Ex Parte an et al

Board of Patent Appeals and Interferences

Jul 14, 2009

10012459 (B.P.A.I. Jul. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YONG HYUN AN and YI SIK CHAE
____________________

Appeal 2009-002694
Application 10/012,4591
Technology Center 2600
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Decided: July 14, 20092
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and
ELENI MANTIS-MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is LG Electronics, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4-6, 9-15, 19-22, 35-37, 39-44, 46-48, and 50.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns a shopping center information service
system and an operation method thereof that can provide, through a
customer's mobile terminal, information on respective shops within a
shopping center (Spec. 2). The shopping center service system includes a
database service that receives and stores information from a variety of shops
(Spec. 3). A data transmission server communicates with the customer’s
mobile terminal and automatically sends information to the mobile terminal
upon customer entry into the shopping center (Spec. 3). An operation server
controls both the database server and the data transmission server (Spec. 6).
Sudden information data transmission devices couple to control the
terminals in the shops and radio-transmit a second type of information to the
customer’s mobile terminal when the customer is within range of the sudden
information data transmission device (Spec. 3-4). The customer may
continuously send a pilot signal to the operation server to confirm the
location of the customer in the building, wherein the confirmation serves as
a pre-condition to transmitting the sudden information to the customer’s
mobile terminal (Spec. 13).

3 Claims 3, 7, 8, 16-18, 23-34, 38, 45, and 49 have been canceled (App. Br.
2).
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Claim 1 is exemplary:
1. An information service system, comprising:
a database server that receives and stores information on a plurality of
different shops within a building;

a data transmission server at a prescribed location that communicates
with a customer's mobile terminal and automatically radio-transmits a first
type of information including the information on the shops to the customer's
mobile terminal when the customer enters the building;

an operation server that controls the database server and the data
transmission server; and

a sudden information data transmission device provided for the shops,
wherein the sudden information data transmission device is coupled to
control terminals in the shops, is installed within a predetermined area
different from the prescribed location of the data transmission server, and
radio-transmits a second type of information including sudden event
information to the customer's mobile terminal when a sudden event is
generated by one of the shops, the sudden event information transmitted
while the customer is within a range of said sudden information data
transmission device where reception by the mobile terminal is possible,

wherein the first type of information is transmitted at different times
and through different wireless transmission links than the second type of
information, and

wherein the operation server continuously receives information
derived from reception by a mobile communication network of a pilot signal
from the customer's mobile terminal to confirm a location of the customer
within the building, said confirmation serving as a pre-condition to
transmitting the sudden information to the customer's mobile terminal.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Johnson US 6,456,234 Sept. 24, 2002
Shteyn US 6,782,253 Aug. 24, 2004

Claims 1, 2, 4-6, 9-15, 19-22, 35-37, 39-44, 46-48, and 50 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Shteyn in view
of Johnson.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed December 21, 2007), Reply Brief
(filed July 14, 2008) and the Examiner’s Answer (mailed May 14, 2008) for
their respective details.

ISSUES
Appellants argue that Shteyn does not teach or suggest the functions
of the operation server of claim 1, which include "continuously receiving
information derived from reception by a mobile communication network of
a pilot signal from the customer's terminal to confirm a location of the
customer within the building" (App. Br. 10; Reply Br. 4-5). Appellants
contend that Shteyn does not teach an operation server that controls the
database server and the data transmission server, as recited in claim 1 (App.
Br. 10).
The Examiner finds that the combination of Shteyn and Johnson
teaches an operation server that continuously receives information derived
from reception by a mobile communication network of a pilot signal from
the mobile phone to confirm a location of the customer within the building
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(Ans. 5-6). The Examiner finds that the server 420 controls the database
server and the data transmission server (Ans. 4, 15).
Thus, the two issues in the appeal before us are:
1. Did Appellants show that the Examiner erred in finding that the
combination of Shteyn and Johnson teaches an operation server that
continuously receives information derived from reception by a mobile
communication network of a pilot signal from the customer's mobile
terminal to confirm a location of the customer within the building, wherein
the confirmation serves as a pre-condition to transmitting the sudden
information to the customer's mobile terminal?
2. Did Appellants show that the Examiner erred in finding that the
combination of Shteyn and Johnson teaches an operation server that controls
a database server and a data transmission server?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a shopping
center information service system and an operation method thereof that can
provide, through a customer's mobile terminal, information on respective
shops within a shopping center (Spec. 2). The shopping center service
system includes a database service that receives and stores information from
a variety of shops (Spec. 3).
2. A data transmission server communicates with the customer’s
mobile terminal and automatically sends information to the mobile terminal
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upon customer entry into the shopping center (Spec. 3). An operation server
controls both the database server and the data transmission server (Spec. 6).
3. Sudden information data transmission devices couple to control
the terminals in the shops and radio-transmit a second type of information to
the customer’s mobile terminal when the customer is within range of the
sudden information data transmission device (Spec. 3-4). The customer may
continuously send a pilot signal to the operation server to confirm the
location of the customer in the building, wherein the confirmation serves as
a pre-condition to transmitting the sudden information to the customer’s
mobile terminal (Spec. 13).
Shteyn
4. Shteyn teaches a mobile information service offering system
400 that enables the user of a mobile communication device to receive a
short-range wireless facilitation signal from beacons 402-408. The beacons
are controlled by a beacon infrastructure server 410. Terminals 412-418 are
connected to server 410, enabling service providers to author or edit
allocated service slots in the facilitation signals transmitted by beacons 402-
408. Application server 420 couples to server 410 to assist in carrying out
the matching process, which matches the user profile with the
appropriateness of a service class before the service activation with a
selected quality of service, wherein the service connection can be made over
GSM cellnet, SMS, Bluetooth or even over a RF/IR link. (Fig. 4; col. 3, ll.
1-16 and 36-51; col. 8, ll. 12-41; col. 8, ll. 59-65.)
5. Shteyn teaches that the user can set a variety of different
activity modes which may include shopping, contacting, chatting, messaging
with friends, special interests such as sports, communal activities, etc. The
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user may establish multiple user profiles that can be selected depending
upon the context or environment; e.g., in the shopping mode, the user can
specify that in his/her profile, particular interests in books, CDs, DVDs,
travel arrangements, tools, etc. The user may select a context filter from the
set of activity modes. In the alternative, the user may allow the environment
to automatically trigger the selection of one of the user’s filters as the user
walks into a place (col. 3, ll. 52-64; col. 4, ll. 18-23).
6. Shteyn teaches that upon entering a shopping mall, the user
may cause a guide, containing beacon-associated services for a variety of
cafes, shops, amusements, and utility services, to be downloaded (col. 7, ll.
38-45).
7. Shteyn teaches a prior art system, the Impulse system, wherein
a user’s mobile devices that have a wireless internet connection and GPS
receiver, enable user-initiated downloads from the system based upon user
agents that the user defines. The user agent represents the user’s interest and
interacts with provider agents that represent providers such as businesses,
services, attractions, and events, in an effort to download information when
the mobile device is near the provider. Shteyn intended to make the system
more user-friendly by eliminating the mandatory user-initiation of many
activities while making data accessible automatically (col. 1, ll. 35-62; col.
2, ll. 48-55 and 64-67).
Johnson
8. Johnson teaches a system for proactive content delivery by
situation location that provides transmission of situational location
dependent information from a server data processing system (SDPS) to a
receiving data processing system (RDPS), wherein the SDPS communicates
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with the RDPS by pushing content when appropriate, rather than in response
to a user query (Figs. 2, 3A, 3B, 5A; col. 2, ll. 10-37).
9. Johnson teaches that processing of the location of the RDPS
and delivery of information is continuous for every RDPS in the wireless
network 7 days a week, 24 hours a day (Fig. 3B; col. 10, ll. 17-19).
10. Johnson teaches a candidate delivery event (CADE) that is
generated when there is a change in direction of the RDPS in step 324. The
system in step 326 calculates the distance that the RDPS has moved since
the previous location. This location is compared with the previous location
(Fig. 3B; col. 9, l. 60 - col. 10, l. 7).
11. Johnson teaches an indoor wireless embodiment of the system
wherein an RDPS device is placed on a shopping cart 506, wherein
triangulation techniques are used to locate the shopping cart 506. The
shopper with a cart receives content at the RDPS as the cart is navigated
throughout the store. Special deals, sales or other promotional content are
pushed automatically by the system to the RDPS (col. 11, l. 49 – col. 12, l.
11).
12. Johnson teaches transmitting information matching the
requirements of a user-definable profile and matching the user’s current
location (col. 36, ll. 21-28).
13. Johnson teaches that the RDPS (mobile devices) either provides
a heartbeat for the base stations or the base stations provide heartbeats for a
response from the RDPS on either a reverse channel or a forward channel,
respectively (col. 9, ll. 26-28).
14. Johnson teaches a user event management interface that
provides an interface to event processing relevant to the system, which is
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directly caused by a user, e.g., when the user uses the RDPS user interface
(col. 17, ll. 11-24).
Tricarico
15. Tricarico teaches a system for locating a portable electronic
device that includes a transceiver 104 that can transmit a continuous tone
that enables location of the device using triangulation techniques and Base
Transceiver Stations (BTSs) (¶ [0031]).

PRINCIPLES OF LAW
By a showing of insufficient evidence of prima facie obviousness or
by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness, the Appellants can overcome a § 103 rejection. In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 405 (2007). 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, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”).
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at
12), and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
Claims 1, 2, 4-6, 9-15, 19-22, 35-37, 39-44, 46, and 50
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 1 requires an operation server that “continuously receives
information derived from reception by a mobile communication network of
a pilot signal from the customer's mobile terminal to confirm a location of
the customer within the building, said confirmation serving as a pre-
condition to transmitting the sudden information to the customer's mobile
terminal.”
Appellants argue that Shteyn does not teach or suggest the functions
of the operation server of claim 1, which include "continuously receiving
information derived from reception by a mobile communication network of
a pilot signal from the customer's terminal to confirm a location of the
customer within the building" (App. Br. 9-10; Reply Br. 4-5 and 7). Further,
Appellants argue that Shteyn does not teach that receipt of the pilot signal by
the operation server serves as “a pre-condition to transmitting the sudden
information to the customer’s terminal” (App. Br. 10; Reply Br. 4-5 and 7).
Appellants contend that Shteyn does not teach an operation server that
controls the database server and the data transmission server, as recited in
claim 1 (App. Br. 10). Moreover, Appellants contend that the triangulation
method of Johnson does not take into consideration a pilot signal received
by a mobile communication network as a basis for confirming the location
of a customer terminal (App. Br. 11; Reply Br. 5).
Appellants argue further that the method of triangulation needs three
beacons to find the mobile terminal, as opposed to the one server of the
claimed invention receiving a pilot signal from the mobile terminal (App.
Br. 11; Reply Br. 5-7). In addition, Appellants argue that Tricarico does not
teach continuously receiving a pilot signal from the customer's terminal to
confirm a location of the customer within the building (App. Br. 12).
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Finally, Appellants point to the Examiner’s finding of the ability to receive a
signal from a mobile terminal continually and argues further that the
Examiner has not supported an "obvious" finding with a recitation of a
disclosure in any reference or by any other objective basis (App. Br. 12).
The Examiner finds that the combination of Shteyn and Johnson
teaches an operation server, wherein the “operation server continuously
receives information derived from reception by a mobile communication
network of a pilot signal from the mobile phone to confirm a location of the
customer within the building, said confirmation serving as a pre-condition to
transmitting the sudden information to the customer’s mobile terminal”
(Ans. 5-6, 14). The Examiner finds that this limitation is as simple as
monitoring a fluctuating value to fall within a given range, wherein the value
corresponds to the mobile terminal located within a specific building, and
performs a specific function, e.g., transmitting information matching the
requirements of a user-definable profile and matching the user’s current
location (Ans. 14; FF 8, 10, and 11). Further, the Examiner finds that
Johnson teaches a continuous monitoring of all mobile devices with the
network, wherein the mobile devices or RDPS provides a “heartbeat [signal]
for the base stations” or the base stations provide a heartbeat signal for the
RDPS (Ans. 14; FF 13).
We agree with the Examiner’s findings that the combination of Shteyn
and Johnson teaches an operation server that “continuously receives
information derived from reception by a mobile communication network of
a pilot signal from the mobile phone to confirm a location of the customer
within the building, said confirmation serving as a pre-condition to
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transmitting the sudden information to the customer’s mobile terminal”
(Ans. 5-6, 14).
In addition, the Examiner finds that server 420 controls the database
server and the data transmission server, wherein the operation server 420
determines the appropriate communication information to transmit to the
mobile devices, when to transmit this information and the most appropriate
communication protocol to use for the transmission (Ans. 4 and 15; FF 4).
We agree with the Examiner’s finding that the server 420 controls the
database server and the data transmission server (Ans. 4, 15).
The Examiner finds that Tricarico is an example that triangulation and
continuous tone transmission from a mobile device to the surrounding base
stations for location determination are both well known in the art (Ans. 16).
The Examiner finds that Appellants’ argument with respect to Tricarico is
not persuasive, in that Appellants make no attempt to explain how the pilot
signal of the invention differs from that disclosed in Johnson and Tricarico
(Ans. 16). The Examiner finds that Appellants’ interpretation of
triangulation is limited (Ans. 16). Under the method of triangulation,
Appellants perceive that three beacons must be used to locate the mobile
terminal; yet, triangulation encompasses the action of a mobile terminal
sending a pilot signal or a continuous signal to at least one beacon (Ans. 16).
The Examiner finds that Johnson “obviously” (i.e., inherently)
provides the ability to receive a signal from a mobile terminal continuously
(Ans. 17). Since the base station can receive a signal from the phone at any
time, the Examiner concludes that the base station must be able to receive at
all times, connoting "continuously" receiving a pilot signal, as claim 1
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requires (Ans. 17; FF 9). Further, the Examiner finds that Tricarico teaches
receiving a continuous tone at the base station (Ans. 17; FF 15).
We agree with the Examiner’s finding concerning Tricarico (Ans. 16).
We agree that Appellants make no attempt to explain how the pilot signal of
the invention differs from that disclosed in Johnson and Tricarico (Ans. 16).
In summary, we agree with the Examiner’s finding that the combined
teachings of Shteyn and Johnson teach all of the claim limitations of claim 1
(Ans. 5-6). We do not find Appellants’ argument persuasive, particularly
since Appellants make no attempt to explain how the pilot signal of the
invention differs from that disclosed in Johnson and Tricarico.
We therefore find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103, nor that of claims 2, 4-6, 9-15, 19-22, 35-37, 39-44,
46 and 50 not separately argued with particularity.
Claims 47 and 48
Appellants argue that Shteyn does not teach that the data transmission
server “automatically radio-transmits the first type of information in
response to a customer request for the first type of information,” as claim 47
requires (App. Br. 13; Reply Br. 8). Appellants argue that beacons are
passive devices where the data is transmitted constantly or per customer
profile and not in response to a customer’s request (App. Br. 13; Reply Br.
8). Further, Appellants contend that Johnson does not teach nor suggest
these features (App. Br. 13; Reply Br. 8). However, Appellants admit that
Johnson discloses transmitting information to a user in response to a user
request (App. Br. 13; Reply Br. 8; FF 14).
The Examiner finds that Shteyn teaches the ability for the user to
consciously select a context filter that includes “the first type of
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information” a user wishes to receive (Ans. 17-18; FF 6 and 14). The
Examiner acknowledges Appellants’ admission that Johnson teaches
"transmitting information to a user in response to a user request" (App. Br.
13).
We are not persuaded by Appellants’ argument that the combination
of Shteyn and Johnson does not teach each and every claim limitation of
claim 47. We agree with the Examiner’s finding that the combination of
Shteyn and Johnson teaches a “data transmission server [that] automatically
radio-transmits the first type of information in response to a customer
request for the first type of information” (Ans. 17-18).
We therefore find no error in the Examiner’s rejection of claim 47
under 35 U.S.C. § 103, nor that of claim 48 not separately argued with
particularity.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in finding that the
combination of Shteyn and Johnson teaches an operation server that
continuously receives information derived from reception by a mobile
communication network of a pilot signal from the customer's mobile
terminal to confirm a location of the customer within the building, wherein
the confirmation serves as a pre-condition to transmitting the sudden
information to the customer's mobile terminal.
Appellants have not shown that the Examiner erred in finding that the
combination of Shteyn and Johnson teaches an operation server that controls
a database server and a data transmission server.
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ORDER
The Examiner’s rejection of claims 1, 2, 4-6, 9-15, 19-22, 35-37, 39-
44, 46-48, and 50 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

bim

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