Ex Parte Sakata

Board of Patent Appeals and Interferences

Dec 30, 2009

10348003 (B.P.A.I. Dec. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KAZUHIRO SAKATA
____________________

Appeal 2009-005942
Application 10/348,0031
Technology Center 2400
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Decided: December 31, 2009
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Before JOHN C. MARTIN, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is NEC Corporation.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellant’s invention concerns a location notification control system
and method within a mobile user terminal network for allowing location
content-related service providers access to mobile user terminal location
information based upon notification control conditions that define when the
user’s location is to be sent to a server for the purpose of receiving location
content-related services. For the purpose of initiating a location content-
related service, the user transmits a notification request that includes a
notification control condition from the user terminal to a storage unit for the
purpose of storing the notification control condition. A location detector
continuously detects the location of the user terminal. The system further
includes a controller that controls when the location information of the user
terminal is sent to the server depending on whether the notification control
condition is satisfied (Spec. 3: 7-15).
Claim 1 is exemplary:
1. A system for providing a mobile user terminal with location content-
related services, comprising:
a storage for storing a notification control condition included in a
notification request including a user terminal identification number
transmitted by the user terminal requesting the location content-related
services;
a location detector for detecting a location of the user terminal; and a
controller controlling transmission of user terminal location information to a
location content-related services server depending on whether the
notification control condition is satisfied,
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wherein the location content-related services server transmits location
content- related information to the user terminal based on the user terminal
transmitted notification request.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hansen US 6,493,755 B1 Dec. 10, 2002
Rice US 2003/0023726 A1 Jan. 30, 2003

Claims 1-6, 8, and 10-13 stand rejected under 35 U.S.C. 102(e) as
being anticipated by Rice.
Claims 7, 9, and 14-20 stand rejected under 35 U.S.C. 103(a) as being
unpatenable over Rice in view of Hansen.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed February 15, 2008) and the
Examiner’s Answer (mailed April 2, 2008) for their respective details.

ISSUES
Appellant contends that the request for location information in Rice
originates from a client application, yet the problem addressed by the
Appellant’s invention is that of allowing the user to place limitations on
requests that originate from the user’s own terminal (App. Br. 6). Appellant
contends that the events of concern in secondary reference Hansen are not
reasonably related to notifications within an application program such as
occurring in primary reference Rice (App. Br. 9).
The Examiner finds that Rice teaches a storage unit for storing
notification control conditions that are transmitted by the user terminal
requesting location content-related services (Ans. 3). The Examiner finds
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that Hansen teaches automatic notification rule definition for a network
management system (Ans. 11).
Appellant’s contentions present us with the following two issues:
1. Did Appellant show that the Examiner erred in finding that Rice
teaches a notification request having a notification control condition
transmitted by the user terminal requesting the location content-related
services and a controller controlling the transmission of user terminal
location information depending on whether the notification control condition
of the notification request is satisfied?
2. Did Appellant show that the Examiner erred in finding that there is
motivation to combine Rice and Hansen since the events of concern in
Hansen are not reasonably related to notifications within the system
disclosed in Rice?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns a location
notification control system and method within a mobile user terminal
network for allowing location content-related service providers access to
mobile user terminal location information based upon notification control
conditions that define when the user’s location is to be sent to a server for
the purpose of receiving location content-related services. For the purpose
of initiating a location content-related service, the user transmits a
notification request that includes a notification control condition from the
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user terminal to a storage unit for the purpose of storing the notification
control condition. A location detector continuously detects the location of
the user terminal. The system further includes a controller that controls
when the location information of the user terminal is sent to the server
depending on whether the notification control condition is satisfied (Spec. 3:
7-15).
Rice
2. Rice discloses location based services provided to wireless
communication devices, wherein value-added services are provided to
subscribers based on geographic location of a wireless device within a
wireless network. For example, subscribers may be able to access
information about businesses which are in close geographical proximity to
their wireless communication devices (¶ [0004]).
3. Rice teaches a system and method for controlling access to
location information wherein a wireless device user may wish to limit access
to their location information by establishing a profile to be stored in memory
which may include identification information for the device, a description of
at least one client application to which location information may be provided
when requested and privacy preference which controls the manner in which
location information is provided to the client application (¶¶ [0006], [0007]).
4. Rice teaches that the subscriber profile is stored in the database
250 of the access manager 40 (¶¶ [0031], [0040]).

Hansen
5. Hansen teaches a network management system having an
automatic notification rule, wherein the automatic notification rule is a
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description of a type of event or set of conditions that trigger a notification
for the purpose of notifying a user or an administrator (col. 1, ll. 19-48, col.
5, ll. 14-65).

PRINCIPLES OF LAW
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
In an appeal from a rejection for anticipation, Appellant must explain
which limitations are not found in the reference. See Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e expect that the Board's
anticipation analysis be conducted on a limitation by limitation basis, with
specific fact findings for each contested limitation and satisfactory
explanations for such findings.”)(emphasis added). See also In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006)
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On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
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divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Claims 1-6, 8, and 10-13
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites “a storage for storing a notification control condition
included in a notification request including a user terminal identification
number transmitted by the user terminal requesting the location content-
related services.”
Appellant contends that the request for location information in Rice
originates from a client application, yet the problem addressed by the
Appellant’s invention is that of allowing the user to place limitations on
requests that originate from the user’s own terminal (App. Br. 6).
The Examiner finds that Rice teaches a storage unit for storing
notification control conditions that are transmitted by the subscriber
requesting location content-related services (Ans. 3).
We are not persuaded by Appellant’s arguments. We agree with the
Examiner’s finding that Rice teaches all of the limitations of claim 1.
Specifically, Rice discloses that the subscriber makes a request for location-
based services by sending predetermined conditions indicating when its
location should be sent to the client application by defining a subscriber
profile that includes identification of the device along with a description of
at least one client application to which location information may be provided
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when requested along with privacy preferences (FF 2, 3). The subscriber
profile is stored in a database 250 of access manager 40 (FF 4). Thus, Rice
discloses a method meeting the claim limitations of claim 1, wherein the
user establishes the location content-related service by sending a request to
store notification control conditions in which the subscriber will receive
location content-related information based upon whether the notification
control condition is satisfied.
Appellants have not shown error in the Examiner’s rejection of claims
1-6, 8, and 10-13 under 35 U.S.C. § 102. Thus, we will sustain the rejection.
Claim 7, 9, and 14-20
Claims 7 and 14 each recite “wherein the notification request further
includes a second condition” and “notifying the location content-related
services server of the location of the user terminal when the second
condition is not satisfied.”
Claim 9 depends from claim 7. Claims 14, 17, and 20 depend from
claim 13. Claims 15 and 18 depend from claim 1. Claims 7, 16, and 19
depend from claim 6.
The Examiner finds that Hansen teaches automatic notification rule
definition for a network management system (Ans. 11).
Appellant contends that the events of concern in Hansen are not
reasonably related to notifications within an application program such as
those occurring in Rice (App. Br. 9). As a result, Appellant contends that
the Examiner has failed to establish a proper motivation to combine and
thereby fails to establish a prima facie obviousness rejection (App. Br. 10).
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The Examiner fails to address Appellant’s argument that the teachings
of Hansen are not reasonably related to those of Rice. We therefore agree
with Appellant that the Examiner’s motivation to combine is erroneous.
As a result, we find error in the Examiner’s rejection of claims 7, 9,
and 14 under 35 U.S.C. § 103 and we will not sustain the rejection.
Appellants present no arguments for the patentability of claims 15-20.
Accordingly, we affirm pro forma the Examiner’s rejection of these claims.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that Rice
teaches a notification request having a notification control condition
transmitted by the user terminal requesting the location content-related
services and a controller controlling the transmission of user terminal
location information depending on whether the notification control condition
of the notification request is satisfied.
Appellant has shown that the Examiner erred in finding that there is a
reason to combine Rice and Hansen since the events of concern in Hansen
are not reasonably related to notifications within the system disclosed in
Rice.

ORDER
The Examiner’s rejection of claims 1-6, 8, 10-13, and 15-20 is
affirmed. The Examiner’s rejection of claims 7, 9, and 14 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED-IN-PART

ELD

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