Ex Parte Hagens et al

Patent Trial and Appeal Board

Apr 17, 2013

11009216 (P.T.A.B. Apr. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ROBERT A. HAGENS, JOHN A. MORGAN,
and RICHARD D. TERPSTRA
____________

Appeal 2010-010240
Application 11/009,216
Technology Center 2600
____________

Before DEBRA K. STEPHENS, HUNG H. BUI, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-31. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellants’ invention relates to systems and methods for identifying
the location of a communication device, and in particular to systems and
methods for identifying the location of a device originating a communication
and/or providing location information to an emergency services dispatcher.
Spec. ¶2.

CLAIMED SUBJECT MATTER
Claims 1, 16, and 26 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A method for identifying communication origin location
in relation to an emergency response system, the method
comprising:

receiving a network access request associated with a
communication device;

determining a location status of the communication
device indicating whether the communication device has
potentially moved via a communication device stability
module; and

based at least in part on the location status of the
communication device, querying for a location of the
communication device.

REJECTIONS
Claims 1, 2, 4, 10-13, 16, 17, 20, 22-24, 26, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dawson (US
7,177,399) and Dunlap (US 2003/0156577). Ans. 4-10.
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Claims 3, 8, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Dunlap, and Laird (US 2005/0085257). Ans. 10-
12.
Claims 5-7, 21, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dawson, Dunlap, and Nortrup (US 2005/0197767).
Ans. 12-14, 17.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Dunlap, Laird, and Nortrup. Ans. 14-15.
Claims 14, 25, and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dawson, Dunlap, and Livingood (US
2006/0056388). Ans. 15-16.
Claims 15 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Dunlap, and Binning (US 2005/0169438). Ans.
16-17.
ISSUES
Appellants contend that the Examiner’s rejection of independent
claims 1, 16, and 26 under 35 U.S.C. § 103(a) is in error because the
combination of Dawson and Dunlap fails to disclose determining a location
status indicating whether a communication device has potentially moved
and, based at least in part on the location status of the communication
device, querying for a location of the communication device, as recited in
claims 1, 16, and 26. Br. 5-7. Additionally, Appellants argue that the
Examiner’s proposed modification of Dawson would render Dawson
unsatisfactory for its intended purpose. Br. 7-8. These arguments present
the Board with the following issues:
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1) Did the Examiner err in finding that the combination of Dawson
and Dunlap discloses “determining a location status of the
communication device indicating whether the communication
device has potentially moved via a communication device stability
module;” and “based at least in part on the location status of the
communication device, querying for a location of the
communication as recited in claim 1, and commensurately recited
in claims 16, and 26?
2) Did the Examiner improperly combine the teachings and
suggestions of Dawson and Dunlap?
Appellants contend that the Examiner’s rejection of dependent claims
3, 8, and 18 under 35 U.S.C. § 103(a) is in error because one of ordinary
skill in the art would not have found it obvious to combine Dawson, Dunlap
and Laird since the problem sought to be solved in Laird is “markedly
different” from the problems sought to be solved in Dawson and Dunlap.
Br. 8-9. These arguments present the Board with the following issue:
3) Did the Examiner improperly combine the teachings and
suggestions of Dawson, Dunlap, and Laird?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion, Br. 8-9. We adopt as our own the findings and reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief, Ans. 18-21. We highlight and address specific findings and
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arguments regarding independent claims 1, 16, and 26 and dependent claims
3, 8, and 18 for emphasis as follows.

The rejection of claims 1, 2, 4-7, 9-17, and 19-31 under 35 U.S.C.
103(a)
1) First Issue
We agree with the Examiner that the combination of Dawson and
Dunlap discloses the disputed limitations. Ans. 4-5, 18-19. As the
Examiner correctly finds, Dawson discloses updating location information
when the location of a mobile device changes. Ans. 18-19 (citing Dawson
Col. 9, ll. 36-44, 52-56). Regarding Appellants’ contention that the system
of Dawson is different because it regularly updates location information and,
therefore, fails to disclose determining a location status indicating whether a
device has potentially moved, Br. 6, we agree with the Examiner’s finding
that the change of the MAC address of Dunlap that indicates whether a
device has potentially moved. Ans. 19 (citing, e.g., Dunlap ¶23).
Appellants further argue that Dunlap fails to cure the alleged
deficiency of Dawson because Dunlap teaches the use of changing Ethernet
MAC addresses on a switch port to initiate the sending of information
prompts. Br. 7 (citing Dunlap ¶ 7). However, we agree with the Examiner’s
finding that the location status indicating whether a device has potentially
moved, as recited in independent claims 1, 16, and 26 is met by Dunlap’s
disclosure of a change in MAC address potentially resulting from moving a
device. Ans. 19 (citing Dunlap ¶23). First, Appellants’ characterization of
Dunlap does not take into account Dunlap’s disclosure of detecting a change
in an Ethernet MAC address to maintain a physical location of a mobile
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communication device, “[i]n one aspect of the present invention there is
provided a method of maintaining physical location associated with an IP
telephony instrument on a network.” Dunlap ¶7. Additionally, the
Examiner’s finding is consistent with Appellants’ definition of “location
status” in Appellants’ Specification, which states, “[f]urther, as used herein,
the term ‘location status’ is used in its broadest sense to mean any status
about a communication device related to the location of the communication
device.” Spec. ¶ 25. Furthermore, the Examiner’s position is consistent
with the USPTO giving claims their broadest reasonable interpretation. See,
e.g., In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Therefore, we agree with the Examiner that the combination of
Dawson and Dunlap discloses the disputed limitations, as recited in claims 1,
16, and 26.
2) Second Issue
We are not persuaded by Appellants’ contention that the proposed
modification of Dawson would render Dawson unsatisfactory for its
intended purpose, Br. 7. Appellants too narrowly define Dawson’s main
purpose as routing emergency calls without having to store end-user
information. However, even if we were to consider Appellants’ argument,
Dawson states that the location information “can be” transitory, and, as such,
the location information may be valid during the time the call is active.
Dawson Col. 12, ll. 49-55. Additionally, consistent with the Examiner’s
position, Ans. 4, one purpose of Dawson is to determine the location of the
origin of an emergency call, “[t]he present invention relates to a method and
apparatus for determining the geographical location from which an
emergency call originates . . . .” Dawson Col. 1, ll. 11-14. Therefore,
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modifying Dawson with Dunlap’s disclosure of determining a location status
of a communication device would not render the system of Dawson
unsatisfactory for its intended purpose — determining the location of the
origin of an emergency call. We find that modifying Dawson’s disclosure of
updating location information with Dunlap’s disclosure of an indication that
a device has potentially moved is no more than a predictable use of familiar
prior art elements according to their established functions therefore
rendering the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007).
Thus, Appellants have not persuaded us that the Examiner erred in
finding that the combination of Dawson and Dunlap teaches or suggests the
invention as recited in independent claims 1, 16, and 26, and dependent
claims 2, 4-7, 9-15, 17, 19-25, and 27-31, not separately argued, Br. 8-9.
Additionally, Appellants have not persuaded us that the Examiner erred in
combining the teachings and suggestions of Dawson and Dunlap.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claims 1, 2, 4-7, 9-17, and 19-31 under 35 U.S.C. § 103(a) and, therefore, we
sustain that rejection.
The rejection of claims 3, 8, and 18 under 35 U.S.C. 103(a)
We also are not persuaded by Appellants’ contention that one of
ordinary skill in the art would not have found it obvious to combine
Dawson, Dunlap and Laird because the problem sought to be solved in Laird
is “markedly different” from the problems sought to be solved in Dawson
and Dunlap, Br. 8-9. Contrary to Appellants’ contention, as the Examiner
finds, Ans. 11, like Dawson and Dunlap, Laird discloses providing location
information about a device for the dispatch of emergency services, see, e.g.,
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Laird Abstract. Additionally, contrary to Appellants’ argument that Laird
deals with a different problem of “sending messages out” to devices, Br. 8,
as the Examiner finds, Laird discloses the handset sending updates, Ans. 20
(citing e.g., Laird ¶ 92). Thus, Appellants have not persuaded us that the
Examiner erred in combining the teachings and suggestions of Dawson,
Dunlap, and Laird. Accordingly, we are not persuaded of error in the
Examiner’s rejection of claims 3, 8, and 18 under 35 U.S.C. § 103(a) and,
therefore, we sustain that rejection.

DECISION
We affirm the Examiner’s rejection of claims 1-31.
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).

AFFIRMED

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