Ex Parte Landschaft et al

Patent Trial and Appeal Board

Apr 24, 2014

11470481 (P.T.A.B. Apr. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ASSAF LANDSCHAFT and LAURENT MAUGUEE
____________________

Appeal 2011-009880
Application 11/470,481
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009880
Application 11/470,481
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a location message coordinator, method of
coordinating a location message and a cellular system employing the same.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A location message coordinator for use with a short
message service (SMS), comprising:

a sender location unit configured to determine a location of a
mobile communication device; and

a message sending unit coupled to said sender location unit and
configured to automatically send a predefined SMS message
based on said location of said mobile communication device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lohtia US 2005/0186969 Al Aug. 25, 2005
Ische US 2007/0135136 Al Jun. 14, 2007
(filed Jul. 7, 2006)
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4, 9, 11, 14, 19, 21, 24, and 28 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Lohtia.
Appeal 2011-009880
Application 11/470,481
3
Claims 2, 3, 5-8, 10, 12, 13, 15-18, 20, 22, 23, 25-27, and 29 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lohtia in view
of Ische.

OPINION

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent
upon the Examiner to establish a factual basis to support the prior art
rejection – the so-called “prima facie” case. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to
produce the factual basis for its rejection of an application under sections
102 and 103.” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))).
“[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).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)). "[A]bsence from the reference
of any claimed element negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
Appeal 2011-009880
Application 11/470,481
4
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.

ANALYSIS

With respect to independent claims 1, 11, and 21, the Examiner
maintains the Lohtia reference describes the claimed invention "¶ 0045 lines
[5-9] discloses alternative network element including location of sender
in SMS, i.e., automatically sending a predefined SMS message based on
location of mobile)." (Ans. 3). Appellants contend that "the cited portions
of Lohtia do NOT teach or suggest that any predefined SMS message is
automatically sent . . ." (App. Br. 6). Appellants repeat the portions of the
Lohtia reference and maintain that the "cited portions of Lohtia do NOT
teach or suggest that a predefined SMS message is sent based on a location
of a mobile communication device. Instead, as noted above, the cited
portions of Lohtia teach appending a location request code to an SMS
message." (Id). We agree with Appellants that the location request code is
automatically added to the short message and the SMSC 320 or a MSC 315
Appeal 2011-009880
Application 11/470,481
5
perform the location determination and append the information to the
message. We note the Lohtia reference states:

The user or system includes within the short message an
indication that the current location of the sender mobile station
305 is to be included in the short message that is delivered to
the recipient mobile station 345 (step 410). For example, the
user or system can add a "location-request code" to the
beginning of the destination number, such as inputting prefix
digits, e.g., "99[,]"[ ] before the destination number.

(Para. 0040). Therefore, we agree with Appellants that the Lohtia reference
modifies the SMS message to include a request which is then serviced by an
intermediary to include the location information. While the Examiner
generally contends that the Lohtia reference describes "a message sending
unit coupled to said sender location unit and configured to automatically
send a predefined SMS message based on said location of said mobile
communication device . . ." the Examiner has not identified any description
of sending “a predefined SMS message based on said location of said mobile
communication device.” (See generally Ans. 3, 18-19). The Examiner
maintains:
in other words determining a current location of a sender's
mobile station (SMSC transmitting short message to recipient
[sic] after determining location from location server 350) and
modifying the existing SMS (i.e. predefined SMS being
modified with current location by location message
coordinator) with location information (based on location i.e.
sender location unit)) and automatically sending it to SMSC
(i.e. message sending unit). Hence, the Examiner's
interpretation of Lohtia's invention reads on Appellant[]s[’]
claimed feature of "a predefined SMS message is sent based on
a location of a mobile communication device" instead it teaches
"appending a location request code to an SMS message[.]"[ ]

Appeal 2011-009880
Application 11/470,481
6
(Ans. 19). The Examiner appears to interpret the original SMS message to
be the predefined SMS message. We disagree with the Examiner since the
SMSC does not "automatically send a predefined SMS message based on
said location of said mobile communication device," as claimed. The
original message is not described as a "predefined SMS message based upon
location." Therefore, the Examiner has not shown all of the claim
limitations of claim 1 for a proper showing of anticipation. Similarly, the
Examiner has not set forth a proper showing of anticipation with respect to
claims 4, 9, 11, 14, 19, 21, 24, and 28. Accordingly, we cannot sustain the
anticipation rejection of claims 1, 4, 9, 11, 14, 19, 21, 24, and 28.

The Examiner has not identified how the Ische reference remedies the
above noted deficiency in the Examiner's conclusion of obviousness.
Therefore, we cannot sustain the obviousness rejection of claims 2, 3, 5-8,
10, 12, 13, 15-18, 20, 22, 23, 25-27, and 29.

The Examiner has relied solely upon anticipation for the rejection of
independent claims 1, 11, and 21, and we limit our review to this issue. We
make no findings regarding the obviousness of the independent claims.

CONCLUSIONS
The Examiner erred in rejecting claims 1, 4, 9, 11, 14, 19, 21, 24, and
28 based upon anticipation. The Examiner erred in rejecting claims 2, 3, 5-
8, 10, 12, 13, 15-18, 20, 22, 23, 25-27, and 29 based upon obviousness.
Appeal 2011-009880
Application 11/470,481
7

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4, 9, 11,
14, 19, 21, 24, and 28 is reversed. The Examiner's rejection of claims 2, 3,
5-8, 10, 12, 13, 15-18, 20, 22, 23, 25-27, and 29 is reversed.

REVERSED

tj