Ex Parte Sullivan et al

Patent Trial and Appeal Board

Nov 5, 2012

11030983 (P.T.A.B. Nov. 5, 2012)

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.
11/030,983 01/10/2005 Mark C. Sullivan SBTZ.0060004 8811
34611 7590 11/05/2012
LAW OFFICE OF DUANE S. KOBAYASHI
P.O. Box 4160
Leesburg, VA 20177
EXAMINER
MANCHO, RONNIE M
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
11/05/2012 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 MARK C. SULLIVAN and
JAMES B. KILFEATHER
________________

Appeal 2010-011222
Application 11/030,983
Technology Center 3600
________________

Before CHARLES N GREENHUT, MICHAEL L. HOELTER and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011222
Application 11/030,983

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 37, 38, 40, 42-44, 46 and 49-52 (App. Br. 6-8). Claims
1-36 have been canceled (App. Br. 5-6) and claims 39, 41, 45, 47 and 48
have been withdrawn (App. Br. 6-8). Appellants’ representative presented
oral argument on October 18, 2012. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.

SUBJECT MATTER
The disclosed subject matter is directed to “methods and systems for
tracking the location of devices near the surface of the Earth.” Spec. para.
[0002]. Independent claim 37 is illustrative of the claims on appeal and is
reproduced below:
37. A location determination system, comprising
a communication satellite;
a mobile terminal, including:
a processor that controls a collection of code phase
measurements from signals received from a plurality of
GPS satellites, and an identification of an area of interest
from a terrestrial based wireless signal communicating
over said area of interest in which said mobile terminal
resides, said area of interest being smaller than a
convergence zone area, wherein a size of said
convergence zone area is a size of an area around a
current location of a mobile terminal in which an initial
position point must lie to guarantee that an iterative
position calculation starting with said initial position
point will converge to said current location of said
mobile terminal, and
a transmitter for transmission of said code phase
measurements and said identification of said area of
interest to said communication satellite; and
Appeal 2010-011222
Application 11/030,983

3
a service operations center that receives said plurality of
code phase measurements and said identification of said area of
interest from said communication satellite, said service
operations center including a position calculation module that
iteratively calculates a position solution using said plurality of
code phase measurements starting with a selected initial
position point in said area of interest, wherein identification of
said area of interest guarantees that a final position point
produced by said position calculation module, after starting
with said selected initial position point, is said current location
of said mobile terminal.

REFERENCE RELIED ON BY THE EXAMINER
Wickstrom US 6,408,178 B1 Jun 18, 2002

THE REJECTIONS ON APPEAL
1. Claims 42 and 50 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Ans. 3.
2. Claims 37, 38, 40, 42-44, 46 and 49-52 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention. Ans. 4.
3. As understood, claims 37, 38, 40, 42-44, 46 and 49-52 are rejected
under 35 U.S.C. § 102(e) as being anticipated by Wickstrom. Ans. 5.

ANALYSIS
REJECTION 1 – The Rejection of Claims 42 and 50 for
failing to comply with the enablement requirement
Dependent claims 42 and 50 are similar in that they both recite the
additional limitation that an iterative calculation is made “on only a single
candidate location point.” The Examiner has determined that these claims
Appeal 2010-011222
Application 11/030,983

4
contain “subject matter which was not described in the specification in such
a way as to enable one skilled in the art to which it pertains, or with which it
is most nearly connected, to make and/or use the invention.” Ans. 3. The
Examiner references their common limitation1 and contrasts that claim
language with Appellants’ Specification which recites “the processor
calculates candidate position solutions for each initial point …and discards
any candidates not satisfying the screening.” Ans. 3 referencing Spec. para.
[0010], see also Ans. 10. The Examiner determined that “[t]he claimed
limitation is new matter since there is iterative calculation on more than a
single candidate location point in the specification as opposed to ‘iterative
calculation on only a single candidate …point’ as claimed.” Ans. 4, 10. The
Examiner concludes that “the claimed limitation is not in the original
disclosure.” Ans. 4, 10.
In reply, Appellants describe the operation of their claimed invention
and refer to page 15, lines 15-19 of the Specification (i.e. Paragraph [0076]2)
for support that “if the area of interest is small enough, then the additional
range measurement and the screening process are unnecessary, and a unique
solution would result from an initial estimate at the center of the area of

1 Both claims 42 and 50 were added by amendment dated July 30, 2007.
Claim 50, when added, lacked the limitation of “only a single candidate
location point.” Claim 50 was subsequently amended into its present form
on February 18, 2008.
2 Paragraph [0076] reads in its entirety: “It should be noted that if the area
of interest is small enough (i.e., within the 20 guaranteed convergence zone),
such as a very narrow satellite beam, an area or city covered by an aircraft
platform, or a cellular tower coverage zone, then the additional range
measurement and the screening process are unnecessary, and a unique
solution will result from an initial estimate at the center of the area of
interest.”
Appeal 2010-011222
Application 11/030,983

5
interest.” App. Br. 15-17, Reply Br. 3. Appellants state that “[t]he single
initial point will produce[] the unique solution that can be used as the current
location of the mobile terminal” and further that “Appellants therefore
submit that the claimed ‘only a single candidate location point’ is fully
enabled by Appellants’ specification.” App. Br. 17, see also Reply Br. 3.
Appellants also contend that the Examiner’s reliance on Paragraph [0010] of
the Specification is a reference to “only one aspect of Appellants’ invention”
and does not address a “second technique” described in Paragraph [0076].
Reply Br. 3.
When rejecting a claim for lack of enablement, as here, “the
[Examiner] bears an initial burden of setting forth a reasonable explanation
as to why [the Examiner] believes that the scope of protection provided by
that claim is not adequately enabled by the description of the invention
provided in the specification of the application ….” In re Wright, 999 F.2d
1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-
24 (CCPA 1971)). In other words, the specification must teach those skilled
in the art how to make and use the full scope of the claimed invention
without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth
eight factors to be considered to evaluate whether a disclosure would require
undue experimentation). The Examiner’s rejection does not explain why the
disclosure, as filed, is not sufficiently complete to enable a skilled artisan to
make and use the subject matter of claims 42 and 50 without undue
experimentation. See Ans. 3-4, 10. Although the Examiner is not required
to discuss all Wands factors, the record does not reflect that the Examiner
considered any Wands factors or other evidence in terms of whether undue
Appeal 2010-011222
Application 11/030,983

6
experimentation is required to make and use the claimed invention. See In
re Hillis, 2012 WL 1817636, at *4 (Fed. Cir. May 21, 2012). As such, we
cannot sustain the stated rejection of claims 42 and 50 for lack of
enablement.

REJECTION 2 – The Rejection of Claims 37, 38, 40, 42-44, 46 and 49-52 as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention
The Examiner has rejected all the claims as being indefinite stating
that both independent claims 37 and 44 each recite different areas and the
Examiner asks “[w]hich area is which area? Applicant needs to make a
distinction between the areas recited in the claim.”3 Ans. 4, see also 10-11.
Regarding independent claim 37 and its dependent claims 38, 40, 42
and 43, these claims require “identification of an area of interest from a
terrestrial based wireless signal communicating over said area of interest in
which said mobile terminal resides.” Appellants explain that it is the same
“area of interest” and that they have used “proper antecedent basis.” App.
Br. 17-18. Regarding the claim limitation of a “convergence zone area”
being “a size of an area around a current location of a mobile terminal,”
Appellants contend that “[i]n this description, the generic term ‘area’ is
unambiguous in its reference to the ‘convergence zone area.’” App. Br. 18.

3 More specifically, the Examiner states “[c]laims 37 and 44 each recite, ‘an
identification of an area of interest from a terrestrial based wireless signal’
and ‘said area of interest in which said mobile terminal resides’. That is, the
claims recite, ‘an area of interest from a terrestrial based wireless signal’;
‘said area of interest in which said mobile terminal resides’; [and] ‘an area
around a current location of a mobile terminal’.” Ans. 4, 10-11.
Appeal 2010-011222
Application 11/030,983

7
Appellants present similar arguments regarding independent claim 44 and its
dependent claims 46 and 49-52.
“A decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Here, Appellants’ Specification and drawings distinguish between a
convergence zone (Spec. para. [0058]) and an area of interest which is
smaller than a convergence zone (Spec. para. [0076]). See also Figs. 3(A)
and (B). We are not persuaded that one skilled in the art would fail to
understand what is being claimed. Accordingly, we reverse the rejection of
claims 37, 38, 40, 42-44, 46 and 49-52 as being indefinite.

REJECTION 3 – The Rejection of Claims 37, 38, 40, 42-44, 46 and 49-52
(as understood) as being anticipated by Wickstrom
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Claims 37, 38, 40 and 43
Appellants argue these claims as a group. App. Br. 19. We select
independent claim 37 for review with claims 38, 40 and 43 standing or
falling with claim 37. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants describe the operation of their claimed invention and
contend that “Wickstrom does not disclose a location determination
system in a mobile terminal that collects an identification of an area of
interest from a terrestrial based wireless signal communicating over the area
Appeal 2010-011222
Application 11/030,983

8
of interest in which the mobile terminal resides and transmitting the
identification of the area of interest to a communication satellite.” App. Br.
19-20. The Examiner has identified Wickstrom’s mobile terminal 400 as
corresponding to the claimed “mobile terminal,” Wickstrom’s spot-beam
area 136 as corresponding to the claimed “convergence zone area” and the
Examiner has identified the claimed “area of interest” as being “smaller than
a convergence zone area 136.” Ans. 5. Wickstrom also teaches that “[o]nce
mobile terminal 400 determines the location of the current spot-beam in
which it is located, it generates a list of positions within the current spot-
beam geographic coverage area to use as a set of trial positions for
computing position fixes (block 424).” Wickstrom 9:47-51, see also Fig. 6.
In other words, Wickstrom teaches a location determination system in which
a mobile terminal determines the area in which it is located and generates
positions located within this area for use in computing position fixes.
Wickstrom’s Figure 4 discloses mobile terminal 400 communicating via
satellite. Understanding that an area of interest is merely “smaller than”
Wickstrom’s spot beam area 136 (i.e. “convergence zone area”), we are not
persuaded that Wickstrom does not disclose a location determination system
in which the mobile terminal collects information identifying an area of
interest in which it resides and transmits this information to a satellite as
Appellant contends.
Regarding Appellants’ contention concerning the limitation of
identifying an area of interest “from a terrestrial based wireless signal
communicating over said area of interest,” Appellants contend that
Wickstrom does not disclose that “the area from which an initial position
point is taken is an area identified from a terrestrial based wireless signal
Appeal 2010-011222
Application 11/030,983

9
received by the mobile terminal.” App. Br. 20, 24, Reply Br. 5. More
specifically, Appellants contend that Wickstrom’s “communication satellite
spot-beam area is not identified from a terrestrial based wireless signal
received by the mobile terminal.” App. Br. 24. The Examiner disagrees and
references Wickstrom’s Figures 2 and 4. Ans. 5, 12, 13-14. Wickstrom
teaches that “[a] satellite 126 and coverage area 136 may serve a function
similar to that of a base station 26 and cell 24, respectively, of the terrestrial
wireless communication system 20.” Wickstrom 2:13-16. Appellants’
contention is not persuasive.
Appellants further contend that Wickstrom discloses two separate
radiotelephones and not a single radiotelephone that can perform as claimed.
App. Br. 21. Appellants are referencing Wickstrom’s Figure 1 (App. Br. 21)
which is a figure not relied on by the Examiner and Appellants do not
address Wickstrom’s Fig. 4 illustrating a single mobile terminal 400 as
identified by the Examiner. Ans. 5. Appellants’ contention is not
persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 37, 38, 40
and 43 as being anticipated by Wickstrom.
Claims 42 and 50
Appellants separately argue claims 42 and 50, but Appellants
arguments for these two claims are similar and thus we address them
together. App. Br. 24, 36. Both claims have the limitation that “said
position calculation module performs an iterative calculation on only a
single candidate location point.” Appellants contend that Wickstrom
“discloses a system for determining a position of a mobile terminal using a
plurality of trial positions” and does not disclose a system that “processes
Appeal 2010-011222
Application 11/030,983

10
only a single candidate position point” as claimed. App. Br. 24, 27, 36, 38.
The Examiner disagrees stating that Wickstrom teaches “an iterative
calculation on only a single candidate location” and also notes that these
claims are subject to the § 112 rejection discussed supra. Ans. 7, 9, 15, 17-
18.
We are not persuaded by the Examiner’s determinations. Wickstrom
teaches that “[t]rial positions, i.e., candidate mobile terminal positions,” are
selected and that in one embodiment “at least two” candidates are generated.
Wickstrom 4:42-43, 4:59-61, see also 9:47-57. Wickstrom also discloses
reducing the number of trial positions (Wickstrom 4:49-53) but there is no
teaching of reducing this number to only one. Further, the passages in
Wickstrom relied on by the Examiner do not persuade us that Wickstrom
teaches the use of only a single point nor are we persuaded of anticipation by
the Examiner’s reliance on arguments previously presented with respect to
§ 112. Ans. 7, 9, 15, 17-18. We agree with Appellants that claims 42 and
50 call for using only a single point within an area of interest to perform an
iterative position calculation to determine the current location of the mobile
terminal. App. Br. 25-26, 37. The Examiner has not established that
Wickstrom discloses this feature by a preponderance of evidence.
Accordingly, we reverse the Examiner’s rejection of claims 42 and 50 as
being anticipated by Wickstrom.
Claims 44, 46, 49, 51 and 52
Appellants argue these claims as a group. App. Br. 27 and 33. We
select independent claim 44 for review with claims 46, 49, 51 and 52
standing or falling with claim 44. Appellants again describe the operation of
their claimed invention and repeat arguments similar to those discussed
Appeal 2010-011222
Application 11/030,983

11
above with respect to claim 374. Appellants also rely on an “area of interest”
different from that identified by the Examiner. App. Br. 35. We are not
persuaded by Appellants contentions and accordingly, we sustain the
Examiner’s rejection of claims 44, 46, 49, 51 and 52 as being anticipated by
Wickstrom.

DECISION
The rejection of claims 42 and 50 under 35 U.S.C. § 112, first
paragraph, as not being enabled is reversed.
The rejection of claims 37, 38, 40, 42-44, 46 and 49-52 under 35
U.S.C. § 112, second paragraph, as being indefinite is reversed.
The rejection of claims 37, 38, 40, 43, 44, 46, 49, 51 and 52 as being
anticipated by Wickstrom is affirmed.
The rejection of claims 42 and 50 as being anticipated by Wickstrom
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Klh

4“Wickstrom does not disclose a location determination system in a mobile
terminal that collects an identification of an area of interest that is smaller
than a convergence zone area and transmitting the identification of the area
of interest to a communication satellite.” App. Br. 28. Further, “Wickstrom
does not disclose a location determination system in a mobile terminal that
collects an identification of an area of interest that is smaller than a
convergence zone area and transmitting the identification of the area of
interest to a communication satellite.” App. Br. 29.