Ex Parte Szoke

Board of Patent Appeals and Interferences

Jul 31, 2007

09699192 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNEST G. SZOKE
____________

Appeal 2007-1413
Application 09/699,192
Technology Center 2100
____________

Decided: July 31, 2007
____________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1, 2, 4, 5, 7, and 12-14, the only claims
pending in this application. We have jurisdiction under 35 U.S.C. §§ 6(b),
134(a).
Appeal 2007-1413
Application 09/699,192

INTRODUCTION
The claims are directed to a system comprising the Global Positioning
System, the Internet, and a sending and receiving computer terminal. Claim
1 is illustrative:
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.

The Examiner relies on the following prior art reference to show
unpatentability:
Kawamoto US 6,169,902 B1 Jan. 2, 2001
(filed Apr. 8, 1998)

The rejection as presented by the Examiner is as follows:
1. Claims 1, 2, 4, 5, 7, and 12-14 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Kawamoto.
The Examiner mailed a Final Rejection on July 8, 2004. Several
papers have been provided by Appellant and the Examiner subsequent to the
final rejection. The papers that we have considered in this appeal are the
Final Rejection, the Brief (filed Oct. 6, 2006), the Examiner’s Answer
(mailed Dec. 18, 2006), and the Reply Brief (filed Jan. 8, 2007).

OPINION
The Examiner finds that all the instant claims are anticipated by the
disclosure of Kawamoto. The reference describes a communication network
system (Fig. 1) that interconnects information terminals 10 and personal
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Application 09/699,192

computers 16-1 to 16-4. Information terminal 10, which may be a telephone
such as a Personal Handyphone System (PHS), is linked to the Internet 24
through public communications network 15, one of access points 17-1 to 17-
6, and communications network 21. Kawamoto col. 1, ll. 24-27; col. 2, ll.
55-67.
Information terminal 10 can access the Internet 24 through gateway
22. Terminal 10 can thus search and retrieve information from any of
WWW (World Wide Web) servers 25 residing on the Internet. Kawamoto
col. 3, ll. 1-15. Each information terminal 10 is connected to public
communications network 15 through base station 11 and exchange 12. The
information terminals can thus mutually exchange voice or data with other
information terminals connected to the network. Id., ll. 16-35.
As shown in Kawamoto Figure 2, information terminal users (e.g., A,
B, C, D) may form one group. Each user may access information providing
apparatus 13 to register the current location of the user, and to retrieve
positional information of other users in the group. Col. 3, ll. 36-45.
Information terminal 10 may contain a GPS receiver for fixing the present
position. Col. 6, ll. 31-43. Kawamoto further describes details of the
system, which may include information terminal 10 having a display (Figs.
10-12) that shows positional information of other users in the group.
Kawamoto col. 4, l. 43 et seq.
Appellant advances several arguments arising from the belief that the
finding of anticipation is in error. First, Appellant notes that Kawamoto
refers to “personal computers” 16 and to “information terminal” 10.
According to Appellant, the information terminals described by Kawamoto
cannot be considered “computer terminals,” which are recited in instant
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Application 09/699,192

claim 1. In support of the argument, Appellant submits (Br. 9-10, 11) that
Kawamoto does not disclose communicating on the Internet. As we have
noted, however, Kawamoto expressly discloses that information terminals
10 can search and retrieve data on the Internet. Appellant seems to
recognize this fact (Reply Br. 3-4), but falls back on the asserted conclusion
that the information terminals are not “computers.”
Kawamoto provides, at column 3, line 46 through column 4, line 17, a
description of a typical information terminal 10 (Figs. 3-4). According to
the reference, the internal organization (Fig. 4) of the terminal is that of an
information processing apparatus, with a central processing unit (CPU),
electronic memory (ROM, RAM), an input unit, and a display. We therefore
find it reasonable that an information terminal as described by Kawamoto
may be fairly considered by the artisan as falling within the meaning of a
“computer terminal,” notwithstanding the fact that the reference does not use
the term. For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990). Since Appellant
has provided no evidence contrary to the finding that the artisan would
consider the information terminal disclosed by Kawamoto to be a type of
“computer terminal,” we consider the Examiner’s position to be unrebutted.
Nor does Appellant refer to any clear definition in the Specification to
show that the “information” terminals described by Kawamoto cannot be
considered “computer” terminals. On the contrary, the Specification as
originally filed (Specification 3:15-19) indicates that the claimed terminal
may be as portable as an information terminal in the reference.
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Application 09/699,192

Appellant also suggests (e.g., Reply Br. 2-3) that a reading of claim 1
in light of the Specification shows that the computer terminals must be
communicating on the Internet. Again, however, we note that Kawamoto
expressly describes information terminals 10 communicating on the Internet.
Consistent with the Examiner’s reading, we find no requirement in the
claims that the computer terminals communicate with each other on, or over,
the Internet. Claims are to be given their broadest reasonable interpretation
during prosecution, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404,
162 USPQ 541, 550 (CCPA 1969). Our reviewing court has repeatedly
warned against confining the claims to specific embodiments described in
the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323, 75 USPQ2d
1321, 1334 (Fed. Cir. 2005) (en banc). Appellant could have amended the
claim consistent with how Appellant wants the claim to be interpreted. “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, F.2d 893 at 322, 13 USPQ2d at 1322.
Appellant also seems to argue that the system of claim 1 distinguishes
over the reference because the preamble purports an “integrated” system.
The preamble term does not appear to represent a limitation. The preamble
of a claim does not limit the scope of the claim when it merely states a
purpose or intended use of the invention. In re Paulsen, 30 F.3d 1475, 1479,
31 USPQ2d 1671, 1673 (Fed. Cir. 1994). Even if the term is given weight,
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Application 09/699,192

we find that the system described by Kawamoto, as depicted in Figure 1, is
an “integrated” system that contains all the elements set forth in the claim.
Moreover, the reference describes (col. 8, ll. 6-18) further integration of the
Internet with the information terminals.
Appellant also seems to argue (Br. 10) that identifying the “global”
locations of sending and receiving computer terminals distinguishes over
Kawamoto. We find that Kawamoto identifies the global locations of
information terminals 10 when equipped with GPS receivers, consistent with
the well known GPS system. See, e.g., Kawamoto Fig. 9; col. 6, ll. 31-43.
Appellant, further, lists in the briefs several purported advantages of
the instant invention as compared to the system of Kawamoto. While
evidence of “advantages” might be relevant to a rejection under 35 U.S.C.
§ 103 for obviousness, the instant rejection is for anticipation under
35 U.S.C. § 102. The law of anticipation does not require that a reference
“teach” what an applicant’s disclosure teaches. Assuming that a reference is
properly “prior art,” it is only necessary that the claims “read on” something
disclosed in the reference, i.e., all limitations of the claim are found in the
reference, or “fully met” by it. Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983).
We have considered all of Appellant’s arguments in support of instant
claim 1, but we are not persuaded of error in the Examiner’s finding. We
sustain the rejection of claim 1, and of independent claim 14, which relies on
arguments (Br. 15) that we have considered in relation to claim 1.
We further sustain the rejection of claim 2. Appellant relies (Br. 14)
on arguments presented for base claim 1. We sustain the rejection of claim
4, at least because the system of Kawamoto is coupled directly into
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Appeal 2007-1413
Application 09/699,192

telephone network 15. We sustain the rejection of claim 5, at least because
the claim does not specify whether the localized networks are telephone or
computer networks. We sustain the rejection of claim 7, because we
disagree (Br. 14) that the global positioning communication satellite
described by Kawamoto is for an “entirely different purpose.” Claim 7 does
not specify the purpose of the satellite, even assuming that the “purpose”
may be something different from determining the respective locations of the
computer terminals. We sustain the rejection of claim 12 at least for the
reason that Appellant’s argument (Br. 15) relies on base claim 1 language,
previously considered. Finally, we sustain the rejection of claim 13 at least
because the elements described by Kawamoto are electronic (e.g.,
information terminals 10 containing GPS receivers), connecting via
electronic elements (e.g., gateway 22) to Internet 24.

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Appeal 2007-1413
Application 09/699,192

CONCLUSION
In summary, the rejection of claims 1, 2, 4, 5, 7, and 12-14 under
35 U.S.C. § 102(e) as being anticipated by Kawamoto is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rwk

Henry E Millson Jr
675 Golden Hawk Dr
Prescott AZ 86301
8