Ex Parte Challener

Board of Patent Appeals and Interferences

May 6, 2009

10016792 (B.P.A.I. May. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID CARROLL CHALLENER
____________

Appeal 2008-1907
Application 10/016,7921
Technology Center 2400
____________

Decided:2 May 6, 2009
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 2, 2001. The real party in interest is
International Business Machines Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 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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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-15, 17, 18, 20, 21, 23, and 24 mailed April 14, 2006, which are
all the claims remaining in the application, as claims 16, 19, and 22 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant invented a system, method, and computer readable medium
for transmitting a broadcast over the Internet by a broadcaster where users
located approximately within a defined distribution area of the broadcaster
can receive or interpret the broadcast. A broadcaster may transmit an
encrypted broadcast over the Internet while transmitting a decryption key to
users of computer systems over the air within its defined distribution area.
Only users that are located approximately within the defined distribution
area of the broadcast may receive the decryption key and hence be able to
decrypt the encrypted broadcast. (Spec. 26, Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-15, 17, 18, 20, 21, 23, and 24. Claims 1,
6, 11, 17, 20, and 23 are independent claims. Claims 1 and 17 are
illustrative:
1. A method for transmitting a broadcast over the Internet
by a broadcaster where the broadcast is interpreted by users located
within a defined distribution area of the broadcaster, comprising the
steps of:
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encoding a radio broadcast into a digital packets of
information;
encrypting said digital packets of information;
transmitting said encrypted digital packets of information
over the Internet; and
providing a decryption key to a transmitter to be
broadcasted within said defined distribution area of said broadcaster.

17. A method for transmitting a broadcast over the Internet
within a defined distribution area, comprising the steps of:
receiving a request to transmit said broadcast from a
requester;
determining an physical location of said requester; and
transmitting said broadcast over the Internet to said
requester if said requester is physically located within said defined
distribution area;
wherein said step of determining said physical location of
said requester comprises the steps of:
capturing an Internet Protocol address of said
requester;
converting said captured Internet Protocol address
of said requester into a computer name; and
performing a trace of said request.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Teare US 5,243,652 Sep. 7, 1993
Schlossberg US 2002/0066034 A1 May 30, 2002
(Filed Sep. 21, 2001)
Pezzillo US 6,434,621 B1 Aug. 13, 2002
(Filed Mar. 31, 1999)
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Franken US 2003/0097654 A1 May 22, 2003
(Filed Jun. 15, 2001)

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pezzillo in view of Teare; and
(2) Claims 17, 18, 20, 21, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Franken in view of Schlossberg.

II. PROSECUTION HISTORY
Appellant appealed from the Final Rejection and filed a Twice
Amended Appeal Brief (App. Br.) on June 11, 2007. The Examiner mailed
an Examiner’s Answer (Ans.) on August 14, 2007. Appellant filed a Reply
Brief (Reply Br.) on October 4, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Pezzillo
1. Pezzillo discloses “a system for enabling Internet or intranet
broadcasting . . . Multiple webcast channels, or stations, can be created and
managed, including Internet Radio . . . . The channels created can use a
variety of media sources, including popular Internet streaming formats”
(Abstract).

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Teare
2. Teare discloses a system “to provide location-sensitive control
over remote or mobile systems in a secure manner” (col. 1, ll. 34-36).
3. Teare discloses “a communication system comprising a remote
mobile node including encrypted programming material, and a central
facility. The central facility includes storage means for storing
predetermined signature data each associated with a correspondingly
respective code decryption key, wherein said signature data includes
position and time information” (col. 1, ll. 40-47).
4. In Teare, “[t]he mobile node includes receiver means . . . and
transmission means . . . The central facility further includes . . . means for
comparing the location history to said predetermined signature data, and
forwarding the corresponding key to said mobile node if the comparison
satisfies a match condition” (col. 1, ll. 47-57).
5. In Teare, “[t]he authorization control signal is a code decryption
key which is used at the remote node for decrypting the program” (col. 2, ll.
6-8).
6. Teare discloses that “the central facility may only authorize
viewing of the encrypted video signal on an airplane if the plane is over
25,000 ft. altitude and over a predesignated area” (col. 2, ll. 40-42).
7. Teare discloses that “[t]he transmission may be accomplished by
means well known to those skilled in the art, including transmission via a
direct radio link” (col. 3, ll. 12-14).

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IV. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 US 398, 419 (2007). To be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case. Only those arguments actually made by
Appellant has been considered in this decision. Arguments which Appellant
could have made but chose not to make in the Brief has not been considered
and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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 US at 415 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
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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.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate this doctrine.” Id. at 416. “In United States v.
Adams, … [t]he Court recognized that when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” Id. at 416. “Sakraida and Anderson’s-Black
Rock are illustrative – a court must ask whether the improvement is more
that the predictable use of prior art elements according to their established
function.” Id. at 417.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
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for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained, “[o]ften, it will be
necessary for a court to look to interrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” Id. at 418. The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” Id., citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a mechanical device for actuating a phonograph to
play back sounds associated with a letter in a word on a puzzle piece with
(2) an electronic, processor-driven device capable of playing the sound
associated with a first letter of a word in a book. Leapfrog Ent., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“[a]ccommodating
a prior art mechanical device that accomplishes [a desired] goal to modern
electronics would have been reasonably obvious to one of ordinary skill in
designing children’s learning devices”). In reaching that conclusion, the
Federal Circuit recognized that “[a]n obviousness determination is not the
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result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not.” Id.
at 1161 (citing KSR, 550 US 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). The Federal Circuit relied in part
on the fact that Leapfrog had presented no evidence that the inclusion of a
reader in the combined device was “uniquely challenging or difficult for one
of ordinary skill in the art” or “represented an unobvious step over the prior
art.” Id. (citing KSR, 550 US at 1740-41).

V. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellant argues claims 1, 3, 6, 8, 11, and 13 as a group
(App. Br. 7-9). For claims 3, 6, 8, 11, and 13, Appellant repeats the same
argument made for claim 1. We will, therefore, treat claims 3, 6, 8, 11, and
13 as standing or falling with claim 1.
Group II: Appellant argues claims 2, 7, and 12 as a group (App. Br.
9-11). For claims 7 and 12, Appellant repeats the same argument made for
claim 2. We will, therefore, treat claims 7 and 12 as standing or falling with
claim 2.
Group III: Appellant argues claims 5, 10, ad 15 as a group (App. Br.
11-14). For claims 10 and 15, Appellant repeats the same argument made
for claim 5. We will, therefore, treat claims 10 and 15 as standing or falling
with claim 5.
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Group IV: Appellant argues claims 4, 9, and 14 as a group (App. Br.
18-19). For claims 9 and 14, Appellant repeats the same argument made for
claim 4. We will, therefore, treat claims 9 and 14 as standing or falling with
claim 4.
Group V: Appellant argues claims 17, 18, 20, 21, 23, and 24 as a
group (App. Br. 20-22). For claims 18, 20, 21, 23, and 24, Appellant repeats
the same argument made for claim 17. We will, therefore, treat claims 18,
20, 21, 23, and 24 as standing or falling with claim 17.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under 35
U.S.C. § 103(a).

Group I
Claims 1, 3, 6, 8, 11, 13

Appellant contends:
Teare instead teaches a mobile unit (e.g., aircraft) that stores
encrypted signals. Teare further teaches that a central facility
12 which may authorize the viewing of the encrypted video
signal on an airplane if the airplane is over 25, 000 ft. altitude
and over a pre-designated area. There is no language in the
cited passage that teaches providing a decryption key to a
transmitter to be broadcasted within a defined distribution
area of a broadcaster.
(App. Br. 7).
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Appellant further contends that “[n]either is there any language in the
cited passage that teaches encrypting digital packets of information in which
a radio broadcast was encoded into the digital packets of information” (App.
Br. 9).
The Examiner found that “Teare discloses that the central facility may
authorize the viewing of encrypted video signals when the plane is over
25,000 ft. and over a pre-designated area. This authorization is
accomplished by transmitting (broadcasting) a decryption key to the plane.
Since the plane is over the pre-designated area the key is broadcasted within
the defined distribution area” (Ans. 6-7) (citations omitted).
Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Pezzillo and Teare discloses encoding a radio broadcast
into digital packets, encrypting the digital packets, and providing a
decryption key to a transmitter to be broadcasted within a defined
distribution area?

The Examiner found that the combination of Pezzillo and Teare
discloses encoding a radio broadcast into digital packets, encrypting the
digital packets and providing a decryption key to be broadcasted within a
defined distribution area (Ans. 6-7). We agree.
For example, Pezzillo discloses Internet broadcasting and creating
Internet Radio, including streaming formats, based off of a radio broadcast
(FF 1). Thus, we find that Pezzillo discloses encoding a radio broadcast into
digital packets of information. Furthermore, Teare discloses a
communication system that provides location-sensitive control over
transmission of information (FF 2). For example, in Teare a remote node
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includes encrypted programming material. A central facility storing a
decryption key forwards the key to the remote node for decrypting the
programming if a predetermined condition happens (FF 3-5). Teare
forwards the decryption key to the remote node when the remote node is in a
pre-designated area (FF 6). Thus, the claimed encrypting said digital
packets reads on Teare’s already encrypted information because encrypted
information must inherently include a step of encrypting said information.
In addition, the claimed providing a decryption key . . . to be broadcasted
within a defined distribution area reads on Teare’s transmission of a code
decryption key to the airplane when the airplane is over a pre-designated
area, so as to decode the programming. Teare’s airplane would not receive
the key if it was not in the pre-designated area. Such a location-sensitive
embodiment suggests a defined distribution area for broadcasting the
decryption key.
Given Pezzillo’s teachings concerning Internet radio broadcasting and
Teare’s teachings involving broadcasting location-sensitive
encrypted/decrypted information, we find that the Examiner has set forth a
sufficient initial showing of obviousness and that the Appellant has not
shown error in the Examiner’s rejection. Appellant has not shown that the
combination of Pezzillo and Teare lacks the above-noted disputed features
of claim 1.

Motivation to Combine Arguments
Appellant contends that “[t]he Examiner’s motivation does not
provide reasons, . . . that the skilled artisan, confronted with the same
problems as the inventor and with no knowledge of the claimed invention,
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would modify Pezzillo to include the above-cited missing claim limitations
from claims 1, 6 and 11” (App. Br. 13). Appellant further contends that
“[s]ince the Examiner has not provided a motivation for modifying Pezzillo
to include the missing claim limitations of dependent claims 2-3, 5, 7-8, 20,
12-13 and 15, the Examiner has not presented a prima facie case of
obviousness in rejecting claims 2-3, 5, 7-8, 10, 12-13 and 15” (App. Br. 15).
The Examiner found that the “[m]otivation to do so would have been
to provide location-sensitive control over remote or mobile systems in a
secure manner, without requiring secure facilities for the remote or mobile
node” (Ans. 4). The Examiner further found that “Pezzillo suggested
securing the information by securing the connection. Therefore, one of
ordinary skill in the art would be motivated to encrypt and therefore control
(secure) the content of Pezzillo in the method taught by Teare” (Ans. 10).
Issue: Has Appellant shown that the Examiner failed to provide
proper motivation for combining the teachings of Teare and Pezzillo?

Firstly, we note that for a prima facie case of obviousness to be
established, the references need not recognize the problem solved by the
Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ
58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”)

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Secondly, there is no requirement that the problem solved by the
secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103.
The Supreme Court has held that in analyzing the obviousness of combining
elements, a court need not find specific teachings, but rather may consider
“the background knowledge possessed by a person having ordinary skill in
the art” and “the inferences and creative steps that a person of ordinary skill
in the art would employ.” See KSR Int'l Co. v. Teleflex Inc., 550 US at 418
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” and the basis for an obviousness rejection must include an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id.
Here, as noted supra, the Examiner has found actual teachings in the
prior art and has articulated a rationale for the combination of known
elements. As case law dictates, the references cited need not recognize the
problem solved by the Appellant nor is there a requirement that the problem
solved by the secondary reference be discussed by the primary reference to
apply the teachings of the secondary reference. Further, the teachings
suggest that the combination involves the predictable use of prior art
elements according to their established functions. For example, Pezzillo
teaches that it was known to create Internet Radio (FF 1). Internet
broadcasts, such as Internet Radio, ordinarily include streaming digital
packets. Teare teaches that it was known to have location-sensitive control
over broadcasting decryption keys in order to decrypt information (FF 1-6).
Thus, the combined teachings of Pezzillo and Teare demonstrate the
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predictable use of decryption keys in location-sensitive control areas when
broadcasting digital streaming of radio broadcasts. Accordingly, we find that
the Examiner has provided sufficient motivation for modifying Pezzillo with
the teachings of Teare, and we therefore will sustain the obviousness
rejection of claims 1, 3, 6, 8, 11, and 13.
Again, we affirm the rejection of independent claim 1 and of claims 3,
6, 8, 11, and 13, which fall therewith.

Group II
Claims 2, 7, and 12

Appellant contends that Teare does not teach “receiving said
decryption key by one or more users of a computer system located within a
defined distribution area of a broadcaster” (App. Br. 10).
The Examiner found that “[e]ach person on the plane is a user of the
computer system because they are able to use the decrypted material and
since the decryption key is combined in someway with the encrypted
material to make it usable” (Ans. 8).
Issue: Has Appellant shown that the Examiner erred in finding that
Teare discloses receiving said decryption key by one or more users of
computer systems located within said defined distribution area?

We agree with the Examiner that Teare suggests that each person on
the plane can be a user of the computer system within a pre-designated area.
Further, we find that the airplane itself can be seen as a “user of a computer
system,” for an airplane inherently includes sophisticated equipment such as
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a computer system and the decryption key is transmitted directly to such
equipment in the airplane when it is in a pre-designated area.
Thus, we find that the Examiner has set forth a sufficient initial
showing of obviousness and that the Appellant has not shown error in the
Examiner’s rejection. Appellant has not shown that the combination of
Pezzillo and Teare lacks the above-noted disputed features of claim 2.
Therefore, we affirm the rejection of claim 2 and of claims 7 and 12, which
falls therewith.

Group III
Claims 5, 10, 15

Appellant contends that “Teare does not teach transmitting a
decryption key via electromagnetic waves within a defined distribution area
of a broadcaster” (App. Br. 12).
The Examiner found that “all radio waves are electromagnetic waves
and Teare teaches the use of radio waves to communicate between the
remote node and the central facility” (Ans. 8-9).
Issue: Has Appellant shown that the Examiner erred in finding that
Teare discloses that the decryption key is transmitted via electromagnetic
waves?

Teare discloses that the transmission may be accomplished by radio
link (FF 7), and the Examiner found that this includes electromagnetic
waves. We agree. Appellant has not shown how the claimed
electromagnetic waves are distinguishable from Teare’s direct radio link,
which includes electromagnetic waves. Thus, we find that the Examiner has
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set forth a sufficient initial showing of obviousness and that the Appellant
has not shown error in the Examiner’s rejection. Appellant has not shown
that the combination of Pezzillo and Teare lacks the above-noted disputed
features of claim 5. Therefore, we affirm the rejection of claim 5 and of
claims 10 and 15, which falls therewith.

Group IV
Claims 4, 9, and 14

Regarding claim 4, Appellant contends that “the Examiner’s
motivation for modifying Pezzillo and Teare to include the above-noted
claim limitation is ‘to allow the receiver to hear the digital broadcast.’
However, the Examiner has not provided any evidence that his motivation
comes from any sources listed above. Instead, the Examiner is relying upon
his own subjective opinion which is insufficient to support a prima facie
case of obviousness” (App. Br. 18).
The Examiner took Official Notice “that at the time of the invention it
would have been obvious to a person of ordinary skill in the art to use an
audio transducer to reproduce the digital broadcast. Motivation to do so
would have been to allow the receiver to hear the digital broadcast” (Ans. 5).
Issue: Has Appellant shown that the Examiner’s motivation for
taking Official Notice is improper?

We note that “motivation” need not be found in the references sought
to be combined, but may be found in any number of sources, including
common knowledge, the prior art as a whole, or the nature of the problem
itself. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
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Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006)(emphasis added); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge
was in the art, the examiner could then properly rely, as put forth by the
solicitor, on a conclusion of obviousness ‘from common knowledge and
common sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.”’); In re Hoeschele, 406 F.2d
1403, 1406-07 (CCPA 1969) (“[I]t is proper to take into account not only
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom …”).
Here, we find that the Examiner has properly relied upon common
knowledge and common sense. The Examiner’s motivation does not have to
refer to or come from any particular reference sought to be combine. In
addition, as noted supra, the Examiner need not look for the same problem
as the inventor. Furthermore, given that Appellant has not provided any
evidence that discredits, criticizes, or otherwise discourages such a
motivation, we find that the Examiner has set forth a sufficient initial
showing of obviousness and that the Appellant has not shown error in the
Examiner’s rejection. Therefore, we affirm the rejection of claim 4 and of
claims 9 and 14, which falls therewith.

Group V
Claims 17, 18, 20, 21, 23, and 24

Appellant contends that the “Examiner’s motivation for modifying
Franken with Schlossberg to include the above-cited claim limitations is ‘to
determine the physical location of a device on the Internet.’ The Examiner’s
motivation is insufficient to support a prima facie case of obviousness”
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(App. Br. 20). Appellant further contends that “[t]he Examiner’s motivation
does not provide reasons . . . that the skilled artisan, confronted with the
same problem as the inventor and with no knowledge of the claimed
invention, would modify Franken to include the above-cited missing claim
limitation from clams 17, 20 and 23” (Id. at 21).
The Examiner found that “it would have been obvious to a person of
ordinary skill in the art to use Schlossberg et al.’s method of tracing to
determine the location in Franken et al. system. Motivation to do so would
have been to determine the physical location of a device on the Internet”
(Ans. 6).
Issue: Has Appellant shown that the Examiner’s motivation to
combine the teachings of Schlossberg with Franken insufficient?

Again, Appellant attacks the Examiner’s motivation for combining
references based on the “same problem” notion. As noted supra, the
references need not recognize the problem solved by the Appellant, there is
no requirement that the problem solved by the secondary reference be
discussed by the primary reference to apply the teachings of the secondary
reference in a rejection under 35 U.S.C. § 103, and a court need not find
specific teachings, but rather may consider “the background knowledge
possessed by a person having ordinary skill in the art” and “the inferences
and creative steps that a person of ordinary skill in the art would employ.
Thus, Appellant is relying on a flawed theory for providing motivation.
Here, the Examiner has found actual teachings in the prior art (Ans. 5-
6) and has provided a rationale for the combination of known elements (Ans.
6). Further, the teachings suggest that the combination involves the
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predictable use of prior art elements according to their established functions.
For example, Franken and Schlossberg disclose prior art (e.g., transmitting a
broadcast within a defined area and performing a trace of an Internet
requester, respectively) that perform their ordinary functions to predictably
result in a system that determines the physical location of a device on the
Internet (Ans. 5-6). Accordingly, we find that the Examiner has provided
sufficient motivation for modifying Franken with the teachings of
Schlossberg, and we therefore will sustain the obviousness rejection of
claims 17, 18, 20, 21, 23, and 24

VI. CONCLUSIONS
We conclude that Appellant have not shown that the Examiner erred
in rejecting claims 1-15, 17, 18, 20, 21, 23, and 24.
Thus, claims 1-15, 17, 18, 20, 21, 23, and 24 are not patentable.

VII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-15, 17, 18, 20, 21, 23, and 24.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

pgc

Robert A. Voigt, Jr.
WINSTEAD SECHREST & MINICK PC
PO BOX 50784
DALLAS TX 75201