Ex Parte Waris

Patent Trial and Appeal Board

Mar 18, 2016

13403678 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/403,678 02/23/2012
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
03/22/2016
FIRST NAMED INVENTOR
Heikki Waris
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.
P3599US01 5934
EXAMINER
CHIOU, ALBERT
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKKI W ARIS
Appeal2014-002688
Application 13/403,678
Technology Center 2400
Before MICHAEL J. STRAUSS, HUNG H. BUI, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1 and 28--48. Claims 2-27 are canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-002688
Application 13/403,678
THE INVENTION
The claims are directed to providing privacy protected navigation
between mobile terminals. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method, comprising:
receiving a request for location information for a target
terminal from a querying terminal; and
decreasing granularity of the location information of the
target terminal based, at least in part, on a decreasing distance
between the querying terminal and the target terminal, the
querying terminal, or a combination thereof; and
determining to make the location information of the target
terminal with the decreased granularity available to the querying
terminal, wherein the decreased granularity comprises, at least in
part, less accurate location information.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Karr
Wilson
Chaskar
Moton
Waris
US 2001/0022558 Al
US 2004/0203901 Al
US 2004/0224702 Al
US 7,116,977 Bl
US 8, 150,932 B2
REJECTIONS
The Examiner made the following rejections:
Sept. 20, 2001
Oct. 14, 2004
Nov. 11, 2004
Oct. 3, 2006
Apr. 3, 2012
Claims 1 and 28--48 stand rejected on the ground of obviousness-type
double patenting as being unpatentable over claims 1-25 of Waris. Ans. 4--
8.
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Appeal2014-002688
Application 13/403,678
Claims 1, 28-30, 32-35, 37-39, 41, 43, 44 and 46 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Chaskar and Moton.
Ans. 9-23.
Claims 31, 36, 40, 42 and 45 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chaskar, Moton, and Karr. Ans. 23-24.
Claims 47 and 48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chaskar, Moton, and Wilson. Ans. 25.
APPELLANT'S CONTENTION
Neither Moton nor Chaskar teaches or suggests providing a rules-
based level of granularity of a target terminal location including (i)
decreasing granularity of the location information of the target terminal
based on a decreasing distance between the querying terminal and the target
terminal and (ii) determining to make the location information of the target
terminal with the decreased granularity available to the querying terminal.
App. Br. 5-9.
ANALYSIS
Double Patenting
Appellant does not contest the merits of the rejection based on
nonstatutory obviousness-type double patenting. App. Br. 2 ("Applicant will
file a Terminal Disclaimer ... "). Thus there appears to be agreement
between Appellant and the Examiner and no adverse decision presented for
our review. As such, we decline to reach the merits of this rejection in order
to afford Appellant the opportunity to enter a terminal disclaimer. See Ex
Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). Any
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Appeal2014-002688
Application 13/403,678
arguments that could have been made but were not made are waived. See 37
C.F.R. § 41.37(c)(iv); Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008)
("the applicant can waive appeal of a ground of rejection").
Rejections under 35 U.S.C. § 103(a)
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred in rejecting independent claims 1, 32, 37,
41, and 44 under 35 U.S.C. § 103(a) as being unpatentable over Chaskar and
Moton. We agree with Appellant's conclusions as to this rejection of the
claims.
The Examiner finds Chaskar teaches decreasing granularity of target
terminal location information, referring, inter alia, to Chaskar's provision of
user entry of granularity information. Final. Act. 11-12; Ans. 9. The
Examiner further finds Moton's periodic position updates during tracking
movement of a package between locations teaches the disputed limitation of
granularity being based on a decreasing distance between the querying
terminal and the target terminal, the querying terminal, or a combination
thereof, and determining to make the location information of the target
terminal with decreased granularity available to the querying terminal. Final
Act. 12-13, Ans. 10-11. Appellant argues Chaskar's user, by first
specifying a large region and, subsequently, providing more detailed location
information, teaches increasing rather than decreasing granularity of location
information of a target terminal. App. Br. 7. Addressing Moton, Appellant
argues "in order to pinpoint the physical location of the wireless device,
increased granularity is made available to the querying terminal." App. Br.
8. Therefore, according to Appellant, "Moton neither discloses nor suggests
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Appeal2014-002688
Application 13/403,678
the features of the claimed invention that are admittedly missing from
Chaskar." App. Br. 9.
We are unable to identify in the portions of Chaskar and Moton cited
by the Examiner in support of the disputed limitation of decreasing
granularity (i.e., accuracy) of location information of a target terminal based
on a decreasing distance between the querying terminal and the target
terminal. Furthermore, the Examiner fails to provide a claim construction or
otherwise explain why a broad but reasonable interpretation of the disputed
limitations describing a relationship between decreasing distance and
accuracy and "determining to make the location information of the target
terminal with the decreased granularity available to the querying terminal"
would result from or be rendered obvious by the combination of Chaskar
and Moton. Therefore, constrained by the record before us, we do not
sustain the rejection of independent claim 1under35 U.S.C. § 103(a) over
Chaskar and Moton, or the rejection of independent claims 32, 37, 41 and 44
which contain substantially the same limitations argued in connection with
claim 1, or the rejection dependent claims 28-30, 33-35, 38, 39, 43, and 46.
Furthermore, we do not sustain the rejection of claims 31, 36, 40, 42 and 45
under 35 U.S.C. § 103(a) over Chaskar, Moton, and Karr or the rejection of
claims 47 and 48 over Chaskar, Moton, and Wilson, as the Examiner's
applications of the Karr and Wilson references fail to cure the deficiency in
the base rejection addressed supra.
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Appeal2014-002688
Application 13/403,678
DECISION
The Examiner's decision to reject claims 1 and 28--48 is reversed.
REVERSED
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