Ex parte Mohan

Board of Patent Appeals and Interferences

Nov 16, 1999

08321941 (B.P.A.I. Nov. 16, 1999)

Application for patent filed October 12, 1994. 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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL L. MOHAN
____________
Appeal No. 1996-3495
Application No. 08/321,9411
____________
HEARD: October 20, 1999
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and GONZALES, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 18. No other claims are pending
in the application.
Appeal No. 1996-3495
Application No. 08/321,941
2
The invention disclosed in appellant’s application
relates to an electronic tracking system having a portable
miniaturized geographic position determination and
communications module (500) and a portable locating unit (300)
located remotely from the module. The module comprises a
global positioning satellite (GPS) receiver (520) for
receiving a signal relating to the module’s geographic
position from a GPS system. The module further includes a
communications transceiver (540) for transmitting the module’s
geographic position to the portable locating unit (300) to
inform a user of the module’s geographic position. Claims 1
through 8 are directed to the miniaturized geographic position
determination and communication module per se, and claims 9
through 18 are directed to the combination of the miniaturized
module and the portable locating unit.
A copy of the appealed claims is appended to appellant’s
brief.
The following references are relied upon by the examiner
in support of his rejections of the appealed claims:
Durboraw, III (Durboraw) 5,266,958 Nov.
30, 1993
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Application No. 08/321,941
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Eberwine 5,392,052 Feb. 21,
1995
(filed Apr. 28, 1993)
Claims 9 through 11 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Eberwine, and claims 1 through
8 and 12 through 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Eberwine in view of Durboraw.
All of the appealed claims recite that the module
containing the GPS receiver is “miniaturized.” Claim 9
additionally recites that the module is “readily concealable.”
With regard to the
§ 102(e) rejection, appellant contends that the limitation
concerning miniaturization of the module “is nowhere to be
found in Eberwine” (reply brief, page 1). Appellant also
argues that Eberwine does not disclose a locating unit that is
portable.
Before addressing the examiner’s rejections based upon
the prior art, it is an essential prerequisite that the
claimed subject matter be fully understood. Analysis of
whether a claim is patentable over the prior art under 35
U.S.C. §§ 102 and 103 begins with a determination of the scope
Appeal No. 1996-3495
Application No. 08/321,941
4
of the claim. The properly interpreted claim must then be
compared with the prior art. Claim interpretation must begin
with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Accordingly, we will initially direct our attention to
the term “miniaturized” in the appealed claims. This word is a
term of degree. Thus, there must be some standard or guideline
for measuring that degree when the claim language is read in
light of the specification as required in Seattle Box Co. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984).
Appellant’s specification (see pages 3 and 5) makes it
clear that the module containing the GPS receiver is required
to be small enough to be hidden or concealed on a person’s
body or, in appellant’s words, “concealment on the person”
(specification, page 3) (e.g., less than 10 cubic inches as
recited in original claim 13, “on the order of two inches
square, more or less, with a thickness of one-half inch, more
or less” (specification, page 7)). Thus, when read in light of
the specification, the recitation that the module is
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“miniaturized” requires the module to be small enough to be
concealable on a person’s body as in the dimensional range
noted supra.
The Eberwine patent does not expressly disclose any
particular size for the module (1) containing the GPS
receiver. Although it would be expected that Eberwine’s module
is relatively small because of space constraints in an
aircraft (note column 6, lines 9-10 of the Eberwine
specification), there nevertheless is no disclosure, express
or inherent, that Eberwine’s module is so small as to be
concealable on a person’s body or, more particularly, “readily
concealable” (claim 9, line 3; specification, page 5) as
required in appellant’s invention.
Furthermore, we agree with appellant that a description
in Eberwine’s specification (see column 6, line 55) that the
locating unit may be “mobile” does not necessarily mean that
the unit is also “portable” as required in independent claim
9. According to Webster’s Third New International Dictionary
(G.
& C. Merriam Company, 1971), the word “portable” is defined as
being “capable of being carried: easily or conveniently
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transported.” According to the same dictionary source, the
word “mobile” merely means “capable of moving or being moved
from one place to another.” The terms “portable” and “mobile”
therefore are not synonymous.
Based on the foregoing analysis of the Eberwine patent,
we cannot agree that this reference expressly or inherently
discloses each and every element of appealed claim 9.
Accordingly, Eberwine does not anticipate the subject matter
of claim 9 and, hence, the subject matter of claims 10 and 11,
which depend from claim 9. We therefore must reverse the §
102(e) rejection of claims 9 through 11. See In re Schreiber,
128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), In
re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994), and RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)
(For a reference to be properly anticipatory, each and every
element of the rejected claim must be found either expressly
or inherently in the applied reference.).
With regard to the § 103 rejection, the examiner
concludes that the teachings of Durboraw would have made it
obvious to package Eberwine’s position determination and
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Application No. 08/321,941
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communication module “in a small enclosure to save space and
weight” (answer, page 5). We also cannot sustain this
rejection.
The relevant inquiry under § 103 is whether there is a
reason, suggestion or motivation in the prior art that would
have led one of ordinary skill in the art to combine the
references in a manner to meet the terms of the claims. See
e.g., In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531-1532 (Fed. Cir. 1988).
In the present case, Eberwine does not expressly disclose
the size of his geographic position determination and
communication module 1, although it is expected that
Eberwine’s module is relatively small because of space
constraints in an aircraft as discussed supra. Durborow, on
the other hand, merely discloses a geographic position
determination module that is small enough to be portable and
to be hand-held.
There is no teaching in the first instance that
Durborow’s module is any smaller than the size of the module
which one skilled in the art would expect to find in
Eberwine’s aircraft to warrant the substitution of Durborow’s
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modular enclosure in Eberwine’s system for the purpose stated
by the examiner on page 5 of the answer. Furthermore, even
assuming for the sake of argument that the size of Durborow’s
module were substituted for that of Eberwine’s module, there
is no teaching or suggestion in either reference that the
resulting size would be small enough to be considered as being
“miniaturized” to the extent that appellant’s module is
miniaturized when read in light of appellant’s specification.
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The examiner’s decision to reject claims 9 through 11
under § 102(e) and to reject claims 1 through 8 and 12 through
18 under § 103 is therefore reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
bae
Appeal No. 1996-3495
Application No. 08/321,941
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John G. Posa
280 N. Woodward Avenue
Suite 400
Birmingham, MI 48009