Ex Parte Edge et al

Patent Trial and Appeal Board

May 16, 2014

11471039 (P.T.A.B. May. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN W. EDGE, SVEN FISCHER, and
KIRK BURROUGHS
____________

Appeal 2011-007600
Application 11/471,039
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-7 and 9-60. The Examiner
indicated that claim 8 would be allowable if rewritten in independent form.
(Final Office Action, 40). Appellants appeal from the final rejection under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to "[t]echniques for efficiently providing
location services (LCS) using periodic LCS capabilities of a radio access
network (RAN) . . ." (Spec. ¶ [0006]). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of providing location services, comprising:
[a] sending signaling to a radio access network (RAN) to
initiate periodic reporting of location of a user equipment (UE)
to a client entity, wherein the signaling sent to the RAN
includes periodic location information indicative of when to
send location estimates for the UE to the client entity, and
wherein the RAN coordinates and controls the periodic
reporting of UE location to the client entity; and
[b] for each location reporting indicated by the periodic location
information,
[b1] receiving from the RAN a location estimate for the
UE, and
[b2] sending the location estimate for the UE toward the
client entity, and
[b3] wherein the UE initiates each location reporting by
sending a measurement report to the RAN.
(Steps lettered and disputed limitation emphasized).

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REJECTIONS
R1. Claims 1-7, 11-14, 17, 18, 21, 23-26, 28-31, 33-36, 38, 40, 42,
44-47, 51, 52, 54-56, 59 and 60 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combined teachings of US Patent Application
Publication No. 2005/0020276 A1 ("Maanoja") and US Patent Application
Publication No. 2005/0148340 A1 ("Guyot").
R2. Claims 9, 10, 15, 16, 19 and 20 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combined teachings of Maanoja,
Guyot, and European Patent Application Publication No. EP 1 617686 A1
("Duan").
R3. Claims 22 and 43 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings of Maanoja, Guyot, and US
Patent Application Publication No. 2004/0193707 A1 ("Alam").
R4. Claims 27, 37, 39, and 41 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over the combined teachings of Maanoja, Guyot, and
US Patent 6,313,787 B1 ("King").
R5. Claim 32 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings of Maanoja, Guyot, and US
Patent Application Publication No. 2004/0106414 A1 ("Ewert").
R6. Claims 49, 50, 53, 57 and 58 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combined teachings of Maanoja,
Guyot, and ("King").
R7. Claim 48 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings of Maanoja, Guyot, King and US
Patent Application Publication No. 2005/0136942 A1 ("Timiri").

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Application 11/471,039
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GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the §103
rejection R1 of claims 2-7, 11-14, 17, 18, 21, 23-26, 28-31, 33-36, 38, 40,
42, 44-47, 51, 52, 54-56, 59 and 60 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1
We address the §103 rejections R2-R7 separately, infra.
ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
§103 rejections of the claims. 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 Answer in
response to arguments made in Appellants' Appeal Brief. (Ans. 3-80). We
highlight and address specific findings and arguments below.
R1.
I. Claim 1, limitation [b3]
Regarding the limitation [b3] "wherein the UE initiates each location
reporting by sending a measurement report to the RAN" (emphases added)
of claim 1, Appellants contend:
The role played by Maanoja's RAN 4 in this connection is not
one of a destination, because the RAN 4 merely serves as a

1 Appellants filed a Notice of Appeal on October 13, 2010. The date of
filing the Notice of Appeal determines which set of rules applies to an Ex
Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also MPEP Rev. 8, July 2010.

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conduit for the dedicated signaling connection between the
USER 2 and the LCS Client 10. Id.
(Emphases added; App. Br. 18).
Appellants' contentions are not persuasive because Appellants’
contentions are not commensurate with the scope of the claims. (Id.).
Specifically claim 1 does not recite or require that the RAN is the final
destination of the measurement report, as essentially argued by Appellants.
(Id.). The Examiner finds, and we agree, that Maanoja’s UE sending the
report via (“to”) the RAN (which sends the report to the LCS client), would
have taught or suggested the broadest reasonable interpretation of [b3] "the
UE . . . sending a measurement report to the RAN." (Ans. 47; Maanoja
¶[0043]; Figs. 1 and 2(d)). Specifically, Maanoja’s UE sends the report to
the RAN and the RAN receives the report. (See Maanoja Fig. 1, Maanoja
¶[0043]; Fig. 2(d); Ans. 47). We further note the dedicated signaling
connection argued by Appellants is a non-limiting exemplary embodiment.
(Maanoja ¶[0045]; App. Br. 18). For these reasons, on this record we are
not persuaded the Examiner erred.
II. Claim 1 Hindsight
Regarding claim 1, Appellants further contend:
Appellants further note that the arguments relating to
Maanoja in the Final Office Action and the subsequent
Advisory Action are an attempted hindsight reconstruction of
Appellants' claims that is based on misinterpretation and
mischaracterization of Maanoja. The attempted hindsight
reconstruction fails to consider Maanoja as a whole, as well as
selectively removes pieces of Maanoja's description, and uses
them out of context and in conflict with the remainder of
Maanoja's description.
(App. Br. 18-19).
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Appellants’ contentions are not persuasive because Appellants have
neither addressed the rationale supporting the legal conclusion of
obviousness provided by the Examiner, nor provided any actual evidence of
hindsight by the Examiner. (Id.).
Regarding Appellants’ hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co.,
383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also qualified the
issue of hindsight by stating “[r]igid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” Id.

Hindsight Balancing Test
Here, we see the hindsight question before us as a balancing test:
whether the Examiner’s proffered combination of references is merely:
(1) “the predictable use of prior art elements according to their established
functions” (KSR, 550 U.S. at 417), consistent with common sense; or,
(2) would an artisan reasonably have combined the cited references in the
manner proffered by the Examiner but for having the benefit of the claim to
use as a guide?
After reviewing the respective teachings and suggestions of the cited
references, we find the evidence more strongly supports the first prong of the
balancing test. It is our view that it would have been obvious to an artisan
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having a general knowledge of Radio Access Network technologies to
combine the teachings of Maanoja and Guyot in the manner articulated by
the Examiner in the Answer. (Ans. 3-6, 48-49, 56-57). We find combining
the teachings in the manner proffered by the Examiner would have resulted
in “the predictable use of prior art elements according to their established
functions” (KSR, 550 U.S. at 417), consistent with common sense to
accurately report location data as suggested by the references. (Ans. 6).
We are further mindful that the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR
550 U.S. at 420-21. Here, Appellants have not demonstrated that the
Examiner’s proffered combination would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Furthermore, Appellants have not provided objective evidence
of secondary considerations which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, 725 F.3d 1341,1352 (2013). See also App. Br. 38,
Evidence Appendix, “None.”
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s proffered motivation(s) to combine the references. (Ans. 6).
We therefore sustain the rejection R1 of claim 1 and the associated
claims that fall therewith. See claim grouping supra.

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REJECTIONS R2-R7
Regarding the claims rejected under rejections R2-R7, Appellants
urge these claims are patentable for the reasons previously advanced
regarding claim 1. (App. Br. 20-21). However, we are not persuaded the
Examiner erred regarding the rejection of claim 1 for the same reasons
discussed above. We therefore sustain the Examiner’s rejections R2-R7.

DECISION
We affirm the Examiner's rejections of claims 1-7 and 9-60 under 35
U.S.C. §103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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