Ex Parte Trautenberg

Board of Patent Appeals and Interferences

Aug 13, 2008

10930785 (B.P.A.I. Aug. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS LUDWIG TRAUTENBERG
____________

Appeal 2007-2878
Application 10/930,785
Technology Center 3600
____________

Decided: August 13, 2008
____________

Before TERRY J. OWENS, HUBERT C. LORIN, and JOHN C. KERINS,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Hans Ludwig Trautenberg (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 1-25. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). An oral hearing in this appeal was held on
April 10, 2008, with Robert W. Mueller, Esq., appearing on behalf of
Appellant.
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At the time of the filing of this appeal, all of claims 1-25 were finally
rejected, and Appellant appealed the rejection of all claims. In the
Examiner’s Answer, a rejection of Claims 1-25 under 35 U.S.C. § 102(b)
in view of WO97/38326 was withdrawn. In addition, a rejection under
35 U.S.C. § 112, second paragraph, based on indefiniteness, was withdrawn
as to claims 8-14, however, that rejection was maintained with respect to
claims 1-7 and 15-25. Claims 1-3, 5-9, 11-16, and 18-25 remain rejected
under 35 U.S.C. § 102(b) as being anticipated by a patent to Schellenberg.
The Examiner’s Answer states that claims 4, 10 and 17 would be allowable
if rewritten in independent form and if rewritten to overcome any rejection
under 35 U.S.C. § 112. Claim 10 is thus not subject to any ground of
rejection currently, and will be regarded as being objected to on the basis
that it is not presented in independent form.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s claimed invention is to a method for the transmission of
navigation data to user terminals of a satellite navigation system, the method
including transmitting positional information for at least one pseudolite as
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part of navigation data, without the use of separate channels or protocols, the
positional information being in the form of a model of a pseudolite trajectory
in a reference coordinate system, with the model accounting for orbit-
divergent motions of the pseudolite.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for the transmission of navigation
data to user terminals of a satellite navigation
system composed of navigation satellites and
pseudolites, comprising:

transmitting positional information for at least one
of the pseudolites as part of the navigation data,
without the use of separate channels or protocols,

wherein the positional information is transmitted in
the form of a model of a pseudolite trajectory in a
reference coordinate system which the model
accounts for orbit-divergent motions of the at least
one pseudolite.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Schellenberg US 5,886,666 March 23, 1999

The following rejections are before us for review:
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1. Claims 1-7 and 15-25 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1-3, 5-9, 11-16, and 18-25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the Schellenberg patent.

ISSUES
A first issue before us is whether Appellant has shown that the
Examiner erred in determining that Claims 1-7 and 15-25 are indefinite. A
second issue before us is whether Appellant has shown that the Examiner
erred in finding that claims 1-3, 5-9, 11-16, and 18-25 are anticipated by the
Schellenberg patent.
FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Schellenberg patent discloses that a pseudolite signal
having positional data to provide a ranging signal may be transmitted from a
pseudolite and used for navigation purposes. (Schellenberg, Col. 4, ll. 20-
23).
FF 2. The pseudolite signal generated in the Schellenberg system may
include a pseudorandom code as well as data information, and Schellenberg
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discloses that the data information can include position information related
to the pseudolite. (Schellenberg, Col. 4, ll. 25-27). The position information
includes information related to an actual location or position of a pseudolite
transmitter, as well as information related to a predetermined fixed point.
(Schellenberg, Col. 4, ll. 4-11).
FF 3. The positional information transmitted by the airborne
pseudolites in the Schellenberg system includes a set of ephemeris data, and
is disclosed as being a modified version of a conventional GPS satellite
ephemeris message. (Schellenberg, Col. 3, ll. 26-28; Col. 4, ll. 41-43). The
positional information is based in part on employing vector error correction
to compensate for the current position of the aircraft-mounted pseudolite
relative to a predetermined fixed point. (Schellenberg, Col. 3, ll. 46-50; Col.
4, ll. 7-11).
FF 4. The aircraft-mounted pseudolites in Schellenberg experience
orbit-divergent motions, as that term is employed by Appellant.
(Schellenberg, Col. 3, ll. 55-57; Specification, p. 6, ¶[0015]). The motion
and position of the aircraft carrying the pseudolite transmitter are accounted
for in the determination of the position of the pseudolite relative to a
predetermined fixed point. The positional information transmitted by the
pseudolite accounts for the variances in the actual position of the pseudolite.
(Schellenberg, Col. 3, l. 58-Col. 4, l. 19)
FF 5. The pseudolite transmitters in Schellenberg function to generate
model data based on ephemeris data and which function to include data
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accounting for orbit-divergent motions of the pseudolites in the pseudolite
positional data transmitted. (Schellenberg, Col. 4, ll. 41-49).
FF 6. In one embodiment of the Schellenberg system, a receiver may
be used in navigation or determining position, the receiver using only
transmissions received from airborne pseudolites. (Schellenberg, Col. 3, ll.
15-17; Col. 4, ll. 16-18).
FF 7. Schellenberg discloses a further embodiment in which a
receiver determines its position and/or navigates using a combination of
signals transmitted from APL transmitters and signals transmitted from
GNSS satellites. (Schellenberg, Col. 3, ll. 17-21).
FF 8. Schellenberg discloses that the APL transmitters employed in
its system can utilize the same satellite frequencies, pseudo-random codes,
and navigational data structures as are used in the GLONASS and/or GPS
systems. (Schellenberg, Col. 5, ll. 17-19).
FF 9. Schellenberg discloses that a receiver is used to receive and
process the pseudolite signal such that the positional information which
includes ephemeris data is processed to determine a location of the
pseudolite transmitter. (Schellenberg, Col. 4, ll. 50-67).
FF 10. Conventional GNSS and GPS system satellites transmit
signals in the L-band. (Schellenberg, Col. 1, ll. 23-24; Col. 4, ll. 23-24).

PRINCIPLES OF LAW
The essence of the requirement under 35 U.S.C. § 112, second
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paragraph, that the claims must be definite, is that the language of the claims
must make it clear what subject matter the claims encompass. In re
Hammack, 427 F.2d 1378 (CCPA 1970). The test is whether “those skilled
in the art would understand what is claimed when the claim is read in light
of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods., 309 F.3d 774, 779-80 (Fed. Cir. 2002)
Anticipation of a claim exists when each and every element set forth
in the claim is found, either expressly or inherently described, in a single
prior art reference. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987); In re Cruciferous Sprout
Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Once a prima facie case of
anticipation has been established, the burden shifts to the Appellant to prove
that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990).
Patent application claims are given their broadest reasonable
interpretation during the application process, for the simple reason that
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before a patent is granted the claims may be readily amended, for the
purpose of distinguishing cited references, or in response to objections raised
under § 112, as part of the examination process. Burlington Indus., Inc. v.
Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). This broadest reasonable
construction is to be assessed 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). Further, in making this
assessment, embodiments or features present in the specification will not be
read into the claims in determining their scope. Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc); see also In re Trans Texas
Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007).

ANALYSIS
Rejection of Claims 1-7 and 15-25 under 35 U.S.C. § 112, second paragraph
The Examiner finds problematical the phrase, “without the use of
separate channels or protocols” (see, e.g., claim 1), and the complementary
phrase, “in the same channels and with the same protocols” (see, e.g., claims
22, 24), as they relate to the transmitting of positional information. (Answer
3). The Examiner contends that, because the claims contain only a single
step of transmitting positional information, such transmission would
necessarily be “without the use of separate channels or protocols”, in that the
single transmission would employ only a single channel and protocol. As
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such, the phrases present in the claims have no apparent meaning, according
to the Examiner.
The Examiner further asserts that the metes and bounds of these terms
are not definite, if it were to be assumed that this claim language is to be
given some weight and meaning. The language suggests, according to the
Examiner, that something additional is to be transmitted in performing the
claimed method, such that the transmitted positional information and the
“something additional” would be transmitted without the use of separate
channels or protocols, or, conversely, transmitted in the same channels or
protocols. (Answer 3).
Appellant refers us to the Specification as demonstrating that persons
of ordinary skill in the art would understand the disputed claim terminology
and would readily understand the scope of the claims reciting the above-
noted phrases. (Appeal Br. 11-13, Reply Br. 3). We are persuaded that
persons of ordinary skill in the art would understand the claim terminology
at issue, separate and apart from its usage in the claim. That does not appear
to be in dispute.
We are further persuaded, from our review of the record, that, while
the claims explicitly recite only a single step, that of transmitting positional
information for at least one of the pseudolites, the claims further implicitly
require that other navigation data1 be transmitted in the performance of this

1 Appellant does not, however, provide any definition of “navigation data” in
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claimed method. To hold otherwise would eviscerate the claim language
calling for, in claim 1 for example, the pseudolite positional information to
be transmitted “as part of the navigation data, without the use of separate
channels or protocols”. (Appeal Br., Claims Appendix, Claim 1).
Accordingly, we conclude that the claim language calling for the
positional data to be transmitted, “as part of the navigation data, without the
use of separate channels or protocols”, or, “in the same channels and with
the same protocols”, is definite, and requires that navigation data other than
pseudolite positional information be transmitted within the claimed satellite
navigation system, over the same channels and using the same protocols as
are used for the transmission of the pseudolite positional information.
We will reverse the rejection of Claims 1-7 and 15-25 under
35 U.S.C. § 112, second paragraph, on indefiniteness grounds.

Rejection of claims 1-3, 5-9, 11-16, and 18-25 under 35 U.S.C.
§ 102(b)
Appellant argues that independent claims 1, 8, 22, and 24 are
separately patentable from one another, and we will address each of these
claims separately.

his Specification, or what types or forms of data would be or could be
included or excluded by this term.
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Appellant’s Brief on Appeal purports to also separately argue the
patentability of each dependent claim on appeal.2 However, under the
heading for each of the dependent claims, Appellant simply restates the
element(s) or limitation(s) found in these claims, and avers that such
elements or limitations are not found in the Schellenberg patent.3 Presenting
a statement which merely points out what a claim recites is not considered to
be an argument for the separate patentability of the claims. 37 C.F.R.
§ 41.37(c)(1)(vii)(2007). We will therefore treat the dependent claims as
being grouped with the independent claim from which they depend.4
To the extent that Appellant’s bare assertions that the Schellenberg
patent does not disclose these claim elements would be regarded as
arguments for the separate patentability of the claims, Appellant has not
persuasively demonstrated where any error lies in the Examiner’s
interpretation of Schellenberg as it relates to the elements or limitations
found in those claims.

2 A separate heading for each claim on appeal is provided, a prerequisite
under 37 C.F.R. §41.37(c)(1)(vii), for separately arguing a claim or claims.
3 Claims 15 and 20 on appeal appear to be independent claims. Appellant
treats these claims in the same way as the dependent claims are treated, i.e,
Appellant merely recites the claim elements in a substantially verbatim
manner, while asserting that the Schellenberg patent does not disclose the
elements. (Appeal Br. 27-28; 30-31). Appellant nowhere attempts to rebut
or show error in the Examiner’s rejection (Answer 10) of these claims.

4 Claims 15 and 20, and the claims depending therefrom, will be grouped
with, and will stand or fall with, representative claim 1.
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Claim 1
Appellant urges that the rejection of claim 1 as being anticipated by
Schellenberg is in error, because:
(1) there is no disclosure in Schellenberg that positional
information for one or more pseudolites is transmitted as
part of the navigation data (Appeal Br. 14)(emphasis in
original);
(2) there is no disclosure that the positional information is
transmitted with the navigation data without the use of
separate channels or protocols (Id.); and
(3) there is no disclosure that the positional information is
transmitted in the form of a model of a pseudolite trajectory
in a reference coordinate system, and wherein the model
accounts for orbit-divergent motions of the one or more
pseudolites (Appeal Br. 15).
As noted in the preceding section, Appellant has provided no specific
definition as to what “navigation data” either includes or excludes. As such,
giving this claim term its broadest reasonable interpretation, we conclude
that “navigation data” may comprise any type of data that is capable of being
used to navigate or to aid in navigation. The Schellenberg patent explicitly
teaches that the pseudolite transmitters therein broadcast a signal that can be
used by a receiver for navigation, thus, “navigation data”. (FF 1). That
signal is disclosed as including positional information specific to the
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pseudolite. (FF 2). Notwithstanding Appellant’s repeated and blind
insistence that Schellenberg does not disclose that pseudolite positional
information is transmitted as part of the navigation data, we find that this is
just such a disclosure.
This finding that the Schellenberg patent discloses the transmission of
a signal (the pseudolite signal) that includes navigation data, and, as a part
thereof, pseudolite positional information, is also germane to Appellant’s
second contention. This pseudolite signal in Schellenberg would appear to
necessarily be sent without using separate channels or separate protocols.
Appellant has proffered no persuasive evidence or argument to the contrary.
To the extent that Appellant would argue that the term “without using
separate channels or protocols” inferentially invokes a system-wide set of
channels and protocols5, we find that Schellenberg further teaches that the
signal transmitted by the pseudolite, which includes positional information
as part of the navigation data, may be transmitted without the use of separate
channels or protocols. (FF 7, 8).
Appellant seizes on the language in Schellenberg that describes the
pseudolite signals as being “similar to conventional L-band signals”6,

5 Appellant appears, however, to have expressly rejected the notion that the
recitation in the claims of using the same or not using separate “channels and
protocols” necessarily refers to channels and protocols used by the
navigation satellites of the system. (Reply Br. 4).

6 L-band being a channel over which standard GNSS signals are sent. (FF
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arguing that this, “is not the same as L-band per se”. (Reply Br. 5). This is
apparently an attempt at arguing that the pseudolite signal is sent over a
different channel than are the satellite or other system component signals
(although Appellant does not state so directly), and evidence that the
Schellenberg system does not anticipate claim 1. However, read within its
proper context, the similarity referred to is a similarity in the content of the
signal. Schellenberg elsewhere makes clear that the pseudolite transmitters
use the same satellite frequencies and protocols that are employed by the
navigation satellites in that system. (FF 8). We find that Appellant has
failed to persuade us that Schellenberg is deficient for the reason asserted in
contention (2) above.
Turning to contention (3), the pseudolite positional information sent in
the operation of the Schellenberg system includes a set of ephemeris data,
which is a modified version of a conventional GPS satellite ephemeris
message. (FF 3). The positional information includes a correction factor
that compensates for the actual position of the pseudolite relative to a
predetermined fixed point. (Id.). Appellant contends that this is not a
disclosure of transmitting positional information, “in the form of a model of
a pseudolite trajectory in a reference coordinate system which the model
accounts for orbit-divergent motions of the at least one pseudolite”, as
required in claim 1.

10).
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Appellant does not provide a definition of the claim term “model”, so
we are constrained to read that term as broadly as is reasonable, consistent
with the common and ordinary meaning of the term.7 Appellant himself
admits that ephemeris data, as is used in Schellenberg, is an “orbital model”.
(Spec., p. 20, ¶[0043]).8 Thus, we are not persuaded that error was
committed by the Examiner in finding that the transmission of positional
data that includes ephemeris data in Schellenberg meets the limitation in
claim 1 that calls for the positional information to be in the form of a model
of a pseudolite trajectory.
Appellant further describes that orbit-divergent motions include
relative motions of the pseudolites with respect to the Earth’s surface on
account of being mounted on vehicles or other movable bodies, such as
aircraft. (Specification, p. 6, ¶[0015]; p. 18, ¶[0039]). Claim 1 calls for the
pseudolite trajectory model to account for orbit-divergent motions of the
pseudolite. (Appeal Br., Claims Appendix).

7 model: A systematic description of an object or phenomenon that shares
important characteristics with the object or phenomenon. The American
Heritage® Science Dictionary. Retrieved May 22, 2008, from
Dictionary.com website: http://dictionary.reference.com/browse/model

8 A recurring theme running though the briefs in this appeal is that Appellant
urges that there is a difference between the claims and the system disclosed
in Schellenberg, yet utterly fails to explain or elaborate as to how or why the
claim elements are different from the cited disclosure in Schellenberg, and
simply states that they are different.

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The airborne pseudolites in Schellenberg experience orbit-divergent
motions. (FF 4). Schellenberg includes, in the pseudolite-transmitted data,
information or data related to the orbit-divergent motions of the airborne
pseudolites. This information or data is in the form of information as to a
position of the pseudolite relative to a fixed point. (Id.). Such motions are
thus necessarily accounted for in the positional information that is
transmitted. (Id.).
We are not persuaded that the Schellenberg system, which transmits
pseudolite positional information in the form of a model of pseudolite
trajectory (i.e., ephemeris data), wherein the positional information and
model account for a variance in the actual position of the pseudolite due to
its being mounted on a moving aircraft, differs from that which is required in
claim 1.
We therefore do not find error in the rejection of Claim 1 under
35 U.S.C. § 102(b) in view of Schellenberg. We will affirm the rejection of
claim 1 and of claims 2, 3, 5-7, 15, 16, and 18-21, grouped therewith.
Claim 8
Claim 8 is directed to a satellite navigation system, whereas the
subject matter of claim 1 discussed above is a method claim. At issue with
respect to this claim and the cited Schellenberg reference are whether
Schellenberg discloses “pseudolite modeling devices that are structured and
arranged to prepare model data of a pseudolite trajectory”, in which the
model data accounts for orbit-divergent motions of the pseudolite, and
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whether any such “modeling devices are configured to insert the model data
into the navigation data”. (Appeal Br. 16-17; Claims Appendix).
Appellant describes his “pseudolite modeling devices” only in terms
of their function. (Specification, p. 13-14, ¶[0031]; p. 18, ¶[0038]). A
“position model unit” (PMU2, Fig. 1) is depicted schematically, and its
function is described in language that substantially parallels the language of
claim 8 quoted above. Given the absence of any structural features in claim
8 defining the “pseudolite modeling devices”, we will regard any component
or device that is capable of performing the stated functions as meeting those
claim elements or limitations.
The Examiner has pointed to passages in Columns 4 and 5 of the
Schellenberg patent as evidencing that the pseudolites disclosed therein have
the ability to prepare model data of a pseudolite trajectory, which model
accounts for orbit-divergent motions of the pseudolite, and to insert the
model data into the navigation data. (Answer 7-8). Appellant counters that
this disclosure in Schellenberg is of a transmission of a modified version of a
conventional GPS satellite ephemeris message combined with the Keplerian
equation to describe a fixed position. (Appeal Br. 16). This, Appellant
contends, is different from what is claimed, and that this does not amount to
a disclosure of the provision of pseudolite modeling devices configured to
prepare model data of pseudolite trajectory. (Id.).
As we found in assessing the legitimacy of the rejection of claim 1,
the pseudolite in Schellenberg is able to produce and transmit ephemeris
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data, which Appellant acknowledges is one form of orbital model data
contemplated for use in his system. (Spec., p. 20, ¶[0043]). Further,
Schellenberg determines a positional difference between a fixed point and an
actual or estimated orbit-divergent position of a pseudolite attached to a
moving aircraft, and employs that information in the positional and
navigation data transmitted by the pseudolite (FF 4, 5). We find that this
meets the limitation requiring the model data to account for orbit-divergent
motions of the pseudolite. That Schellenberg may “account” for the orbit-
divergent motions in some different manner than Appellant may contemplate
or may have disclosed as a preferred embodiment, is not germane in
assessing whether Schellenberg discloses that which is claimed.
Schellenberg discloses pseudolite transmitters for transmitting
positional/navigation data which includes the ephemeris data and the
positional correction data and, as such, discloses that the pseudolites include
modeling devices used to generate model data and which are configured to
insert the model data into the overall set of navigation data. (FF 5).
We will affirm the rejection of claim 8, and of claims 9 and 11-14
under 35 U.S.C. § 102(b).
Claim 22
Claim 22 essentially parallels claim 1, with the substitution of the
phrase, “in the same channels and with the same protocols”, for the phrase,
“without the use of separate channels or protocols”, in describing the
transmission of pseudolite positional information. (Appeal Br., Claims
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Appendix). Appellant’s assignation of error is substantially identical to that
presented with respect to claim 1.
For the reasons discussed supra with respect to the rejection of claim
1, we are not persuaded that the rejection of claim 22 under 35 U.S.C.
§ 102(b) is in error. We will affirm the rejection as to claim 22, as well as
claim 23 depending therefrom.
Claim 24
This claim is directed to a user terminal for a satellite navigation
system. The intended use of the user terminal is to act as a component of a
system that transmits navigation data from navigation satellites and
pseudolites. (Appeal Br., Claims Appendix).
Appellant’s arguments parallel those presented with respect to the
previously discussed independent claims. Appellant first asserts that
Schellenberg can be distinguished on the basis that the reference does not
disclose that pseudolite positional information is transmitted as part of the
navigation data, and does not disclose that such information is transmitted in
the same channels and with the same protocols, as recited in claim 24.
(Appeal Br. 20). We found above, with respect to claim 1, that the
pseudolite positional information in Schellenberg is transmitted as part of
the navigation data. Further, since the pseudolite positional information is
included in a single transmission, that information necessarily is transmitted
in the same channel and with the same protocols. These elements of claim
24 do not patentably distinguish the claim over the Schellenberg reference.
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Appellant further attempts to distinguish claim 24 from Schellenberg
on the basis that some embodiments disclosed in Schellenberg have a
receiver that determines its position and/or navigates using a combination of
signals transmitted from the APL transmitters and signals transmitted from
GNSS satellites, and that these transmissions appear to be separate
transmissions. Appellant states that there is no teaching that these separate
transmissions are in the same channels or use the same protocols. (Appeal
Br. 20-21). This argument is unavailing, in that it addresses only one or
more alternative embodiments of the Schellenberg disclosure. Schellenberg
explicitly discloses that the receiver in at least one embodiment therein
navigates or determines position using transmissions solely from APL
transmitters. (FF 6). In addition, Appellant’s assertion as to the absence of a
teaching of using the same channels and protocols is not persuasive, in view
of Schellenberg’s disclosure that the psueudolites may use the same
frequencies and data structures as do the satellites. (FF 8).
Appellant further repeats the assertion that Schellenberg contains no
disclosure of pseudolite information being transmitted in the form of a
model of a pseudolite trajectory in a reference coordinate system, wherein
the model accounts for orbit-divergent motions of the pseudolite. (Appeal
Br. 21). There is no recitation of a transmission of information in claim 24,
which is an apparatus claim, however, the claim does recite that the user
terminal is to have a position model decoding device structured and arranged
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to extract the model data and to determine a position of at least one
pseudolite according to the model data. (Appeal Br., Claims Appendix).
As we found previously, the Schellenberg system transmits positional
information that is based on a model of pseudolite trajectory, and which
accounts for the orbit-divergent motions of its airborne pseudolites by
determining the position of the pseudolite relative to a fixed point, wherein
the change in position of the pseudolite relative to that fixed point is as a
result of the pseudolite moving in an orbit-divergent manner. (FF 4, 5).
The receiver in the Schellenberg system operates to process or decode
the model-based information transmitted from the pseudolite in order to
determine a position of the pseudolite. (FF 9). The position model decoding
device set forth in Claim 24 contains no structural limitations that
distinguish over the Schellenberg receiver.
We are not persuaded that error was committed in rejecting claim 24
under 35 U.S.C. § 102(b) in view of Schellenberg. We will thus affirm the
rejection as to claim 24 and claim 25 depending therefrom.
Claim 20—New Ground of Rejection—35 U.S.C. § 101
Claim 20 is directed to a computer program for processing navigation
data from navigation satellites and pseudolites. The claimed program has
inserted therein model data of a pseudolite trajectory, and the program is
said to account for model data for orbit-divergent motions of a pseudolite.
The program is recited as being “configured to work together with a position
model decoding device of a user terminal.” (Appeal Br., Claims Appendix).
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Notwithstanding the presence of this “configured to” language, the claim
does not include any recitation of a particular machine on which the program
is to be run or executed. It is essentially nothing more than a recitation of an
algorithm.
We adhere to the rule expressed in Diamond v. Diehr, 450 U.S. 175
(1981), that, at least absent the development of some hitherto unknown type
of technology, “[t]ransformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” 450 U.S. at 184 (quoting Gottschalk v.
Benson, 409 U.S. 63, 70 (1972)), cited with approval in In re Comiskey, 499
F.3d 1365, 1377 (Fed. Cir. 2007).
Claim 20 fails to recite a transformation of matter into a different state
or thing. Claim 20 only calls for the program to have certain data present in
the program, and for the program to perform what can be characterized as an
“accounting” for model data related to orbit-divergent motions of a
pseudolite. No transformation of matter occurs in the program as claimed.
To the extent that the program might be regarded as being capable of
manipulating (reading, analyzing) data, that is not sufficient to bring the
claim within the ambit of statutory subject matter. The model data included
in the program, and the accounting for other model data, appears to involve
mathematical values or data. The “accounting” is a routine or procedure in
the program for solving a particular type of mathematical problem, and is
thus a mathematical algorithm. If a claim, in essence, covers only a
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mathematical algorithm, and otherwise involves only the analyzing of data
by the algorithm, the claim is nonstatutory. In re Grams, 888 F.2d 835, 837
(Fed. Cir. 1989). We find that claim 20 here does not meet the requirements
of 35 U.S.C. § 101.
Accordingly, we hold that claim 20 is directed to non-statutory subject
matter, and thus we enter a new ground of rejection of this claim under 35
U.S.C. § 101.

CONCLUSIONS
We conclude that reversible error has been shown to exist in the
rejection of claims 1-7 and 15-25 under the second paragraph of 35 U.S.C.
§ 112.
We conclude that no reversible error has been shown to exist in the
rejection of claims 1-3, 5-9, 11-16, and 18-25 under 35 U.S.C. §102(b).

DECISION
The decision of the Examiner to reject claims 1-7 and 15-25 under
35 U.S.C. § 112, second paragraph, is REVERSED.
The decision of the Examiner to reject Claims 1-3, 5-9, 11-16, and 18-
25 under 35 U.S.C. § 102(b) is AFFIRMED.
We enter a new ground of rejection of claim 20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
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that Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 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 rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

vsh

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VIRGINIA 20191