14919284 - (D) (P.T.A.B. May. 1, 2020)

NOKIA TECHNOLOGIES OY

Patent Trials and Appeals BoardMay 1, 2020

14919284 - (D) (P.T.A.B. May. 1, 2020)

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. 14/919,284 10/21/2015 Ismo Halivaara 042933/454016 4888 10949 7590 05/01/2020 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER SAGER, MARK ALAN ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 05/01/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ISMO HALIVAARA, LAURI WIROLA, and JARI SYRJARINNE ____________________ Appeal 2020-002933 Application 14/919,2841 Patent 8,564,479 B2 Technology Center 3900 ___________________ ___________________ Before ALLEN R. MacDONALD, ERIC B. CHEN, and JENNIFER L. McKEOWN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from a Final Rejection of claims 7–14, 16, 17, and 21. Claims 1–6 and 18–20 are allowable. Final Act. 14. Appellant cancelled claim 15. Appeal Br. 10. We have jurisdiction under 35 U.S.C. § 6(b). 1 Filed October 21, 2015, seeking to reissue U.S. Patent 8,564,479 B2, issued October 22, 2013, based on Application 13/001,515, filed December 27, 2010. 2 Appellant identifies Nokia Technologies Oy as the real party in interest. Appeal Br. 2. Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 2 CLAIMED SUBJECT MATTER Reissue claim 14 on appeal is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): Claim 14. (Reissue) An apparatus, comprising: [A.] a processor; and [B.] a memory including computer program code; [B.] the memory and the computer program code configured to, with the processor, cause the apparatus at least to[:] [B.i.] receive assistance data; [B.ii.] determine whether a satellite identification and a first parameter received in the assistance data comprises one of a pseudorandom code number-based satellite identification or an orbit slot number-based satellite identification, wherein the memory and the computer program code are configured to, with the processor, cause the apparatus to determine the first parameter that is used with, including one at a time, both the pseudorandom code number-based satellite identification and the orbit slot number-based satellite identification and that provides the pseudorandom code number-based satellite identification for certain satellites and orbit slot number-based satellite identification for different satellites; and [B.iii.] examine the assistance data to determine whether a frequency identification is present in the assistance data, the presence of the frequency identification in conjunction with the orbit slot number-based satellite identification being indicative that a satellite signal is received from one of a current global navigation satellite system satellite and a near-future global navigation satellite system satellite. Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 3 REFERENCES3 The Examiner relies on the following references: Name Reference Date Syrjärinne (herein “AAPA”) 4 US 8,564,479 B2 Oct. 22, 2013 Wirola (herein “Nokia”) WO 2007/099196 A1 Sept. 7, 2007 RTCM 10403.15 RTCM Paper 177- 2006-SC104-STD Oct. 27, 2006 REJECTIONS A. The Examiner rejects claims 14, 16, and 17 under 35 U.S.C. § 102(a) as being anticipated by Nokia. Final Act. 6–8. We select claim 14 as the representative claim for this rejection. The contentions discussed herein as to claim 14 are determinative as to this rejection. Therefore, except for our ultimate decision, we do not address claims 16 and 17 further herein. 3 All citations herein to references are by reference to the first named inventor/author only. 4 Appellant’s Admitted Prior Art (“AAPA”) of the Background of the US 8,564,479 B2 Patent. 5 RTCM STANDARD 10403.1 for Differential GNSS (Global Navigation Satellite Systems); Services - Version 3; Developed by RTCM Special Committee No. 104; October 27, 2006; Radio Technical Commission for Maritime Services. Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 4 B. The Examiner rejects claims 7–13 and 21, under 35 U.S.C. § 103(a) as being unpatentable over the combination of Nokia, AAPA, and RTCM 10403.1. Final Act. 8–14. Appellant does not present separate arguments for claims 7–13 and 21. Thus, the rejection of these claims turns on our decision as to claim 14. Except for our ultimate decision, we do not address the § 103 rejections of claims 7–13 and 21 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A. As to reissue claims 1–6 and 18–20, the Examiner determines: Since none of the cited references teaches or suggests that the first parameter provides the pseudorandom code number-based satellite identifier for certain satellites and provides the orbit slot number-based satellite identification for different satellites, it logically follows that no proper combination of the cited references teaches or suggests this same recitation. Since the cited references, taken either individually or in any proper combination, fail to teach or suggest the amended independent claims, the rejections of the independent claims, as amended, as well as the claims which depend therefrom, are overcome. Final Act. 15 (emphasis added). As to reissue claim 14, the Examiner determines that Nokia describes: wherein the first parameter provides the pseudorandom code number-based satellite identification for certain satellites and the Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 5 orbit slot number-based satellite identification for different satellites. Final Act. 7. B. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 14 under 35 U.S.C. § 102(a). As indicated by the allowance of Claims 1-6 and 18-20 and as indicated on page 15 of the Official Action, none of the cited references and, as a result, no proper combination of the cited references teaches or suggests that the first parameter provides the pseudorandom code number-based satellite identification for certain satellites and orbit slot number-based satellite identification for different satellites, as recited by independent Claims 7 and 14. Thus, independent Claims 7 and 14 are patentably distinct from the cited references, taken individually or in any proper combination, for at least the same reasons as those for which independent Claim 1 was allowed. Appeal Br. 6 (emphasis added). C. As articulated by the Federal Circuit, “[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to- part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 6 also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference. We agree with Appellant (and the Examiner’s reasons for allowance) that “none of the cited references and, as a result, no proper combination of the cited references teaches or suggests that the first parameter provides the pseudorandom code number-based satellite identification for certain satellites and orbit slot number-based satellite identification for different satellites, as recited by independent Claims 7 and 14.” Appeal Br. 6. We conclude, consistent with Appellant’s arguments that there is insufficient articulated reasoning to support the Examiner’s determination (Final Act. 7) (emphasis omitted) that Nokia teaches, “wherein the first parameter provides the pseudorandom code number-based satellite identification for certain satellites and the orbit slot number-based satellite identification for different satellites,” as required by claim 14. Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that claim 14 was anticipated at the time of Appellant’s invention. Appeal 2020-002933 Application 14/919,284 Patent 8,564,479 B2 7 CONCLUSION The Appellant has demonstrated the Examiner erred in rejecting claims 14, 16, and 17 as being anticipated under 35 U.S.C. § 102(a). The Examiner has not erred in rejecting claims 7–13 and 21 as being unpatentable under 35 U.S.C. § 103(a). The Examiner’s rejections of claims 7–14, 16, 17, and 21 are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 16, 17 102(a) Nokia 14, 16, 17 7–13, 21 103(a) Nokia, AAPA, RTCM 10403.1 7–13, 21 Overall Outcome 7–14, 16, 17, 21 REVERSED