Ex Parte van Diggelen et al

Patent Trial and Appeal Board

Oct 27, 2014

11773062 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/773,062 07/03/2007 Frank van Diggelen 3875.2300001 1663
26111 7590 10/27/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LEE, JUSTIN YE
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
10/27/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK VAN DIGGELEN and CHARLES ABRAHAM

___________

Appeal 2012-002651
Application 11/773,062
Technology Center 2600
____________

Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and
DANIEL N. FISHMAN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002651
Application 11/773,062

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–14 and 18–32.
1
Claims 15–17 have been indicated to be allowable
if rewritten in independent form. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to processing position information in a
mobile device. A request for a position to be computed within a predefined
period of time is received, followed by calculating positions within the
predefined period of time. At least one of the positions is cached in a
position cache and used to derived accuracy data. A best position stored in
the position cache is identified in response to the accuracy data and sent to a
server in communication with the mobile device. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method of processing position information in a mobile
device, comprising:
receiving a request for a position to be computed within a
predefined period of time;
calculating a plurality of positions within said predefined
period of time;

1
We note Appellants’ “Grounds Of Rejection To Be Reviewed On Appeal”
indicates that only claims 1–24 are on appeal. (App. Br. 6.) However, the
Notice of Appeal (filed March 8, 2011) indicates appeal is taken “from the
last decision of the examiner” (Final Office Action, mailed December 8,
2010) in which claims 1–14 and 18–32 are rejected and claims 15–17 are
objected to as dependent upon a rejected base claim. Adding further
confusion, Appellants’ “Conclusion” requests reversal of “the rejections to
claims 23-40.” (App. Br. 12.) Despite the ambiguities, we proceed with the
assumption that Appellants intend to appeal the rejection of all claims.
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caching at least one of said plurality of positions in a position
cache;
deriving accuracy data with respect to at least one of said
plurality of positions; and
identifying a best position stored in said position cache in
response to said accuracy data.

Claims 27–32 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2

Claims 1–9 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious
over Jijina (US 2004/0203569 A1; Oct. 14, 2004) and Shamoto (US
2003/0045304 A1; Mar. 6, 2003).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, and Bloebaum (US 6,433,735 B1; Aug. 13, 2002).
Claims 12–14, 18–20, and 22 stand rejected under 35 U.S.C. § 103(a)
as obvious from Jijina, Shamoto, and Takeuchi (US 2003/0050077 A1;
Mar. 13, 2003).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, Takeuchi, and Bloebaum.
Claims 23–25 stand rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, and Woodard (US 2005/0200492 A1; Sept. 15, 2005).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, Woodard, and Bloebaum.
Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as obvious
over Jijina, Shamoto, and Needham (US 2004/0157622 A1; Aug. 12, 2004).

2
Appellants do not present any arguments with respect to the rejection of:
(i) claims 27–32 under 35 U.S.C. § 112, first paragraph; and (ii) claims 10,
21, and 26–32 under 35 U.S.C. § 103(a). Thus, any such arguments are
deemed to be waived.
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Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, and Ladner (US 6,075,458; June 13, 2000).
Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as obvious
over Jijina, Shamoto, Takeuchi, and Needham.
3

Claim 32 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jijina, Shamoto, Takeuchi, and Ladner.

ANALYSIS
§ 103 – Jijina and Shamoto
We are unpersuaded by Appellants’ arguments (App. Br. 7–9; see also
Reply Br. 8–11) that the combination of Jijina and Shamoto would not have
rendered obvious independent claim 1, which includes the limitation
“calculating a plurality of positions within said predefined period of time.”
The Examiner found that the positioning operation of Shamoto,
illustrated in Figure 3 as steps S15 to S20, corresponds to the limitation
“calculating a plurality of positions within said predefined period of time.”
(Ans. 6, 19.) We agree with the Examiner.
Shamoto relates to a wireless terminal “designed to prevent the user
from having to wait a long time in case fetching of search data takes a long
time.” (Abstract.) Figure 1 of Shamoto illustrates functional blocks of
mobile phone 1, including Central Processing Unit (CPU) 2 connected with
Global Positioning System (GPS) transceiver 4, which searches for GPS
satellites 3, and Code Division Multiple Access (CDMA) transceiver 9.

3
We note the Examiner listed claims 30–32 as subject to this rejection
(Ans. 17) but includes only claims 30 and 31 as subject to this rejection over
Jijina, Shamoto, Takeuchi, and Needham (Ans. 17–18). We find this to be
harmless error.
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(¶ 21.) Shamoto explains that CPU 2 “operates on the GPS transceiver 4 to
terminate the search of GPS satellites 3:(step S18) and operates on the
timer 16 to terminate the time counting:(step S19).” (¶ 30.) Figure 3 of
Shamoto illustrates a control operation of the wireless terminal (¶ 18) and
illustrates that CPU 2 “determine[s] the appropriateness of the GPS satellite
search result based on the measurement of the pseudo range and CN (carrier
to noise) ratio of the GPS radio wave:(step S17).” (¶ 29.) Accordingly,
Figure 3 of Shamoto illustrates that if the GPS satellite search is not
“proper,” the GPS satellite search is repeated (i.e., the claimed “calculating a
plurality of positions within said predefined period of time”). (See fig. 3; see
also ¶ 29.) Moreover, Shamoto explains that “[t]he CPU 2 operates on the
CDMA transceiver 9 to send the GPS satellite data fetched from the GPS
satellites 3 to the position data server 6 and request the server to release a
positioning result:(step S20)” (¶ 30) (i.e., the claimed “identifying a best
position”).
Appellants argue “Figure 3, loop S15-S17 is repeated until a proper
search is made at S17” and “only one proper search can be made in
Shamoto.” (App. Br. 8.) Similarly, Appellants argue “in steps S15-S20,
Shamoto determines the appropriateness of the search for the GPS satellites,
not the positioning of the wireless terminal” and “[t]his is far from
positioning the mobile device.” (Reply Br. 10.) However, CPU 2 of
Shamoto is a part of mobile phone 1 and accordingly, the claim limitation
“calculating a plurality of positions within said predefined period of time” is
broad enough to encompass CPU 2, which repeats the GPS satellite search
until a “proper” search is performed.
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Thus, we agree with the Examiner that the combination of Jijina and
Shamoto would have rendered obvious independent claim 1, which includes
the limitation “calculating a plurality of positions within said predefined
period of time.”
We are further unpersuaded by Appellants’ arguments (App. Br. 10;
see also Reply Br. 11–12) that the combination of Jijina and Shamoto would
not have rendered obvious independent claim 1, which includes the
limitation “caching at least one of said plurality of positions in a position
cache.”
The Examiner found that the GPS position buffer of Jijina
corresponds to the limitation “caching at least one of said plurality of
positions in a position cache.” (Ans. 6, 19–20.) We agree with the
Examiner.
Claim 1 recites “caching at least one of said plurality of positions in a
position cache” (emphases added). Appellants’ Specification discloses that
“[i]n one embodiment, the position cache 234 is a buffer memory that retains
a predefined number of positions or the position cache may be a register that
contains the best position of the most recently computed positions”
(emphasis added) (Spec. ¶ 23) and that “[a]lternatively, the position
cache 234 may comprise a memory capable of storing multiple position
results and accuracy results (e.g., a buffer)” (emphasis added) (Spec. ¶ 29).
Although Appellants’ Specification provides no express definition of
“position cache,” in one embodiment such “position cache” in inclusive of
either a buffer memory or a register. Thus, under the broadest reasonable
interpretation consistent with the Specification, we interpret a “position
cache” as including a buffer memory or a register.
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Jijina relates to “routing wireless 911 calls on a network.” (¶ 1.)
Figure 5 of Jijina illustrates a flow chart for selecting a preferred source of
positional data for telematics unit 402, including retrieving a last valid GPS
reading from telematics unit 402 when an emergency call is placed. (¶ 41.)
Jijina explains that “[t]he telematics unit 402 may contain a memory area
deemed a GPS position buffer 406 that contains partitioned memory
designated as a telematics unit GPS buffer 408 and a mobile unit GPS
buffer 410.” (¶ 39.) Because telematics unit 402 of Jijina contains GPS
position buffer 406, Jijina teaches the limitation “caching at least one of said
plurality of positions in a position cache.”
Appellants argue that “the claimed cache does not read on the
disclosed buffer.” (App. Br. 10; see also Reply Br. 11–12.) Appellants
further provide evidence illustrating that “[a] ‘buffer’ is ‘[a] data area,
shared by hardware devices or program [,] a process is called buffer’” but
“[c]ache memory, on the other hand, is memory that ‘can be accessed more
quickly by the computer microprocessor.’” (App. Br. 10.) However, as
discussed previously, under the broadest reasonable interpretation consistent
with the Specification, the claimed “position cache” encompasses a buffer
memory.
Thus, we agree with the Examiner that the combination of Jijina and
Shamoto would have rendered obvious independent claim 1, which includes
the limitation “caching at least one of said plurality of positions in a position
cache.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2–9 and 11 depend from claim 1, and Appellants
have not presented any substantive arguments with respect to these claims.
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(App. Br. 9.) Therefore, we sustain the rejection of claims 2–9 and 11 under
35 U.S.C. § 103(a), for the same reasons discussed with respect to
independent claim 1.

§ 103 – Jijina, Shamoto, and Takeuchi
Independent claim 12 recites limitations similar to those discussed
with respect to independent claim 1, and Appellants have not presented any
additional substantive arguments with respect to this claim. (App. Br. 11.)
We sustain the rejection of claim 12, as well as dependent claims 13, 14, 18–
20, and 22, for the same reasons discussed with respect to claim 1.

§ 103 – Jijina, Shamoto, and Woodard
Independent claim 23 recites limitations similar to those discussed
with respect to independent claim 1, and Appellants have not presented any
additional substantive arguments with respect to this claim. (App. Br. 9.)
We sustain the rejection of claim 23, as well as dependent claims 24 and 25,
for the same reasons discussed with respect to claim 1.

We find untimely Appellants’ additional arguments in the Reply Brief
with respect to dependent claims 2, 3, 10, 12, and 18–20. (Reply Br. 12–19.)
We note that these new arguments were raised by Appellants for the first
time in the Reply Brief, and they are not in response to a new issue brought
up by the Examiner in the Answer. We therefore, find these new arguments
unavailing. Appellants are reminded that:
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
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new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.

Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative
opinion).

DECISION
The Examiner’s decision to reject claims 1–14 and 18–32 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)(1)(iv).

AFFIRMED

ELD