Paul Hiscock et al.

Patent Trials and Appeals Board

Jun 11, 2020

15273115 - (D) (P.T.A.B. Jun. 11, 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.
15/273,115 09/22/2016 Paul Hiscock QC162038 1070
12371 7590 06/11/2020
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
CUMMING, WILLIAM D
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL HISCOCK and NICOLAS GRAUBE

Appeal 2018-009033
Application 15/273,115
Technology Center 2600

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–30, which constitute all of the claims
pending in this appeal.2 Claims App. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 We refer to the Specifications filed Oct. 6, 2017 and Sep. 22, 2016
(“Spec.”); the Final Office Action, mailed Nov. 29, 2017 (“Final Act.”); the
Appeal Brief, filed May 23, 2018 (“Appeal Br”); the Examiner’s Answer,
mailed Aug. 29, 2018 (“Ans.”), and the Reply Brief, filed Sep. 18, 2018
(“Reply”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies QUALCOMM, Inc. as the real
party-in-interest. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter is directed to a
method and system for determining a region of a user equipment (UE, 800)
(e.g., key fob, 800C) using directional receive antenna arrays. Spec. ¶¶ 1, 4.
One particular embodiment of the claimed subject matter relates to
determining whether a key fob is located inside or outside a vehicle. Id. ¶ 57
Figure 8, discussed and reproduced below, is useful for
understanding the claimed invention:

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Figure 8 illustrates UE (800) including transceiver (806) coupled to
application specific integrated circuit (ASIC, 808), application programming
interface (API 810), memory (812) and local database (814). Id. ¶¶ 53, 54.

Claims 1, 18, 23, and 28 are independent. Claim 1, reproduced below
with disputed limitations emphasized in italics, is illustrative of the claimed
subject matter:
1. A method of determining a region of a user equipment (UE),
comprising:
measuring, via a first directional receive antenna array coupled
to an apparatus, one or more signals that are transmitted by one or
more transmitters of the UE;
measuring, via a second directional receive antenna array
coupled to the apparatus, the one or more signals that are transmitted
by the one or more transmitters, wherein the first and second
directional receive antenna arrays are oriented towards different
directions;
determining a first representative value for the first directional
receive antenna array based on some or all of the measurements of the
one or more signals by the first directional receive antenna array;
determining a second representative value for the second
directional receive antenna array based on some or all of the
measurements of the one or more signals by the second directional
receive antenna array; and
determining whether the UE is within a given region based on
the first and second representative values, wherein the first directional
receive antenna is oriented towards an interior region of an enclosed
environment and the second directional receive antenna is oriented
towards an exterior region of the enclosed environment, wherein the
given region is the enclosed environment.

Appeal Br. 15 (Claims Appendix) (emphasis added).

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III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Gail US 5,313,210 May 17, 1994
Hagerman US 2009/0023447 A1 Jan. 22, 2009
Tadayon US 2012/0214472 A1 Aug. 23, 2012
Alizeh-Shabdiz US 2013/0252631 A1 Sep. 26, 2013

IV. REJECTIONS
The Examiner rejects claims 1–30 as follows:
1. Claims 2 and 24 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point and distinctly claim the
subject matter which the Applicant regards as the invention. Final
Act. 2–3.
2. Claims 1–12, 15, and 19–30 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Hagerman and Tadayon.
Final Act. 4–22.
3. Claims 13, 14, and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hagerman, Tadayon, and Gail.
Final Act. 23–26.
4. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hagerman, Tadayon, Gail, and
Alizadeh-Shabbiz. Final Act. 27–29.

3 All reference citations are to the first named inventor only.
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V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 6–14 and the Reply Brief, pages 2–5.4
1. Indefiniteness Rejection
The Examiner concludes that the recitation of “BLUETOOTH” in
claims 2 and 24 renders the claims indefinite under 35 U.S.C. § 112(b).
Final Act. 2. The Examiner cites to the decision in Ex parte Simpson5 for
the proposition that “[w]here a trademark or trade name is used in a claim as
a limitation to identify or describe a particular material or product, the claim
does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112
(pre-AIA), second paragraph.” (Id.) According to the Examiner,
“BLUETOOTH” is a trademark or a tradename used in the claims to identify
or describe a particular material or product, namely “antenna arrays”, as
opposed to identifying the source thereof. Id. The Examiner nonetheless
proposes that Appellant amend the claim language to recite “wherein the
first and second directional receive antenna arrays uses (sic) BLUETOOTH
communication (or protocol)” to overcome the indefiniteness rejection.
Ans. 2.
In response, Appellant argues that the Examiner’s conclusion of
indefiniteness is in error because “BLUETOOTH” is very well-known
communication protocol, which would be understood by one of ordinary

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Any other arguments Appellant could have
made but chose not to make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2014).
5 218 USPQ 1020 (Bd. App. 1982)
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skill in the art. Appeal. Br. 6 (citing Ex. Parte Nikolai6 (sic), Ex Parte
O’Farrell7). Id. In particular, Appellant argues that consistent with the
cited PTAB decisions holding that the recitation of Java does not render the
claims indefinite because Java is a well-known programming language, the
ordinarily-skilled artisan would likewise recognize BLUETOOTH as a well-
known communication protocol, and thereby does not render the claims
indefinite. Id. at 6–7.
Appellant’s arguments are persuasive. As an initial matter, we note
that although the cited PTAB decisions are not precedential, they are
persuasive. The test for definiteness under 35 U.S.C. § 112, second
paragraph, is 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, 1 USPQ2d 1081,
1088 (Fed. Cir. 1986). Further, our reviewing court has held that the claim
as a whole must be considered to determine whether the claim apprises one
of ordinary skill in the art of its scope, and therefore serves the notice
function required by 35 USC 112, second paragraph by providing clear
warning to others as to what constitutes the infringement of the patent.
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279,
1283 (Fed. Cir 2000). If the language of the claim is such that a person of
ordinary skill in the art could not interpret the metes and bounds of the
claims so as to understand how to avoid infringement, a rejection of the
claim under 35 USC 112, second paragraph is deemed appropriate. Morton
Int’l, Inc. v. Cardiinal Chemical Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190,

6 Ex Parte Nikolov, Appeal 2013-000274 (PTAB March 25, 2015).
7 Appeal 2011-011075, WL 2112325 (PTAB May 19, 2014).
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1195 (Fed. Cir. 1993). We agree with Appellant that because BLUETOOTH
is a well-known communication protocol, the ordinarily skilled artisan
would readily recognize that the recitation “BLUETOOTH antenna arrays”
connotes antenna arrays that use the BLUETOOTH communication
protocol, as suggested by the Examiner’s proposed amendment. Appeal
Br. 7, Ans. 2. Because the record before us supports that the ordinarily-
skilled artisan including the Examiner, after having read the Specification,
would be apprised of the scope of the claims, we are persuaded of error in
the Examiner’s indefiniteness rejection of claims 2 and 24.
2. Obviousness Rejections
Appellant argues the Examiner erred in finding that the combination
of Hagerman and Tadayon teaches or suggests a first directional receive
antenna is oriented towards an interior region of an enclosed environment
and a second directional receive antenna is oriented towards an exterior
region of the enclosed environment, as recited in independent claim 1.
Appeal Br. 9–13. In particular, Appellant argues Tadayon does not cure the
admitted deficiencies of Hagerman because Tadayon’s disclosure of a
transceiver does not teach the second directional receive antenna oriented
toward an exterior region of the closed environment. Id. at 10 (citing
Tadayon ¶¶ 77, 88, 93). According to Appellant, Tadayon’s transceiver
using power level measurement to calculate the distance to the UE to
determine when the UE is inside or outside of the vehicle qualifies as a non-
directional antenna capable of outdoor detection, and therefore does not
teach a second directional antenna oriented toward an exterior region of the
vehicle. Id. at 11–13. Further, according to Appellant, Tadayon discloses
directional antennas arranged with narrow ranges specifically inside of the
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vehicle as outside mobile devices, which are two or more feet away from the
vehicle out of range. Id. at 11–12 (citing ¶¶ 42, 58). Likewise, Appellant
argues that Tadayon also discloses remaining directional antennas
specifically oriented towards indoor sections of the vehicle. Id. at 13.
Appellant therefore submits that Tadayon’s disclosure of directional
antennas facing an interior region of a vehicle does not cure Hagerman’s
disclosure of directional antennas facing an outside environment without
being oriented towards an indoor region in a closed environment. Id.
Appellant’s arguments are not persuasive of reversible Examiner
error. As an initial matter, we note that the disputed limitations require
analyzing a first directional receive antenna oriented towards an interior
region of an enclosed environment (e.g. a vehicle) and a second directional
receive antenna directed towards an exterior region of the vehicle.
Appellant admits that Hagerman teaches a directional antenna oriented
towards the exterior of a closed environment. Appeal Br. 13. Further,
Appellant admits that Tadayon discloses a directional receive antenna
directed towards the interior of the closed environment. Id. In particular,
Tadayon discloses using the transceiver inside a vehicle to track the location
of a mobile device as it moves around and inside of the vehicle. Tadayon ¶¶
58, 77. Tadayon further describes the transceiver as a directional antenna for
tracking the mobile device location inside and outside of the vehicle. Id. ¶¶
93,176.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art to combine the cited teachings of Hagerman and
Tadayon because the proposed combination would have predictably resulted
in a transceiver transmitting a first directional receive antenna oriented
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towards an interior region of a vehicle and a second directional receive
antenna oriented towards an exterior region of the vehicle to determine the
location of a mobile device. Ans. 13. We find the Examiner’s proposed
combination of the cited teachings of Hagerman and Tadayon is no more
than a simple arrangement of old elements with each performing the same
function it had been known to perform, yielding no more than one would
expect from such an arrangement. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007); see also Tadayon ¶¶ 58, 77, Hagerman Fig. 1. Therefore,
the ordinarily skilled artisan, being “a person of ordinary creativity, not an
automaton,” would be able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in a transceiver that
emits a first directional receive antenna oriented towards the interior of a
vehicle and a second directional receive antenna oriented towards the
exterior of the vehicle to determine the location of a mobile device. Id. at
420–21. Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are
satisfied that, on the record before us, the Examiner has established by a
preponderance of the evidence that the combination of Hagerman and
Tadayon renders claim 1 unpatentable. Accordingly, we are not persuaded
of error in the Examiner’s obviousness rejection of claim 1.
Regarding the rejections of claims 2–30, Appellant has not presented
separate patentability arguments or reiterated substantially the same
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arguments as those previously discussed for patentability of claim 1. As
such, claims 2–30 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

VI. CONCLUSION
We affirm the Examiner’s obviousness rejections of claims 1–30
under 35 U.S.C. § 103. However, we reverse the Examiner’s indefiniteness
rejection of claims 2 and 24 under 35 U.S.C. § 112(b)
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 24 112(b) Indefiniteness 2, 24
1–12, 15, 19–30 103 Hagerman, Tadayon
1–12, 15,
19–30
13, 14, 18 103 Hagerman, Tadayon, Gail 13, 14,18
16, 17 103
Hagerman,
Tadayon, Gail,
Alizadeh-Shabbiz
16, 17
Overall Outcome 1–30 2, 24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED