Ex Parte Brewer et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201310877175 (P.T.A.B. Feb. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BETH ANN BREWER and JASON B. KENAGY ____________________ Appeal 2010-004578 Application 10/877,175 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, TREVOR M. JEFFERSON and HUNG H. BUI, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004578 Application 10/877,175 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-15, 17-31, and 62-68. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis added): Claim 1. A system for sharing geographical information for one or more wireless telecommunication devices with other wireless telecommunication devices across a wireless network, comprising: a first wireless telecommunication device selectively operable to communicate with other wireless telecommunication devices across a wireless network, the first wireless telecommunication device selectively operable to generate information about the geographical location of said first wireless telecommunication device; plurality of target wireless communication devices that are designated by the first wireless communication device; and at least one group communication server in selective communication with one or more wireless telecommunication devices across the wireless network, the group communication server operable to store the identity of the set designated by the first wireless telecommunication device and the group communication server operable to control communication between the first wireless telecommunications device and the plurality of the target wireless telecommunications devices, wherein the first wireless telecommunication device selectively operable to send geographical location information to the at least one group communication server, wherein the group communication server is further operable to share the geographical information with the plurality of target wireless telecommunication devices designated by the first wireless telecommunication device. Appeal 2010-004578 Application 10/877,175 3 Rejections The Examiner rejected claims 1-15, 17-31, and 62-68 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Menard (US 2002/0169539 Al) and Rousu (US 2005/0227705 Al). 1 Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because “Menard does not describe a ‘plurality of target wireless devices designated by the first wireless communication device’ ” (App. Br. 12) and instead: Menard describes a method and system for tracking wireless devices which may include cellular telephones. See, id., paragraph [0010]. The Examiner has determined that Menard describes this claim feature at paragraph [0055]. FR, page 3. However, that portion of Menard does not describe this claim feature. Rather, paragraph [0055] of Menard describes that location information is obtained for first device 100C and that "selected clients ... are able to receive the location information" and that “[s]elected clients are those authorized to receive the location information.” This passage of Menard does not explain on what basis the “selected clients” were determined and, thus, does not teach that first device 100C has predesignated the “selected clients” as featured in claim 1. (App. Br. 12). 1 Separate patentability is not argued for claims 2-15, 17-31, and 62-68. Although claims 17, 62, and 63 are presented under separate headings, Appellants merely reference the arguments presented for claim 1 without presenting any additional arguments to establish separate patentability. Therefore, we treat claim 1 as representative for claims 2-15, 17-31, and 62-68. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2010-004578 Application 10/877,175 4 2. While Appellants do not dispute that Menard teaches a server that controls communication, Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because, as conceded by the Examiner, Menard lacks sending geographic location information to the server and the server then sharing that information. (App. Br. 12). 3. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Rousu teaches sending geographic location information to a first server (i.e., 126 or 132) and a second server (124) for controlling communication, therefore Rousu fails to teach the first server (132) sharing the geographic location information. (App. Br. 12-15). 4. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the claim construction discussed in the Examiner’s Advisory Action (in response to the after final submission under 37 C.F.R. § 1.116) is unreasonably broad. (App. Br. 15). 5. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Rousu explicitly provides three separate servers for performing the functions provided by the group communication server featured in claim 1, therefore, Rousu directly teaches away from combining multiple servers into a single server. (App. Br. 15 and Reply Br. 6-7). 6. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because “absent impermissible hindsight, i.e., using knowledge of the present disclosure, there is no reason to modify Menard with any of the teachings of Rousu as Menard is not directed to a group communication system.” (App. Br. 16). Appeal 2010-004578 Application 10/877,175 5 7. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the Examiner has shifted the basis of the rejection in the Answer (Reply Br. 2-4) and “[t]he constant shifting of the factual basis of the rejection and redrawing of references establish the lack of credibility in the examiner’s fact finding” (Reply Br. 4). 8. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because newly cited figure 10 of Menard is not directed to a mobile phone. (Reply Br. 4-5). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants’ conclusions. Except where we explicitly state differently below, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. As to Appellants’ above contention 1, we disagree that the Examiner has erred. Appellants focus their argument solely on paragraph [0055] of Menard and do not take into account Menard’s entire discussion of the “selected clients” and how they are designated. Appellants are not free to simply ignore the teachings of the cited reference. Paragraph [0057] of Menard explicitly states that “a mobile device grants authorization to access location information for the mobile device.” We note that paragraph [0057] was among the portions of Menard referenced by the Examiner. Appeal 2010-004578 Application 10/877,175 6 As to Appellants’ above contentions 2 and 3, we disagree that the Examiner has erred. Appellants repeatedly attack one or the other of the references individually for lack of a teaching where in fact the Examiner has relied on the other reference (or the combination of references) for that teaching. Applicants point out certain deficiencies in each reference rather than challenging the conclusion based upon their combined teachings. The fact that neither reference individually disclose or suggest a particular limitation of the claimed method does not rebut the obviousness conclusion reached by the Examiner based upon the combined teachings of those references. The test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). As to Appellants’ above contention 4, we disagree that the Examiner has erred in rejecting claim 1. While we agree with Appellants that this claim construction of the Advisory Action is unreasonably broad, the Advisory Action is not the basis of this appeal. Rather, the basis of this appeal is the Final Rejection which does not rely on this argued claim construction. As to Appellants’ above contention 5, we disagree that the Examiner has erred. Appellants argue that Rousu teaches away from the invention. However, Appellants fail to set forth appropriate reasoning to support these arguments. A reference “teaches away” when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the Appellants’ invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants fail to present any persuasive arguments as to how the teachings of Menard combined with the teachings Rousu would be Appeal 2010-004578 Application 10/877,175 7 unlikely to produce the objective of Appellants’ invention. To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” Mere disclosure of alternative embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As to Appellants’ above contention 6, we disagree that the Examiner has erred. We agree with the Examiner that the rejection takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant’s disclosure. The Menard and Rousu references are reasonably pertinent to the particular problem with which the inventor is involved, and the Examiner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. We do not agree that the Examiner has used impermissible hindsight. As to Appellants’ above contention 7, we disagree that the Examiner has erred. Shifting the basis of the rejection is not error, nor does it establish a lack of credibility as argued by Appellants. Rather, as Appellants themselves acknowledge a shifting of basis would be a new ground of rejection and entitle Appellants to reopen prosecution. However, by not availing themselves of this opportunity Appellants waive it. As to Appellants’ above contention 8, we disagree that the Examiner has erred. Appellants’ argument directed to the applicability to a mobile device of the teenager inputting authorization information into a personal computer (Reply Br. 5) again ignores the authorization granting teaching of Menard’s paragraph [0057] and also ignores the fact that Menard describes a portable computer as mobile device at paragraph [0011]. Appeal 2010-004578 Application 10/877,175 8 CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-15, 17-31, and 62-68 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1-15, 17-31, and 62-68 are not patentable. DECISION The Examiner’s rejection of claims 1-15, 17-31, and 62-68 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 ELD Copy with citationCopy as parenthetical citation