Ex Parte Kammer

Board of Patent Appeals and Interferences

Oct 30, 2007

10006952 (B.P.A.I. Oct. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID KAMMER
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Appeal 2007-2355
Application 10/006,952
Technology Center 2600
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Decided: October 30, 2007
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Before JOSEPH L. DIXON, ANITA PELLMAN GROSS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-6 and 8-31. Claim 7 has been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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Application 10/006,952

THE INVENTION
The disclosed invention relates generally to a method of
communicating between a handheld computer and other local area
computing devices having wireless communication capability. More
particularly, the disclosed invention relates to a method that includes
providing a handheld computer, identifying a number of other local area
computing devices having wireless communication capability, creating an
identifier for one or more of the plurality of other local area computing
devices, and listing each identifier on a display, wherein the list is sorted in
order of at least one of the distance and direction from the handheld
computer (Specification 3-4).
Independent claim 1 is illustrative:
1. A method of communicating between a handheld
computer and other local area computing devices having
wireless communication capability, comprising the steps of:

providing a handheld computer;

identifying a plurality of other local area computing
devices having wireless communication capability;

creating an identifier for one or more of the plurality of
other local area computing devices;

listing each identifier on a display, wherein the list is
sorted in order of at least one of distance and direction from the
handheld computer; and

selecting one or more of the listed identifiers and sharing
information with the local area computing device corresponding
to the chosen identifier.
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THE REFERENCES
Bork US 6,246,376 B1 June 12, 2001
Kikinis US 6,389,290 B1 May 14, 2002
Hendrey US 6,542,750 B2 Apr. 1, 2003
THE REJECTIONS
Claims 1-5, 8-13, 15-21, and 23-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the teachings of Bork in view of
Hendrey.
Claims 6, 14, 22, 30, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Bork in view of Hendrey, and
further in view of Kikinis.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.
PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellant has the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
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Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellant’s Briefs to show error in the proffered prima facie case.

ANALYSIS
Combinability under section 103
We begin our analysis by deciding the threshold question of whether
Appellant has shown the Examiner has failed to articulate an adequate
reasoning with a rational underpinning to support the proffered
combinability of Bork and Hendrey.1
Appellant contends there is no suggestion to combine the references
because the Examiner’s proposed combination of Bork and Hendrey would
change Bork’s principal of operation (App. Br. 14).
Appellant notes that Bork’s system displays the direction and distance
to an object or person on a wireless device (See e.g., Bork col. 7, ll. 4-6:
“[t]he graphic display 114 is preferably capable of supporting a clear arrow
indicating the target direction, as well as its estimated distance.”). Appellant
notes that Bork also teaches alternative means of indicating distance and
direction, such as audible or touch sensitive devices (See Bork, col. 6, lines

1 “[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Moreover, “‘there must be
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
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39-44). Thus, Appellant concludes that Bork is primarily concerned with
providing specific distance and direction information to a user (App. Br. 14).
In contrast, Appellant notes that Hendrey’s connections are initiated
between two or more mobile telecommunications users based on predefined
criteria without providing specific distance or direction information to the
user (See Hendrey, col. 5, ll. 21-25; see also col. 7, ll. 9-12). Appellant
notes that Hendrey’s user merely provides the predefined criteria used to
identify callees with whom a connection is then automatically initiated.
Thus, Appellant contends that Hendrey’s approach is a substantial change in
operation from Bork’s system, where specific distance and direction
information is provided to a user. Appellant contends that applying the
concepts of Hendrey to Bork’s device would eliminate displaying the
desired direction and distance information which is a central feature of Bork.
Thus, Appellant concludes the Examiner has failed to establish a prima facie
case of obviousness (App. Br. 14-15).
The Examiner disagrees (Ans. 22). The Examiner notes that Hendrey
specifically teaches the use of global positioning systems, time difference of
arrival (TDOA), and angle of arrival (AOA) for determining the location of
telecommunication users (See Hendrey, col. 5, ll. 26-41). The Examiner
further notes that Hendrey teaches notions of distance, as follows:
notions of distance are in particular intended to encompass not
only literal distance measure, but additionally any and all
measures conducive to identifying a set of users who would

person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741
(quoting In re Kahn, 441 F.3d at 988).
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have the least difficult separation to overcome in order to attend
a physical group meeting.
(Hendrey, col. 8, ll. 56-67).
Thus, the Examiner finds the teachings of Hendrey coincide with the
teachings of Bork “in that not only the physical distance between mobile
devices is taken into account but also the path of least resistance when
determining a place for a physical group meeting between the mobile users.”
(Ans. 23, see Bork Fig. 2, col. 4, l. 54 through col. 5, l. 67; see also Hendrey,
col. 8, ll. 56-67). The Examiner concludes the combined teachings of Bork
and Hendrey would have lead an artisan to a mobile device that allows for
the searching, sorting and connection of users located proximate to each
other, while “taking into account the distance, direction and path of least
resistance between the mobile devices.” (Ans. 23, see Bork Fig. 2, col. 4, l.
54 through col. 5, l. 67; see also Hendrey, col. 6, l. 1 through col. 7, l. 3, col.
8, ll. 56-67, col. 9, ll. 45-53, col. 10, ll. 1-39, and col. 12, ll. 38-56).
We agree with the Examiner that Bork and Hendrey are properly
combinable for essentially the same reasons stated in the Answer. We find
Hendrey’s matchmaking feature would have enhanced Bork’s system which
displays the direction and distance to another person’s wireless device.
Once the direction and distance to a particular person’s wireless device was
located by Bork’s system (as described at column 2, lines 25-35), Hendrey’s
matchmaker system would have determined how well the user attributes
match each other, as described at column 10, lines 1-21. Significantly, the
combined system proffered by the Examiner would provide the user with
both distance and direction information. While both Bork and Hendrey
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provide distance information, only Bork provides direction information (See
Bork, col. 2, l. 32). In addition, Bork would have provided continuous
direction and distance updates (e.g., when one or both persons were moving)
when combined with the teachings of Hendrey (See Bork, col. 2, ll. 33-35).
Thus, we find Bork and Hendrey have complementary features that would
have reasonably lead an artisan having ordinary skill and common sense to
combine their teachings in the manner suggested by the Examiner. Our
reviewing court has stated: “[t]he use of patents as references is not limited
to what the patentees describe as their own inventions or to the problems
with which they are concerned. They are part of the literature of the art,
relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir.
1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)).
Therefore, we find Appellant’s argument that Hendrey would change Bork’s
principal of operation to be unsupported by the evidence.
Moreover, after carefully considering the record before us, we
conclude the Examiner’s proffered combination of Bork and Hendrey
reasonably teaches and/or suggests Appellant’s claimed invention in terms
of familiar elements (e.g., cell phones, GPS location systems, and
BLUETOOTH short-range wireless communication systems) that would
have been combined by an artisan having ordinary skill and common sense
using known methods to achieve a predictable result at the time of the
invention. See KSR, 127 S. Ct. at 1739-40. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Leapfrog Enter., Inc. v. Fisher-
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Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at
1739-40).
For at least the aforementioned reasons, we conclude the Examiner
has articulated an adequate reasoning with a rational underpinning that
reasonably supports the proffered combinability of Bork and Hendrey.

Elements under section 103
Claims 1-5
We consider the Examiner’s rejection of claims 1-5 as being
unpatentable over the teachings of Bork in view of Hendrey. Since
Appellant’s arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we will select
independent claim 1 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2005).
Appellant argues that the combination of Bork and Hendrey does not
teach or suggest the recited limitations of:
listing each identifier on a display, wherein the list is
sorted in order of at least one of distance and direction from the
handheld computer;
(Claim 1; see also App. Br. 7).
Referring to the portions of Hendrey cited by the Examiner, Appellant
contends that Hendrey, at column 9, line 54 through column 10, line 21,
teaches a user initiates a matchmaking request, and a separate matchmaker
107 creates a list of best matches using information that is not provided to
the user for display (App. Br. 8). Thus, Appellant contends that Hendrey’s
matchmaking system simply initiates a connection after identifying a callee
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without displaying a list to the user. With regard to Fig. 2 and item 222,
Appellant submits Hendrey teaches that group members within a maximum
distance are selected, but does not teach that members of a group list 220 are
sorted in group list 220 based on distance values in distance entry 222. Thus,
Appellant concludes the combination of Bork and Hendrey does not teach or
suggest listing identifiers on a display where the list is sorted in order of
distance and/or direction, as required by the language of claim 1 (App. Br.
8).
The Examiner disagrees. The Examiner notes that a step of “sorting”
is not claimed, only that the displayed list is sorted by distance or direction
(See Claim 1). The Examiner points out that in the case where only two
contacts meet the criteria, the lists would be inherently sorted (either sorted
greatest to lowest or lowest to greatest), as broadly claimed. In the example
shown in Hendrey's Fig. 2 (i.e., a list with two entries), the Examiner
submits that regardless of the two values shown, Hendrey’s list of two
entries is either sorted greatest to lowest or lowest to greatest (distance), and
therefore clearly meets the broadly claimed “sorted” limitation (Ans. 13).
The Examiner acknowledges that Hendrey’s matchmaker is automated in the
embodiment argued by Appellant (Ans. 15). However, the Examiner notes
that Hendrey teaches an alternate embodiment, at column 12, lines 52-56,
where a person performs the matchmaker functions. Regarding displaying
the list of callees, the Examiner reasons that a person cannot efficiently
manipulate lists of user identifiers and relative distances without such data
lists being shown on the display of the wireless device (e.g., a cell phone)
(Ans. 15).
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After carefully examining the record before us, we find the weight of
the evidence supports the Examiner’s position. In particular, we find
Appellant has narrowly focused on the automated matchmaking embodiment
taught by Hendrey (See e.g., Hendrey, col. 14, ll. 54-59). However, as
pointed out by the Examiner, Hendrey expressly teaches an alternate
embodiment where the matchmaker may be a person:
In one embodiment the matchmaker 107 may be automated.
However, in alternate embodiments matchmaker 107 may be
partially or entirely a person using a telecommunication device
and having access to distance information provided by
telecommunication infrastructure 120.
(Hendrey, col. 12, ll. 53-56).

Hendrey teaches an embodiment where a list of possible
matches (i.e., callees) is sorted by proximate distance from the device:
Next, in step 703, matchmaker 107 accesses user attribute
profile information 131 and creates a list of the best matches
between the initiator and other users who have registered with
the matchmaker 107. This list may be sorted in order of best
match first for later processing, or may be sorted by proximate
distance of possible matches.
(Hendrey, col. 10, ll. 1-6).

The invention may use any matchmaking process responsive to
both attributes and distance. As a first example, potential
matches could alternately be sorted by distance and then
selected in distance order responsive to meeting a minimum
match score.
(Hendrey, col. 12, ll. 6-11).

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Regarding the issue of whether Hendrey displays the list of matches to
the user, we note that Hendrey expressly discloses examples of mobile
telecommunication units (MUs or TUs) as “cell phones and other related
devices.” (Hendrey, col. 1, ll. 22-23). Therefore, we agree with the Examiner
that the only reasonable way for a person to perform matchmaker functions
using Hendrey’s mobile telecommunication units is by use of the device
display. Therefore, as an issue of fact, we find the weight of the evidence
supports our finding that Hendrey teaches and/or suggests conveying the
sorted list information to a person via the cell phone display in the
embodiment where the person is the matchmaker (See Hendrey, col. 12, ll.
53-56).
For at least the aforementioned reasons, we find the proffered
combination of Bork and Hendrey reasonably teaches and/or suggests the
recited limitations of “listing each identifier on a display, wherein the list is
sorted in order of at least one of distance and direction from the handheld
computer;” (Claim 1). We have addressed the combinability of Bork and
Hendrey supra. Thus, we find Appellant has failed to rebut the Examiner’s
legal conclusion of obviousness by establishing insufficient evidence of
prima facie obviousness or evidence of secondary indicia of
nonobviousness. Therefore, we sustain the Examiner’s rejection of
independent claim 1 as being unpatentable over Bork in view of Hendrey.
Appellant has not presented any substantive arguments directed to the
separate patentability of dependent claims 2-5. Therefore, we sustain the
Examiner’s rejection of claims 2-5 as being unpatentable over Bork in view
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of Hendrey for the same reasons discussed supra with respect to claim 1. See
In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R.
§ 41.37(c)(1)(vii)(2005).

Claims 8-13 and 15
We consider next the Examiner’s rejection of claims 8-13 and 15 as
being unpatentable over the teachings of Bork in view of Hendrey. Since
Appellant’s arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we will select
independent claim 8 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2005).
Appellant argues that the combination of Bork and Hendrey does not
teach or suggest the recited limitations of:
listing the one or more local area computing devices on a
display, wherein the list is sorted in order of at least one of
distance and direction from the handheld computer;
(Claim 8; see also App. Br. 9).
We will sustain the Examiner’s rejection of representative claim 8 for
essentially the same reasons set forth by the Examiner in the Answer, and
also as discussed above regarding claim 1. In particular, we find the list of
callee phone numbers (221) shown in Hendrey’s Figure 2 represents the
callee mobile phones (i.e., computing devices). We have previously
addressed the issue of the display and the sorted list in the discussion of
independent claim 1. Thus, we find the proffered combination of Bork and
Hendrey teaches and/or suggests “listing the one or more local area
computing devices on a display,” as claimed (Claim 8; see also Hendrey,
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col. 6, l. 36). Therefore, we sustain the Examiner’s rejection of
representative claim 8 as being unpatentable over Bork in view of Hendrey.
Appellant has not presented any substantive arguments directed to the
separate patentability of dependent claims 9-13 and 15. Therefore, we
sustain the Examiner’s rejection of claims 9-13 and 15 as being unpatentable
over Bork in view of Hendrey for the same reasons discussed supra with
respect to claim 8. See In re Young, 927 F.2d at 590. See also 37 C.F.R.
§ 41.37(c)(1)(vii)(2005).

Claims 16-21 and 23
We consider next the Examiner’s rejection of claims 16-21 and 23 as
being unpatentable over the teachings of Bork in view of Hendrey. Since
Appellant’s arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we will select
independent claim 16 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2005).
Appellant argues that the combination of Bork and Hendrey does not
teach or suggest the recited limitations of:
wherein the processor instructs the display to list a plurality of
other computing devices located within a range of the
transmitter, sorted in order of at least one of the distance and
the direction from the wireless communication device;
(Claim 16; see also App. Br. 11).
We will sustain the Examiner’s rejection of representative claim 16
for essentially the same reasons set forth by the Examiner in the Answer,
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and also as discussed above regarding independent claims 1 and 8. We find
a processor is inherent in the mobile phones used by both Bork and Hendrey.
We find the list of callee phone numbers (221) shown in Hendrey’s Figure 2
represents the callee mobile phones (i.e., computing devices). Thus, we find
the proffered combination of Bork and Hendrey teaches and/or suggests
“wherein the processor instructs the display to list a plurality of other
computing devices located within a range of the transmitter,” as claimed
(Claim 16; see also Hendrey, col. 6, l. 36). We have previously addressed
the issue of the display and the sorted list in the discussion of independent
claim 1. Therefore, we sustain the Examiner’s rejection of independent
claim 16 as being unpatentable over Bork in view of Hendrey. Appellant has
not presented any substantive arguments directed to the separate
patentability of dependent claims 17-21 and 23. Therefore, we sustain the
Examiner’s rejection of claims 17-21 and 23 as being unpatentable over
Bork in view of Hendrey for the same reasons discussed supra with respect
to claim 16. See In re Young, 927 F.2d at 590. See also 37 C.F.R.
§ 41.37(c)(1)(vii)(2005).

Claims 24-29
We consider next the Examiner’s rejection of claims 24-29 as being
unpatentable over the teachings of Bork in view of Hendrey. Since
Appellant’s arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we will select
independent claim 24 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2005).
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Appellant argues that the combination of Bork and Hendrey does not
teach or suggest the recited limitations of:
wherein the list is sorted in order of at least one of the distance
and direction from the handheld computer;
(Claim 24; see also App. Br. 12).
We will sustain the Examiner’s rejection of representative claim 24
for essentially the same reasons set forth by the Examiner in the Answer,
and also as discussed above regarding independent claims 1, 8, and 16. We
have previously addressed the issue of the sorted list in the discussion of
independent claim 1. Therefore, we sustain the Examiner’s rejection of
independent claim 24 as being unpatentable over Bork in view of Hendrey.
Appellant has not presented any substantive arguments directed to the
separate patentability of dependent claims 25-29. Therefore, we sustain the
Examiner’s rejection of claims 25-29 as being unpatentable over Bork in
view of Hendrey for the same reasons discussed supra with respect to claim
24. See In re Young, 927 F.2d at 590. See also 37 C.F.R.
§ 41.37(c)(1)(vii)(2005).

Dependent claims 6, 14, 22, 30, and 31
We consider next the Examiner’s rejection of claims 6, 14, 22, 30, and
31 as being unpatentable over the teachings of Bork in view of Hendrey,
and further in view of Kikinis.
Appellant contends that Kikinis fails to remedy the deficiencies of
Bork and Hendrey, as previously discussed (App. Br. 15).
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In response, we find no deficiencies with the Examiner’s proffered
combination of Bork and Hendrey, as discussed supra. Thus, Appellant has
not presented any substantive arguments directed to the separate
patentability of dependent claims 6, 14, 22, 30, and 31. Therefore, we
sustain the Examiner’s rejection of claims 6, 14, 22, 30, and 31 as being
unpatentable over the teachings of Bork in view of Hendrey, and further in
view of Kikinis for the same reasons discussed supra with respect to
independent claims 1, 8, 16, and 24, respectively. See In re Young, 927
F.2d at 590. See also 37 C.F.R. § 41.37(c)(1)(vii)(2005).

DECISION
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-6 and 8-31 under 35 U.S.C.
§ 103(a) for obviousness. Therefore, the decision of the Examiner rejecting
claims 1-6 and 8-31 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/clj

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