Ex Parte Oren et al

Patent Trial and Appeal Board

Oct 14, 2014

12227123 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YAIR OREN and STANLEY B. ALTERMAN
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Appeal 2012-009826
Application 12/227,123
Technology Center 3600
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Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–17 and 19–21, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

Appeal 2012-009826
Application 12/227,123

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THE INVENTION
The Appellants’ claimed invention is directed to a system for
transmitting non-GPS information for reception by a GPS receiver (Spec. 3,
ll. 1–8). Claim 1, reproduced below (with bracketed numbering added), is
representative of the subject matter on appeal.

1. A terrestrial system for transmitting non-GPS information for
reception by a global positioning system (GPS) receiver, the system
comprising:
[1] a processor;
[2] a memory coupled to the processor and including
computer-readable instructions configured to, when executed
by the processor, cause the processor to:
[3] receive the non-GPS information;
[4] determine an available pseudo-random noise (PRN)
code;
[5] spread the non-GPS information using the available
PRN code to provide a spread signal;
[6] modulate a GPS carrier frequency using the spread
signal to produce a GPS compatible signal; and
[7] a terrestrial transmitter configured to transmit the
GPS compatible signal.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–17, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gaal (US 6,895,249 B2; iss. May 17, 2005) and
Shemesh (US 2006/0262014 A1; pub. Nov. 23, 2006).
2. Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gaal, Shemesh, and Pemble (US 7,502,686 B1; iss. Mar.
10, 2009).

Appeal 2012-009826
Application 12/227,123

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the prior art does not disclose claim limitations [5] and [6] (App. Br. 6–7).
In contrast, the Examiner has determined that the cited claim
limitations are found in Shemesh at paragraphs 25–27 (Ans. 2–3).
We agree with the Examiner. Claim limitations [5] and [6] require:
[5] spread[ing] the non-GPS information using the
available PRN code to provide a spread signal; [and]
[6] modulat[ing] a GPS carrier frequency using the
spread signal to produce a GPS compatible signal[.]
Initially, we note that the content of the non-GPS information data
field is mere data and considered non-functional descriptive material that
does not affect how the substrate functions. The PTO need not give
patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1582–83
(Fed. Cir. 1994). Here, the content of the data or information does not alter
how the substrate functions in the processor.
Regardless, here the cited prior art does disclose the claimed “non-
GPS information.” The Specification at page 7, lines 1–12, explicitly

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-009826
Application 12/227,123

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describes that non-GPS information is broad enough to include items such as
“location information,” “image files,” “encrypted signals,” “navigation
files,” “map files,” and “document files.” Here, Shemesh’s disclosure of
“null ephemeris and almanac data” at paragraph 27 is therefore considered to
be “non-GPS information” as recited in claim limitation [5]. Shemesh at
paragraph 26 also discloses the use of a code for a PRN satellite identifier
meeting the argued requirements of claim limitation [5] for such a code.
Shemesh at paragraphs 26 and 27 also discloses the use of modulation of the
GPS signal with the claimed non-GPS information meeting the argued
requirements of claim limitation [6]. For this reason, the rejection of claim 1
is sustained.
The Appellants have also argued that the limitations of claim 20
require the non-GPS information to include at least one of a building
address, floor, area, and store name. Again, the contents of the claimed data
field is considered mere data and non-functional descriptive material.
Regardless, the use of such particular data fields would have been obvious as
asserted in the rejection of record to assist in locating the receiver (see Ans.
7). For this reason, the rejection of claim 20 is sustained as well.
The Appellants have provided no separate arguments for the
remaining claims, and the rejection of these claims is sustained for the same
reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.

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Application 12/227,123

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DECISION
The Examiner’s rejections of claims 1–17 and 19–21 are sustained.
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

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