Ex Parte Turetzky et al

Board of Patent Appeals and Interferences

May 28, 2010

10154138 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GREGORY B. TURETZKY and LIONEL J. GARIN
_____________

Appeal 2009-008788
Application 10/154,138
Technology Center 2600
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Decided: May 28, 2010
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to computing an offset
between GPS time and a local time source, storing the offset, and using the
stored offset at a later time to aid in the acquisition of at least one GPS
satellite signal. Spec. 4:21-23.
Claims 1 and 12, reproduced below, are representative of the subject
matter on appeal:
1. A method for synchronizing an unsynchronized radio network,
comprising:
determining GPS time at a mobile GPS receiver;
comparing the determined GPS time to a second time source;
storing an offset between the GPS time and the second time
source; and
using the stored offset to acquire GPS satellites.

12. A method for synchronizing an unsynchronized radio network,
comprising:
computing an offset between GPS time and a local time source
where the offset is computed by a mobile GPS receiver;
storing the offset; and
using the stored offset at a later time to aid in the acquisition of
at least one GPS satellite signal.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Dillon US 6,192,247 B1 Feb. 20, 2001
Osterling US 2001/0039192 A1 Nov. 8, 2001
Ogino US 2002/0004398 A1 Jan. 10, 2002
Vayanos US 2002/0123352 A1 Sep. 5, 2002
Duffett-Smith US 2002/0160788 A1 Oct. 31, 2002
Carlsson US 6,603,978 B1 Aug. 5, 2003
The following rejections are before us for review:
1. The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as
unpatentable over Osterling in view of Carlsson and further in view of
Vayanos.
2. The Examiner rejected claims 12, 13, and 141 under 35 U.S.C. §
103(a) as unpatentable over Osterling in view of Vayanos and further in
view of Dillon.
3. The Examiner rejected claims 15-18 and 20 under 35 U.S.C. §
103(a) as unpatentable over Osterling in view of Vayanos and Dillon and
further in view of Duffett-Smith.

1 The Examiner addresses the rejection of claim 14 (Ans. 5-6), but does not
list it in the title of the rejected claims (Ans. 3). Furthermore, the Examiner
lists the claims as rejected under 35 U.S.C. § 102(e) instead of 35 U.S.C. §
103(a). We treat these as inadvertent errors.
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4. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Osterling in view of Vayanos, Dillon, and Duffett-Smith
and further in view of Ogino.

ISSUES
Did the Examiner err by determining that the combination of
Osterling in view of Carlsson and further in view of Vayanos teaches the
limitation of “using the stored offset to acquire GPS satellites” as recited in
claim 1?
Similarly, did the Examiner err by determining that the combination
of Osterling in view of Vayanos and further in view of Dillon teaches the
limitation of “using the stored offset . . . to aid in the acquisition of at least
one GPS satellite signal” as recited in claim 12?

PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974).
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d
at 988).

ANALYSIS
Claim 1 recites the limitation of “using the stored offset to acquire
GPS satellites” and claim 12 recites a similar imitation of “using the stored
offset at a later time to aid in the acquisition of at least one GPS satellite
signal.”
The Examiner admitted in rejecting claim 1 that Osterling does not
teach using the stored offset to acquire GPS satellites (Ans. 6), and instead
relied on Carlsson (col. 5, ll. 54-60) for this teaching. More specifically, the
Examiner relied on Carlsson for the teaching of using a stored offset to
acquire GPS satellites with respect to claim 1 (Ans. 7). However, when we
turn to Carlsson (col. 5, ll. 54-60, cited in Ans. 7) for the recited teaching,
we only can deduce that Carlsson’s mobile terminal can receive information
regarding visible satellites at that approximate location—not that the stored
offset is used to acquire GPS satellites. Thus, Carlsson does not cure the
cited deficiency. In other words, there is no teaching of the claim 1
limitation, “using the stored offset to acquire GPS satellites” (emphasis
added).
Furthermore, the Examiner (Ans. 7) cited Vayanos for the teaching of
a mobile GPS receiver (¶ [0038]), and an offset between the GPS time and
local time of the Mobile GPS receiver (¶ [0026]). The Examiner then
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modified Osterling and Carlsson’s synchronizing method with the Vayano’s
GPS receiver and offset to acquire satellites as taught by Vayanos.
It is unclear how the base transceiver’s offset as taught by Osterling
(¶[0013]) can be reasonably modified into the Vayanos’ offset of the mobile
GPS receiver (¶¶ [0026], [0038]) to acquire satellites. Thus, we agree with
Appellant (App. Br. 20-23) that the Examiner’s articulated reasoning in the
rejection does not possess a rational underpinning to support the legal
conclusion of obviousness. See Kahn, 441 F.3d at 988. Accordingly, we
will reverse the Examiner’s rejection of independent claim 1 and dependent
claims 2-11 which depend from claim 1.
For similar reasons we will also reverse the Examiner’s rejection of
claims 12-14. We agree with Appellant (App. Br. 19-20) that the Examiner
erroneously relied on Osterling (¶ [0042]) (Ans. 4) for teaching “using the
stored offset at a later time to aid in the acquisition of at least one GPS
signal,” as recited in independent claim 12. As we noted supra, the
Examiner admitted with respect to claim 1 that Osterling does not teach the
similarly recited limitation of “using the stored offset to acquire GPS
satellites” (Ans. 6), but relied on Carlsson and Vayanos for the deficiency.
Furthermore, Dillon does not cure the above cited deficiency.
We also reverse the remaining rejections of dependent claims 15-20,
which ultimately depend from independent claim 12. Duffett-Smith and
Ogino, either alone or in combination, do not cure the above cited
deficiencies.

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CONCLUSIONS
The Examiner erred by determining that the combination of Osterling
in view of Carlsson and further in view of Vayanos teaches the limitation of
“using the stored offset to acquire GPS satellites” as recited in claim 1.
The Examiner also erred by determining that the combination of
Osterling in view of Vayanos and further in view of Dillon teaches the
limitation of “using the stored offset . . . to aid in the acquisition of at least
one GPS satellite signal” as recited in claim 12.

ORDER
The decision of the Examiner to reject claims 1-20 is reversed.

REVERSED

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