Ex Parte Flick

Board of Patent Appeals and Interferences

Apr 7, 2009

11183223 (B.P.A.I. Apr. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH E. FLICK
____________

Appeal 2009-1384
Application 11/183,223
Technology Center 2600
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Decided:1 April 7, 2009

____________

Before JOHN A. JEFFERY, CARLA M. KRIVAK, and
KARL D. EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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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2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellant invented a system for tracking vehicles via position data
received from vehicles. Specifically, the vehicle tracker includes a cellular
transceiver at the vehicle for receiving an activation message from a cellular
network. The activation message includes (1) a common telephone number
for plural vehicle trackers, and (2) a unique identification number for a
particular vehicle tracker. A controller at the vehicle causes the transceiver
to transmit the vehicle’s location data if the received activation message
matches the unique identification number for that particular vehicle tracker.2
Claim 1 is illustrative:
1. A vehicle tracker comprising:

a cellular transceiver at a vehicle for receiving an activation message
from a cellular communications network, the activation message comprising
a common telephone number for a plurality of vehicle trackers and a unique
identification number for the vehicle tracker;

a vehicle position-determining device at the vehicle; and

a controller at the vehicle cooperating with said cellular transceiver
and said vehicle position-determining device for transmitting vehicle
location data if the unique identification number in the received activation
message matches the unique identification number for the vehicle tracker.

2 See generally Abstract; Spec. ¶ 0009; Fig. 1.
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The Examiner relies on the following prior art references to show
unpatentability:
Aires US 4,649,385 Mar. 10, 1987
Mansell US 5,223,844 Jun. 29, 1993
Ladner US 6,331,825 B1 Dec. 18, 2001
Boivin US 2003/0092435 A1 May 15, 2003
Duvall US 2006/0007039 A1 Jan. 12, 2006
(filed Jul. 8, 2004)

1. The Examiner rejected claims 1, 5, 6, 13, 14, 19, 20, 22, 23, and 26
under 35 U.S.C. § 103(a) as unpatentable over Ladner, Aires, and
Duvall (Ans. 3-6).
2. The Examiner rejected claims 2-4, 8-11, 16-18, and 25 under
35 U.S.C. § 103(a) as unpatentable over Ladner, Aires, Duvall, and
Boivin (Ans. 6-9).
3. The Examiner rejected claims 7, 21, and 27 under 35 U.S.C. § 103(a)
as unpatentable over Ladner, Aires, Duvall, and Mansell (Ans. 9).
4. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Ladner, Aires, Duvall, Boivin, and Mansell (Ans.
10).
5. The Examiner rejected claims 15 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Ladner, Aires, Duvall, and Tendler (Ans. 10-11).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by

3 Throughout this opinion, we refer to the Appeal Brief filed Aug. 8, 2007,
and the Examiner’s Answer mailed Nov. 2, 2007.
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Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE OBVIOUSNESS REJECTION OVER LADNER, AIRES, AND DUVALL
Regarding representative claim 1,4 the Examiner finds that Ladner
discloses all of the claimed subject matter except for receiving a message
comprising a common telephone number and a unique identification
number. The Examiner, however, relies on Aires for this feature in
concluding the feature would have been obvious (Ans. 4-5). According to
the Examiner, such a combination would enable locating a particular person
or vehicle from a large group (Ans. 12-13).
The Examiner also finds that these references do not disclose that the
message is an activation message with a unique identification number, and
transmitting the location data if the identification number matches that of the
vehicle tracker. The Examiner, however, relies on Duvall for this feature in
concluding that this feature would have been obvious (Ans. 5).
Appellant argues that the Examiner’s combining Aires with Ladner is
improper. According to Appellant, there is no need to modify Ladner’s
paging feature to have a unique identification number to locate a particular
device from a large group of devices as the Examiner proposes since each
locator device in Ladner already has a cellular transceiver for that very
purpose (Br. 10). Appellant adds that modifying Ladner’s pager as the

4 Appellant argues claims 1, 5, 6, 13, 14, 19, 20, 22, 23, and 26 together as a
group. See Br. 8-12. Accordingly, we select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(vii).

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Examiner proposes would change Ladner’s principle of operation since the
Examiner essentially proposes transforming Ladner’s pager from a one-way
broadcast communication to an individual communication (Br. 11).

The issues before us, then, are as follows:

ISSUES
Under § 103, has Appellant shown that the Examiner erred in
combining the teachings of Ladner, Aires, and Duvall to arrive at the
invention of representative claim 1? This main issue turns on the following
related issues:
(1) Is the Examiner’s reason to combine the teachings of Aires with
Ladner, namely to provide a unique identification number in Ladner’s
paging technique to locate a particular unit from a group of units, supported
by articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion?
(2) Would incorporating a unique identification number in Ladner’s
paging technique as the Examiner proposes change Ladner’s principle of
operation such that Ladner’s system would be unsuitable for its intended
purpose?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:

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Ladner
1. Ladner discloses a mobile locator system 10 using pager and
cellular communication. The system comprises a locator device 32, a
communication station, satellite communication system 14, satellite uplink
station 20, cue paging network 22, cellular communication towers 16, a
control center 24, and a computerized interface at the control center. The
locator system provides bi-directional communication between the
communication station and the locator device via the computerized interface
and via the computer network. (Ladner, col. 1, ll. 13-17; col. 2, ll. 2-10,
25-38; Fig. 1.) A block diagram of Ladner’s mobile locator system is shown
below:

Block Diagram of Ladner’s Mobile Locator System Shown in Figure 1

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2. To track a particular vehicle, a particular locator device 32 is
installed in a vehicle (e.g., a semi tractor or trailer). Each of the locator
devices (1) determines its position via information received from Global
Positioning System (GPS) satellite 12, and (2) transmits location information
to control center 24 via a cellular data transmission through cellular network
16, public switched telephone network (PSTN) 18, and modems 34. (Ladner,
col. 2, ll. 32-46; col. 3, ll. 8-19; Fig. 1.)
3. Control center 24 communicates with locator device 32 either via
paging or cellular communication. For example, the control center may
receive position information from a locator device for tracking purposes.
Also, the control center may initiate a one-way or two-way voice or data
communication with the locator device. (Ladner, col. 5, l. 64 − col. 6, l. 17;
Fig. 1.)
4. In one embodiment, group communication with plural locator
devices 32 is accomplished via paging. However, “where a specific voice or
data communication is to go to only one locator device 32, and the customer
wishes to initiate bi-directional communication, the cellular network may be
better suited for that type of communication.” (Ladner, col. 4, ll. 20-28.)
Aires
5. Aires discloses an electronic locating system for locating a member
of a large population of individual transmitter-receiver units 20 (e.g.,
transmitter-receiver badges worn by persons in particular facilities or
transmitter-receiver units located in automobiles whose location is desired).
To this end, a central station 10 sends a coded message identifying a
particular individual unit to one or more relay stations via power lines 12. In
response, the relay stations 11 send out wake-up signals and radiant energy
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inquiry signals to their respective individual units 20. Upon receipt, the
individual unit identified in the inquiry signal then responds by sending an
acknowledgment signal to its associated relay station which, in turn, sends
identification signals to the central station. The central station then
determines the location of the unit. (Aires, col. 1, ll. 9-17; col. 2, ll. 5-32;
col. 5, l. 5 − col. 8, l. 46; Abstract; Fig. 1.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 127 S. Ct. 1727 (2007), explains:
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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
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KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
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. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
If the Examiner’s proposed modification renders the prior art
unsatisfactory for its intended purpose, the Examiner has failed to make a
prima facie case of obviousness. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984).

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which calls for, in pertinent
part, a vehicle tracker with a cellular transceiver for receiving an activation
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message comprising (1) a common telephone number for plural vehicle
trackers, and (2) a unique identification number for the vehicle tracker.
In reaching this conclusion, we agree with the Examiner (Ans. 12-13)
that, in view of Aires (FF 5), skilled artisans could reasonably provide a
unique identification number in conjunction with a common telephone
number as part of Ladner’s paging system that is intended to broadcast
messages to multiple locator devices. See FF 1 and 4. While Ladner
indicates that the cellular network may be better suited for communications
targeted to a particular locator device (FF 4; emphasis added), Ladner by no
means forecloses using the paging system for targeted communications.
That Ladner uses the term “may” as emphasized above (see id.) only bolsters
this conclusion since the term hardly mandates such an implementation.
In any event, we see no reason why the functionality of claim 1 could
not be implemented, at least in part, by using Ladner’s paging system in
conjunction with the cellular network. As Figure 1 illustrates,
communications are uni-directional from the control center 24 to the locator
device 32 via the cue paging network 22, satellite uplink station 20, satellite
communication system 14, and cellular communication tower 16. See FF 1
(showing arrows in single direction from control center 24 to the locator
device 32 in Figure 1 using this path). In contrast, Figure 1 shows double-
arrows (i.e., indicating bi-directional communication) between the locator
device 32 and the control center for the path that uses a cellular
communication tower 16 and PSTN 18. See FF 1.
Based on this functionality, we see no reason why Ladner’s uni-
directional paging system could not broadcast an activation message with
common telephone number and unique identification number to all locator
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devices. We reach this conclusion emphasizing that Aires teaches, in
essence, “broadcasting” a coded message via power lines 12 to multiple
relay stations with associated transmitter-receiver units to find a particular
unit from numerous units (Id.). That Aires expressly states that these units
can be located in vehicles (FF 5) only bolsters our conclusion that this
teaching would have been applicable to a wireless vehicle location system,
such as that disclosed by Ladner.
Leaving aside the fact that Ladner at least suggests that the paging
system can be used for targeted communications with a particular locator
device as noted above (see FF 4), embedding a unique identifier in the
paging message to essentially function as a control code tailored for a
particular locator device such as that taught by Aires (FF 5) would hardly
render Ladner’s system unsuitable for its intended purpose. That is, we see
no reason why embedding a code recognizable only by a particular locator
device in a broadcasted paging message would otherwise defeat or destroy
Ladner’s uni-directional paging functionality.
The fact that the embedded code may elicit a particular response from
only one locator device (i.e., the targeted device) does not mean that the
other locator devices would not otherwise receive and process the
broadcasted message via the paging system. Indeed, such a message could
contain information relevant to the other locator devices’ operation, but
nonetheless contain the embedded message intended to elicit a response
from a particular locator device. Such a feature would hardly render Ladner
unsuitable for its intended purpose to obviate the Examiner’s prima facie
case of obviousness, see Gordon, 733 F.2d at 902, but would actually
enhance Ladner’s paging functionality by providing the value-added feature
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of targeting particular locator devices in a broadcasted message receivable
by all locator devices. Such an enhancement is tantamount to the predictable
use of prior art elements according to their established functions—an
obvious improvement. See KSR, 127 S. Ct. at 1740.
While the relay stations in Aires use the same communication path
(i.e., power lines 12) to transmit the identification signals back to the control
console 10 (see id.), we see no reason why this fundamental teaching could
not be applied to Ladner’s system. As noted above, Ladner uses a bi-
directional path to enable the locator devices 32 to communicate with the
control center 24, including sending location data from a particular locator
device to the control center for tracking purposes. See FF 2-4. As such, we
see no reason why a particular targeted locator device could not transmit its
location information via this bi-directional path upon receiving a paging
message with control code in the form of an embedded unique identification
number designed to elicit a response from that particular locator device.
That the other locator devices would not respond to this particular embedded
control code in the manner that the targeted locator device would not
otherwise defeat the purpose of the paging message.
Therefore, we find ample reason on this record to combine the
teachings of Aires with Ladner as the Examiner proposes, namely to provide
a unique identification number in Ladner’s paging technique to locate a
particular unit from a group of units. In reaching this conclusion, we find
the Examiner’s position is supported by articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness conclusion.

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For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 5, 6, 13, 14, 19,
20, 22, 23, and 26 which fall with claim 1.

OTHER OBVIOUSNESS REJECTIONS
Likewise, we will sustain the Examiner's obviousness rejections of (1)
claims 2-4, 8-11, 16-18, and 25 over Ladner, Aires, Duvall, and Boivin
(Ans. 6-9); (2) claims 7, 21, and 27 over Ladner, Aires, Duvall, and Mansell
(Ans. 9); (3) claim 12 over Ladner, Aires, Duvall, Boivin, and Mansell (Ans.
10); and (4) claims 15 and 24 over Ladner, Aires, Duvall, and Tendler (Ans.
10-11). We find that Appellant has not particularly pointed out errors in the
Examiner’s reasoning to persuasively rebut the Examiner's prima facie case
of obviousness, but merely reiterates the same arguments made in
connection with representative claim 1 (Br. 12-14). Thus, we are not
persuaded that the Examiner erred in rejecting these claims for the same
reasons discussed above with respect to claim 1. The rejections are therefore
sustained.

CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-27 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-27 is affirmed.
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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)(1)(iv).

AFFIRMED

pgc

CHRISTOPHER F. REGAN, ESQUIRE
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
P.O. Box 3791
Orlando FL 32802-3791