Ex Parte DooleyDownload PDFBoard of Patent Appeals and InterferencesNov 2, 200910191021 (B.P.A.I. Nov. 2, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SAUL R. DOOLEY ____________ Appeal 2009-000670 Application 10/191,021 Technology Center 2600 ____________ Decided: November 3, 2009 ____________ Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO and KARL D. EASTHOM, Administrative Patent Judges. HAIRSTON, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final rejection of claims 1 to 4 and 6 to 21. We will reverse. The disclosed invention relates to a transmitter that transmits to a mobile communication terminal a signal which indicates one or more available positioning functions (e.g., GPS, Bluetooth, ultra-wideband Appeal 2009-000670 Application 10/191,021 2 (UWB)) with regard to the location of the transmitter (Figs. 1 and 2; Spec. 2 to 4, 6 to 8; Abstract). Claims 8 and 10 are representative of the claims on appeal, and they read as follows: 8. A method for deciding from among a plurality of positioning functions, comprising: selecting at least one of the plural positioning functions as being suitable for use having regard to a location of a transmitter, transmitting, by said transmitter, from said location, a signal to a mobile communications terminal, said signal conveying said at least one function selected; and receiving, by the terminal, the transmitted signal, reading, from the received signal, the selected functions and, in case of more than one function having been selected, choosing from among said more than one function. 10. A transmitter having a location and configured for, without need to know what particular positioning capability a particular mobile communication terminal has, recommending, to said terminal, by means of a signal, one or more positioning functions suitable having regard to said location. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Naddell US 5,613,213 Mar. 18, 1997 Harris US 6,222,458 B1 Apr. 24, 2001 Haumont US 6,584,314 B1 Jun. 24, 2003 (filed Dec. 11, 1998) Appeal 2009-000670 Application 10/191,021 3 Lehikoinen US 6,847,823 B2 Jan. 25, 2005 (filed Dec. 20, 2000) The Examiner rejected claims 1, 2, 6 to 8, 10, 12, and 14 to 21 under 35 U.S.C. § 103(a) based upon the teachings of Naddell and Lehikoinen. The Examiner rejected claims 3, 9, 11, and 13 under 35 U.S.C. § 103(a) based upon the teachings of Naddell, Lehikoinen, and Harris. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) based upon the teachings of Naddell, Lehikoinen, and Haumont. Naddell describes a communication unit 108 that receives an RF transmission of currently available services from an RF communication system, and displays the available services on a display 206 (Figs. 1 and 2; col. 1, ll. 27 to 33; col. 2, ll. 2 to 30; col. 3, ll. 19 to 28). According to the Examiner (Final Rej. 4), the display of available services in Naddell is a display of a “plurality of functions.” The Examiner acknowledges (Final Rej. 4) that Naddell does not disclose a plurality of “positioning functions.” According to the Examiner (Final Rej. 4), “[i]n an analogous art, Lehikoinen discloses positioning functions (see col. 2, lines 63-65), thereby permitting to activate or selecting positioning functions based on the location of the device.” The Examiner concludes (Final Rej. 4- 5) that it would have been obvious to one of ordinary skill in the art at the time the invention was made “to combine these teachings for offering location-based services to the customer.” Appellant argues inter alia that: Lehikoinen is directed toward a method and system for obtaining location-dependent services information by using a mobile station. An information beacon provides services information Appeal 2009-000670 Application 10/191,021 4 based on its location. The beacon communicates with the mobile station when the mobile station is located within the operating range of the beacon. As an example described in Lehikoinen, one or more beacons disposed in a train station may receive continuous updates of train schedule information, such as arrivals, departures and track changes. (Lehikoinen, col. 6, lines 26-28). Lehikoinen describes only location- dependent services, i.e., services that available in a particular location. Thus, upon a mobile station entering a service area of a beacon, the mobile station may communicate with that beacon. (Lehikoinen, col. 2, line 65-col. 3, line 2, as relied upon in the Final Office Action). The portion of Lehikoinen cited by the Examiner simply states that “a method of providing location-dependent services information to a mobile station is provided, the mobile station being capable of short range communication.” This makes it clear that the services offered in Lehikoinen are location- dependent, but they are not positioning functions as recited in Applicant’s claim 1. (Br. 10). In response, the Examiner still maintains that the location-dependent services provided by Lehikoinen are positioning functions because “a positioning function is [a] function using position or location data” (Ans. 10). Based upon the foregoing, we have to determine whether Appellant has demonstrated that the Examiner erred by finding that the location- dependent services described by Lehikoinen are positioning functions. Appeal 2009-000670 Application 10/191,021 5 Although the location-dependent services in Lehikoinen involve services offered at an identified position, nothing in the record before us indicates that the location-dependent services include position functions (e.g., GPS, Bluetooth, UWB, etc.) that are used to aid in the determination of the position/location of a mobile terminal. Thus, we agree with Appellant’s conclusion (Br. 11) that the combined teachings of the references to Naddell and Lehikoinen fail to teach or suggest the claimed invention. In summary, the obviousness rejection of claims 1, 2, 6 to 8, 10, 12, and 14 to 21 is reversed because the Examiner’s articulated reasons for modifying the teachings of the reference to Naddell with the teachings of Lehikoinen do not support a legal conclusion of obviousness. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The obviousness rejections of claims 3, 4, 9, 11, and 13 are reversed because the teachings of Harris and Haumont do not cure the noted shortcomings in the teachings of Naddell and Lehikoinen. The decision of the Examiner is reversed. REVERSED KIS PHILIPS INTELLECTUAL PROPERTY & STANDARDS P. O. BOX 3001 BRIARCLIFF MANOR, NY 10510 Copy with citationCopy as parenthetical citation