Ex Parte Bussan et al

Patent Trial and Appeal Board

Sep 10, 2013

10386346 (P.T.A.B. Sep. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER F. BUSSAN and ERIC J. HEFNER
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Appeal 2011-003019
Application 10/386,346
Technology Center 2600
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Before ALLEN R. MacDONALD, JUSTIN BUSCH, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003019
Application 10/386,346

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-16. We have jurisdiction under 35 U.S.C. § 6(b). Claims 17-23 were
cancelled. Br. 2. We affirm-in-part.
Exemplary Claims
Exemplary claims 1, 3, 5, 8, and 9 under appeal read as follows
(emphasis added):
1. A method in a mobile wireless communications device, the
method comprising:
receiving a network location request at the mobile wireless
communications device;
sending multiple responses to the same network location
request,
the multiple responses sent from the mobile wireless
communications device.
3. The method of Claim 1,
obtaining multiple measurement information sets,
sending multiple responses to the same network location
request includes sending the multiple measurement information sets.
5. The method of Claim 3, completing each of the multiple
measurement information sets when a variance of multiple
measurements on each of the plurality of signal sources satisfies a
condition.
8. The method of Claim 1, sending multiple responses at
response intervals specified in the network location request.
9. The method of Claim 1,
each response including measurement information for a
plurality of signal sources,
sending each response when a variance of multiple
measurements on each signal source of the plurality of signal sources
satisfies a condition.
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Rejections on Appeal
The Examiner rejected claims 1, 3-10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Forrester (US 2003/0017833
A1) and Raaf (US 6,856,805 Bl). Ans. 3-5 and 7.
The Examiner rejected claims 2 and 11-16 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Forrester, Raaf, and Havinis
(US 6,295,454 Bl). Ans. 5-7.
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under § 103(a) because Raaf does not disclose a network location request as
found by the Examiner. Br. 4.
2. Appellants contend that the Examiner erred in rejecting claim 3
under § 103(a) because Raaf does not disclose a network location request as
found by the Examiner. Br. 5.
3. Appellants also contend that the Examiner erred in rejecting
claim 4 under § 103(a) because:
[C]ontrary to the Examiner's assertion, Forrester and Raaf fail
to suggest in combination with Claim 3, “... sending multiple
measurement information sets in a single response to the
network location request.” Raaf clearly and indisputably sends
multiple separate reports.
Br. 5.
4. Appellants contend that the Examiner erred in rejecting claim 5
under § 103(a) because the prior art fails to suggest “when a variance of
multiple measurements on each of the plurality of signal sources satisfies a
condition” as claimed. Br. 5-6.
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5. Appellants also contend that the Examiner erred in rejecting
claim 9 under § 103(a) because the prior art fails to suggest “when a
variance of multiple measurements on each signal source of the plurality of
signal sources satisfies a condition” as claimed. Br. 6-7.
6. Appellants contend that the Examiner erred in rejecting claim 7
under § 103(a) because:
[C]ontrary to the Examiner's assertion, Forrester and Raaf fail
to suggest in combination with Claim 1, "... sending multiple
responses in response to a request for multiple responses in the
network location request." Raaf does not send a single network
location request. Thus Raaf cannot include a request for
multiple responses in the network location request.
Br. 6.
7. Appellants contend that the Examiner erred in rejecting claim 8
under § 103(a) because (emphasis added):
[C]ontrary to the Examiner's assertion, Forrester and Raaf fail
to suggest in combination with Claim 1, "... sending multiple
responses at response intervals specified in the network
location request." Raaf does not disclose sending a network
location request. Thus Raaf does not suggest including a report
interval in the network location request.
Br. 6.
8. Appellants contend that the Examiner erred in rejecting claim 2
under § 103(a) because Havinis fails to disclose sending multiple responses
to the network location request. Br. 8.
9. Appellants contend that the Examiner erred in rejecting claim
11 under § 103(a) because Havinis fails to disclose sending multiple
responses to the network location request. Br. 8.
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10. Appellants contend that the Examiner erred in rejecting claim
14 under § 103(a) because (emphasis added):
At col. 5: 10-67, Havinis discloses a positioning request
including an indicator that indicates how often the positions
should be computed and reported. At col. 6: 1-15, Havinis
discloses reporting historical positioning data to the requestor
via an SMS message. The time stamps 299 indicate when the
historical data was obtained, not a final response time for
responding to the network location request.
Br. 9.
11. Appellants contend that the Examiner erred in rejecting claim
15 under § 103(a) because (emphasis added):
At col. 5: 10-67, Havinis discloses a positioning request
including an indicator that indicates how often the positions
should be computed and reported. At col. 6: 1-15, Havinis
discloses reporting historical positioning data to the requestor
via an SMS message. The time stamps 299 indicate when the
historical data was obtained, not an "initial response time"
before which an initial response to the network location request
should be sent.
Br. 9-10.
12. Appellants contend that the Examiner erred in rejecting claim
16 under § 103(a) because (emphasis added):
At col. 5: 10-67, Havinis discloses a positioning request
including an indicator that indicates how often the positions
should be computed and reported. At col. 6: 1-15, Havinis
discloses reporting historical positioning data to the requestor
via an SMS message. The time stamps 299 indicate when the
historical data was obtained, not an indication that the response
is a "final response".
Br. 10.

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ANALYSIS
We enter new grounds of rejection herein for claims 5, 6, 8, and
14-16.
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
contentions 4 and 5 covering claims 5, 6, 9, and 10. We also agree with
Appellants’ contention 7 covering claim 8, and contentions 10-12 covering
claims 14-16. However, we disagree with Appellants’ above contentions
1-3, 6, 8 and 9. 1
As to Appellants’ above contentions 4 and 5, we agree. Claims 5, 6,
9, and 10 are quite narrow and require that either the variance or deviation of
multiple measurements on each signal source satisfies a condition (as
opposed to a single measurement on a subset of the signal sources). We find
the Examiner’s supporting analysis to be insufficient. However, claims 5
and 6 lack any antecedent basis for their “plurality of signal sources”
limitations. Therefore, we reject claims 5 and 6 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
As to Appellants’ above contention 7 (claim 8), we agree. However,
the cited Havinis reference explicitly teaches the limitations of claim 8 in its
Summary. Therefore, we reject claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Forrester and Raaf, as applied to claim 1, and further in
view of Havinis.

1 We note that many of Appellants’ contentions are merely a recitation of the claim language combined
with a naked assertion that the recited elements are not found in the prior art. Our reviewing court has held
that such are not substantive arguments of Examiner error. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011)(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”). Although we address some of these contentions’
less than substantive arguments below, we do so only to move forward the overall prosecution of this
application.
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As to Appellants’ above contentions 1 and 2 (claims 1 and 3), we
disagree. Although we agree with Appellants that Raaf does not disclose a
network location request, the Examiner also found that Forrester teaches a
network location request (Final Rej. 8; next to last full paragraph).
Appellants do not dispute this finding by the Examiner.
As to above contention 3 (claim 4), we disagree. Appellants’
argument conflates “information sets” and “reports.” Raaf explicitly states
that each report contains “measurement data relating to a number of adjacent
base stations to the current base station.” Abs. We conclude that an artisan
would deem the measurement data relating to a single base station to be an
“information set” even if it contains only a single measurement. Therefore,
we conclude that the Examiner was correct that Raaf sends multiple
measurement information sets.
As to Appellants’ above contention 6 (claim 7), we disagree.
Although we agree with Appellants that Raaf does not disclose a network
location request, “repeatedly transmits” is taught by Raaf at col. 1. Absent
some unpredicted result, we deem to be obvious and not patentable mere
repeating in the “asking” (requesting repeatedly or requesting that a known
thing be repeated plural times) or in the “answering” (responding or
reporting).
As to Appellants’ above contentions 8 and 9 (claims 2 and 11), we
disagree. As the Examiner points out at page 11 of the Answer, Havinis was
put forward to teach E-OTD. Appellants are pointing out a deficiency in the
Havinis reference rather than challenging the conclusion based upon the
combined teachings of the plural references. The fact that a single reference
does not disclose or suggest the claimed invention does not rebut the
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obviousness conclusion reached by the Examiner based upon combined
teachings of plural references. The test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981). Appellants have not challenged the combinability of the teachings of
Havinis, Forrester, and Raaf. In other words, while Appellants contend that
Havinis lacks a teaching, it is our view that such feature is taught by the
combination of Forrester and Raaf for the reasons set forth by the Examiner.
As to Appellants’ above contentions 10-12 (claims 14-16), we agree.
However, in light of the conclusions above that it is obvious to request
multiple responses and that it is known to indicate the response interval, we
conclude that an artisan would recognize that specifying the response
interval implicitly specifies the “initial response time.” Further, we find that
stopping a repeated activity is well within the skill in any art. As such, we
deem specifying a “final response time” to be within the skill of an artisan.
Therefore, we reject claims 14-16 under 35 U.S.C. § 103(a) as being
unpatentable over Forrester and Raaf, as applied to claim 1, and further in
view of Havinis.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection …
shall not be considered final for judicial review.” This section also provides
that the Appellant, 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
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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. . . .

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 5, 6, 8-10, and 14-16 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner did not err in rejecting claims 1-4, 7, and 11-13
under 35 U.S.C. § 103(a).
(3) Claims 9 and 10 have not been shown to be unpatentable.

DECISION
The Examiner’s rejections of claims 5, 6, 8-10, and 14-16 are
reversed.
The Examiner’s rejections of claims 1-4, 7, and 11-13 are affirmed.
We reject claims 5, 6, 8, and 14-16.
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)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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