Ex Parte Britt et al

Board of Patent Appeals and Interferences

Dec 13, 2002

08910315 (B.P.A.I. Dec. 13, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BEVERLY RIMMER BRITT and JOHN EDWARD ETCHELLS
__________
Appeal No. 2001-0654
Application 08/910,315
___________
ON BRIEF
___________
Before JERRY SMITH, FLEMING, and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 8, all the claims pending in the present
application.
The invention relates to cellular phones. In particular,
the invention relates to a cellular phone which transmits the
current location of the phone using a global positioning system
Appeal No. 2001-0654
Application 08/910,315
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and personal identity information unique to the person using the
phone. See page 2, of Appellants’ specification. In particular,
the personal data which is transmitted is not only the identity
of the person, but also may be a substantial amount of personal
data such as medical information. See page 4 of Appellants’
specification.
Representative claim 1 present in the application is
reproduced as follows:
1. A transmitter for communication over a cellular system,
comprising:
a data storage device electronically storing predefined
personal identity information unique to the person using said
transmitter for communication to a receiving station over the
cellular system, the predefined personal identity information
being exclusive of any transmitter identifying number and
exclusive of the transmitter’s location;
a position-finding receiver for determining a current
geographic location of the transmitter;
a signal processing element for providing a signal that
includes said predefined personal identity information unique to
the person using said transmitter and said current location;
a transmission element receiving said signal from said
signal processing element and, in response thereto, transmitting
a cellular signal that includes said predefined identity
information unique to the person using said transmitter and said
current location; and
a manually operable actuator for establishing communication
with a receiving party over the cellular system and initiating
transmission of said cellular signal thereto.
Appeal No. 2001-0654
Application 08/910,315
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REFERENCES
The references relied on by the Examiner are as follows:
Hillis 5,303,297 Apr. 12, 1994
Wizgall et al. (Wizgall) 5,630,209 May 13, 1997
Emery et al. (Emery) 5,727,057 Mar. 10, 1998
(filed Dec. 27, 1994)
Rejections At Issue
Claims 1, 2 and 4 through 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hillis in view of Emery.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hillis in view of Emery and Wizgall.
Rather than repeat the arguments of Appellants or Examiner,
we make reference to the brief and answer for the respected
details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of Appellants
and the Examiner, for the reasons stated infra, we reverse the
Examiner’s rejection of claims 1 through 8 under 35 U.S.C. § 103.
Appellants point out that Appellants’ apparatus claim 1 and
method claim 8 recite the storage of predefined personal identity
information unique to the person using the transmitter and
exclusive of any transmitter identifying number and exclusive of
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Application 08/910,315
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the transmitter’s location. Appellants argue that this
limitation is not shown in the Examiner’s proposed combination of
references.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). As our reviewing court further states
that “the terms used in the claims bear a “heavy presumption”
that they means what they say and have the ordinary meaning that
would be attributed to those words by persons skilled in the
relevant art.” Texas Digital Systems, Inc. v. Telegenix, Inc.,
______ F.3d _______, 2002 WL 31307212 *3(Fed. Cir. (Oct. 16,
2002.)).
We note that independent claim 1 recites “[a] transmitter
for communication over a cellular system, comprising: a data
storage device electronically storing predefined personal
identity information unique to the person using said transmitter
for communication to a receiving station over the cellular
system, the predefined personal identity information being
exclusive of any transmitter identifying number and exclusive of
the transmitter’s location; . . . a signal processing element for
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Application 08/910,315
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providing a signal that includes said predefined personal
identity information unique to the person using said transmitter
and . . . a transmission element receiving said signal from said
signal processing element and, in response thereto, transmitting
a cellular signal that includes said predefined identity
information unique to the person using said transmitter”.
Appellants’ only other independent claim 8 recites “[a] method
for communicating information over a cellular system via a
transmitter, comprising: storing predefined personal identity
information unique to the person using said transmitter for
communication to a receiving station over the cellular system,
the predefined personal identity information being exclusive of
any transmitter identifying number and exclusive of the
transmitter’s location; . . . providing a signal that includes
said predefined personal identity information unique to the
person using said transmitter . . . establishing communication
with a receiving party over the cellular system and initiating
transmission of said signal thereto that includes said predefined
personal identity information and said current location.”
In regards to claims 1 and 8, the Examiner agrees that
Hillis does not teach personal identity information being
exclusive of any identifying number associated with the
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Application 08/910,315
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transmitter. See page 3 of the Examiner’s answer. However, the
Examiner argues that Emery teaches personal identity information
in column 2, lines 16 through 49, and column 7, lines 25 through
33. See page 3 of the Examiner’s answer.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d 1445, 24 USPQ at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “[I]n
reviewing the [Examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and arguments.” In re
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Application 08/910,315
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Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency’s conclusion.” In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002). With these principles in mind, we commence review of the
pertinent evidence and arguments of Appellants and Examiner.
We fail to find that Emery teaches predefined personal
identity information unique to the person using a transmitter and
exclusive of any identifying number and exclusive of the
transmitter location. The Examiner has directed us to column 2,
lines 16 through 49. Upon our review of this portion of the
specification, we find that Emery is teaching location ID and
telephone ID. We fail to find any teaching directed to personal
identity information as required by Appellants’ claims 1 and 8.
Furthermore, we fail to find support for the Examiner’s position
in column 7, lines 25 through 33. Emery does not teaches
personal identity information but instead teaches location ID and
transmitter ID. Upon our review of the entire disclosure of
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Application 08/910,315
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Emery, we fail to find any support for the Examiner’s assertion
that Emery teaches personal identity information as required by
claims 1 through 8.
The Examiner has further rejected claim 3 under 35 U.S.C.
§ 103 as being obvious over Hillis in view of Emery and further
in view of Wizgall. The Examiner relies on Wizgall for the
teaching of a detachable mass memory card. See page 5 of the
Examiner’s answer. We note that the Examiner for this rejection
also relies on Emery for the teaching of personal identity
information unique to a person using the transmitter and
exclusive of any transmitter identifying number and exclusive of
the transmitter’s location as required by claim 3 due to its
dependence on claim 1. We therefore will not sustain the
rejection of claim 3 for the same reasons as above.
Appeal No. 2001-0654
Application 08/910,315
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In view of the foregoing, we will not sustain the Examiner’s
rejection of claims 1 through 8 under 35 U.S.C. § 103.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2001-0654
Application 08/910,315
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S H Dworetsky
AT & T Corp.
P.O. Box 4110
Middletown, NJ 07748-4801