Ex Parte Simons

Board of Patent Appeals and Interferences

Mar 9, 2009

10213421 (B.P.A.I. Mar. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL R. SIMONS
____________

Appeal 2009-0752
Application 10/213,421
Technology Center 2600
____________

Decided:1 March 9, 2009
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and R. EUGENE
VARNDELL, JR., Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-5, 7-12, 14-17, 19, and 20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection
under 37 C.F.R. § 41.50(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0752
Application 10/213,421

STATEMENT OF THE CASE
Appellant invented a communications system involving the
consensual delivery of services from radio beacons to a user’s portable
device. Specifically, the user registers the portable device at a registration
beacon. This beacon has a broadcast range that is constrained within an
indicated interaction zone. As such, the user must position their portable
device within the indicated interaction zone to register for service delivery.2
Claims 1 and 19 are illustrative:
1. A communications system comprising a beacon device for
providing interactive services, the beacon device capable of wireless
transmissions according to a communications protocol over a broadcast
range, and at least one portable device capable of receiving said
transmissions according to said protocol, said beacon broadcast range is
constrained substantially within an indicated interaction zone that includes
visual or physical indication to identify the limits of the interaction zone to a
user, wherein the beacon transmission constrained within the indicated
interaction zone comprise service registration offers to receive additional
information regarding offers, the offers being accepted by said portable
device when the portable device is placed within said indicated interaction
zone.

19. A method for enabling a user of a portable device to perform
service interaction with a communications system, the system comprising a
service interaction beacon operable to broadcast services wirelessly over a
broadcast range, wherein the broadcast range of the beacon is constrained
and visually or physically indicated as an interaction zone to a user of a
portable device, the method comprising the steps of:

broadcasting, by the beacon, offering services wirelessly over said
indicated interaction zone;

2 See generally Abstract; Spec. 3:9−6:30.
2
Appeal 2009-0752
Application 10/213,421

receiving the broadcasts at the user's portable device when positioned
within said indicated interaction zone and

making available a menu of different offering service interactions
available from witch the user selection for registration may be made,
wherein the beacon provides at least enabling the portable device to receive
additional information associated with the provided information keys.

The Examiner relies on the following prior art references to show
unpatentability:
Ross US 6,332,098 B2 Dec. 18, 2001
Borgstahl US 6,487,180 B1 Nov. 26, 2002
(filed Nov. 3, 1999)
Fuyama US 6,737,986 B2 May 18, 2004
(filed Jan 3, 2002)
Himmel US 6,889,054 B2 May 3, 2005
(filed Mar. 29, 2001)
Te-Eni WO 99/55102 A1 Oct. 28, 1999

1. The Examiner rejected claims 1-5, 7, 8, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Fuyama and Himmel (Ans. 3-8).
2. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Fuyama, Himmel, and Borgstahl (Ans. 8-9).
3. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Fuyama, Himmel, and Ross (Ans. 9-10).
3
Appeal 2009-0752
Application 10/213,421

4. The Examiner rejected claims 11, 12, and 14-17 under 35 U.S.C.
§ 103(a) as unpatentable over Fuyama, Himmel, and Te-Eni3 (Ans.
10-12).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE OBVIOUSNESS REJECTION OVER FUYAMA AND HIMMEL
Claims 1-5, 7, and 8
Regarding representative claim 1,5 the Examiner finds that Fuyama
discloses a communications system with a portable device that receives
transmissions from a beacon whose broadcast range is constrained within an
indicated interaction zone. According to the Examiner, Fuyama discloses all
claimed subject matter except for the beacon’s transmission to comprise

3 Although the Examiner and Appellant refer to this PCT published
application as “Ben” (Ans. 3; Br. 4, 9), this name is actually the inventor’s
first name. See WO 99/55102, at 1 (listing “Ben Te-Eni” as the named
inventor in Sections (71) and (72)). For clarity and formality, we refer to
this reference by the inventor’s surname, “Te-Eni.”
4 Throughout this opinion, we refer to the Appeal Brief filed May 30, 2007
and the Examiner’s Answer mailed Aug. 14, 2007.
5 Appellants argue claims 1-5, 7, and 8 together as a group (Br. 5-8) and
separately argue claims 19 and 20 (Br. 8-9). Accordingly, we select (1)
claim 1 as representative of the first group comprising claims 1-5, 7, and 8,
and (2) claim 19 as representative of the second group comprising claims 19
and 20. See 37 C.F.R. § 41.37(c)(1)(vii).

4
Appeal 2009-0752
Application 10/213,421

service registration offers to receive additional information regarding offers
that are accepted when the portable device is within the indicated interaction
zone. The Examiner, however, relies on Himmel as teaching this feature in
concluding the claim would have been obvious (Ans. 3-5).
Appellant argues that there is no apparent reason why skilled artisans
would combine Fuyama’s electronic toll system with Himmel’s system that
provides scheduled advertisements to a mobile phone as the Examiner
proposes (Br. 5-6). Appellant adds that even if there was a reason to
combine the references, the combination would be unsatisfactory for its
intended purpose of allowing a user to register to selectively receive (or not
receive) additional information by placing a portable device within an
identified broadcast region. According to Appellant, registration to receive
advertisements in the Fuyama/Himmel system would not be selective, but
rather would occur whenever a user drives through a toll plaza (Br. 6-7;
emphasis added).
Appellant also disputes the Examiner’s reliance on Himmel for
teaching the beacon transmission to comprise service registration offers.
According to Appellant, Himmel does not transmit a beacon to enable
registration of the user’s device, but merely transmits location-dependent
advertisements based on the location of the user’s device. Moreover,
Appellant contends, the user in Himmel registers to receive scheduled
advertisements independently: once registered, there is no need for a beacon
to facilitate subsequent registrations (Br. 7-8).
The Examiner contends that the references are in the same field of
endeavor since Fuyama limits the interaction zone, and Himmel limits the
area serviced (Ans. 13-14).
5
Appeal 2009-0752
Application 10/213,421

Claims 19 and 20
Regarding representative claim 19, Appellant argues that the
Examiner failed to establish a prima facie case of obviousness since the
Examiner did not identify where the elements of claim 19 that are distinct
from claim 1 are found in the prior art. Appellant adds that the prior art does
not teach or suggest receiving broadcasts from a beacon at a user’s portable
device, where the beacon enables the portable device to receive additional
information as claimed. In this regard, Appellant notes that Himmel teaches
that the user’s portable device can receive additional information via an
independent communication exchange, not via a beacon signal for offering
services (Br. 8-9).
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has Appellant shown that the Examiner erred in
finding that Fuyama and Himmel collectively teach or suggest:
(a) a beacon transmission constrained within an indicated interaction
zone, where the beacon comprises service registration offers to
receive additional information that are accepted by portable device
when the portable device is placed within the indicated interaction
zone in rejecting claim 1?
(b) receiving broadcasts from a beacon at a user’s portable device,
where the beacon enables the portable device to receive additional
information in rejecting claim 19?

6
Appeal 2009-0752
Application 10/213,421

(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

(3) If so, would this combination render Fuyama unsatisfactory for its
intended purpose?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Fuyama
1. Fuyama discloses an electronic toll collection (ETC) system that
automatically collects tolls by establishing wireless communications
between a roadside antenna 23 of a tollgate and a “vehicle unit” 33 installed
in a traveling vehicle (Fuyama, Abstract; col. 1, ll. 7-10; col. 3, ll. 1-10; Fig.
1).
2. Conventionally, ETC systems determine whether vehicles passing
through the tollgate are ETC vehicles equipped with ETC-compatible
vehicle units. To this end, the ETC system (1) radiates radio waves
responsive to detecting a vehicle via detector S1, and (2) confirms whether
wireless communication is established between the tollgate’s roadside
antenna and the vehicle unit. (Fuyama, col. 1, ll. 11-22; col. 3, ll. 1-35; Figs.
1 and 2.)
3. In one embodiment, the tollgate’s road-to-vehicle wireless
communication zone is covered with a semi-cylindrical domed structure 22
with the antenna 23 installed therein. The inner surface of the domed
7
Appeal 2009-0752
Application 10/213,421

structure is disposed with a radio wave absorbing material 11. As a result,
the roadside antenna establishes wireless communication only with ETC
vehicles traveling inside the domed structure. (Fuyama, col. 4, ll. 10-25;
Figs. 6, 6A.)
Himmel
4. Himmel discloses a system for schedule-based advertising on a
mobile phone 50. When a mobile phone registers with a base station 60, the
primary call center 70 controls transmission of advertisements to the mobile
station in accordance with a schedule preferred by the mobile phone user
(Himmel, Abstract; col. 1, ll. 48-56; col. 2, l. 66 − col. 3, l. 6; col. 4, ll. 30-
37; Fig. 1).
5. Call center 20 includes a computer telephony (CT) server 30,
registration database 40, user profile/history database 41, and an advertiser
database 42 (Himmel, col. 3, ll. 7-9; Fig. 1).
6. CT server 30 includes software 80 including (1) a registration
module 81; (2) an advertising module 82; (3) a monitoring module 83; and
(3) a communications interface 84 (Himmel, col. 6, ll. 23-38, 53-56; Figs. 2,
5).
7. The CT server’s registration module 81 registers mobile phone 50
within database 40 upon receiving a registration notification signal by
communications interface 84 from base station 60. The registration
notification signal indicates that the mobile phone has been formally
registered with the base station (Himmel, col. 6, l. 66 − col. 7, l. 5; Figs. 1, 5,
6).
8. The CT server’s advertising module 82 directs transmission of
advertisements to the mobile phone 50. To this end, the advertising module
8
Appeal 2009-0752
Application 10/213,421

(1) determines the location of the mobile phone as being within the service
area of the base station, and (2) directs a transmission of compiled and
filtered advertisements in accordance with a corresponding transmission
schedule (Himmel, col. 7, ll. 37-65; col. 8, ll. 23-35; Fig. 7).
9. The user can transmit to the CT server’s communication interface
84 (1) a contact command CC indicating a desire to establish a link between
the user’s phone and the call center, or (2) an acknowledge command AC
acknowledging receipt of an advertisement (Himmel, col. 8, ll. 52 − col. 9, l.
20; Fig. 6 (Steps S126, S128)).
10. The CT server’s monitoring module (1) verifies that the mobile
phone received the advertisement, and (2) rewards the user with free phone
minutes or a cash credit responsive to receiving either a contact or
acknowledge command (Himmel, col. 9, ll. 30-41; Fig. 8).
11. To gather user information for a user profile, call center 20 can
offer personal interviews (e.g., face-to-face or telephonically) or accept
applications via walk-ins, the mail system, a telephone, or an Internet
website (Himmel, col. 4, ll. 50-61).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
9
Appeal 2009-0752
Application 10/213,421

Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 127 S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
10
Appeal 2009-0752
Application 10/213,421

Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
“It is impermissible to use the claimed invention as an instruction
manual or 'template' to piece together the teachings of the prior art so that
the claimed invention is rendered obvious. . . .” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (internal citations omitted).
“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 divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citations and internal quotation marks omitted).

ANALYSIS
Claims 1-5, 7, and 8
Based on the record before us, we find no error in the Examiner’s
obviousness rejection representative claim 1 which calls for, in pertinent
part, a beacon transmission constrained within an indicated interaction zone,
where the beacon comprises service registration offers to receive additional
information that are accepted by portable device when the portable device is
placed within the indicated interaction zone.
We note at the outset that, as a general proposition, merely reciting
“service registration offers” in connection with the beacon transmission
pertains to the content of the transmission. As such, this limitation
constitutes non-functional descriptive material as it does not further limit the
claimed invention either functionally or structurally. Such non-functional
11
Appeal 2009-0752
Application 10/213,421

descriptive material does not patentably distinguish over prior art that
otherwise renders the claims unpatentable.6
In any event, we find that Fuyama reasonably suggests this limitation.
As the Examiner indicates (Ans. 12-13), the wireless communication
capability of Fuyama’s ETC system, in effect, functions as a beacon in that
transmissions are sent from a roadside antenna associated with the tollgate to
a vehicle upon detection (FF 2). These transmissions are constrained to an
“indicated interaction zone” by the domed structure which would physically
and visually indicate the limits of that zone. See FF 3.
Although Fuyama’s system pertains to toll collection, nothing in the
claim precludes wireless transmissions related to these types of services.
Furthermore, the fact that Fuyama’s system distinguishes between ETC-
compatible vehicles from other vehicles (FF 2) at least suggests that this
initial communication with an ETC-compatible vehicle constitutes a “service
registration offer” to receive additional information regarding the offer (e.g.,
a subsequent confirmation of the electronically-collected toll).
In reaching this conclusion, we recognize that Fuyama does not
expressly state that the roadside antenna’s initial transmission to the vehicle
unit involves data communication. See FF 1 and 2. Nevertheless, even if
this initial transmission consisted solely of an RF signal (e.g., a continuous
transmission without data), we see no reason why such a transmission could
not involve some sort of data communication, particularly in view of
Himmel’s teaching of wirelessly communicating data from a base station to

6 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, No. 2007-1823, slip op. at 11-17 (BPAI Jan. 28, 2008) (precedential),
available at http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf
(discussing cases pertaining to non-functional descriptive material).
12
Appeal 2009-0752
Application 10/213,421

a portable device. See FF 4 and 8. In short, data communication from the
roadside antenna to the vehicle in Fuyama’s electronic toll collection process
would have been a predictable improvement in lieu of transmitting radio
waves without data. See KSR, 127 S. Ct. at 1740.
As such, the electronically-transmitted “offer” in Fuyama enables the
user to automatically electronically “register” their presence with the system
via a corresponding wireless transmission from the vehicle unit to the
roadside antenna and pay the toll. See FF 2. The scope of the claim simply
does not preclude this “offer” being automatically “accepted” by the vehicle
unit via its corresponding transmission to the roadside antenna and resulting
toll payment. This acceptance is selective in that drivers voluntarily enter
the toll gate facility (and the range of the roadside antenna) and elect to pay
the tolls electronically to use the road.
Therefore, we find no error in the Examiner’s rejection of
representative claim 1 based on the collective teachings of Fuyama and
Himmel. Although we find the Examiner’s articulated rationale in
combining these references to modify Fuyama problematic for the reasons
indicated infra in connection with claim 19, we nonetheless find no error in
relying on Himmel for the limited, fundamental teaching of wirelessly
communicating data to a portable device as noted above.
Therefore, we will sustain the Examiner’s rejection of that claim, and
claims 2-5, 7, and 8 which fall with claim 1.

Claims 19 and 20
We reach the opposite conclusion, however, with respect to
independent claim 19 which calls for, in pertinent part, a method for
13
Appeal 2009-0752
Application 10/213,421

enabling the user of a portable device to perform service interaction with a
communications system where (1) the beacon wirelessly broadcasts offering
services over the indicated interaction zone; (2) the user’s portable device
receives the broadcasts when positioned within that zone; and (3) a menu of
different offering service interactions is available from which user selection
can be made.
Unlike claim 1, claim 19 specifically calls for a user selection menu
and that the beacon enables the portable device to receive additional
information associated with information keys. These features are simply not
taught nor suggested by Fuyama’s electronic toll collection system since that
system merely utilizes wireless communications between the roadside
antenna and the vehicle to effect toll payment: there are no selection menus
in this exchange. See FF 1-2. Nor do we see any reason why such menus
should be added to such a system since it merely pertains to collecting tolls:
any additional menus would only delay—and ultimately hinder—that
process.
Himmel, however, enables a mobile phone to register with a base
station for subsequent receipt of advertisements in accordance with a
corresponding transmission schedule (FF 4, 7, 8, 11). Also, upon receipt of
an advertisement, Himmel’s system enables the user to select several
functions including establishing a link with the call center or acknowledging
receipt of the advertisement (FF 9). Either of these post-advertisement
functions enables the portable device to receive additional information
associated with the service interaction, namely in connection with rewarding
the user for the post-advertisement communications (FF 10).
14
Appeal 2009-0752
Application 10/213,421

Even if we assume that this functionality involves a “menu” of
different selectable offering service interactions, we still see no reason why
skilled artisans would combine this functionality with the toll collection
system of Fuyama absent impermissible hindsight reconstruction using
Appellant’s own disclosure as a blueprint. See Fritch, 972 F.2d at 1266.
Fuyama and Himmel pertain to completely different applications, and there
is simply no rational basis for incorporating Himmel’s teachings directed to
receiving advertisements in wireless phone systems in Fuyama. Even if it
were possible to incorporate Himmel’s teachings in Fuyama (a finding that
we do not reach), sending and receiving advertisements would actually slow
down Fuyama’s electronic toll collection in light of the sophisticated
registration and transmission procedure involved. See FF 4-11.7 Since toll
collection is a process meant to be as fast as possible in view of heavy traffic
and the inevitable delays associated with the toll collection process, adding
further delays to this process by adding registration and advertising
functionality actually runs counter to the goal of a speedy and efficient toll
collection process. In this regard, the references actually teach away from
their combination. See Kahn, 441 F.3d at 990.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of independent claim 19. Therefore, we will not
sustain the Examiner’s rejection of that claim, and dependent claim 20 for
similar reasons.

7 We do, however, find that the fundamental teaching of wireless data
communication suggested by Himmel is reasonably combinable with
Fuyama for the reasons previously indicated with respect to claim 1.
15
Appeal 2009-0752
Application 10/213,421

OTHER REJECTIONS
Likewise, we will sustain the Examiner's obviousness rejections of (1)
claim 9 over Fuyama, Himmel, and Borgstahl (Ans. 8-9); (2) claim 10 over
Fuyama, Himmel, and Ross (Ans. 9-10); and (3) claims 11, 12, and 14-17
over Fuyama, Himmel, and Te-Eni (Ans. 10-12). We find that Appellant
has not particularly pointed out errors in the Examiner’s reasoning to
persuasively rebut the Examiner's prima facie case of obviousness, but
merely noted that additional cited references fail to cure the deficiencies of
the cited prior art in connection with claim 1 (Br. 9-10). Thus, we are not
persuaded that the Examiner erred in rejecting these claims for the same
reasons discussed above with respect to claim 1. The rejections are therefore
sustained.

New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
35 U.S.C. § 112 for claims 19 and 20.
Claims 19 and 20 are rejected under 35 U.S.C. § 112, second
paragraph for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention.
In the last line of claim 19, no antecedent basis exists for “the
provided information keys.”

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-5, 7-12, and 14-17 under § 103. Appellant has, however, shown that the
Examiner erred in rejecting claims 19 and 20 under § 103.
16
Appeal 2009-0752
Application 10/213,421

Under 37 C.F.R. § 41.50(b), we have also rejected claims 19 and 20
under § 112, second paragraph.

ORDER
The Examiner’s decision rejecting claims 1-5, 7-12, 14-17, 19, and 20
is affirmed-in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that “[a] new ground of rejection . .
. shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

17
Appeal 2009-0752
Application 10/213,421

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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
18