900
____________

Before, SALLY C. MEDLEY, RICHARD M. LEBOVITZ, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 Patented to listed inventors Leonid Sheynblat & Norman F. Krasner,
Method and Apparatus For Providing Location-Based Information Via A
Computer Network (issued Jan. 13, 2004).
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STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination of the ’894 patent. Appellant and real party in interest,
Qualcomm, Incorporated, seeks review under 35 U.S.C. § 134(b) and
appeals from the final rejection of pending claims 1-13, 15-35, and 37.
(App. Br. 3.) Claims 14 and 36 were deemed to be patentable. (Id.)
Appellant attempted to cancel rejected claim 37, but the amendment was not
entered. (Id. at 7; Ans. 4, 14.)2
We AFFIRM.
The ’894 patent discloses “[m]ethods and apparatuses for distributing
location-based information (i.e., information specific to a client’s location or
a location of interest to the client) to a client, which may be a mobile SPS
receiver, via the Internet and in particular, the World-Wide Web.”
(Abstract.) One network of the invention includes mobile GPS units,
location servers, application servers, WWW servers that provide location-
based information to a client, GPS reference receivers, and a communication
infrastructure to facilitate communication between the network components.
(Col. 4, l. 57 to col. 5, l. 17; FIG. 2A.) The network may also include a
server for providing “location-based service information, such as weather,
traffic, etc.” (Col. 17, ll. 24-28.)3
Claim 1 follows:

2 All finally rejected claims, including claim 37, are on appeal, because the
Notice of Appeal indicates that the appeal is “from the last decision of the
Examiner.”
3 This description constitutes factual findings referenced hereinafter as “FF
0”.
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1. A method for providing information from a web server, said method
comprising:
receiving at said web server a request for information, said request
being received over the Internet from a mobile communication device, said
request not including position information of said mobile communication
device;
transmitting, from said web server to a location server coupled to a
network of reference stations, a request for a position of said mobile
communication device; and
receiving from said location server said position of said mobile
communication device and in response to receiving said position, providing,
from said web server, information associated with said position to said
mobile communication device.

(Br. App’x 19 (underlining and bracketed text omitted).)

The Examiner relies on the following prior art references:
Kingdon I US 6,088,594 Jul. 11, 2000
Hollenberg US 6,091,956 Jul. 18, 2000
Giniger US 6,199,045 Mar. 6, 2001
Kingdon II US 6,411,811 Jun. 25, 2002
Girerd WO 97/14054 Apr. 17, 1997

The Examiner rejected claim 37 under 35 U.S.C. § 112, first
paragraph.
The Examiner rejected claims 1, 6, 7, 9, 10, 13, 15, 28-30, and 32
under 35 U.S.C. § 102(e) as anticipated by Kingdon I.
The Examiner rejected claim 8 as obvious under 35 U.S.C. § 103(a)
based on Kingdon I.
The Examiner rejected claims 1, 2, 11, 12, 16-18, 22-24, 31, 33, and
35 as obvious under 35 U.S.C. § 103(a) based on Kingdon II and Kingdon I.
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The Examiner rejected claims 3-5, 19-21, and 25-28 as obvious under
35 U.S.C. § 103(a) based on Kingdon II, Kingdon I, and Girerd.
The Examiner rejected claim 34 as obvious under 35 U.S.C. § 103(a)
based on Kingdon I and Hollenberg, or Kingdon II, Kingdon I, and
Hollenberg.

ISSUES
Has Appellant met the burden on appeal of rebutting the Examiner’s
finding that claim 37 fails to meet the written description requirement?
Does Kingdon I disclose the step of “transmitting, from said web
server to a location server coupled to a network of reference stations, a
request for a position of said mobile communication device,” as required by
claim 1?
Does the combination of Kingdon II and Kingdon I render obvious the
step of “receiving, from said location server said position of said mobile
communication device and in response to receiving said position, providing,
from said web server, information associated with said position to said
mobile communication device” as required by claim 1?
Does the combination of Kingdon II and Kingdon I render obvious the
step of “transmitting from said location server to said web server said
position of mobile communication device based on a Satellite Positioning
System position calculation,” as required by claim 17?
Does the combination of Kingdon II and Kingdon I render obvious a
method in a mobile communication device comprising the step of “receiving
services information associated with said position of said mobile
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communication device, said receiving being in response to said web server
receiving said position which was requested from said location server,” as
required by claim 23?

FINDINGS OF FACT
Kingdon I
1. Kingdon I discloses “telecommunication systems and methods
which utilize a terminal-based browser such as the Wireless Application
Protocol (WAP) ‘deck’, within a Mobile Station (MS) to connect the MS to
web-based location services and to a Mobile Positioning Center (MPC).”
(Col. 3, ll. 39-44.) A browser allows “for the graphical presentation of the
current location of the MS on a display on the MS and provid[s] an
interactive user dialog, which permits the module subscriber to determine
the format of the graphical presentation of the current location of the MS.”
(Col. 3, ll. 45-49.)
2. A mobile station (MS) that desires to know its location activates a
browser within the MS, which connects “to a web-based location
application.” (Col. 4, ll. 24-30; FIG. 4.) Next, the mobile station “can select
the format of the returned location information (step 410), e.g., street
address, location on a map, or other type of format.” (Col. 4, ll. 46-49;
FIG. 4.) “Thereafter, the web-based location application 330 sends a
positioning request to a Mobile Positioning Center (MPC).” (Col. 4,
ll. 54-55; FIG. 4.) The positioning request is then forwarded from the MPC
to various Base Transceiver Stations, which determine Timing Advance
(TA) values. (Col. 4, l. 66 to col. 5, l. 33.) The TA values are sent to the
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MPC and the MPC uses them to determine the location of the MS with a
triangulation algorithm. (Col. 5, ll. 34-38.)
3. Next, the web-based location application receives the position from
the MPC. (Col. 5, ll. 39-41.) The web-based location application then
converts the position into the format selected at the mobile station and sends
the position in the desired format to the browser on the MS. (Col. 5, ll. 42-
45.) The position is then displayed in the desired format on the display of
the MS. (Col. 5, ll. 45-47.)
4. Kingdon I also describes prior art systems which do not support
interactive user dialogs for displaying (on prior art mobile stations) “the
nearest streets or landmarks, or the current location in relation to another
fixed point” (col. 3, ll. 27-30), and describes overcoming such shortcomings
as an object of the invention (id. at ll. 31-35; see also FF 2, 3 supra).

Kingdon II
5. Kingdon II discloses a telecommunications system and method
“for provisioning assistance Global Position System (GPS) data to a GPS
receiver within a mobile terminal.” (Abstract.)
6. The system and method provide assistance data “by having
multiple reference GPS receivers located throughout the cellular network,
each reference GPS receiver being capable of providing locally valid lists of
visible satellites and the associated ephemeris and clock correction
information.” (Col. 3, ll. 2-6.)
7. In operation, a Location Application (LA), which can be a node
within a cellular network or within the Mobile Station (MS), requests
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positioning of a MS. (Col. 3, ll. 56-64.) A Mobile Location Center (MLC)
receives the request and obtains from a reference GPS receiver assistance
GPS data “such as the identity of the visible satellites 280, the orbital
parameters of the satellites 280, clock corrections and differential
corrections.” (Col. 3, ll. 60-62; col. 4, ll. 47-49.) Next, the MLC sends the
assistance GPS data to a GPS receiver in the MS, which then calculates its
position. (FIG. 3, steps 380 and 390.)
PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). “It is
axiomatic that anticipation of a claim under § 102 can be found if the prior
art reference discloses every element of the claim.” In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986). Under § 103, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted).
On appeal, Appellant may rebut the Examiner’s findings and
reasoning with opposing evidence or argument. Failure to do so may
constitute a waiver of potential arguments. See Ex parte Frye, 94 USPQ2d
1072, 1075 (precedential) (BPAI 2010) (“If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (The Board may treat arguments appellant failed to
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make for a given ground of rejection as waived); 37 C.F.R.
§ 41.37(c)(1)(vii).
ANALYSIS
Claim 37
Appellant does not contest the Examiner’s determination that claim 37
is invalid for failing to meet the written description requirement. Rather,
Appellant describes the rejection as “moot” pursuant to Appellant’s
unsuccessful attempt to cancel claim 37 in response to the final Office
Action. (App. Br. 3, 7) Accordingly, we sua sponte affirm the decision
rejecting claim 37 because Appellant does not contest it. (See App. Br. 7.)
Claims 1, 6-10, 13, 15, 28-30, and 32
Appellant asserts that Kingdon I does not disclose the step of
“transmitting, from said web server to a location server coupled to a network
of reference stations, a request for a position of said mobile communication
device,” as required by claim 1. (App. Br. 7.) To support this assertion,
Appellant argues that the Base Transceiver Stations “discussed in Kingdon I
are not reference stations as recited in claim 1 in light of the specification”
because a timing advance (TA) value, which is used in Kingdon I to
triangulate the position of a mobile station, “is not a differential GPS
correction or satellite ephemeris data.” (Id. at 8.) Appellant’s arguments,
however, are not commensurate with the scope of claim 1. In particular, as
found by the Examiner, claim 1 does not require reference stations that
provide a differential GPS correction or satellite ephemeris data. (Ans. 14.)
Rather, claim 1 recites “a location server coupled to a network of reference
stations.” (Id.)
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Appellant also argues in the Reply Brief that the web server in
Kingdon I does not provide information associated with the position of the
mobile, as required by claim 1. (Reply Br. 7-8.) Because this argument
contesting the anticipation of claim 1 appears for the first time in the Reply
Brief, absent a good cause showing of why it was not presented in
Appellant’s opening brief, it is untimely and deemed waived. Ex parte
Borden, 93 USPQ2d 1473 (informative) (BPAI Jan. 7, 2010) (new reply
brief arguments untimely absent a good cause showing); see also Frye,
94 USPQ2d at 1075 (precedential) (“If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”); Hyatt, 551 F.3d at 1313-14 (the
Board may treat arguments appellant failed to make for a given ground of
rejection as waived);; 37 C.F.R. § 41.37(c)(1)(vii) (describing requirements
for the “Appeal brief” (rule title), including “[t]he contentions of appellant”).
Alternatively, Kingdon I does disclose this associated position information
as evidenced by the display of a mobile station (MS) position relative to
other objects on a map, including, inter alia, landmarks, streets, etc.
(FF 2-4.)
For these reasons, we will sustain the Examiner’s anticipation
rejection of independent claim 1.
Appellant presents a similar argument for dependent claims 10 and
13, and argues that Kingdon I does not teach the provisioning of “location-
based service information related to said position of said mobile
communication device” or “location-specific services.” (App. Br. 16-17.)
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Contrary to Appellant’s arguments, as discussed supra, Kingdon I teaches
the provisioning and display of additional information related to the position
of the MS such as the nearest streets or landmarks, or the current location of
the MS in relation to another point. (FF 2-4.)
Accordingly, we will sustain the Examiner’s anticipation rejection of
dependent claims 10 and 13. We will also sustain the Examiner’s
anticipation rejection of dependent claims 6-7, 9, 15, 28-30, and 32, and the
obviousness rejection of claim 8, based on Kingdon I, because Appellant
does not present separate patentability arguments for these claims. (See
App. Br. 7-8, 16.)
Claims 1, 2, 11, 12, 16, 22, 31, 33, and 35
Appellant asserts that the combination of Kingdon II and Kingdon I
does not render claim 1 obvious. Appellant argues that neither Kingdon I
nor Kingdon II teaches the step of “receiving from said location server said
position of said mobile of said mobile communication device and in
response to receiving said position, providing, from said web server,
information associated with said position to said mobile communication
device,” as recited by claim 1. (App. Br. 10-11.) Contrary to Appellant’s
argument, however, Kingdon I discloses a web-based location application
that receives the position of a MS, converts it to into a desired format, and
sends the position in the desired format to the MS. (Ans. 16; accord FF 3,
4.) Moreover, Kingdon I also teaches the provisioning and display of
additional information related to the position of the MS such as the nearest
streets or landmarks. (FF 2, 4.)
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Appellant also asserts that there is no motivation to combine (or
modify) Kingdon II with (or by) Kingdon I. (App. Br. 15.) As explained by
the Examiner, however:
Appellants’ claims are combination of familiar elements taught
by Kingdons I (providing location services to mobile stations
through a web server) and II (providing location services to
mobile stations based on satellite positioning system position
calculation), arranged to perform the same functions it has been
known to perform and yields no more than one would expect
from such an arrangement (providing location services to GPS
mobile stations through a web server).
(Ans. 20; see FF 1-7.)
In other words, it would have been obvious to combine Kingdon II’s
teaching of determining the location of a MS using GPS satellites with the
web-based, location service of Kingdon I, which uses Timing Advance
values to determine the position of non-GPS phones. As found by the
Examiner, one would have been motivated to provide “a web based service
with graphical presentation of location information and interactive use
dialog as taught by Kingdon I.” (Ans. 20.) As also found the Examiner, one
would have been motivated to combine Kingdon II with Kingdon I to
provide a single system that can service both GPS equipped mobile stations
and non-GPS mobile stations. (Id.)
Based on the foregoing discussion, we will sustain the Examiner’s
obviousness rejection of independent claim 1. We will also sustain the
Examiner’s rejections of dependent claims 2, 11, 12, 16, 22, 31, 33, and 35
because Appellant did not present any separate patentability arguments for
these claims. (See App. Br. 8-11, 16.)

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Claims 17-22
Appellant asserts that the combination of Kingdon II and Kingdon I
does not teach every element of claim 17, which Appellant describes as
similar to claim 1. (App. Br. 12.) In particular, Appellant asserts that
neither Kingdon I nor Kingdon II “teaches or suggests the claimed feature of
‘transmitting from said location server to said web server said position of
mobile communication device.’” (Id.) Appellant argues that “Kingdon II
does not describe the location server transmitting the location of the mobile
device.” (Id.) Appellant also argues that “Kingdon II does not teach a web
server.” (Id. at 13.)
As found the by the Examiner, however, Kingdon I teaches this claim
element because it discloses that the web-based location application receives
the MS’s position from the Mobile Positioning Center. (Ans. 9-10, 18;
accord FF 3.) Therefore, we will sustain the Examiner’s obviousness
rejection of independent claim 17. We will also sustain the Examiner’s
rejections of dependent claims 18-22 because Appellant did not present any
patentability arguments for these claims beyond those presented for
independent claim 17. (See App. Br. 8-11, 16.)
Claims 23-27
Appellant asserts that the combination of Kingdon II and Kingdon I
does not suggest a method in a mobile communication device comprising the
step of “receiving services information associated with said position of said
mobile communication device, said receiving being in response to said web
server receiving said position which was requested from said location
server,” as required by claim 23. (App. Br. 13.) Appellant argues that
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Kingdon II does not teach or suggest this claim element and that “Kingdon I
does not teach or suggest the feature that is absent from Kingdon II.” (Id. at
15.)
Contrary to Appellant’s argument, however, Kingdon I teaches this
claim element because it discloses that a web-based location application
receives the position that it requested from the Mobile Positioning Center,
converts the position into the format selected at the Mobile Station, and
sends the position in the desired format to the MS. (Ans. 9-10; accord
FF 3.) Moreover, Kingdon I also teaches that the MS may also receive
services information related to the position of the MS such as the nearest
streets and landmarks, similar to the location-based services information
disclosed in the ’894 patent. (FF 0, 2, 4.)
Therefore, we will sustain the Examiner’s obviousness rejection of
independent claim 23. We will also sustain the Examiner’s rejections of
dependent claims 24-27 because Appellant did not present any separate
patentability arguments for these claims. (See App. Br. 13-16.)
DECISION
We affirm the decision rejecting claims 1-13, 15-35, and 37.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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AFFIRMED
ak

Qualcomm Incorporated
5775 Morehouse Drive
San Diego, CA 92121

Third Party Requester:

Jeffrey E. Young, Esq.
Alston & Bird, LLP
1201 West Peachtree Street NE
Atlanta, GA 30309