Ex Parte Stewart

Board of Patent Appeals and Interferences

Jul 22, 2005

09755650 (B.P.A.I. Jul. 22, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Brett B. Stewart
____________
Appeal No. 2005-0170
Application No. 09/755,650
ON BRIEF
____________
Before JERRY SMITH, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-9, 11-
13, 15-23, 26-36, 38-42, and 46-71, which are all of the claims pending in this
application.
We REVERSE.
Appeal No. 2005-0170
Application No. 09/755,650
2
BACKGROUND
Appellant's invention relates to a distributed network system which transmits
information to users based on past transactions of the users. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A distributed communications service system, comprising:
a mobile unit carried by a user, wherein said mobile unit is
configured to transmit identification information indicating a user of the
mobile unit, wherein the mobile unit transmits the identification information
in a wireless fashion;
a network;
a plurality of distributed wireless access points coupled to said
network, wherein each of said plurality of wireless access points is
configured to generate a wireless signal to cause a mobile unit in proximity
to the wireless access point to generate a response, wherein each of said
plurality of wireless access points is also configured to receive the
identification information indicating the user of the mobile unit, wherein,
after detection of said mobile unit by a first wireless access point of said
plurality of wireless access points in proximity to said mobile unit, and after
receipt of the identification information indicating the user of the mobile
unit, one or more past transactions of the user of the mobile unit are
identified, and said first wireless access point transmits information to said
mobile unit that is dependent upon the past transactions of the user of the
mobile unit, wherein the first wireless access point transmits the
information to the mobile unit in a wireless fashion.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Appeal No. 2005-0170
Application No. 09/755,650
3
Lawlor et al. (Lawlor) 6,202,054 Mar. 13, 2001
(Filed Feb. 6, 1998)
Rudow et al. (Rudow) 6,236,360 May 22, 2001
(Filed Sep. 8, 1995)
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the answer
(mailed Apr. 30, 2004) for the examiner's reasoning in support of the rejections, and to
the brief (filed Feb. 17, 2004) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
Appeal No. 2005-0170
Application No. 09/755,650
4
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must
rest on a factual basis with these facts being interpreted without hindsight reconstruction
of the invention from the prior art. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988).
When determining obviousness, "the [E]xaminer can satisfy the burden of
showing obviousness of the combination `only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
Appeal No. 2005-0170
Application No. 09/755,650
5
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact." Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d
1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
language of independent claim 1. Independent claim 1 recites that “each of said
plurality of wireless access points is configured to generate a wireless signal to cause a
mobile unit in proximity to the wireless access point to generate a response, wherein
each of said plurality of wireless access points is also configured to receive the
identification information indicating the user of the mobile unit.” Independent claim 1
further recites that “one or more past transactions of the user of the mobile unit are
identified, and said first wireless access point transmits information to said mobile unit
that is dependent upon the past transactions of the user.”
The examiner maintains that the teachings of Rudow teach the claimed system,
but for the use of the past transactions in selection or personalizing of the
Appeal No. 2005-0170
Application No. 09/755,650
6
information/messages which are deemed to be advertising. (Answer at pages 4-6 and
12-13.)
Appellant argues that the combination of Rudow and Lawlor does not teach or
suggest the above limitations. (Brief at pages 6-8.) The examiner seems to miss the
point of appellant’s discussion of the teachings of Rudow with respect to activation of
communication based upon location and not that the access point generates a wireless
signal to cause the mobile unit to generate a response. From our review of the
teachings of Rudow, we find that while Rudow does teach that polling had been used in
the prior art, Rudow teaches the use of TDM rather than polling since polling is very
bandwidth inefficient. Therefore, we find that while polling was known, the examiner
has merely combined this additional teaching as part of the system of Rudow which it is
clearly not. Additionally, the examiner expands upon the brief statement of the prior art
known polling by a base station, but the examiner does not address this teaching in
combination with the claim as a whole which requires “a plurality of distributed wireless
access points coupled to said network, wherein each of said plurality of wireless access
points is configured to generate a wireless signal to cause a mobile unit in proximity to
the wireless access point to generate a response.” Rudow merely teaches that a
singular base station performs the polling to determine location rather than when the
mobile unit comes in proximity to the access point. Therefore, we do not find that the
examiner has established a prima facie case of obviousness of the invention as
claimed. We find that the examiner has picked and chosen various teachings in the
Appeal No. 2005-0170
Application No. 09/755,650
7
prior art in an attempt to reconstruct the claimed invention. Additionally, we find that the
teachings of Lawlor are not as “similar” as the examiner maintains for combining the
teachings. The examiner maintains that “both references disclose system for
presenting personalized messages to a specific mobile [sic] unit and that it would have
been obvious to one of ordinary skill to look to other personal messages systems when
attempting to develop a personalized message system.” (Answer at page 13.) We find
the two teachings to be relatively non-analogous and do not find any teaching of the use
of mobile units as maintained by the examiner. Appellant argues that Lawlor also
teaches that the user at the remote terminal must initialize the communication and
authorization rather than a mobile unit in proximity to an access point.
Appellant argues that the advertisements presented by Rudow are based upon
cart location rather than past transactions. (Brief at page 8.) Appellant argues that the
teaching of Lawlor with respect to financial banking and the use of a historical database
of past transactions and/or demographic information for determination of advertising
would not be combinable with the teaching of Rudow with respect to a dissimilar field of
golf course services. We agree with appellant and do not find that it would have been
obvious to combine the teachings of the two references to achieve the claimed
invention. Moreover, we find no data collected in a database in Rudow which would
have been readily usable by the system to personalize the advertisements. While we
could speculate as to various combinations and uses of doing banking and business
Appeal No. 2005-0170
Application No. 09/755,650
8
transactions on the golf course and thereby having those types of data available, that
would be mere unsupported speculation which we will not do. Therefore, we find that
the examiner has not established a prima facie case of obviousness, and we cannot
sustain the rejection of independent claim 1 and its dependent claims. Similarly, we find
that the examiner has not established a prima facie case of obviousness, and we
cannot sustain the rejection of independent claims 13, 23, 36, 38, 39, 42, 46, 58, 59 and
71 and their dependent claims.
Appeal No. 2005-0170
Application No. 09/755,650
9
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-9, 11-13, 15-23,
26-36, 38-42, and 46-71 under 35 U.S.C. § 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JD/rwk
Appeal No. 2005-0170
Application No. 09/755,650
10
JEFFREY C. HOOD
MEYERTONS HOOD KIVLIN KOWERT & GOETZEL
P.O. BOX 398
AUSTIN, TX 78767-0398