Ex Parte Korneluk et alDownload PDFPatent Trials and Appeals BoardJun 11, 201914987928 - (D) (P.T.A.B. Jun. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/987,928 01/05/2016 89133 7590 06/13/2019 RIDOUT & MAYBEE LLP (BlackBerry) 250 UNIVERSITY A VENUE 5THFLOOR TORONTO, ON MSH 3E5 CANADA FIRST NAMED INVENTOR Jose Eduardo Korneluk 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 42783-4798 1044 EXAMINER JHA, ABDHESH K ART UNIT PAPER NUMBER 3669 NOTIFICATION DATE DELIVERY MODE 06/13/2019 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): ipinfo@ridoutmaybee.com ridbee@ridoutmaybee.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSE EDUARDO KORNELUK, SANDEEP CHENNAKESHU, SIDDHARTH SAXENA, and SERGIO JAVIER BERRIZ Appeal 2018-006208 Application 14/987,928 Technology Center 3600 Before STEFAN STAICOVICI, BRETT C. MARTIN, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's Decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2018-006208 Application 14/987,928 CLAIMED SUBJECT MATTER Claims 1, 19, and 20 are independent. Claims 2-18 depend from claim 1. Claim 1 is reproduced below: 1. A method of operating a mobile transceiver, comprising: waking up the mobile transceiver from a low power mode in response to a time-based wakeup event; determining a waypoint in a pre-programmed travel itinerary corresponding to the time-based wakeup event, the travel itinerary being stored in a memory of the mobile transceiver and defining a number of waypoints along a planned route and a wakeup frequency for each of the waypoints, wherein each of the waypoints define a location, and wherein the waypoints include an origin endpoint, a destination endpoint and intermediate locations between the origin endpoint and destination endpoint; performing an action associated with the time-based wakeup event; determining a wakeup frequency for one or more subsequent time-based wakeup events from the travel itinerary based at least in part on the determined waypoint; and setting the one or more subsequent time-based wakeup events in accordance with the determined wakeup frequency. REJECTIONS 1. Claims 1-4 and 9-20 are rejected under 35 U.S.C. § 102 as anticipated by Stevens (US 9,177,282 B2, issued Nov. 3, 2015). 2. Claims 5-8 are rejected under 35 U.S.C. § 103 as being unpatentable over Stevens and Paulson (US 8,228,234 B2, issued July 24, 2012). 2 Appeal 2018-006208 Application 14/987,928 OPINION Claims 1, 19, and 20 each require "a pre-programmed travel itinerary ... stored in a memory of the mobile transceiver." In the Final Action, the Examiner finds that the discussion of a "journey" in Stevens discloses this feature. Final Act. 3 (citing Stevens, 3:50-64). In the Answer, the Examiner considers this feature to be inherent in Stevens. Ans. 4-5 (citing Stevens, 3:21-27). Appellant disputes these findings (both that Stevens expressly discloses the recited feature noted above and that it is inherent in Stevens). Appeal Br. 17-22; Reply Br. 3-7. Stevens describes a "buyer 102, seller 104, and tracking device provider 106 interacting in a shipping scenario" where "[ a ]n example asset 108 is shipped from the seller 104 to the buyer 102." Stevens, 2:56-59. Stevens explains that a "tracking device 114 can be coupled to the asset 108" and "[ d]uring the journey, the tracking device 114 can be programmed to wake up periodically, initiate communication with the tracking device provider 106, and send event notifications to the tracking device provider 106." Id. at 3:21, 24-27. "The tracking device 114 reports various events, including ... process events[] and tracking events." Id. at 3:36-39. "Process events indicate that various procedural events in the journey of the asset have occurred ... ( e.g., that the asset 108 is beginning or ending its tracking device journey)." Id. at 3:49-54. "Tracking events are periodic reports of the location of tracking device 114," which "can send a report of its current location according to a schedule, for example, at fixed intervals of time." Id. at 3:64-67. "A tracking system ... can process the tracking events to determine when an asset has entered or left a predefined area," and "can define geofences ( e.g., a virtual perimeter) around important locations 3 Appeal 2018-006208 Application 14/987,928 along the journey ... or the system 200 can determine that the asset has entered or left a given location when the tracking device 114 enters or leaves a geofence." Id. at 4:1-9. Appellant explains that "[ a ]lthough the cited passages of Stevens describe 'journeys' and various shipment events, there is no disclosure of a travel itinerary stored by the tracking device that describes the shipment events in advance of their occurrence that is provided to and accessible by the tracking device." Appeal Br. 18. Appellant contends that "Stevens refers to a journey in the everyday sense of the word, i.e. as 'an act or instance of traveling from one place to another"' and "does not disclose a pre-programmed itinerary as in the claimed subject matter." Id. at 19. Appellant additionally contends that "[i]t does not necessarily flow from the teachings of Stevens that a fixed route between endpoints is predetermined by shipping companies, and that the device in Stevens is pre-programmed with such a fixed route." Reply Br. 6. Appellant has the better position. The Examiner does not dispute that the "pre-programmed travel itinerary" recited in the claims requires shipment events determined in advance of their occurrence. As seen above in the discussion regarding the disclosure of Stevens, the portions of Stevens cited by the Examiner are silent regarding such stored features. That tracking device 114 in Stevens can periodically send information during its "journey" says nothing about any details of that particular journey being pre- programmed into tracking device 114. The Examiner appears to agree because, as noted above, the rejection changes from one based on express disclosure in the Final Action to one based on inherency in the Answer. Final Act. 3; Ans. 4-5. 4 Appeal 2018-006208 Application 14/987,928 With respect to inherency, the Examiner explains that in Stevens, "[ o ]nee the shipment orders and details about the destination are received at the seller, the seller may chooses one ... Shipping Company," which "already [has a] fixed route which their company's drivers' take to get from Point A to Point B most efficiently." Ans. 4-5. Based on this explanation, the Examiner concludes that "the idea of the pre-programmed itinerary is inherent in [Stevens] as the[] company will have certain routes they will be taking from Point A ( e.g. Seller's Location) to Point B ( e.g. Buyer's Location or the closest distribution point to the Buyer's Location)." Id. at 5. One problem with this conclusion, however, is that even if such a common route exists, the Examiner's explanation says nothing about why that particular route is necessarily pre-programmed in tracking device 114 in Stevens. The Examiner additionally explains that because Stevens may be a "much advanced system" compared to the claimed arrangement, "the pending application should be inherently anticipated by the much advanced system as disclosed by Stevens." Ans. 5. There is no basis for such a conclusion without establishing that the claimed features are necessarily present in Stevens. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient."). For at least the reasons set forth above, the Examiner has failed to establish that Stevens discloses, either expressly or inherently, that tracking device 114 is pre-programmed with a travel itinerary as required by the claims. 5 Appeal 2018-006208 Application 14/987,928 For at least these reasons, we do not sustain the Examiner's decision to reject claims 1-2 0. DECISION We REVERSE the Examiner's decision to reject claims 1-20. REVERSED 6 Copy with citationCopy as parenthetical citation