Ex Parte Dooley

Board of Patent Appeals and Interferences

Nov 2, 2009

10191021 (B.P.A.I. Nov. 2, 2009)

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
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Decided: November 3, 2009
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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
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(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)

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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
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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.
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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

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