Ex Parte Korneluk et al

Patent Trials and Appeals Board

Jun 11, 2019

14987928 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/987,928 01/05/2016
89133 7590 06/13/2019
RIDOUT & MAYBEE LLP (BlackBerry)
250 UNIVERSITY A VENUE
5THFLOOR
TORONTO, ON MSH 3E5
CANADA
FIRST NAMED INVENTOR
Jose Eduardo Korneluk
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
42783-4798 1044
EXAMINER
JHA, ABDHESH K
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
ipinfo@ridoutmaybee.com
ridbee@ridoutmaybee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE EDUARDO KORNELUK,
SANDEEP CHENNAKESHU, SIDDHARTH SAXENA, and
SERGIO JAVIER BERRIZ
Appeal 2018-006208
Application 14/987,928
Technology Center 3600
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2018-006208
Application 14/987,928
CLAIMED SUBJECT MATTER
Claims 1, 19, and 20 are independent. Claims 2-18 depend from
claim 1. Claim 1 is reproduced below:
1. A method of operating a mobile transceiver, comprising:
waking up the mobile transceiver from a low power
mode in response to a time-based wakeup event;
determining a waypoint in a pre-programmed travel
itinerary corresponding to the time-based wakeup event, the
travel itinerary being stored in a memory of the mobile
transceiver and defining a number of waypoints along a planned
route and a wakeup frequency for each of the waypoints,
wherein each of the waypoints define a location, and wherein
the waypoints include an origin endpoint, a destination endpoint
and intermediate locations between the origin endpoint and
destination endpoint;
performing an action associated with the time-based
wakeup event;
determining a wakeup frequency for one or more
subsequent time-based wakeup events from the travel itinerary
based at least in part on the determined waypoint; and
setting the one or more subsequent time-based wakeup
events in accordance with the determined wakeup frequency.
REJECTIONS
1. Claims 1-4 and 9-20 are rejected under 35 U.S.C. § 102 as
anticipated by Stevens (US 9,177,282 B2, issued Nov. 3, 2015).
2. Claims 5-8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stevens and Paulson (US 8,228,234 B2, issued July 24,
2012).
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Appeal 2018-006208
Application 14/987,928
OPINION
Claims 1, 19, and 20 each require "a pre-programmed travel itinerary
... stored in a memory of the mobile transceiver." In the Final Action, the
Examiner finds that the discussion of a "journey" in Stevens discloses this
feature. Final Act. 3 (citing Stevens, 3:50-64). In the Answer, the
Examiner considers this feature to be inherent in Stevens. Ans. 4-5 (citing
Stevens, 3:21-27). Appellant disputes these findings (both that Stevens
expressly discloses the recited feature noted above and that it is inherent in
Stevens). Appeal Br. 17-22; Reply Br. 3-7.
Stevens describes a "buyer 102, seller 104, and tracking device
provider 106 interacting in a shipping scenario" where "[ a ]n example asset
108 is shipped from the seller 104 to the buyer 102." Stevens, 2:56-59.
Stevens explains that a "tracking device 114 can be coupled to the asset 108"
and "[ d]uring the journey, the tracking device 114 can be programmed to
wake up periodically, initiate communication with the tracking device
provider 106, and send event notifications to the tracking device provider
106." Id. at 3:21, 24-27. "The tracking device 114 reports various events,
including ... process events[] and tracking events." Id. at 3:36-39.
"Process events indicate that various procedural events in the journey of the
asset have occurred ... ( e.g., that the asset 108 is beginning or ending its
tracking device journey)." Id. at 3:49-54. "Tracking events are periodic
reports of the location of tracking device 114," which "can send a report of
its current location according to a schedule, for example, at fixed intervals of
time." Id. at 3:64-67. "A tracking system ... can process the tracking
events to determine when an asset has entered or left a predefined area," and
"can define geofences ( e.g., a virtual perimeter) around important locations
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Appeal 2018-006208
Application 14/987,928
along the journey ... or the system 200 can determine that the asset has
entered or left a given location when the tracking device 114 enters or leaves
a geofence." Id. at 4:1-9.
Appellant explains that "[ a ]lthough the cited passages of Stevens
describe 'journeys' and various shipment events, there is no disclosure of a
travel itinerary stored by the tracking device that describes the shipment
events in advance of their occurrence that is provided to and accessible by
the tracking device." Appeal Br. 18. Appellant contends that "Stevens
refers to a journey in the everyday sense of the word, i.e. as 'an act or
instance of traveling from one place to another"' and "does not disclose a
pre-programmed itinerary as in the claimed subject matter." Id. at 19.
Appellant additionally contends that "[i]t does not necessarily flow from the
teachings of Stevens that a fixed route between endpoints is predetermined
by shipping companies, and that the device in Stevens is pre-programmed
with such a fixed route." Reply Br. 6.
Appellant has the better position. The Examiner does not dispute that
the "pre-programmed travel itinerary" recited in the claims requires
shipment events determined in advance of their occurrence. As seen above
in the discussion regarding the disclosure of Stevens, the portions of Stevens
cited by the Examiner are silent regarding such stored features. That
tracking device 114 in Stevens can periodically send information during its
"journey" says nothing about any details of that particular journey being pre-
programmed into tracking device 114. The Examiner appears to agree
because, as noted above, the rejection changes from one based on express
disclosure in the Final Action to one based on inherency in the Answer.
Final Act. 3; Ans. 4-5.
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Appeal 2018-006208
Application 14/987,928
With respect to inherency, the Examiner explains that in Stevens,
"[ o ]nee the shipment orders and details about the destination are received at
the seller, the seller may chooses one ... Shipping Company," which
"already [has a] fixed route which their company's drivers' take to get from
Point A to Point B most efficiently." Ans. 4-5. Based on this explanation,
the Examiner concludes that "the idea of the pre-programmed itinerary is
inherent in [Stevens] as the[] company will have certain routes they will be
taking from Point A ( e.g. Seller's Location) to Point B ( e.g. Buyer's
Location or the closest distribution point to the Buyer's Location)." Id. at 5.
One problem with this conclusion, however, is that even if such a common
route exists, the Examiner's explanation says nothing about why that
particular route is necessarily pre-programmed in tracking device 114 in
Stevens.
The Examiner additionally explains that because Stevens may be a
"much advanced system" compared to the claimed arrangement, "the
pending application should be inherently anticipated by the much advanced
system as disclosed by Stevens." Ans. 5. There is no basis for such a
conclusion without establishing that the claimed features are necessarily
present in Stevens. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
("Inherency ... may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.").
For at least the reasons set forth above, the Examiner has failed to
establish that Stevens discloses, either expressly or inherently, that tracking
device 114 is pre-programmed with a travel itinerary as required by the
claims.
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Appeal 2018-006208
Application 14/987,928
For at least these reasons, we do not sustain the Examiner's decision
to reject claims 1-2 0.
DECISION
We REVERSE the Examiner's decision to reject claims 1-20.
REVERSED
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