Ex Parte Waters

Board of Patent Appeals and Interferences

Sep 30, 2008

09862185 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN DERYK WATERS
____________

Appeal 2008-3196
Application 09/862,185
Technology Center 2600
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Decided: September 30, 2008
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and R. EUGENE VARNDELL, JR., Administrative Patent Judges.

VARNDELL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals the Examiner’s rejections of claims 1-21 under 35
U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

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STATEMENT OF THE CASE
The invention claimed on appeal is directed to a method and system
for finding locally-relevant information in a physical or electronic document
(71) already possessed by a user (70), which includes sending a query
message from a mobile entity (20) associated with the user via a mobile
radio infrastructure (10) to a service system (40) (Spec. 12, Fig. 6). The
query message identifies the document to the system and provides location
data regarding the location of the mobile entity to the service system (Spec.
12, Fig. 6). The service system obtains a document reference indicating
where, in the document, information can be found that is relevant to the
locality of the mobile entity as indicated by said location data and returns the
document reference to the mobile entity (Spec. 12, Fig. 6).
Claim 1, which further illustrates the invention, follows:
1. A method of finding locally-relevant information in a
physical or electronic document already possessed by a user,
the method comprising the steps of:
(a) sending a query message from a mobile entity
associated with the user via a mobile radio infrastructure to a
service system, the query message identifying the document to
the system;
(b) providing location data regarding the location of the
mobile entity to the service system;
(c) under the control of the service system, obtaining a
document reference indicating where, in the document,
information can be found that is relevant to the locality of the
mobile entity as indicated by said location data;
(d) returning the document reference to the mobile entity.

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The Examiner relies on the following prior art references to show
unpatentability:
Huttunen US 6,356,761 B1 Mar. 12, 2002
Saigh US 6,633,877 B1 Oct. 14, 2003
Short US 6,636,894 B1 Oct. 21, 2003
The Final Rejection mailed on July 14, 2004 set forth the following
rejections of claims 1-21 on appeal:
1. Claims 1, 3-9, 11, 12, and 14-19 stand rejected as being
unpatentable under 35 U.S.C. § 102(e) as being anticipated by
Huttunen.
2. Claims 2, 7-9, 15-17, 20, and 211 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) over Huttunen in view of
Saigh.
3. Claims 10 and 13 stand rejected as being unpatentable under 35
U.S.C. § 103(a) over Huttunen in view of Short.
Throughout this opinion, we refer to the most recent Appeal Brief
filed August 20, 2007 and the Examiner’s Answer mailed October 1, 2007.

GROUPING OF CLAIMS
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant could have made but

1 Although the statement of the rejection indicates that only claim 2 was
rejected, the body of the rejection nonetheless includes claims 7-9, 15-17,
20, and 21 (Ans. 7-8). Accordingly, we presume that the Examiner intended
to include these claims in this rejection.
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chose not to make in the Brief have not been considered. For purposes of
this appeal, claims 2-21 stand or fall with the patentability of independent
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that the Examiner erred in finding that Huttunen
teaches all limitations of claim 1 on appeal within the meaning of 35 U.S.C.
§ 102(e)?
We answer this question in the affirmative.

OPINON
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
The Examiner indicates how the claimed invention is fully met by the
disclosure of Huttunen (Ans. 3-4, 8). Appellant argues that Huttunen does
not teach finding locally-relevant information “in a document already
possessed by the user” where the query message identifies the document to
the system, as required in the claims on appeal (Br. 4). The Examiner
asserts that the disclosure at Fig. 9 and column 8, line 54 to column 9, line
35 of Huttunen teaches sending a query message from a mobile entity
associated with the user via a mobile radio infrastructure to a service system,
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the query message identifying the document to the system (Ans. 4). The
Examiner also asserts that an electronic document stored on the World Wide
Web (WWW) is considered a document possessed by the user since the user
has access to this document at any time (Ans. 8).
In addition, Appellant argues that Huttunen does not disclose
obtaining a document reference indicating where, in the document,
information can be found that is relevant to the locality of the mobile entity,
as required in the claim on appeal. The Examiner cites Fig. 9 and column 8,
line 54 to column 9, line 35 of Huttunen as disclosing such a limitation.
We do not agree with the Examiner’s position that a document stored
on the WWW is considered a document "already" possessed by the user as
required in claim 1 on appeal, because the term "already" in claim 1 on
appeal requires or implies that the document is in the user's possession prior
to sending the query message. In contrast, a document stored on the WWW
as proposed by the Examiner would be present on the user's mobile entity
only after sending some type of query message or request to the WWW.
In addition, we do not agree with the Examiner’s interpretation of Fig.
9 and column 8, line 54 to column 9, line 35 of Huttunen. These portions of
Huttunen are directed to finding information on the WWW or other such
network, based on the geographical location of the user, as explained by
Appellant (Br. 4). This teaching in Huttunen is different from and not
identical to the interrelated limitations in the claims on appeal, which
require, among other things, (1) finding a document reference in a document
already in the possession of the user that is sent in a query from a mobile
entity to a service system and (2) that is based on the locality of the mobile
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entity as indicated by location data provided to the service system, and (3)
returning the document reference to the mobile entity.
Since the teachings of Huttunen do not teach the previously-
mentioned interrelated claim limitations on appeal, the Examiner failed to
establish a factual basis for the previously-mentioned interrelated claim
limitations on appeal. Accordingly, we will not sustain the Examiner’s
§102(e) rejection of claims 1, 3-9, 11, 12, and 14-19 as anticipated by
Huttunen.
The missing factual basis for the previously-mentioned
interrelated claim limitations of appeal is also required to support the
legal conclusion of obviousness under § 103(a). See In re Fine, 837
F.2d 1071, 1073 (Fed. Cir. 1988). Accordingly, since the references
to Saigh and Short do not cure the deficiencies noted above with
respect to independent claims 1 and 14, we will also not sustain the
Examiner’s obviousness rejections of dependent claims 2, 7-10, 13,
15-17, 20, and 21 based on those references for similar reasons.

CONCLUSION
1. The Examiner’s decision rejecting claims 1, 3-9, 11, 12, and 14-
19 under 35 U.S.C. § 102(e) over Huttunen is reversed.
2. The Examiner’s decision rejecting claim 2, 7-9, 15-17, 20, and 21
under 35 U.S.C. § 103(a) over Huttunen and Saigh is reversed.

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3. The Examiner’s decision rejecting claims 10 and 13 under 35
U.S.C. § 103(a) over Huttunen and Short is reversed.

REVERSED

KIS

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