Ex Parte Kilfeather et al

Patent Trials and Appeals Board

Oct 31, 2012

10754492 - (R) (P.T.A.B. Oct. 31, 2012)

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.
10/754,492 01/12/2004 James B. Kilfeather SBTZ.0060003 8281
34611 7590 01/14/2013
LAW OFFICE OF DUANE S. KOBAYASHI
P.O. Box 4160
Leesburg, VA 20177
EXAMINER
MANCHO, RONNIE M
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
01/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JAMES B. KILFEATHER and
MARK C. SULLIVAN
____________

Appeal 2010-006666
Application 10/754,492
Technology Center 3600
____________

Before CHARLES N GREENHUT, MICHAEL L. HOELTER and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2010-006666
Application 10/754,492

2
STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing (hereafter “Req.
Reh’g.”) dated Dec. 12, 2012, under 37 C.F.R. § 41.52 of the Decision on
Appeal (“Decision”) mailed Nov. 1, 2012, regarding the rejection of claims
23 and 25-34. Appellants' representative presented oral argument on
October 18, 2012.
We do not modify our opinion.

THE REQUEST FOR REHEARING
Appellants seek rehearing as to whether “claims 23 and 25-34 are
unpatentable under 35 U.S.C. § 112, first paragraph as failing to comply
with the written description requirement.” Req. Reh’g. 2. Appellants seek
reconsideration based on the seemingly incorrect analysis found in the
Decision at page 6 that
[i]t is not clear that this disclosure would convey to a skilled
artisan that Appellants had possession of a method for
determining a location of a mobile terminal from only a single
identified point anywhere within the area of interest, rather than
only from a single point identified at the center of the area of
interest.
Req. Reh’g. 8. We address Appellants’ contention below.

ANALYSIS
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing. 37 C.F.R. § 41.52(a)(1).
Appeal 2010-006666
Application 10/754,492

3
Prior to reaching the crux of the matter before us in the Request,
Appellants explain their invention focusing on the relationship of
Appellants' claimed “area of interest” and “convergence zone area” and the
prior manner of performing iterative least square calculation techniques
using multiple points to locate a mobile terminal. Req. Reh’g 3-5.
Both independent claims 23 and 29 each describe a method for
determining the location of a mobile terminal wherein one step is the
identification of a point within an area of interest and another is performing
an iterative position calculation that uses “only said identified point” to
ascertain the “current location of said mobile terminal.”
The Examiner rejected both independent claims (and by extension all
the dependent claims) under 35 U.S.C. § 112, first paragraph, for lack of
written description. Ans. 3. With respect to claim 23, the Examiner
identifies the limitation of “said iterative position calculation that uses only
said identified point” and deems this to be “new matter because applicant's
original disclosure does not have possession of the limitation.” Ans. 3. A
similar finding by the Examiner is made with respect to claim 29. Ans. 4.
Appellants identify paragraph [0068] of the Specification as providing
the necessary support for the above limitation regarding the use of only a
single point. App. Br. 15, see also Transcript of Oral Hearing 7:9-18, 11:14
to 12:4, 27:13-16 and 32:1 to 33:13. Paragraph [0068] reads in its entirety:
It should be noted that if the area of interest is small
enough (i.e., within the 20 guaranteed convergence zone), such
as a very narrow satellite beam, an area or city covered by an
aircraft platform, or a cellular tower coverage zone, then the
additional range measurement and the screening process are
unnecessary, and a unique solution will result from an initial
estimate at the center of the area of interest.
Appeal 2010-006666
Application 10/754,492

4
See also Req. Reh’g. 6.
Upon review of the record presented, the majority opinion in the
Decision sustained the Examiner’s written description rejection as expressed
in the analysis at page 6 which Appellants now contend is incorrect. Req.
Reh’g. 8. The full portion of the Decision objected to by Appellants is as
follows:
Appellants disclose that additional range measurements from a
range or intersection curve "are unnecessary, and a unique
solution will result from an initial estimate at the center of the
area of interest" but the claims are not so limiting. Spec. para.
[0068]. It is not clear that this disclosure would convey to a
skilled artisan that Appellants had possession of a method for
determining a location of a mobile terminal from only a single
identified point anywhere within the area of interest, rather than
only from a single point identified at the center of the area of
interest. (Italics in original).
Req. Reh’g 8.
Appellants’ arguments in seeking this Rehearing are to the effect that
“any point within the area of interest would then, by definition, converge to
the actual location of the mobile terminal.” Req. Reh’g. 7. Paragraph
[0068] relied on by Appellants is not so expansive in that paragraph [0068]
discusses only the use of the center of the area of interest, not any other
point therein. Other locations in Appellants’ Specification do discuss the
use of non-center points within the area of interest, but these other
discussions also employ the use of multiple points. Spec. paras. [0053],
[0057] and [0060]-[0067]. Appellants do not explain how paragraph [0068]
discloses the use of a point elsewhere (i.e., not the center point) within the
area of interest without also triggering the use of multiple points as
previously described.
Appeal 2010-006666
Application 10/754,492

5
The Board looks to the law regarding the claiming of a genus (i.e., the
use of a point anywhere in the area of interest) when only a species (i.e., the
use of only the center of the area of interest) is disclosed. Our reviewing
court has provided instruction that “a single species within a claimed genus
may not be sufficient to support the patentability of the genus under Section
112, 1st para” and further that “merely drawing a fence around the outer
limits of a purported genus is not an adequate substitute for describing a
variety of materials constituting the genus and showing that one has invented
a genus and not just a species.” Regents of the Univ. of Cal. v. Eli Lilly &
Co, 119 F.3d 1559, 1567-69 (Fed. Cir. 1997). More recently, our reviewing
court referenced this case stating that “we held in Eli Lilly that an adequate
written description of a claimed genus requires more than a generic
statement of an invention’s boundaries.” Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). Appellants do not persuade us
that the disclosure of only a single species would be understood by one
skilled in the art as the disclosure of the entire genus.
Appellants further contend that “[a]s the area of interest is contained
within the convergence zone area, by definition, any point within the area of
interest that is used as an initial position point would converge to the actual
location of the mobile terminal.” Req. Reh’g. 6. Appellants’ contention is
not persuasive because the claims only require the area of interest be
“smaller” than the convergence zone area. Further, support in the
Specification for the area of interest being within the convergence zone area
is only found at paragraph [0068] and one skilled in the art reading
paragraph [0068] would understand that the arrangement of the area of
interest being within the convergence zone is only a possibility (“if the area
Appeal 2010-006666
Application 10/754,492

6
of interest is small enough (i.e., within the 20 guaranteed convergence
zone)”). See Req. Reh’g. 6, 7; Decision 6. Even then, Appellants disclose
only that “a unique solution will result from an initial estimate at the center
of the area of interest.” Spec. 21, para. [0068].
As stated in the Decision at page 5, 35 U.S.C. Section 112, paragraph
1, requires that the “specification shall contain a written description of the
invention.” Here, Appellants do not persuade us that one skilled in the art
would understand from a reading of the written description, and paragraph
[0068] in particular, that only a single point from anywhere within the area
of interest may be employed to ascertain the current location of the mobile
terminal. Accordingly, we are not persuaded that the Board misapprehended
or overlooked matters previously presented by Appellants. Based on the
record presented, Appellants’ Request has not persuaded us of error in
sustaining the written description rejection of claims 23 and 25-34.

ORDER
Upon consideration of Appellants’ request for rehearing and for the
reasons given, it is ordered that the decision affirming the rejection of claims
23 and 25-34 as failing to comply with the written description requirement
shall not be modified.

REHEARING DENIED

mls