Ex Parte Ainsworth et al

Board of Patent Appeals and Interferences

Sep 6, 2012

11453881 (B.P.A.I. Sep. 6, 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.
11/453,881 06/16/2006 Miley Ainsworth 02100.0095 7296
22852 7590 09/07/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KUNDU, SUJOY K
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
09/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MILEY AINSWORTH and OLE PETTER SKAAKSRUD
____________

Appeal 2010-000495
Application 11/453,881
Technology Center 2800
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/453,881

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-17, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
“[Appellants’] invention relates to systems and methods for providing
sensor data pertaining to tracked items using a context based sensor web.”
(Spec. ¶ [001]). Claim 1, which is illustrative of the invention, reads as
follows:
1. A method for providing sensor data from tracking
devices, the method comprising:
receiving a request for sensor data, the request including
a triggering parameter, wherein the triggering parameter
comprises an environmental condition;
searching for information identifying qualifying tracking
devices that meet the triggering parameter, wherein each
qualifying tracking device from a first set of the qualifying
tracking devices is capable of gathering the sensor data, and
each qualifying tracking device from a second set of the
qualifying tracking devices is not capable of gathering the
sensor data;
retrieving the requested sensor data as sensor data
gathered by the first set of the qualifying tracking devices; and
returning the requested sensor data, for display to a user,
the requested sensor data informing the user of environmental
conditions that correspond to the first set of qualifying tracking
devices and the second set of qualifying tracking devices.
Claims 1, 7, and 12 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which Appellants regard as the invention.
(Ans. 3).
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Horstemeyer (US 7,119,716 B2; Oct. 10, 2006; filed Nov. 12, 2003).
(Ans. 3-7).
Rather than repeat the arguments here, we refer to the Briefs and the
Answer for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
Based on Appellants’ arguments we will discuss the issues on Appeal
with reference to claim 1. The pivotal issues
1
presented by Appellants’
contentions are:
Did the Examiner err in finding that claim 1 fails to particularly point
out and distinctly claim the subject matter which Appellants regard as their
invention?
Does Horstemeyer teach or suggest “a second set of . . . qualifying
tracking devices [that] is not capable of gathering the sensor data,” as recited
in claim 1?

1
Appellants’ contentions present additional issues. However, we are
persuaded of error with regard to the identified issues, and the identified
issues are dispositive of the Appeal. Therefore, we do not reach the
additional issues raised by Appellants’ contentions.
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ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner rejects claim 1 as indefinite stating, in pertinent part, as
follows:
With regards to Claim[] 1 . . . , applicant uses the claim
language; “wherein a first set of the qualifying tracking devices
is capable of gathering sensor data, and a second set of
qualifying tracking devices is not capable of gathering sensor
data,” it is not clear why the second part of the limitation is
even necessary, because one in the ordinary skill in the art
would know that all received sensor data is automatically
capable of gathering the sensor data. It is not clear why this
limitation is needed.
(Ans. 3 (emphasis added); see also Ans. 10-11). The Examiner further cites
MPEP § 2172.01 for the principle that a claim that fails to interrelate
essential elements of the invention is indefinite. (Ans. 3, 11).
Appellants contend that the Examiner’s rejection is confusing and
implicitly argues that it is based on language not found in the claim. (App.
Br. 11; see also Reply Br. 2). Appellants further contend the Examiner has
not established that claim 1 fails to interrelate essential elements of the
invention. (App. Br. 12).
We agree with Appellants. The Examiner’s findings that “one in the
ordinary skill in the art would know that all received sensor data is
automatically capable of gathering the sensor data” (Ans. 3 (emphasis
added)) does not relate to the language found in claim 1. Claim 1 recites
tracking devices, not sensor data, capable of gathering sensor data.
Additionally, the Examiner has not identified (see Ans. 3, 10-11) the
essential elements of the invention the claim fails to interrelate.
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Accordingly, we find the Examiner erred in rejecting as indefinite
claim 1, and claims 7 and 12, which were rejected (Ans. 3) and argued (App.
Br. 11-12; Ans. 10-11; Reply Br. 2) together with claim 1. Therefore, we
will not sustain the rejection of claims 1, 7, and 12 under 35 U.S.C. § 112,
second paragraph.
Rejection under 35 U.S.C. § 103(a)
The Examiner finds that Horstemeyer teaches all of the limitations of
claim 1 (Ans. 4-5) except “a second set of . . . qualifying tracking devices
[that] is not capable of gathering the sensor data” (Ans. 5). The Examiner
further finds as follows:
Although Horstemeyer is silent about a second set of
qualifying tracking device, Horstemeyer suggests the limitation
of a second set of the qualifying tracking devices is not capable
of gathering the sensor data; Column 29, Lines 20-30 further
describes how one can filter data for certain information and the
database can be configured for any desirable information.
Thus, a second set can be interpreted as a set of data not desired
by the one who does not want irrelevant information.
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to include a second set of
qualifying devices for the purpose of providing additional
information that maybe [sic] relevant to another user.
(Id.). The Examiner explains as follows:
Appellant does not distinguish the differences between the two
sets of qualifying tracking devices. According to appellants[’]
specification (Paragraph 67 as described in the [Appeal] Brief),
there is no suggestion that the second set of qualifying devices
is a different type of sensor than the first set. Thus, a second set
can be interpreted as a set of data not desired by the one who
does not want irrelevant information.
(Ans. 12).
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Appellants contend Horstemeyer’s ability to exclude already collected
and stored information from view does not teach or suggest tracking devices
that are not capable of collecting the information. (App. Br. 13). Appellants
further contend that the Specification (see Spec. ¶ [067]) provides support
for a second set of tracking devices that is not capable of gathering the
sensing data. (Reply Br. 3).
We agree with Appellants. We find the Specification describes a first
set of tracking devices capable of gathering sensor data (e.g., temperature
data) and a second set of tracking devices not capable of gather the sensor
data (i.e., temperature data). (See Spec. ¶ [067]; see also ¶¶ [020], [025],
[053]-[054]). We also find that the Examiner has not presented persuasive
evidence or argument to establish that one of ordinary skill in the art would
have inferred from Horstemeyer’s teaching of excluding collected data from
view (Horstemeyer col. 29, ll. 20-30) a suggestion of a first set of tracking
devices having the capability of gathering sensor information and second set
not having the capability of gathering sensor information.
Accordingly, we find the Examiner erred in rejecting as obvious over
Horstemeyer (1) claim 1; (2) claims 7 and 12, which recite substantially the
same limitation we find to not be taught or suggested by Horstemeyer; and
(3) claims 2-6, 8-11, and 13-17, which depend from claims 1, 7, and 12
respectively. Therefore, we will not sustain the rejection of claims 1-17
under 35 U.S.C. § 103(a).

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)

Claims 1-17 are rejected on a new ground of rejection under 35
U.S.C. § 103(a) as unpatentable over Horstemeyer and Twitchell (US
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2006/0023679 A1; Feb. 2, 2006), which was cited in an Information
Disclosure Statement filed June 17, 2011.
We note as an initial matter that the word “qualifying,” in the
recitation “information identifying qualifying tracking devices,” was
introduced into the claims by an amendment filed March 6, 2008, and does
not appear in the Specification as originally filed. Considering the word in
the context of claim 1, we conclude that the broadest reasonable
interpretation of “qualifying” is as a short hand synonym for “meet[ing] the
triggering parameter.”
Claim 1
Claim 1 is rejected as unpatentable over Horstemeyer and Twitchell.
Horstemeyer teaches “[a] method for providing sensor data from tracking
devices.” (Horstemeyer, Abstract; col. 11, ll. 38-45). Horstemeyer further
teaches “receiving a request for sensor data, the request including a
triggering parameter wherein the triggering parameter comprises an
environmental condition.” (Horstemeyer, Abstract; Fig. 1, Ref. 73; Fig. 18,
Refs. 291, 294; col. 30, ll. 31-40; col. 48, l. 66–col. 49, l. 10; col. 72, ll. 46-
60). Appellants’ Specification encompasses location conditions within
“environmental conditions.” (Spec. ¶ [025]). Horstemeyer teaches defining
a triggering parameter that is a location condition, e.g., a predetermined
proximity between a Mobile Thing (MT) and a stop location or region for
triggering a notification (Hostemeyer, col. 72, ll. 50-55).
Horstemeyer teaches “searching for information identifying qualifying
tracking devices that meet the triggering parameter.” (Horstemeyer, Fig 18,
Ref. 294; Figs 4A, 4B, 5C, 5D). Horstemeyer’s mobile thing control unit
(MTCU) and sensor teach “each qualifying tracking device from a first set
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of the qualifying tracking devices is capable of gathering the sensor data.”
(Horstemeyer, Fig. 1, Refs. 15, 18).
Twitchell’s mobile locating gateway (MLG) having a GPS receiver
also teaches “each qualifying tracking device from a first set of the
qualifying tracking devices is capable of gathering the sensor data.”
(Twitchell, Fig. 1; ¶ [0098]). In addition, Twitchell’s wireless tags (WT,
e.g., radio-frequency transponder (RFT), Wireless Reader Tag (WRT), low-
power radio frequency (LPRF)) teach “each qualifying tracking device from
a second set of the qualifying tracking devices is not capable of gathering the
sensor data.” (Twitchell, Fig. 1; ¶¶ [0049]-[0053]).
Horstemeyer teaches “retrieving the requested sensor data as sensor
data gathered by the first set of the qualifying tracking devices; and
returning the requested sensor data, for display to a user, the requested
sensor data informing the user of environmental conditions that correspond
to the first set of qualifying tracking devices.” (Horstemeyer, col. 72, ll. 46-
60; Fig. 18, Ref. 294; Figs. 4A, 4B, 5C, 5D). Horstemeyer teaches
transmitting a notification to a user when the MT is within a predetermined
proximity of a stop location or region. (Horstemeyer, col. 72, ll. 50-60).
Twitchell teaches that the location (i.e., the “environmental condition”) of
the RFTs and LPRFs (i.e., “the second set of qualifying tracking devices”) is
determined by virtue of being in a truck equipped with an MLG (i.e., one of
the “first set of mobile devices”) so that Twitchell teaches that
“environmental conditions that correspond to the first set of qualifying
tracking devices” also correspond to “the second set of qualifying tracking
devices.” (Twitchell, Fig. 1; ¶¶ [0049]-[0053], [0098]).
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Horstemeyer (see, e.g., col. 2, ll. 13-22) and Twitchell (see, e.g., ¶
[0203]) both relate to package delivery and delivery truck tracking.
Horstemeyer and Twitchell are in the same field of endeavor and are,
therefore, analogous art. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011). The cited portions of Horstemeyer teach all of the recitations of
claim 1 except those related to the “second set of the qualifying tracking
devices [that] is not capable of gathering the sensor data.” The cited potions
of Twitchell teach the recitations missing from the cited portions of
Horstemeyer. It would have been obvious to one of ordinary skill in the art
to combine the teaching of Horstemeyer and Twitchell. This is because such
a combination is merely “[t]he combination of familiar elements according
to known methods . . . [that] does no more than yield predictable results,”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), -- a predictable
variation that can be implemented by a person of ordinary skill in the art, id.
at 417.
2

Claim 7
The recitations of independent claim 7 substantially parallel those of
claim 1. The “client” recited in claim 7 encompasses Horstemeyer’s
personal communication device (PCD). (Horstemeyer, Fig. 1, Ref. 75). The
recited plurality of tracking devices encompasses Horstemeyer’s MTCU
(Horstemeyer Fig. 1, Ref. 17) and also encompasses Twitchell’s, LPRF,
RFT, and mobile locating gateway (MLG) (Twitchell, Fig. 1, Ref. 110, 130,

2
Although not relied upon in this rejection, we note that the teaching of
Ebert (WO 03/060752 A1; July 24, 2003) cited in an Information Disclosure
Statement filed June 17, 2011, is also relevant to the recitations of claim 1.
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180). The recited “tracking center” encompasses Horstemeyer’s base station
control unit (BSCU). (Horstemeyer Fig. 1, Ref. 40).
Appellants have not submitted arguments challenging the application
of Horstemeyer regarding those recitations of claims 7 not found in claim 1.
Appellants have, therefore, waived such arguments in this proceeding. See
37 C.F.R. § 41.37(c)(1)(vii).
Claim 7 is rejected over Horstemeyer and Twitchell as applied to
claim 1, as supplemented herein.
Claim 12
The recitations of independent claim 12 substantially parallel those of
claim 1. Appellants have not submitted arguments challenging the
application of Horstemeyer regarding those recitations of claim 12 not found
in claim 1. Appellants have, therefore, waived such arguments in this
proceeding.
Claim 12 is rejected over Horstemeyer and Twitchell as applied to
claim 1.
Claims 2-6, 8-11, and 13-17
Appellants have not submitted arguments challenging the application
of Horstemeyer by the Examiner to the recitations added by dependent
claims 2-6, 8-11, and 13-17. (App. Br. 16). Appellants have, therefore,
waived such arguments in this proceeding.
Accordingly, dependent claims 2-6, 8-11, and 13-17 are rejected as
unpatentable over Horstemeyer and Twitchell as applied to independent
claims 1, 7, and 12, supra, together with Horstemeyer as applied by the
Examiner to the dependent claims. (Ans. 5-6).

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ORDER
The decision of the Examiner to reject claims 1, 7 and 12 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellants regard as
the invention is reversed.
The decision of the Examiner to reject claims 1-17 under 35 U.S.C.
§ 103(a) as unpatentable over Horstemeyer is reversed.
We enter a new ground of rejection for claims 1-17 under 35 U.S.C.
§ 103(a) as unpatentable over Horstemeyer and Twitchell.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).

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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) (2010).

REVERSED
37 C.F.R. § 41.50(b)

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