Ex parte Miller

Board of Patent Appeals and Interferences

May 28, 1998

08109046 (B.P.A.I. May. 28, 1998)

Application for patent filed August 19, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERTSON C. MILLER
__________
Appeal No. 96-2990
Application 08/109,0461
__________
ON BRIEF
__________
Before THOMAS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 96-2990
Application 08/109,046
2
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 to 18, which constitute all the
claims in the application.
Independent claim 1 is reproduced below:
1. A portable GPS receiver unit comprising:
a GPS receiver engine;
a housing enclosing said receiver engine; and
a GPS antenna electrically connected to said receiver
engine and being mountable on said housing for movement
separate from said receiver engine between a retracted
position within said housing and an extended position
protruding from said housing.
The following references are relied on by the examiner:
Olson 2,486,536 Nov. 1, 1949
Lidz 2,565,661 Aug. 28, 1951
Zibrik et al. (Zibrik) 5,138,328 Aug. 11, 1992
Maroun et al. (Maroun) 5,300,938 Apr. 5, 1994
(filing date Dec. 7, 1992)
Claims 1 to 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Zibrik.
Appeal No. 96-2990
Application 08/109,046
3
Claims 1 to 18 stand rejected under 35 U.S.C. § 103. In
a first rejection, the examiner relies upon Zibrik in view of
Lidz and in the second rejection, Olson in view of Maroun.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the Brief and the Answer for
the respective details thereof.
OPINION
Generally for the reasons presented by appellant in the
Brief, we reverse each of the respective rejections of the
claims on appeal.
As to the rejection under 35 U.S.C. § 102, we note that
Zibrik does not teach the claimed GPS receiver engine, nor
does it teach the claimed GPS antenna. As such, Zibrik fails
to meet the other limitations of independent claim 1 on appeal
relating to a housing enclosing the GPS receiver engine and
the GPS antenna electrically connected to that receiver engine
and being mountable in the housing in a particular movable
arrangement.
Appeal No. 96-2990
Application 08/109,046
4
The examiner’s position that the modifier “GPS” has been
given no patentable weight is in error. The entire background
of appellant’s invention from page 1 through the top of page 3
of the specification as filed clearly establishes that GPS
receivers and antennas have an established, well known meaning
in the art. As such, GPS receivers and antennas must be given
patentable weight.
We also reverse both rejections under 35 U.S.C. § 103
essentially for the same reasons. Lidz, Olson, and Maroun
fail to teach or suggest to the artisan anything relative to
GPS receivers or antennas. Therefore, the combination of
teachings of Zibrik and Lidz and of Olson and Maroun, even if
properly combinable within 35 U.S.C. § 103, would not have met
the limitations noted earlier in independent claim 1 on
appeal. Again, the art has well recognized structural and
functional meanings attached to the term “GPS” as applied to
receivers and antenna structures, contrary to the examiner’s
views.
Appeal No. 96-2990
Application 08/109,046
5
Inasmuch as we have reversed the rejection of independent
claim 1 under 35 U.S.C. § 102 and under 35 U.S.C. § 103, the
respective rejections of the dependent claims must also be
Appeal No. 96-2990
Application 08/109,046
The examiner would be well advised to reconsider the2
admitted prior art in the background of the invention from
page 1 to the top of page 3 of the specification as filed as
well as the recognition of certain prior art admissions
contained in the body of the specification in combination with
the art of record and/or any other art the examiner may be
aware of, since we have found GPS receivers and antennas have
well established meanings in the art.
6
reversed. Therefore, the decision of the examiner rejecting
claims 1 to 18 under 35 U.S.C. §§ 102/103 must be reversed.2
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Michael R. Fleming )
Administrative Patent Judge )
Banner, Birch, McKie & Beckett
1001 G Street, NW
11th Floor
Appeal No. 96-2990
Application 08/109,046
7
Washington, DC 20001-4597