Ex Parte Malkos et al

Patent Trial and Appeal Board

Sep 27, 2013

12394152 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/394,152 02/27/2009 Steven Malkos 3875.3010000 2033
26111 7590 09/27/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
GALT, CASSI J
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
09/27/2013 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 STEVEN MALKOS and CHRISTOPHER LANE
____________

Appeal 2011-011439
Application 12/394,152
Technology Center 3600
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

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Application 12/394,152

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Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1
(reformatted) and claim 11, reproduced below with emphasis added, are
representative of the subject matter on appeal.
1. A method for processing signals, the method
comprising:
receiving, from a FM radio base station,
broadcast FM radio signals comprising satellite
navigation data, wherein said satellite navigation
data is acquired by said FM radio base station
from an assisted global navigation satellite
systems (AGNSS) server; and
determining navigation information based
on said satellite navigation data received via said
broadcast FM radio signals.

11. A system for processing signals, the system
comprising:
one or more circuits for use in a
communication device, wherein said one or more
circuits are operable to receive, from a FM radio
base station, broadcast FM radio signals
comprising satellite navigation data, wherein said
satellite navigation data is acquired by said FM
radio base station from an assisted global
navigation satellite systems (AGNSS) server; and
said one or more circuits are operable to
determine navigation information based on said
satellite navigation data received via said broadcast
FM radio signals.

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Notably, the emphasized portions of claims 1 and 11 are identical.
Hereinafter, the emphasized portions of claims 1 and 11 are referred to as
the “satellite navigation data clause.”
Rejections
The Appellants request our review of the following Examiner’s
rejections (App. Br. 4):
I. claims 1-3, 5-13, and 15-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over van Diggelen (US 6,829,535 B2, issued Dec. 7,
2004) and Townsend (US 6,788,251 B2, issued Sep. 7, 2004); and
II. claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over van Diggelen, Townsend, and Woo (US 7,495,609 B1, issued
Feb. 24, 2009).

OPINION
Rejection I: claims 1-3, 5-13, and 15-20 as unpatentable over
van Diggelen and Townsend
The Appellants have provided separate headings for the rejection of
independent claims 1 and 11 (App. Br. 6), claims 2 and 12 (App. Br. 9),
claims 3 and 13 (App. Br. 10), claims 5-7 and 15-17 (App. Br. 11), claims 8
and 18 (App. Br. 12), claims 9 and 19 (App. Br. 14), and claims 10 and 20
(App. Br. 15). Although the Appellants have provided separate headings,
the Appellants have not provided separate arguments for these groups of
claims; rather, the Appellants merely rely on the arguments presented
against the rejection of claims 1 and 11 for all of the groups of claims. See
App. Br. 6-9. In other words, for the remaining groups of claims after the
claims 1 and 11 group, the Appellants merely discuss the Examiner’s
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findings and then refer back to the arguments presented for rejection of
claims 1 and 11. See App. Br. 9-16. Although the Appellants argue claims
1 and 11 together, we shall address claim 1 and its dependent claims 2, 3 and
5-10 separately from claim 11 and its dependent claims 12, 13 and 15-20.
Claims 1-3 and 5-10
The Examiner finds van Diggelen discloses the limitations of claim 1,
except “[v]an Diggelen does not teach that . . . the base station is an FM
radio base station, or that the broadcast signals are FM radio signals.”
Ans. 4. The Examiner also finds Townsend discloses “satellite navigation
data is broadcast using wireless technology such as FM radio signals (3:35-
40), and one would expect to use an FM base station to broadcast said
signals.” Ans. 5. The Examiner concludes “[i]t would have been obvious to
modify van Diggelen by broadcasting FM radio signals because it is a
known implementation of the wireless technology taught by van Diggelen
that could be used with no new or unexpected results” Id. Further, the
Examiner explains “[t]he modification proposed to van Diggelen is merely
to implement the communication system as an FM radio system” and “it
would have been obvious to modify van Diggelen by using FM radio to
distribute assistance data because it is an implementation of a
communication system that is known to be used for this purpose and which
could be used with no new or unexpected results.” Ans. 8.
The Appellants contend that “the combination of van Diggelen and
Townsend does not disclose the limitation ‘said satellite navigation data is
acquired by said FM radio base station from an assisted global navigation
satellite systems (AGNSS) server’,” as recited in claim 1, i.e., the satellite
navigation data clause. App. Br. 9.
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The Appellants’ contention is persuasive. The Examiner determines
“that van Diggelen teaches providing assistance data from an AGNSS server
to a variety of communications systems, including wireless communications
systems”1 and that “[v]an Diggelen is therefore capable of providing
assistance data to an FM radio base station.” Ans. 8 (citing van Diggelen,
col. 3, ll. 56-61). However, even assuming arguendo everything the
Examiner explains is true, method claim 1 requires that an “FM radio base
station can actually acquire the assistance data from an AGNSS server.” See
App. Br. 9. As such, the capability of van Diggelen’s variety of
communication systems to acquire satellite navigation data by a FM radio
base station is inadequate evidence to meet the satellite navigation data
clause of method claim 1. Consequently, the Examiner’s determination that
the combined teachings of van Diggelen and Townsend would result in the
satellite navigation data clause of claim 1 is not adequately supported.
Thus, the rejection of claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as
unpatentable over van Diggelen and Townsend is not sustained.
Claims 11-13 and 15-20
At the outset, we note that the subject matter of claim 1 is directed to a
different statutory class than the subject matter of claim 11. App. Br., Clms.
App’x. Claim 1 is directed to “[a] method for processing signals,” whereas
claim 11 is directed to “[a] system for processing signals.” Id.
Claim 1 calls for a step of receiving broadcast FM radio signals
comprising satellite navigation data from an FM radio base station. Id. The

1 The Examiner finds that van Diggelen’s STD collection and computation
server 106 corresponds with the AGNSS server. Ans. 4 (citing
van Diggelen, fig. 1).
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receiving step also calls for the satellite navigation data to be acquired by the
FM radio base station from an AGNSS server. Id.
Claim 11 recites “one or more circuits for use in a communication
device . . . operable to receive, from a FM radio base station, broadcast FM
radio signals comprising satellite navigation data.” Id. This recitation of
claim 11 is part of the structure of the system for processing signals. Claim
11 also recites, “wherein said satellite navigation data is acquired by said
FM radio base station from an . . . AGNSS . . . server,” i.e., the satellite
navigation data clause. Id. This recitation of claim 11 does not further limit
the structure of the “one or more circuits for use in a communication
device.” Put simply, the satellite navigation data clause of claim 11 merely
refers to the satellite navigation data rather than further limiting the structure
of the “one or more circuits for use in a communication device.” In other
words, how the FM radio station acquires the satellite navigation data does
not affect the structure of the one or more circuits operable to receive
satellite navigation data from an FM radio base station.
The Appellants, relying on the contentions for the rejection of claim 1
for the rejection of claim 11, contend that the combination of van Diggelen
and Townsend does not disclose the satellite navigation data clause of claim
11. See App. Br. 6-9; Reply Br. 2-5. More specifically, the Appellants
contend “van Diggelen does not disclose aFM radio base station; . . . any
acquiring of STD [satellite tracking data] by a FM radio base station; and . . .
any acquiring of STD by a FM radio station from the distribution server 110
(i.e., the alleged ‘AGNSS server’).” App. Br. 7; see also App. Br. 7-8. The
Appellants also contend, “Townsend does not disclose that the broadcast
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station 740 acquires the assistance data from an AGNSS server.” App.
Br. 8.
Although the Appellants’ contentions are persuasive for the rejection
of method claim 1, they are not persuasive for the rejection of system claim
11, because the satellite navigation data clause does not further limit the
structure of the “one or more circuits for use in a communication device.”
In addition, we note that the Examiner finds van Diggelen’s collection
and computation server 106 corresponds to the claimed AGNSS server,
rather than distribution server 110. Ans. 4. The Appellants’ contentions are
also unpersuasive because the Examiner relies on Townsend to disclose an
FM radio base station, i.e., broadcast station 740. See Ans. 7, 8; Townsend,
col. 7, ll. 7-11. Further, it is notable the Appellants refer to Townsend,
column 7, lines 8-11, which describes “broadcast station 740 having its own
antenna 750 also receives signals from satellites and transmits assistance
signal 760 to receiver logic unit 735.” App. Br. 8. Also, the Appellants
acknowledge Townsend “discloses that the assistance information may be
provided wirelessly via AM/FM radio” and that the assistance data is
almanac data. Id. (citing Townsend, col. 3, ll. 35-40); see also Townsend,
col. 5, ll. 42-48. As such, Townsend discloses “one or more circuits for use
in a communication device . . . operable to receive, from a FM radio base
station, broadcast FM radio signals comprising satellite navigation data.”
See Ans. 5, 7, 8.
Thus, the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over van Diggelen, and Townsend is sustained. We also
sustain the rejection of claims 12, 13, and 15-20, for which the Appellants
do not assert any separate arguments. .
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Rejection II: claims 4 and 14 as unpatentable over
van Diggelen, Townsend, and Woo
The Examiner rejects claims 4 and 14 under 35 U.S.C. § 103(a) as
unpatentable over van Diggelen, Townsend, and Woo. Ans. 6. The
Appellants do not present any argument with regard to this rejection. Thus,
the Examiner’s rejection of claims 4 and 14 is summarily sustained. See In
re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
appellant failed to contest the rejection on appeal).

New Ground of Rejection: claims 1, 4, 11, and 14 as anticipated by Woo
We enter a new ground of rejection under 35 U.S.C. § 102(e) for
claims 1, 4, 11, and 14 as anticipated by Woo. Woo discloses a mobile
GPS-aiding system 100 including a GPS reference receiver 102 that collects
GPS navigation data (NAVdata) messages 104 from orbiting navigation
satellites 106. Woo, col. 5, ll. 42-47. Figure 1 depicts an FM radio
broadcast in service areas 120 and 122. See also Woo, col. 5, ll. 65-66.
GPS receivers 124 and 136, associated with vehicles 130 and 132 within
service areas 120 and 122, receive commercial radio broadcasts, e.g., sub-
carriers 116 and 118. Woo, col. 5, ll. 55-66, col. 6, ll. 9-59. More
specifically, service area 120 evidences a step of receiving, from FM radio
station 1122, broadcast FM radio signals 116 comprising satellite navigation

2 Woo uses the same reference number “112” to refer to different parts.
Reference number 112 is used in service area 120 to refer to an FM radio
station and is used in service area 122 to refer to NAVdata. Woo, fig. 1.
The same referencing issue appears in the Specification. See e.g. Woo, col.
6, ll. 6-7, 26.
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data (NAVdata/ephemeris and almanac data) 110 and service area 122
evidences a step of receiving, from FM radio station 114, broadcast FM
radio signals 118 comprising satellite navigation data (NAVdata/ephemeris
and almanac data) 112. Id. Additionally, satellite navigation data 110 and
112 are acquired by the FM radio stations 112 and 114, respectively, from
GPS-aiding data network server/mobile aiding server 108. Id.; see fig. 1.
Woo also discloses that navigation information is determined based on said
satellite navigation data received via said broadcast FM radio signals. Id.;
see Woo, Abstract, col. 1, ll. 5-10, col. 7, l. 46-col. 8, l. 4, fig. 4.
Furthermore, Woo discloses broadcast FM radio signals/sub-carriers 116 and
118 may be through radio data system (RDS). Woo, col. 5, ll. 60-65. For
these reasons, we enter a new ground of rejection for claims 1, 4, 11, and 14
under 35 U.S.C. § 102(e) as anticipated by Woo.

DECISION
We REVERSE the rejection of claims 1-3 and 5-10 under 35 U.S.C.
§ 103(a) as unpatentable over van Diggelen and Townsend.
We AFFIRM the rejections of: claims 11-13 and 15-20 under 35
U.S.C. § 103(a) as unpatentable over van Diggelen and Townsend; and
claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over
van Diggelen, Townsend, and Woo (US 7,495,609 B1, Feb. 24, 2009).
We enter a NEW GROUND OF REJECTION for claims 1, 4, 11, and
14 pursuant to our authority under 37 C.F.R. § 41.50(b).

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FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
the “Appellant[s] may file a single request for rehearing within two months
of the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be
remanded to the Examiner . . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should the Appellants elect to prosecute further, before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
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If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejections, including any timely request for rehearing
thereof.
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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

Klh/rvb