Ex Parte 6704651 et al

Patent Trial and Appeal Board

Oct 24, 2012

95001378 (P.T.A.B. Oct. 24, 2012)

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.
95/001,378 06/08/2010 6704651 079280-0000050 2714
26111 7590 10/24/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/24/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SiRF TECHNOLOGY INC.
Requester

v.

GLOBAL LOCATE, INC.
Patent Owner and Appellant
____________

Appeal 2012-002618
Reexamination Control 95/001,378
Patent 6,704,651 B21
Technology Center 3900
____________

Before DANIEL S. SONG, RAE LYNN P. GUEST, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Hereinafter the “‘651 Patent.”
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A. SUMMARY
Pursuant to 37 C.F.R.§ 41.79, Global Locate, Inc. (“Global Locate”)
requests rehearing of our Decision mailed April 5, 2012 (“Decision”) in
which we affirmed the Examiner’s decision to reject claims 1-3.2 We have
considered Global Locate’s request for rehearing. The request is granted-in-
part.
B. DISCUSSION
A request for rehearing must state the points believed to have been
misapprehended or overlooked in a Board’s decision. 37 C.F.R.
§ 41.79(b)(1). Global Locate contends that in our Decision we
misapprehended the scope of claims 1-3, and in doing so, “essentially made
a new ground of rejection.” (Rh’g Req., p. 2, ll. 4-10.) Global Locate also
contends that the Board misapprehended the content of the prior art,
specifically that of the involved references of: Camp3, Da4, King ‘7875, King
‘9236, and Schuchman7. (Rh’g Req., pp. 5-17.) We disagree with each
contention, however, as is set forth infra, we modify our prior Decision in
connection with the Examiner’s rejection involving King ‘923 and
Schuchman. We address Global Locate’s arguments below.

2 See “Request for Rehearing Under 37 C.F.R. § 41.79” filed May 7, 2012.
3 U.S. Patent 6,075,987
4 U.S. Patent 6,922,546
5 U.S. Patent 6,313,787
6 U.S. Patent 6,121,923
7 U.S. Patent 5,365,450
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Global Locate’s claim scope argument
According to Global Locate, in our Decision we adopted an
interpretation of claim 1 which is “broader and not consistent with the
Examiner-adopted claim interpretation” and allegedly improperly affirmed
the Examiner’s rejections based on that broader interpretation. (Rh’g Req.,
p. 2, ll. 4-7.) Global Locate contends that its claim 1 requires an
interpretation which attributes “‘improv[ing] acquisition sensitivity’ to
‘reduc[ing] code and frequency uncertainity[]’ and that in our Decision we
did not make such an interpretation. More specifically, Global Locate
makes the following statements as support for the above-noted contention
(id. at p. 3, l. 17 – p. 4, l. 1) (emphasis in original):
In the Decision, the Board does not review the correctness of
the Examiner’s rejections on the basis of the above-described
Examiner-adopted claim interpretation, but instead on the basis of a
much broader new interpretation that wholly ignores the claim
language and the teachings of the ‘651 patent. This interpretation
merely requires that ‘some signals… are processed to reduce code and
frequency uncertainty and to improve acquisition sensitivity of a
receiver.’ (See Decision, page 10, lines 16-18; emphasis added). In
other words, any reference to improving acquisition sensitivity in a
receiver is sufficient to meet the claim limitations according to the
Board, without regard to the manner (e.g., by processing signals using
the ephemeris, by reducing code and frequency uncertainty, or by
doing both) in which improved acquisition sensitivity is achieved.

However, we did not interpret Global Locate’s claims in the manner
expressed by Global Locate. Indeed, our interpretation of the requirements
was the same as that of the Examiner. The use of the phrase “[i]n other
words” by Global Locate is not a license to mischaracterize the content of
the Decision into a form presumably more suitable to challenge. For proper
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context, the relevant content of the Decision is quoted below (Decision, p.
10, ll. 12-18):
Although Camp describes that its invention involves initially
acquiring a first signal quickly, which may reflect a focus on
improved “acquisition speed,” the subsequent focus is on acquiring
weaker signals, i.e., improving “acquisition sensitivity.” In
accounting for the pertinent feature of Global Locate’s claims, it is
sufficient that some signals in Camp are processed to reduce code and
frequency uncertainty and to improve acquisition sensitivity of a
receiver.

Thus, the relevant portion of our Decision simply observed that, while
Camp may seek to improve acquisition speed for an initial signal, for
subsequent signals acquisition sensitivity is improved. That was not and is
not an interpretation of claim 1 divorcing “improv[ing] acquisition
sensitivity” from “reduc[ing] code and frequency uncertainty” as is alleged
by Global Locate. Discussion appearing in the Decision immediately
preceding the above-quoted section, and also in the paragraphs immediately
following that section, set forth how we viewed Camp as disclosing “using
the ephemeris” so as to “reduce code and frequency uncertainty” to “reduce
acquisition sensitivity” of a GPS receiver.8 In that regard, we shared the
same view as the Examiner as to the content of Camp.
Global Locate also contends, as it did in its Briefs, that the Examiner
allegedly took the position that “‘acquisition speed’ is equivalent to
‘acquisition sensitivity[,]’” and submits that such is a basis for reversing the

8 For example, the Decision states that “Camp describes that the data with
respect to the ‘satellite locations’ is “refin[ed]’ during the signal processing
so as to acquire weaker signals.” (Decision, p. 10, l. 22 to p. 11, l. 2 (italics
added).)
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Examiner’s decision to reject the claims over Camp. (Rh’g Req., p. 4.)
However, as we observed in our Decision (p. 10), although Global Locate
made that contention, it was not an accurate evaluation of the Examiner’s
position. While the Examiner assessed content of Camp as improving the
speed in which signals are acquired, i.e., acquisition speed, the Examiner
also clearly was of the view that Camp describes enhancing the acquisition
of weaker signals, i.e., acquisition sensitivity. (Ans., pp. 8-9.)
We have considered Global Locate’s argument but do not agree that
we misapprehended the scope of claim 1. We also reject Global Locate’s
request that our affirmance of the Examiner’s decision to reject claims 1-3
be designated a new ground of rejection.
Global Locate’s prior art arguments
Camp
Global Locate argues that the Decision misapprehended Camp’s
disclosure in connection with processing satellite signals “using the
ephemeris” to reduce code and frequency uncertainty. (Rh’g Req., pp. 6-7.)
We do not agree.
As is clearly set forth in Camp, in order to “enhance the search for
further GPS satellite signals[]” information pertaining to satellite location,
i.e., ephemeris, is refined so as “to better predict the expected range of code
phases and Doppler frequencies[,]” i.e., reduce code and frequency
uncertainty. (Camp, 7:1-7.) As further articulated by Camp, as a result of
its disclosed signal acquisition process, “the search for succeeding GPS
satellite signals may be tailored even further to enhance the acquisition of
weak signals[,]” i.e., improve acquisition sensitivity. (Id. at 8:38-42.) As
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we concluded in our decision, and as did the Examiner, given Camp’s
disclosure including that noted above, the pertinent feature of claim 1 was
satisfied, in particular, the feature directed to (App. Br., p. 29, Claims
App’x):
processing satellite signals received at the mobile GPS receiver
using the ephemeris to reduce code and frequency uncertainty in the
mobile GPS receiver to improve acquisition sensitivity of the mobile
GPS receiver.

Although Global Locate has seemingly acknowledged that Camp’s
disclosure in connection with acquiring satellite signals involves the use of
ephemeris, reduction of code and frequency uncertainty, and improved
acquisition sensitivity of a receiver, Global Locate evidently takes the
position that those operations in Camp are exclusive of one another so as to
deviate in some fashion from the requirements of claim 1. As was set forth
in our prior Decision, we do not agree. We have carefully considered Global
Locate’s position, but do not agree that our Decision to affirm the
Examiner’s rejection was predicated on misapprehension of the disclosure of
Camp.
Accordingly, we decline to modify our Decision in conjunction with
the rejection involving Camp.
Da
With respect to Da, we observe that in its prior Briefing and at oral
argument, Global Locate represented to this Board that improving
“acquisition speed” and improving “acquisition sensitivity” of a given signal
could not both be attained. (E.g., App. Br., pp. 16-18; Reb. Br., pp. 6-8 Oral
Hr’g Trans., pp. 4:23-7:25.) Urging that Da was limited to improving
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acquisition speed, Global Locate concluded that Da did not disclose
performing the claim steps so as to improve acquisition sensitivity. (App.
Br. 16-18.)
In our Decision, we rejected Global Locate’s premise in that regard
based on the disclosure of the prior art and the teachings of the ‘651 patent
itself. (Decision, pp. 14-16.) We also noted description in Da explaining its
disclosed invention as operable to “enhance signal-detection sensitivity” and
determine the location of a receiver “more quickly and with weaker GPS
signals than wireless terminals in the prior art.” (Id. at p. 15.)
In its Request for Rehearing, Global Locate has evidently abandoned
its premise that improved signal acquisition speed and acquisition sensitivity
cannot both result, characterizing our discussion in that regard as not
relevant to the anticipation rejection involving Da. (Rh’g Req., p. 10.) The
position that Global Locate now takes is that despite Da’s disclosure that its
invention seeks to “enhance signal-detection sensitivity” and determines
receiver location “with weaker GPS signals” than those used in the prior art,
Da does not describe a process by which signal detection is enhanced. (Id.)
We have considered Global Locate’s argument but are not persuaded
that we misapprehended content of Da. We do not discern why the clear and
explicit disclosure in Da as to “enhanc[ing] signal-detection sensitivity”
involving the use of “weaker GPS signals” does not set forth “an invention
that is operable to enhance signal detection using weaker GPS signals” as we
concluded in our Decision. (Decision, p. 15.)
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King ‘787
As we observed in our Decision, the King ‘787 reference discloses the
transmission of “assist information” or “assistance data” which allows
“narrowing of Doppler and code phase search windows within the GPS
receiver acquisition process.” (Decision, pp. 17-18.) In light of that
disclosure, the Examiner determined that the assistance data functions to
reduce code and frequency at a mobile GPS receiver. That finding was not
disputed. The Examiner also found that the assistance data includes
ephemeris. Global Locate acknowledges that King ‘787 conveys that the
assistance data may include ephemeris. (E.g., App. Br., p. 18, ll. 24-25.)
Indeed, as stated in the Request for Rehearing, King ‘787 discloses that the
assistance data may include, among other things, “Ephemeris Broadcast
Message.” (Rh’g Req., p. 12, fn 3.)
As it advanced in its Briefs, Global Locate urges in its Request for
Rehearing that even when ephemeris forms a part of the assistance data,
there is no disclosure in King ‘787 that the ephemeris has a role in reducing
code and frequency uncertainty. (Rh’g Req., p. 13.) However, as we
observed in our Decision, left unexplained by Global Locate was why the
ephemeris of the assistance data (Decision, p. 19):
should be parceled out so as to be disconnected from, or not used for,
the described benefits reflecting code and frequency uncertainty
deduction and improved acquisition sensitivity which are attributed to
the transmission of the assistance data.

Global Locate also does not now offer any explanation for its position.
Instead, Global Locates urges that it need not do so because the Board has
engaged in “improper” burden shifting. (Rh’g Req., p. 11.) We disagree.
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There is nothing improper in requiring Global Locate to justify its position
which is seemingly contradicted by the plain disclosure of King ‘787. The
record reflects that King ‘787’s assist information or assistance data may
include ephemeris and that the data explicitly functions to enhance the
detection of GPS signals. (King ‘787, 11:8-19.) As we observed in our
Decision, in our view, a skilled artisan would have realized or inferred from
the explicit disclosure of King ‘787 that the assist information and its
associated content is utilized for the stated function. Global Locate simply
does not offer any cogent reason why some part of the assist information,
i.e., ephemeris, is not used, or is excluded therefrom when performing that
function of enhancing the detection of GPS signals.
Global Locate urges that the testimony of its expert witness, Dr.
Michael Braasch, in “point[ing] out other well-known uses of ephemeris,
such as to support a position fix” somehow “contradicts” the above-noted
inference. (Rh’g Req., p. 12.) However, it does not follow that some other
possible use for ephemeris in some other context means that the “ephemeris”
when transmitted as a component of “assist information” is not used in
accomplishing the explicit function attributed to the same assist information.
We have considered Global Locate’s contentions but are not
persuaded that they show that we misapprehended or overlooked content of
the disclosure of King ‘787.
King ‘923 and Schuchman
In our Decision, we observed, as did the Examiner, that “Schuchman
describes that ‘frequency uncertainty’ is reduced ‘using GPS ephemeris.’”
(Decision, p. 22.) That was a determination drawn directly from
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Schuchman’s disclosure at column 4, lines 19-28. Although, Global Locate
acknowledged Schuchman’s disclosure, it advocated that the “frequency
uncertainty” disclosed in that disclosure did not constitute the “frequency
uncertainty” recited in the claims. (App. Br., pp. 26-27.) Instead, Global
Locate urged that Schuchman attributes reduction of the claimed “frequency
uncertainty” to “GPS almanac” which was stated to not constitute “using the
ephemeris.” (Id. at p. 26, ll. 28-33.)
We did not and do not express agreement with Global Locate as to its
differentiation of the “frequency uncertainty” set forth in column 4 of
Schuchman from that of the claims. However, in the Decision we focused
on analyzing Schuchman as to the content of “GPS almanac.” (Decision, p.
23.) Based on that analysis, we determined that “GPS almanac” also
includes a type of ephemeris termed “coarse ephemeris.” (Id.) We
concluded that even assuming that Global Locate was correct in its
evaluation of the “frequency uncertainty” of Schuchman’s column 4, it had
not explained why the type of ephemeris contained in GPS almanac did not
satisfy the ephemeris of the claims. In its Request for Rehearing, Global
Locate submits that our analysis and conclusion with respect to the content
of GPS almanac was not a position taken by the Examiner and should be
designated a new ground of rejection. (Rh’g Req., pp. 15-16.)
Because our discussion involving GPS almanac was not necessary in
affirming the Examiner’s rejections based on King ‘923 and Schuchman, we
modify our prior Decision so as to exclude the pertinent analysis of the
content of GPS almanac appearing on page 23 of that Decision. In affirming
the Examiner’s decision to reject claims 1-3 over King ‘923 and Schuchman,
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we focus, as did the Examiner, on the content of Schuchman at column 4,
lines 19-28. That portion is reproduced below (Schuchman, 4:19-28):
The second bottleneck that the invention eliminates is the time
required to acquire the signal from subsequent satellites after the first
satellite is acquired. It accomplishes this by an algorithm that
optimally using GPS ephemeris and time model data together with the
Doppler measurement on a single satellite signal to calibrate the GPS
receiver frequency reference and thereby reduce the frequency
uncertainty (and therefore the time required) for acquisition of
subsequent satellite signals.

In its Rebuttal Brief, Global Locate made the following representation
with respect to the above-quoted portion (Reb. Br., p. 17, ll. 19-23):
[T]he passage provides a high level description of Schuchman’s
purported invention. The role of the ephemeris, however, cannot be
ascertained from this passage. The mere fact that the words
‘ephemeris’ and ‘frequency uncertainty’ appear together in a vague
sentence does not establish that the ephemeris is being used to reduce
the frequency uncertainty.

We observe, however, that the pertinent passage in Schuchman does
not simply use the terms “ephemeris” and “frequency uncertainty” together
in some “vague” or unassociated fashion as is urged by Global Locate.
Rather, the passage clearly relates those two terms together in disclosing that
by “using GPS ephemeris” along with other data and measurements, the
direct result is to “reduce the frequency uncertainty” for acquiring satellite
signals. Although Global Locate attempts to discount the disclosure of
Schuchman at column 4 with citation using “see” to other portions of
Schuchman and the testimony of Dr. Braasch (id. at p. 17, ll. 23-25), we do
not discern why those portions and that testimony undermine the clear
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association in Schuchman of “using the ephemeris” to produce the specific
result of reduced frequency uncertainty for acquisition of satellite signals.
Furthermore, while Global Locate asserts that the pertinent
“frequency uncertainty” in Schuchman is “due to offset in the receiver
oscillator” rather than “frequency uncertainty due to satellite Doppler,” the
alleged support in the record for that assertion is stated to be “See
Schuchman, 4:19-28.” (Reb. Br., p. 18, l. 1.) We note that Schuchman’s
column 4, lines 19-28 is the very disclosure at issue and makes no reference
to an “offset in the receiver oscillator.” Rather, as discussed above, that
portion of Schuchman refers, in no uncertain terms, to using the ephemeris
along with Doppler measurement to reduce frequency uncertainty in
acquiring satellite signals.
Accordingly, for the foregoing reasons, we are not persuaded by
Global Locate that the Examiner was incorrect in rejecting claims 1-3 over
King and Schuchman. Because we have expanded our reasoning for
affirming the Examiner’s rejections beyond that which was set forth in our
prior Decision, this Decision on Request for Rehearing effectively
constitutes a new decision with respect to the rejections involving King ‘923
and Schuchman and is hereby indicated as such. 37 C.F.R. § 41.79(d).
Accordingly, a further request for rehearing of the new decision is permitted
but is limited in scope to the King ‘923 and Schuchman rejection.
C. CONCLUSION
Global Locate’s Request for Rehearing is granted-in-part to the extent
that we modify our prior decision in the manner noted above in connection
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with our affirmance of the Examiner’s rejection to claims 1-3 over King
‘923 and Schuchman.

GRANTED-IN-PART

PATENT OWNER:
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

THIRD-PARTY REQUESTER:
PILLSBURY WINTHROP SHAW PITTMAN LLP
PO BOX 10500
MCLEAN, VA 22102