10738936 (B.P.A.I. Jan. 29, 2009)

Ex Parte Ishii

Board of Patent Appeals and InterferencesJan 29, 2009

10738936 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ATSUSHI ISHII _____________ Appeal 2008-6362 Application 10/738,936 Technology Center 2800 ____________ Decided: January 29, 2009 ____________ Before ROBERT E. NAPPI, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-6362 Application 10/738,936 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION Appellant’s claimed invention is directed to “setting an internal clock in a GPS-equipped mobile communication device when the mobile communication device is not in a digital service area” (Spec. 4:6-7) by activating its “GPS receiver to decode a signal from the GPS satellite system” (Spec. 5:3-5) and using GPS time information to adjust its internal clock (Spec. 6:11-13). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method of setting an internal clock in a GPS-equipped mobile communication device when the mobile communication device is not in a digital service area, comprising: powering-up the mobile communication device; determining whether digital service is available, and, if digital service is not available, activating a GPS receiver in the mobile communication device; detecting a GPS time signal from any GPS satellite, and setting the internal clock in the mobile communication device from the GPS time signal. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Appeal 2008-6362 Application 10/738,936 3 Brunts US 5,724,316 Mar. 03, 1998 Lurey US 6,009,130 Dec. 28, 1999 Garin US 6,427,120 B1 Jul. 30, 2002 The following rejections are before us for review: 1. The Examiner rejected claims 1, 2, 4-8, and 10-13 under 35 U.S.C. § 103(a) as being unpatentable over Garin in view of Brunts. 2. The Examiner rejected claims 3 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Garin in view of Brunts and Lurey. OBVIOUSNESS ISSUE The Examiner asserts that “[n]o limitation exists requiring the GPS detector to be inactive when digital service is available” (Ans. 13). Appellant contends that Garin always has a “live” GPS receiver, whereas the method of the invention requires activating the GPS receiver only upon non-receipt of a digital service signal (Br. 4). The issue before us, then, is as follows: Has the Appellant shown that the Examiner erred by determining that Garin teaches “determining whether digital service is available, and, if digital service is not available, activating a GPS receiver in the mobile communications device” as recited in claim 1? Appeal 2008-6362 Application 10/738,936 4 FINDINGS OF FACT The relevant facts include the following: 1. Garin teaches that the wireless communications device comprises a GPS receiver that can be “selectively switched between the standalone mode and at least one other mode for determining a geolocation of the wireless communication device” (col. 2, ll. 37-40). 2. Garin teaches switching to standalone mode when the network traffic is heavy (col. 8, ll. 33-38). PRINCIPLES OF LAW The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is met, then the burden shifts to the Appellants to overcome the prima facie case with argument and/or evidence. Id. The Supreme Court, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), stated that “‘ [r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art.” In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994). Appeal 2008-6362 Application 10/738,936 5 ANALYSIS Has the Appellant shown that the Examiner erred by determining that Garin teaches “determining whether digital service is available, and, if digital service is not available, activating a GPS receiver in the mobile communications device” as recited in claim 1? Claim 1 recites “determining whether digital service is available, and, if digital service is not available, activating a GPS receiver in the mobile communications device” (emphasis added). Garin teaches that the wireless communications device comprises a GPS receiver that can be “selectively switched between the standalone mode and at least one other mode for determining a geolocation of the wireless communication device” (Finding of Fact 1). Garin teaches switching to standalone mode when the network traffic is heavy (Finding of Fact 2). Thus, Garin teaches detecting absence of the digital service and switching to a different mode, but Garin does not teach “activating a GPS receiver” as recited in claim 1. Accordingly, the recited claim 1 limitation of: “if the digital service is not available, activating a GPS receiver,” is not taught by Garin’s always on GPS receiver which switches between different modes (emphasis added). For the above reasons, Appellant has shown error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as well as independent claim 8 which recites commensurate limitations. Furthermore, Brunts and Lurey do not remedy the shortcomings of Garin. We are therefore likewise persuaded of error in the Examiner’s obviousness rejections of claims 2-7 and 9-13 under 35 U.S.C. § 103(a) for similar reasons as these claims depend directly or indirectly from independent claims 1 and 8. Appeal 2008-6362 Application 10/738,936 6 CONCLUSION OF LAW Appellant has shown that the Examiner erred by determining that Garin teaches “determining whether digital service is available, and, if digital service is not available, activating a GPS receiver in the mobile communications device” as recited in claim 1. Appellant has also shown that the Examiner erred in rejecting claims 2-13 over the collective teachings of the cited prior art under § 103. Appeal 2008-6362 Application 10/738,936 7 ORDER The decision of the Examiner to reject claims 1-13 under 35 U.S.C. § 103(a) is reversed. REVERSED ELD SHARP LABORATORIES OF AMERICA, INC 5750 NW PACIFIC RIM BLVD CAMAS, WA 98642