Ex Parte Abraham

Board of Patent Appeals and Interferences

Mar 25, 2005

09993335 (B.P.A.I. Mar. 25, 2005)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES ABRAHAM
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Appeal No. 2005-0347
Application No. 09/993,335
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ON BRIEF
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Before LEVY, SAADAT, and MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 2-3, 6-7, 26-
27, and 30-31. Claims 4-5, 8-9, 28-29, and 32-33 are objected to as being
dependent upon a rejected base claim. Claim 39 has been canceled. Claims 1,
10-25, 34-38, and 40-41 are withdrawn from consideration as not directed to the
elected invention. See the Examiner’s answer at page 2.
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Application No. 09/993,335
Invention
Appellant’s invention relates to an apparatus and method for obtaining
benefits associated with an Assisted Global Positioning Satellite device without
requiring complete integration of a GPS device with a cellular handset.
Furthermore, the present invention facilitates a GPS handheld or mobile device
configured to operate without subscription to a cell phone service provider, and
thus eliminates fees for such subscription. An aspect of the present invention is
a GPS handheld device that comprises a cellular acquisition signal receiver or
front end. It will be appreciated that circuitry required to receive an acquisition
signal comprises only a portion of a complete cellular handset. Particularly, a
transmitter portion for communicating with a basestation of a cellular network is
not included in the GPS handheld device. Furthermore, a digital signal processor
and application processor(s) configured for modulating, demodulating, voice
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Application No. 09/993,335
processing, call protocols, subscriber identification and the like are absent in the
GPS handheld device. The cellular acquisition signal receiver allows the GPS
handheld device to have an accurate time of day and/or frequency reference,
thus assisting in GPS signal acquisition and GPS computation. Appellant’s
specification at page 2, the last three lines, through page 3, line 14.
Claim 2 is representative of the claimed invention and is reproduced as
follows:
2. A method comprising:
obtaining a time synchronization signal from a cellular network at a global
positioning system (GPS) handheld device without a subscription to the cellular
network using a front end only capable of receiving signals from said cellular
network;
determining a timing offset responsive to the time synchronization-signal;
determining a time of day responsive to the timing offset without having to
have a subscription to the cellular network; and
processing satellite trajectory data within the GPS handheld device using
the time of day.
References
The references relied on by the Examiner are as follows:
Krasner 6,150,980 Nov. 21, 2000
Kurby et al. (Kurby) 6,323,804 Nov. 27, 2001
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Application No. 09/993,335
1 Examiner’s Answer incorrectly includes claims 7 and 31 in the statement of the
rejection heading on page 5 of the answer.
2 Appellant filed an appeal brief on April 19, 2004. Appellant filed a reply brief on
September 1, 2004. The Examiner mailed an Examiner’s Answer on June 29,
2004.
(Filed Jun. 6, 2000)
Rejections At Issue
Claims 2-3, 6-7, 26-27, and 30-31 stand rejected under 35 U.S.C. § 102
as being anticipated by Kurby.
Claims 2-3, 6, 26-27, and 30 stand rejected under 35 U.S.C. § 102 as
being anticipated by Krasner.1
Throughout our opinion, we make references to the Appellant’s briefs, and
to the Examiner’s Answer for the respective details thereof.2
OPINION
With full consideration being given to the subject matter on appeal, the
Examiner’s rejections and the arguments of the Appellant and the Examiner, for
the reasons stated infra, we reverse the Examiner’s rejection of claims 2-3, 6-7,
26-27, and 30-31 under 35 U.S.C. § 102.
Only those arguments actually made by Appellant have been considered
in this decision. Arguments that Appellant could have made but chose not to
make in the brief have not been considered. We deem such arguments to be
waived by Appellant [see 37 CFR § 41.37(c)(1)(vii) effective September 13, 2004
replacing 37 CFR § 1.192(a)].
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Application No. 09/993,335
Appellant has indicated that for purposes of this appeal, the claims stand
or fall together in two groupings corresponding to the two rejections listed above.
See page 4 of the brief. Furthermore, Appellant argues each group of claims
separately and explains why the claims of each group are believed to be
separately patentable. See pages 6-13 of the brief and pages 2-3 of the reply
brief. Appellant has fully met the requirements of 37 CFR § 1.192 (c)(7) (July 1,
2002) as amended at 62 Fed. Reg. 53169 (October 10, 1997), which was
controlling at the time of Appellant’s filing of the brief. 37 CFR § 1.192 (c)(7)
states:
Grouping of claims. For each ground of rejection
which appellant contests and which applies to a group
of two or more claims, the Board shall select a single
claim from the group and shall decide the appeal as
to the ground of rejection on the basis of that claim
alone unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely pointing
out differences in what the claims cover is not an
argument as to why the claims are separately
patentable.
We will, thereby, consider Appellant’s claims as standing or falling together in the
two groups noted above, and we will treat:
Claim 2 as a representative claim of Group I (the Kurby rejection); and
Claim 2 as a representative claim of Group II (the Krasner rejection).

If the brief fails to meet either requirement, the Board is free to select a single
claim from each group and to decide the appeal of that rejection based solely on
the selected representative claim. In re McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
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Application No. 09/993,335
I. Whether the Rejection of Claims 2-3, 6-7, 26-27, and 30-31 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us, that the
disclosure of Kurby does not fully meet the invention as recited in claims 2-3, 6-7,
26-27, and 30-31. Accordingly, we reverse.
It is axiomatic that anticipation of a claim under § 102 can be found only if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
With respect to independent claim 2, at page 7 of the brief, Appellant cites
to Kurby at column 5, lines 33-37, and argues “Kurby fails to teach or suggest
using the absolute device time transmitted by the satellites to process satellite
trajectory data.” We find this argument unpersuasive. We agree that column 5,
lines 33-37, of Kurby do not teach the claimed processing of satellite trajectory
data. However, lines 38-41 of column 5 refer to determining location by the
“techniques used in the GPS system” and column 3, lines 52-54, teaches that the
GPS system location determining techniques process time data “to triangulate
the position thereof.” Thus, we find that Kurby teaches processing satellite
trajectory data.
Appellant also argues at page 2 of the reply brief that there is no teaching
in Kurby of “using a time synchronization signal from a cellular network.” This
argument goes unchallenged by the Examiner. We have reviewed the Kurby
patent and we find Appellant’s argument persuasive. We find no time
synchronization signal from a cellular network. Rather, Kurby’s time
synchronization signal comes from the satellite 208 as part of data signal 210.
Therefore, we will not sustain the Examiner’s rejection under
35 U.S.C. § 102.
II. Whether the Rejection of Claims 2-3, 6, 26-27, and 30 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us, that the
disclosure of Krasner does not fully meet the invention as recited in claims 2-3, 6,
26-27, and 30. Accordingly, we reverse.
With respect to independent claim 2, Appellant argues at pages 11-13 of
the brief that Krasner fails to teach “using a front end only capable of receiving
signals” as recited in claim 2. The Examiner responds in the answer at page 6,
“there is nothing in the method of operation of Krasner . . . that requires or uses
the transmitting portion of the cellular telephone.”
We find the Examiner’s position unpersuasive. While it might be argued
that it is obvious in the extreme to remove the transmitting portion of Krasner’s
cellular telephone and its corresponding functions, we find that doing so is not
taught in Krasner as required by 35 U.S.C. § 102. We find that the Examiner has
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Application No. 09/993,335
not met his initial burden of establishing a prima facie case of anticipation, and
we will not sustain the Examiner’s rejection under 35 U.S.C. § 102.
Conclusion
In view of the foregoing discussion, we have not sustained the rejection
under 35 U.S.C. § 102 of claims 2-3, 6-7, 26-27, and 30-31.
REVERSED

STUART S. LEVY )
Administrative Patent Judge )
)
) BOARD OF PATENT
MAHSHID D. SAADAT) APPEALS AND
Administrative Patent Judge) INTERFERENCES
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM/lbg
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Application No. 09/993,335
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