11613560 (P.T.A.B. Mar. 3, 2014)

Ex Parte Graves et al

Patent Trial and Appeal BoardMar 3, 2014

11613560 (P.T.A.B. Mar. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALAN F. GRAVES, RAYMOND BRUCE WALLACE, and GUY MICHAEL AMYON DUXBURY ____________ Appeal 2011-004157 Application 11/613,560 Technology Center 2600 ____________ Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-19 and 21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ invention is directed to a method and system for communicating with a wireless-enabled device, which has an input for Appeal 2011-004157 Application 11/613,560 2 receiving a signal indicative of the device being in a de-powered state and a context information and an output for causing the device to take certain actions while in a de-powered state. App. Br. 2. Claim 1 is illustrative, with key disputed limitations emphasized: 1. A system for communicating with a wireless-enabled device, comprising: an input for receiving from the device a signal indicative of the device being in a de-powered operational state; a functional entity configured to determine, on a basis of (i) knowledge that the device is in the de-powered operational state and (ii) context information regarding the device, an action to be taken by the device while in the de- powered operational state; an output for causing transmission of a message to the device, said message for causing the device to take said action while in the de-powered operational state. The Examiner relies on the following as evidence of unpatentability: Agrawal US 6,072,784 Jun. 6, 2000 Sakamoto US 2002/0165828 A1 Nov. 7, 2002 Ogaki US 2003/0073447 A1 Apr. 17, 2003 An US 2004/0127195 A1 Jul. 1, 2004 Erskine US 2004/0166878 A1 Aug. 26, 2004 Balasuriya US 2004/0203895 A1 Oct. 14, 2004 Ito US 2005/0009536 A1 Jan. 13, 2005 Sakaniwa US 2006/0205445 A1 Sep. 14, 2006 Holland US 7,349,705 B1 Mar. 25, 2008 (Filed Oct. 8, 2002) Appeal 2011-004157 Application 11/613,560 3 THE REJECTIONS 1. The Examiner rejected claims 1-4, 10, 16, and 21 under 35 U.S.C. § 102(e) as anticipated by Sakaniwa. Ans. 4-7.1 2. The Examiner rejected claim 19 under 35 U.S.C. § 102(b) as anticipated by Agrawal. Ans. 7. 3. The Examiner rejected claims 5, 6, and 8 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa and Balasuriya. Ans. 8-10. 4. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa and Sakamoto. Ans. 10. 5. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa and An. Ans. 10-11. 6. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa and Ogaki. Ans. 11. 7. The Examiner rejected claims 12, 13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa, Ogaki, and Erskine. Ans. 12. 8. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa, Ogaki, Erskine, and Ito. Ans. 13. 9. The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Sakaniwa and Holland. Ans. 13-14. ANALYSIS With respect to Ground 1, Appellants argue that Sakaniwa does not disclose “an input for receiving from the device a signal indicative of the 1 Throughout this opinion, we refer to the Appeal Brief filed July 2, 2010, and the Examiner’s Answer mailed October 6, 2010. Appeal 2011-004157 Application 11/613,560 4 device being in a de-powered operational state” as set forth in claim 1, and similarly recited in claim 21. Appellants argue that Sakaniwa “periodically sends out location information to a monitoring server during normal operation, along with a final location when the mobile device is turned off by the user,” urging that there is no indication to the monitoring server that the device is in, or going into, a de-powered state. App. Br. 7. Appellants also argue that Sakaniwa fails to disclose “a functional entity configured to determine, on a basis of . . . context information regarding the device, an action to be taken by the device while in the de- powered operational state.” Id. Appellants assert that the monitoring server in Sakaniwa receives location data from the mobile device, but does not determine an action to be taken “while in the de-powered state.” Id. The Examiner finds that Sakaniwa, at Paragraph 0036, clearly expresses that “the positional information of the location wherein the user depressed the power key 14 and the power was turned off can be notified to the monitoring server 4.” Ans. 15-16. Further, the Examiner finds that Sakaniwa expressly teaches, at Paragraph 0036, that the monitoring server can issue a location positioning request to the mobile communication terminal which will result in transmission of the position information by the mobile terminal, which the Examiner finds is a disclosure of causing the mobile terminal to take an action “while in the de-powered state.” Id. We have reviewed the Examiner’s rejections of independent claims 1 and 21in light of Appellants’ contentions in the Appeal Brief (App. Br. 6-8) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 4-7), and (2) the reasons set Appeal 2011-004157 Application 11/613,560 5 forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 15-16). We highlight and amplify certain teachings and suggestions of the references as follows. We find that the transmission of positional information in response to a depression of the power key is clearly a disclosure of “an input for receiving from the device a signal indicative of the device being in a de- powered operational state” as set forth in claim 1. Further, the disclosure within Sakaniwa of the ability of the monitoring server to cause the mobile communication terminal to transmit positional information while turned off is a disclosure of a signal causing the mobile terminal to take an action “while in the de-powered state.” Consequently, we find that the Examiner did not err in rejecting claims 1 and 21 under 35 U.S.C. § 102(e) as anticipated by Sakaniwa. Further, absent any separate patentability arguments with respect to claims 2-4 and 10, we find the Examiner did not err in rejecting those claims under 35 U.S.C. § 102(e) as anticipated by Sakaniwa. Still referring to Ground 1, Appellants argue that Sakaniwa fails to disclose determining, as a function of the trajectory of the device, from at least two instances of location, a modification to the signaling scheme, as set forth in claim 16. Appellants argue that the hand off operation relied upon by the Examiner is based upon signal strength, not a calculation of the trajectory of the device. App. Br. 8-9. The Examiner finds that Sakaniwa discloses, at Paragraph 0047, that during the hand off operation, if the terminal moves out of a registered zone, a new location registration may transpire. Ans. 16-17. The Examiner finds this indicates a tracking of the terminal’s trajectory. Id. Appeal 2011-004157 Application 11/613,560 6 We concur. We also find that changes in signal strength, i.e., a weakening of signal strength, clearly indicate a trajectory away from the monitoring server. We therefore find that the Examiner did not err in rejecting claim 16 under 35 U.S.C. § 102(e) as anticipated by Sakaniwa. With respect to Ground 2, Appellants argue that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 102(e) as anticipated by Agrawal. Specifically, Appellants argue there is no disclosure within Agrawal of “a functional entity configured to determine an action to be taken based on the indication of the charge level of the main power source of said device and based on a rate of change of said charge level” as set forth in claim 19. Appellants urge that Agrawal merely teaches that power levels may be raised or lowered to maintain desired power levels at the base station, which Appellants urge does not anticipate determining an action to be taken based upon a rate of change of the charge level of the main power source of the mobile terminal. We concur with Appellants’ argument and we find that the Examiner has erred in rejecting claim 19 under 35 U.S.C. § 102(e) as anticipated by Agrawal. Appellants submit no separate patentability arguments with respect to Grounds 3-9 (claims 5-9, 11-15, 17, and 18). We therefore affirm the rejections of these claims for the reasons we set forth above in our discussion of the independent claims from which these claims depend. Appeal 2011-004157 Application 11/613,560 7 CONCLUSION The Examiner did not err in rejecting claims 1-18 and 21. The Examiner did err in rejecting claim 19 under 35 U.S.C. § 102(e) as anticipated by Agrawal. ORDER The Examiner’s decision rejecting claims 1-19 and 21 is affirmed-in- part. AFFIRMED-IN-PART bab