Ex Parte McKiou et al

Patent Trial and Appeal Board

Mar 7, 2016

11617148 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/617,148 12/28/2006
50525 7590 03/09/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Kevin W. McKiou
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.
McKiou4-5 3687
EXAMINER
DEAN, JR, JOSEPH E
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
docketing@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN W. MCKIOU and ARUN SANKISA1
Appeal2014-004630
Application 11/617, 148
Technology Center 2600
Before ST. JOHN COURTENAY, III, TERRENCE W. McMILLIN, and
KAMRAN JIVANI, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1, 4--10, and 13-24, which are all the pending claims. 3
1 According to Appellants, the real party in interest is Lucent Technologies,
Inc. App. Br. 3.
2 Our Decision refers to the Non-Final Office Action mailed January 23,
2013 ("Non-Final Act."); Appellants' Appeal Brief filed September 16, 2013
("App. Br."); the Examiner's Answer mailed December 30, 2013 ("Ans.");
Appellants' Reply Brief filed February 28, 2014 ("Reply Br."); and the
Specification filed December 28, 2006 ("Spec.").
3 See "Index of Claims" Jan. 23 2013; see also Non-Final Act. 2 ("When
claims are canceled, the remaining claims must not be renumbered ....
Misnumbered claims 2, 3, 11and12 have been renumbered 21, 22, 23
and 24."). See 37 C.F.R. § 1.126 which requires the original numbering of
the claims to be preserved throughout the prosecution. We consider claims
1, 4--10, and 13-24, as renumbered by the Examiner, as before us on appeal.
We note the Claims Appendix to the Appeal Brief does not correctly list
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Application 11/617, 148
Non-Final Act. 1. Claims 2, 3, 11, and 12 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
REJECTIONS ON APPEAL
Claims 1, 5, 7, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith et al. (US 2005/019777 5 A 1; published Sept.
8, 2005) ("Smith") and Yuhara et al. (US 200710049260 Al, published Mar.
1, 2007) ("Yuhara"). Non-Final Act. 4.
Claims 4, 6, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Yuhara, and Fujishima (US 2006/0189353
Al, published Aug. 24, 2006) ("Fujishima"). Non-Final Act. 7.
Claims 8, 9, 14, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Yuhara, and McKenna et al. (US
2002/0037716 Al, published Mar. 28, 2002) ("McKenna"). Non-Final Act.
9.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Yuhara, and McKenna. Non-Final Act. 10.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Yuhara, McKenna, and Fujishima. Non-Final
Act. 13.
Claims 21-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Yuhara, and Kim (US 2005/0282579 Al,
published Dec. 22, 2005) ("Kim"). Non-Final Act. 14.
cancelled claims 2, 3, 11, and 12, or the Examiner's renumbered claims
21-24, responsive to the amendment filed concurrently with the RCE on
July 19, 2012.
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Application 11/617, 148
THE CLAHvIED TI'-JVENTION
According to Appellants, "[ t ]he invention is related to the field of
communications, and in particular, to providing location-based services to
mobile users of a wireless network." Spec. 1. Independent claim 1 is
directed to a system and independent claims 10 and 19 are directed to
systems. Claim 1 recites:
1. A system for providing location-based services on a
cellular network, the system comprising:
a management system adapted to define a plurality of
service zones within the cellular network, wherein the service
zones are defined for providing location-based services to users
within the service zones, wherein the service zones are within a
radio coverage area of at least one base station of the cellular
network;
a content manager coupled to the management system
and adapted to receive content for users within the service
zones of the cellular network, and to process the received
content to identify common content corresponding \~1ith a
service zone within the cellular network; and
a transmission system coupled to the content manager
and adapted to broadcast the identified common content
utilizing the at least one base station of the cellular network to
communication devices of a plurality of users located within the
corresponding service zone, wherein the corresponding service
zone is within the radio coverage area of the at least one base
station of the cellular network, wherein the common content
includes attributes used by the communication devices to filter
the common content to determine a portion of the common
content to display to a user of a communication device.
App. Br. 14.
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Application 11/617, 148
ANALYSIS
We have reviewed the rejections of claims 1, 4--10, and 13-24 in light
of Appellants' arguments presented in the Appeal Brief and Reply Brief.
We are not persuaded that Appellants identify reversible error. We agree
with and adopt the Examiner's findings, reasoning, and conclusions as set
forth in the Non-Final Office Action (Non-Final Act. 3-15) and the
Examiner's Answer (Ans. 2-5). We highlight the following for emphasis.
Claim 1
In the Appeal Brief, Appellants argue:
neither Smith nor Yuhara suggests the following limitations of
claim 1:
a transmission system adapted to broadcast the identified
common content utilizing at least one base station of the
cellular network to communication devices of a plurality of
users located within the corresponding service zone, wherein
the common content includes attributes used by the
communication devices to determine a portion of the common
content to display to a user of a communication device.
App. Br. 7-8. However, in the Reply Brief, Appellants deny disputing the
elements in the "wherein" clause of this limitation are taught by the prior
art.4 The Reply Brief states:
the Examiner incorrectly summarizes the argument presented in
the [Appeal] Brief by the Applicants as Yuhara failing to
disclose wherein the common content includes attributes used
by the communication devices to filter the common content to
determine a portion of the common content to display to a user
4 The denial of disputing the elements of the "wherein" clause are taught by
the cited art is made in the context of discussing independent claim 19 in the
Reply Brief. Reply Br. 5. Nonetheless, it is applicable to all the pending
independent claims (claims 1, 10, and 19) as all the independent claims
contain the same, identically worded "wherein" clause. App. Br. 14, 17, 21.
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Application 11/617, 148
of a communication aevzce. However, the Appellants did not
argue that Yuhara failed to disclose this feature in the [Appeal]
Brief.
Reply Br. 5.
The remaining arguments in the Appeal Brief as to whether or not the
disputed limitation is taught or suggested by the prior art are not
commensurate with the scope of the claim 1. Appellants argue:
if the service zone is the radio coverage area for one base
station of the cellular network of claim 1, then the information
for that service zone is broadcast to all of the mobile devices
that are within [the] range of that base station. The cellular
network does not have to first identify which mobile devices
are in the radio coverage area of the base station, and then
communicate just with those mobile device[ s].
App. Br. 9 (emphasis added). Claim 1 recites, "service zones are within a
radio coverage area of at least one base station of the cellular network."
App. Br. 14 (emphasis added). And the Specification describes; "a single
service zone may be served by a plurality of base stations." Spec. 5: 16-17.
Claim 1 also recites, "a transmission system coupled to the content manager
and adapted to broadcast the identified common content utilizing the at least
one base station of the cellular network to communication devices of a
plurality of users located within the corresponding service zone." App. Br.
14 (emphasis added). And "common content" is described in the
Specification, as follows: "[c]ommon content is information relating to a
service zone that is provided to one or more users within the service zone."
Spec. 5 (emphasis added). Claim 1 does not require broadcasting
information or common content to all the mobile devices in the service zone
or within range of a base station.
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Appellants argue:
The Appellants understand that claim 1 does not specifically
recite a negative limitation of not identifying which mobile
devices are in the service zone, because the Appellants wish to
avoid claiming activities that are not performed by the system
of claim 1. However, one skilled in the art recognizes how the
system of claim 1 is different than the system discussed in
Smith for a number of reasons. First, claim 1 recites that the
common content for the service zone is broadcast to the users
located in the service zone. Typically, messages in the cellular
network are transmitted to a specific mobile device, and are not
broadcast to multiple devices. Second, claim 1 recites that the
broadcast is performed using base stations of the cellular
network to service zones within a radio coverage area of the
base stations. The Appellants submit that the specific terms
broadcast, base stations, radio coverage area, and common
content teach one skilled in the art that the system of claim 1
operates differently than the system of Smith for providing
location based services to users of the cellular network.
The Appellants therefore maintain that Smith does not teach
the limitations of claim 1 that are quoted above.
App. Br. 9. The Appellants' assertion that the terms "broadcast, base
stations, radio coverage area, and common content" as used in claim 1
distinguish the recited system from the system of Smith is not supported or
explained. And it is not at all apparent from Appellants' arguments how
these well-known cellular network features are used in claim 1 in a manner
that is not obvious over the cited art.
Contrary to Appellants' argument, Smith teaches, "common content
for the service zone is broadcast to the users located in the service zone" and
"the broadcast is performed using base stations of the cellular network to
service zones within a radio coverage area of the base stations." As set forth
in the Non-Final Office Action, the Examiner finds, "Smith identifies
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mobiles in a zone where it broadcast[ s] similar data to mobile devices in that
specific zone, where one or more mobile devices [are] in a zone and more
likely to be a plurality of devices in a zone (paragraph 119 and 121 ). " Non-
Final Act. 3. The Examiner also finds:
Per claim 1, Smith discloses a system for providing location-
based services on a cellular network, the system comprising: a
management system adapted to define a plurality of service
zone (paragraph 0050, i.e. event center generates event or
hazard predictions for a plurality of geographical areas, such as
four square kilometer "cells," and compares the location
[current and predicted] of each cell in which there is a future
event or hazard to device locations) within the cellular network
(paragraph 0049, Fig. 1, network of radio antennae illustrated
as elements 110, 111, and 112 is available to relay signals to
and from each device) wherein the service zones are defined for
providing location-based services to users within the service
zones (paragraph 0051, i.e., weather forecasting services),
wherein the service zones are within a radio coverage area of at
least one base station of the cellular network (paragraph 0049,
Fig 1, network or radio antennae illustrated as elements 110,
111, and 112 is available to relay signals to and from each
device ...
Non-Final Act. 4--5 (bracketed material in original). Appellants fail to
present any argument to contradict or dispute the detailed and well-
supported findings of the Examiner.
Appellants argue the Examiner has not provided a logical argument or
clear reasoning as to how Smith and Yuhara may be combined. This is not
accurate. The Non-Final Office Action states:
Therefore, one skilled in the art would have found it obvious
from the combined teachings of Smith, provides system for
warning users about of an event or hazards in reference to
mobile unit location or intended travel, [and] Yuhara provides
receiving a broadcast containing weather data and filtering data
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to a display in navigational system as a whole to produce the
invention as claimed [in claim 1] with a reasonable expectation
of receiving information via satellite and/or radio antennas onto
a mobile deice/navigational system that informs user of events,
relative to device location and filter data to display on
navigation system.
Non-Final Act. 6-7. Appellants present no argument to contradict or dispute
the reasoning of the Examiner with regard to combining the teachings of
Smith and Yuhara.
Appellants argue there is no motivation to combine Smith and Yuhara
because "Smith teaches away from broadcasting hazard data to the entire
wireless coverage area" and "Smith specifically teaches away from
broadcasting the hazard information to all the users of the wireless network."
App. Br. 11. This argument is not linked by Appellants to any specific
language of claim 1 and, as shown above, is not commensurate with the
scope of claim 1. Moreover, Smith does not teach away because it teaches
an alternative to the claimed invention and does not criticize, discredit or
otherwise discourage what is recited in claim 1. See, In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.")
We are not persuaded of error in the rejection of claim 1 and sustain
the rejection of claim 1 as obvious and unpatentable.
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Ciaim 19
In the Appeal Brief, Appellants argue that specified limitations of
Claim 19 are not taught or suggested by the cited combination of references.
App. Br. 12-13. However, in the Reply Brief and as shown above,
Appellants deny any effort to dispute that the limitations of claim 19 are
taught by the cited art. Reply Br. 5. The remaining argument in support of
claim 19 disputes whether the combination of teachings from the cited
references was proper for the same reasons argued and discussed above with
regard to claim 1. App. Br. 12-13. We are not persuaded by this argument
and sustain the rejection of claim 19 for the reasons discussed above with
regard to claim 1.
Claims 4--8, 10, 13--18, and 20--24
Appellants do not present any separate arguments in support of the
remaining, pending claims. App. Br. 6-23; Reply Br. 4---6. Any arguments
not made in the Appeal Brief are waived. 37 C.F.R. § 41.37(c)(l)(iv). See,
also, Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI) (precedential) ("If an
appellant fails to present arguments on a particular issue - or, more broadly,
on a particular rejection-the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection."). We sustain the
rejections of claims 4--8, 10, 13-18, and 20-24 for the reasons stated with
regard to claims 1 and 19.
DECISION
The rejections of claims 1, 4--10, and 13-24 are 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)(l )(iv).
AFFIRMED
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