Ex Parte Szoke

Board of Patent Appeals and Interferences

Feb 19, 2010

09699192 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNEST G. SZOKE
____________

Appeal 2009-007119
Application 09/699,192
Technology Center 2400
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Decided: February 19, 2010
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and JAMES
R. HUGHES, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-007119
Application 09/699,192

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 5, 7, and 12-19, which are all the claims
remaining in the application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellant’s invention relates to integration of the Global Positioning
System (“GPS”) into the Internet. Spec. 1:6-7.

Representative Claim
1. An integrated system comprising the Global Positioning System,
the Internet, a sending computer terminal, and a receiving computer
terminal, wherein said computer terminals are each positioned with a GPS
unit so that the Global Positioning System identifies the global locations of
both the sending computer terminal and the receiving computer terminal,
and wherein the computer terminals communicate with each other over the
Internet.

Prior Art
Alcorn US 6,104,815 Aug. 15, 2000
Phillips US 6,351,221 B1 Feb. 26, 2002

1 The Board decided an earlier appeal in this application. See Decision on
Appeal 2007-1413, entered July 31, 2007.
Appeal 2009-007119
Application 09/699,192

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Examiner’s Rejections
Claim 2 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1, 2, 4, 5, 7, 12-14, 17, and 19 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Phillips.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips and Alcorn.

ANALYSIS -- 35 U.S.C. 112, SECOND PARAGRAPH
The Examiner opines that “the direct integration” in claim 2 lacks
proper antecedent basis in the claims and renders the claim indefinite.
However, the Examiner indicates that merely changing “the” to “a” in the
claim would overcome the rejection. Ans. 4, 10.
Appellant argues that the recitation in controversy further limits claim
1 and further describes “[a]n integrated system” in claim 1. App. Br. 15.
We will sustain the § 112, second paragraph of claim 2. The phrase
“the direct integration” of claim 2 implies there is but one way to directly
integrate the GPS units into the computer terminals, the “one way” being
unspecified by the disclosure. Moreover, Appellant indicates (Reply Br. 3)
that the Examiner’s suggestion for amending the claim is acceptable.

Appeal 2009-007119
Application 09/699,192

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FINDINGS OF FACT
Phillips
1. Phillips is directed to a method and apparatus for distance-
based notification in a two-way wireless communication system. Col. 1, ll.
7-10.
2. The exemplary system includes a controller 112 (Fig. 1),
conventional base systems 116, and portable subscriber units 122. The base
stations 116 preferably communicate with the portable subscriber units 122
using conventional radio frequency (RF) techniques. Col. 2, ll. 6-16.
3. The controller 112 is preferably coupled by telephone links 101
to a public switched telephone network (PSTN) 110 for receiving call
message originations, comprising data messages, from a conventional
telephone 111 or a conventional computer 117. Alternatively, the Internet
may be used for receiving selective call originations. Col. 2, ll. 53-63.
4. A portable subscriber unit 122 (Fig. 2) can include a Global
Positioning System (GPS) receiver 234 for determining the location of the
unit. Col. 3, ll. 56-61.
5. The controller 112 (Fig. 3) can include a GPS receiver 334 for
determining the location of the controller. Col. 4, ll. 52-56.
6. Using the location information received from the GPS units, the
system can send messages to the portable subscriber units based on the
relative distances between individual units. Col. 4, l. 59 et seq.

Alcorn
7. Alcorn describes a remote communication terminal 10 (Fig. 1)
that includes a GPS receiver 20. The terminal communicates over the
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Internet with a host server 15 (Fig. 2), which is equipped with a GPS
receiver 30. Abstract; col. 4, l. 56 - col. 5, l. 7; col. 6, ll. 41-59.

PRINCIPLES OF LAW -- ANTICIPATION
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS -- 35 U.S.C. §§ 102 and 103
In the rejection of claim 1 as being anticipated by Phillips, the
Examiner appears to identify portable subscriber units 122 (Fig. 1) as
corresponding to the claimed “computer terminals.” However, the rejection
also cites column 4, lines 52 through 56, which describes a GPS receiver
associated with the controller 112. In any event, the “computer terminals,”
whether or not the terminals are deemed to include the controller 112, are
found to “communicate with each other over the Internet.” Phillips is cited,
at column 2, lines 59 through 63, as support for the finding with respect to
communication over the Internet. Ans. 4-5; see also FF 2-6.
In response to Appellant’s argument that Phillips does not show the
computer terminals, as claimed, communicating over the Internet, the
Examiner relies on another portion of the reference. The Examiner, in the
response, appears to identify the portable subscriber units 122 as the
“computer terminals” (i.e., not including the controller 112).
Phillips also teaches a computer 117 can perform all of the
processing of the present invention (see column 3, lines 1-3).
Therefore all communications among the portable subscriber
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units 122 (computer terminals) must travel via the PSTN
network. Phillips further teaches that the network of Figure 1
can comprise the Internet. Therefore the combinational
teachings of Phillips, clearly enables one of ordinary skill in the
art to replace the PSTN network #110 of Figure 1 to the
Internet and communication among portable subscriber units
122 to occur via the Internet.

Ans. 12-13.
Phillips, in the paragraph bridging columns 2 and 3, describes an
embodiment in which the computer 117 (Fig. 1) can be coupled directly to
controller 112 and function as a server for providing applications for the
wireless communication system. Phillips next describes another
embodiment (col. 3, ll. 1-3) in which the computer 117 can be included in
the definition of the “controller,” with the computer performing “part or all
of the processing of the present invention.”
Phillips appears to only mention the “Internet” in the context at
column 2, lines 53 through 63. Specifically, the Internet may be used for
receiving “selective call originations,” with the Internet or another type of
network serving the function of the PSTN as shown in Figure 1 of the
reference. The “selective call originations” comprising data messages that
may be generated by computer 117 and transmitted over the PSTN (or the
Internet) appear to represent communication of data between the computer
117 and one or more of the portable subscriber units 122. We find no hint in
the reference that the portable subscriber units must, or even may,
communicate with one another through computer 117 (and over PSTN or
Internet 110).
Phillips does not specify the architecture of a system in which the
computer 117 (Fig. 1) can be a “controller,” with the computer performing
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“part or all of the processing of the present invention.” Although Phillips
describes the controller 112 as being equipped with a GPS unit, we find no
disclosure or requirement in the reference that the computer 117, serving as
a controller, would be equipped with a GPS unit and would communicate
with one or more of the portable subscriber units over the Internet. Nor do
we find any disclosure or requirement that the portable subscriber units
would communicate with one another, via the controller/computer, over the
Internet.
The rejection appears to stray from the requirements of anticipation in
alleging that “the combinational teachings of Phillips, clearly enables one of
ordinary skill in the art to replace the PSTN network #110 of Figure 1 to the
Internet.” Ans. 12-13. In any event, merely replacing the PSTN network of
Phillips’ Figure 1 with the Internet is clearly an embodiment described by
the reference. However, we agree with Appellant that the rejection fails to
show an embodiment described by Phillips in which (as in claim 1)
computer terminals are each positioned with a GPS unit so that the Global
Positioning System identifies the global locations of both the sending
computer terminal and the receiving computer terminal, and “wherein the
computer terminals communicate with each other over the Internet.”
Thus, claim 1, and the dependent claims rejected under § 102, have
not been demonstrated to be anticipated by Phillips. Nor has the other
independent claim on appeal (claim 19), which recites limitations similar to
those of claim 1, been shown to be anticipated by Phillips.
Further, the § 103 rejection of dependent claim 18 over Phillips does
not remedy the deficiencies in the rejection applied against base claim 1.
The rejection of dependent claims 15 and 16 under § 103(a) does not rely on
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Alcorn for its teaching of a terminal communicating over the Internet with a
host server, each being equipped with a GPS receiver (FF 7). The rejection
applies Alcorn only for its teachings with respect to communicating time and
position information over the Internet (claim 15) and for encryption (claim
16). The combination of Phillips and Alcorn as applied thus does not
remedy the deficiencies in the rejection of base claim 1.
Thus, we cannot sustain the § 102 or § 103 rejection of any claim on
appeal.

DECISION
The rejection of claim 2 under 35 U.S.C. § 112, second paragraph, is
affirmed.
The rejection of claims 1, 2, 4, 5, 7, 12-14, 17, and 19 under 35 U.S.C.
§ 102(e) as being anticipated by Phillips is reversed.
The rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Phillips is reversed.
The rejection of claims 15 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Phillips and Alcorn is reversed.
Because we have sustained at least one ground of rejection against
claim 2, the Examiner’s decision is affirmed-in-part.

Appeal 2009-007119
Application 09/699,192

9
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).
See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

rwk

Henry E Millson Jr
675 Golden Hawk Dr
Prescott AZ 86301