Ex Parte Janky et al

Patent Trial and Appeal Board

Aug 21, 2017

13403775 (P.T.A.B. Aug. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/403,775 02/23/2012 James M. Janky 089730-033100US-0310105 6419
112877 7590 08/23/2017
Kilpatrick Townsend & Stockton LLP
Trimble Navigation Limited
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
MCGUE, FRANK J
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. JANKY, ULRICH VOLLATH, and
NICHOLAS C. TALBOT
Appeal 2015-002850
Application 13/403,775
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James M. Janky et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—35, which are
the pending claims. See Appeal Br. 36. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Trimble
Navigation Ltd. Appeal Br. 1.
Appeal 2015-002850
Application 13/403,775
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “the field of satellite
navigation systems.” Spec. 12. Claims 1, 11, 19, and 27 are independent.
Claim 1, reproduced below with emphasis added, is illustrative of the subject
matter on appeal.
1. A method for delivery of location-dependent time-
specific corrections, said method comprising:
generating a first extended-lifetime correction for a first
region;
using a pre-defined distribution timetable to determine a
time for transmitting said first extended-lifetime correction to
said first region; and
transmitting said first extended-lifetime correction via a
wireless communication network to said first region in
accordance with said pre-defined distribution timetable.
EVIDENCE
The Examiner relied
appeal:
on the following evidence in rejecting the claims
Zhodzishsky US 6,337,657 B1 Jan. 8, 2002
Kawai US 2004/0233861 A1 Nov. 25, 2004
Altomare US 7,249,075 B1 July 24, 2007
Johnson US 2009/0061898 A1 Mar. 5, 2009
Tysowski US 7,633,438 B2 Dec. 15,2009
Chen US 7,755,542 B2 July 13,2010
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Application 13/403,775
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 4—12, 16—19, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tysowski, Johnson, and
Kawai or Altomare. Final Act. 2—6.
II. Claims 2, 3, 13—15, 20-23, 25—32, and 34 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tysowski,
Johnson, Kawai or Altomare, and Zhodzishsky.2 Id. at 6—12.
III. Claims 33 and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tysowski, Johnson, Kawai or
Altomare, Zhodzishsky, and Chen. Id. at 12—13.
ANALYSIS
Rejection I— Claims 1, 4^12, 16—19, and 24 as unpatentable
over Tysowski, Johnson, and Kawai or Altomare
Claims 1 and 4—10
Appellants present arguments against the rejection of independent
claim 1, and do not present any additional substantive arguments for
dependent claims 4—10. See Appeal Br. 8—15; Reply Br. 2—8. We select
claim 1 as representative of the issues that Appellants present together, with
claims 4—10 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
2 We note that claims 33 and 35 are included in the headings, but not in
the body, of Rejection II (see Final Act. 6, 10); instead, these claims are
included in the heading and the body of Rejection III (see id. at 12—13). We
treat the listing of claims 33 and 35 within the headings of Rejection II as an
inadvertent and harmless error, we omit these claims from Rejection II
herein, and we refer to these claims as subject to Rejection III herein.
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Application 13/403,775
Claim 1 recites, in relevant part, “using a pre-defmed distribution
timetable to determine a time for transmitting said first extended-lifetime
correction.” Appeal Br., Claims App. The Examiner determined that a
combination of teachings from Tysowski, Johnson, and Kawai or Altomare
renders obvious this limitation of claim 1. Final Act. 2—3; Ans. 14—18.
Appellants contend that the rejection is improper because there is no
motivation to combine the teachings of Tysowski with those of Johnson and
Kawai. See Appeal Br. 8—14; Reply Br. 2—8. Specifically, Appellants argue
that Tysowski teaches a method of downloading ephemeris correction data
based on user activity, where the method reduces costs compared to regular,
predetermined downloads of the data, and, thus, Tysowski teaches away
from “using a pre-defmed distribution timetable to determine a time for
transmitting said first extended-lifetime correction.” Appeal Br. 9—10 (citing
Tysowski, col. 6,11. 41—46, col. 7,11. 53—60); Reply Br. 4—6.
Appellants’ arguments do not apprise us of error in the Examiner’s
conclusion of obviousness. A reference teaches away from a claimed
invention when a person of ordinary skill, “upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). But “[t]he
degree of teaching away will of course depend on the particular facts.” Id.
Something that is known in the prior art “does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use.” Id. And “[j]ust because better alternatives exist in the prior
art does not mean that an inferior combination is inapt for obviousness
purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citing In re
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Gurley, 27 F.3d at 553). When considering obviousness, “[rjigid
preventative rules that deny factfinders recourse to common sense . . . are
neither necessary under our case law nor consistent with it.” KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, although Tysowski teaches that “intelligent downloading” of
ephemeris data based on user activity may be a more cost efficient method
(Tysowski, col. 7,11. 53—60), it was, nonetheless, known in the prior art to
use a predetermined interval to download the data {id. at col. 2,11. 44-49).
Tysowski’s statements that downloading data at regular, predetermined
intervals is “not optimal,” or may be “often wasteful” depending on usage,
are not sufficiently discouraging to render the prior art inapt for obviousness
purposes. Id. at col. 2,11. 44-46, col. 6,11. 44-46; contra Appeal Br. 9-10;
Reply Br. 5—6. As the Examiner states, “[tjhere is nothing in Tysowski
which indicates that use of a predetermined timetable is not technically
feasible.” Ans. 16. Therefore, we are not apprised of error in the
Examiner’s conclusion that transmitting correction data using a pre-defmed
distribution interval, albeit possibly inferior in some respects relative to
other methods, would have been obvious to one of ordinary skill in the art in
light of the teachings of Tysowski. See In re Gurley, 27 F.3d at 553; In re
Mouttet, 686 F.3d at 1334.
Appellants further contend that there is no motivation to combine the
teachings of the cited art because downloading correction data according to a
pre-defmed distribution timetable would change the principle of operation of
Tysowski’s “intelligent downloading of ephemeris tailored to the specific
usage patterns of the user rather than unintelligently downloading ephemeris
at fixed, predetermined intervals.” Appeal. Br. 10 (citing Tysowski, col. 4,
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Application 13/403,775
11. 58—62) (emphasis omitted). We are not apprised of error by Appellants’
contention. Tysowski’s basic principle of operation involves transmitting
extended ephemeris data to predict the future paths of satellites. See
Tysowski, col. 1,11. 11—14; col. 2,11. 28-43. Appellants do not provide
factual evidence or persuasive technical reasoning to explain why a method
of transmitting correction data at a pre-defmed distribution interval would
destroy this general principle or yield anything other than a result that would
have been predictable to one of ordinary skill in the art. See KSR Int 7 Co.,
550 U.S. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). Even if the proposed modification were to affect the interval of
data transmission in Tysowski (e.g., such that updates were not as frequent),
Appellants do not explain why the effect would change the fundamental
principle of operation of the device such that it would no longer function to
transmit extended ephemeris data.
Appellants argue that the combination of Tysowski and Kawai, “or
any other reference which discloses the use of a predefined distribution
timetable,” is improper for the same reasons as discussed supra (i.e., that
Tysowski teaches away from the combination and the combination changes
the principle of operation). Appeal Br. 13—14. Appellants do not challenge
the Examiner’s factual findings regarding Kawai—specifically, that Kawai
teaches a pre-defmed distribution timetable. See Final Act. 3 (citing Kawai
171). In light of our discussion supra that Tysowski does not teach away
and its principle of operation is not altered, we are not apprised of error in
the Examiner’s conclusion that the combination of Tysowski’s method of
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Application 13/403,775
transmitting extended ephemeris data according to Kawai’s pre-defmed
distribution timetable renders obvious the limitations of claim 1. See id.
Appellants assert that Johnson’s method, which determines broadcast
locale, broadcast time, and broadcast interval, does not inherently teach a
pre-defmed distribution timetable for transmitting correction data (Appeal
Br. 10-11), because “there is no indication by Johnson that the broadcast
interval is used to indicate when another broadcast will be sent, or that the
extended correction is sent automatically or iteratively” (Reply Br. 6—7).
We are not apprised of Examiner error because “[a] person of ordinary skill
is also a person of ordinary creativity, not an automaton.” KSR Int’l Co.,
550 U.S. at 421. The analysis under § 103(a) presumes not only common
sense, but also skill in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985). Appellants acknowledge that “no specialized knowledge or training
is required to make a timetable; one simply needs to know what event is to
happen and when that will occur. Thus,. . . Appellants submit that one of
ordinary skill in the art would understand how to construct a pre-defmed
distribution timetable.” Reply Br. 3.
Therefore, based on a preponderance of the evidence, we agree with
the Examiner’s finding that a person of ordinary skill in the art, using routine
skill, would have been able to construct a pre-defmed distribution timetable
using the broadcast locale, broadcast time, and broadcast interval of
Johnson. See Final Act. 2—3; Ans. 16—17. We are not apprised of error in
the Examiner’s conclusion that the combination of Tysowski and Kawai,
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along with these cumulative teachings of Johnson’s pre-defmed distribution
timetable, renders obvious the limitations of claim l.3
Appellants also contend that Altomare is directed to a method for
administering financial instruments, which is asserted to be non-analogous
to the field of satellite navigation. See Appeal Br. 14. However, the
Examiner’s rejection incorporating Altomare was written in the alternative
(i.e., Tysowski, Johnson, and Kawai or Altomare). See Final Act. 2. As
discussed supra, the teachings relied on from Tysowski, Johnson, and Kawai
are sufficient to sustain the Examiner’s rejection of claim 1, regardless of
whether Altomare’s additional teachings are considered analogous art.
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness for claim 1. Accordingly, we
sustain the rejection of independent claim 1, and of dependent claims 4—10
falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over
Tysowski, Johnson, and Kawai or Altomare.
Claims 11, 12, 16—18, 19, and 24
Appellants argue for independent claims 11 and 19 on similar grounds
as for independent claim 1. Compare Appeal Br. 8—15, with id. at 16—28;
3 Further, we note that Tysowski’s disclosure alone—namely, the
generating and downloading relevant data “at regular, predetermined
intervals” (see Tysowski, col. 2,11. 28—34, 44-49)—may sufficiently teach a
pre-defmed distribution timetable, for which the Examiner relied on Johnson
and Kawai (see Final Act. 3); regardless, the reliance on multiple references
to teach this known feature (even if unnecessary) does not diminish the
Examiner’s conclusion of obviousness as presented in the rejection.
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see also Reply Br. 2—8. For the reasons discussed supra with respect to
independent claim 1, we are not apprised of error in the Examiner’s rejection
of claims 11 and 19. Appellants do not provide any additional substantive
arguments for dependent claims 12, 16—18, or 24, which fall with claims 11
and 19. Accordingly, we likewise sustain the rejection of claims 11, 12,
16—18, 19, and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Tysowski, Johnson, and Kawai or Altomare.
Rejection II— Claims 2, 3, 13—15, 20—23, 25—32, and 34 as unpatentable
over Tysowski, Johnson, Kawai or Altomare, and Zhodzishsky
Appellants contend that Zhodzishsky does not cure the alleged
deficiencies of Tysowski, Johnson, and Kawai or Altomare argued with
respect to independent claims 1,11, and 19. See Appeal Br. 29-33. For the
reasons discussed supra, we are unpersuaded of a deficiency with respect to
the rejection of independent claims 1,11, and 19, such that Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness for Rejection II. Accordingly,
we sustain the rejection of claims 2, 3, 13—15, 20-23, 25—32, and 34 under
35 U.S.C. § 103(a) as being unpatentable over Tysowski, Johnson, Kawai or
Altomare, and Zhodzishsky.
Rejection III— Claims 33 and 35 unpatentable
over Tysowski, Johnson, Kawai or Altomare, Zhodzishsky, and Chen
Appellants contend that Chen does not cure the alleged deficiencies of
Tysowski, Johnson, Kawai or Altomare, and Zhodzishsky argued with
respect to independent claim 27. See Appeal Br. 33—35. For the reasons
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discussed supra, we are unpersuaded of a deficiency with respect to the
rejection of independent claim 27, such that Appellants’ arguments do not
apprise us of error in the Examiner’s findings or reasoning in support of the
conclusion of obviousness for Rejection III. Accordingly, we sustain the
rejection of claims 33 and 35 under 35 U.S.C. § 103(a) as being
unpatentable over Tysowski, Johnson, Kawai or Altomare, Zhodzishsky, and
Chen.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 4—12,
16—19, and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Tysowski, Johnson, and Kawai or Altomare.
We AFFIRM the Examiner’s decision rejecting claims 2, 3, 13—15,
20-23, 25—32, and 34 under 35 U.S.C. § 103(a) as being unpatentable over
Tysowski, Johnson, Kawai or Altomare, and Zhodzishsky.
We AFFIRM the Examiner’s decision rejecting claims 33 and 35
under 35 U.S.C. § 103(a) as being unpatentable over Tysowski, Johnson,
Kawai or Altomare, Zhodzishsky, and Chen.
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)(l)(iv).
AFFIRMED
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