Ex Parte 6677894 et alDownload PDFBoard of Patent Appeals and InterferencesMar 25, 201190008597 (B.P.A.I. Mar. 25, 2011) Copy Citation 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). Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 2 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”. Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 3 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. Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 4 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 Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 5 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 Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 6 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 Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 7 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 Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 8 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.) Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 9 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.) Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 10 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.) Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 11 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.) Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 12 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 Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 13 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). Appeal 2010-009565 Control 90/008,597 Patent 6,677,894 B2 14 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 Copy with citationCopy as parenthetical citation