Ex Parte Ross

Board of Patent Appeals and Interferences

Jun 30, 2009

09735335 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL C. ROSS
____________

Appeal 2009-000413
Application 09/735,335
Technology Center 3600
____________

Decided:1 July 1, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000413
Application 09/735,335

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-28 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ invention is directed to disseminate geographically
sensitive information. An illustrative embodiment of present invention
comprises a telecommunications base station and one or more
telecommunications terminals. The telecommunications base station
broadcasts: 1) a geographically-sensitive message 2) an indication of where
that message is considered more relevant 3) a priority of the message, and 4)
a designation of the nature of the content to all of the telecommunications
terminals within its purview. (Specification 2:5-17). Claim 1, reproduced
below, is representative of the subject matter of appeal.
1. A telecommunications terminal comprising:
a receiver for receiving a plurality of broadcasted geographically-
sensitive messages having associated geographic locations of
relevance and priorities, and for ascertaining a
geographic location of said telecommunications terminal; and
a processor configured to determine a geographic region of interest of
said telecommunications terminal based on said geographic location
of said telecommunications terminal, to determine whether the
geographic locations of relevance associated with the plurality of
broadcasted geographically-sensitive messages are within said
geographic region of interest of said telecommunications terminal, to
filter out the broadcasted geographically-sensitive messages whose
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Application 09/735,335
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associated geographic locations of relevance are not within said
geographic region of interest of said telecommunications terminal,
and to order the unfiltered messages according to their associated
priorities.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ernst US 5,636,245 Jun. 3, 1997

The following rejections are before us for review:
1. Claims 1-4, 6-9, 11-12, 14-15, 17-21, and 23-27 are rejected
under 35 U.S.C. § 102(b) as anticipated by Ernst.
2. Claims 5, 10, 13, 16, 22, and 28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ernst.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to claims 1-10 this issue turns on whether Ernst
discloses broadcasted geographically-sensitive messages having associated
both “geographic locations of relevance” and “priorities.”
With regards to claims 11-16 this issue turns on whether Ernst
discloses a message having both 1) “a definition of the geographic region of
relevance” and 2) “an associated indicium of the geographic region of
relevance.”
With regards to claims 17-28 this issue turns on whether Ernst
discloses determining whether the determined geographic regions of
relevance overlap the geographic region of interest.
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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Ernst discloses location based selective distribution of generally
broadcast information. Information broadcast by a general transmitter is
found to be relevant to a user based on location and velocity and/or time
corresponding to an event, as well as an event specific tag (Title, Abstract).
FF2. Ernst discloses that a navigational receiver receives the current
position, velocity and/or time information, and an event specific tag (Col.
2:6-14).
FF3. Ernst discloses that the selection criteria may include positions,
velocities, times, as well as event specific tags to customize and reduce the
amount of information disseminated. This information is the basis for
defining matching conditions for broadcast (Col. 3:43).
FF4. Ernst does not disclose receiving a plurality of broadcasted
geographically-sensitive messages having both associated geographic
locations of relevance and priorities.
FF5. Ernst does not disclose the broadcast messages both having a
definition of a geographic region of relevance and an associated indicium of
the geographic region of relevance or the messages being labeled by the
indicium of a geographic region of relevance.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF6. Ernst does not disclose the system to determine a geographic
region of interest based on the geographic location of the
telecommunications terminal, to determine whether the determined
geographic regions of relevance overlap the geographic region of interest.

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 415-16.

ANALYSIS
Claims 1-10
The Appellant argues that the rejection of claims 1 and 6 under 35
U.S.C. § 102(b) as anticipated by Ernst is improper because the reference
fails to disclose the limitation “to filter out the broadcasted geographically-
sensitive messages whose associated geographic locations of relevance are
not within said geographic region of interest of said telecommunications
terminal, and to order the unfiltered messages according to their associated
priorities” (Br. 10). The Appellant also argues that Ernst does not disclose
“receiving a plurality of broadcasted geographically-sensitive messages
having associated geographic locations of relevance and priorities” (Br. 11,
Reply Br. 1-3).
In contrast the Examiner has determined that Ernst does disclose
these cited limitations (Ans. 9). The Examiner has determined that messages
on a list of interest in Ernst could be messages having priority and that
messages to users based on position and velocity are provided (Ans. 9).
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We agree with the Appellant. Claim 1 requires that the broadcasted
geographically-sensitive messages have associated therewith both
“geographic locations of relevance” and “priorities.” (Emphasis added).
Claim 1 further includes a requirement to “order the unfiltered messages
according to their associated priorities.” (Emphasis added). Ernst discloses
location based selective distribution of generally broadcast information
based on the location and velocity and/or time corresponding to an event, as
well as an event specific tag (FF1). While Ernst does disclose the selection
criteria for broadcast includes the geographic location (FF3) there is no
mention of the messages having associated priorities (FF4). Since there is
shown no transmitted message priority, there can also be no “ordering of the
messages according to their priorities.” For these reasons the rejection of
claim 1 under 35 U.S.C. § 102(b) as anticipated by Ernst is not sustained.
Claim 6 contains a limitation similar to the one addressed above and the
rejection of this claim is not sustained for the reasons given above. Claims
2-5 and 7-16 depend from claims 1 and 6 respectively and the rejection of
these claims is not sustained for these same reasons.

Claims 11-16
The Appellant argues that the rejection of claim 11 under 35 U.S.C. §
102(b) as anticipated by Ernst is improper because the reference fails to
disclose the limitation for
a receiver for receiving a first message having a
definition of a geographic region of relevance and an
associated indicium of the geographic region of relevance
and for receiving a plurality of broadcasted
geographically-sensitive messages, the plurality of
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broadcasted geographically-sensitive messages being
labeled by the indicium of a geographic region of
relevance . . . .
(Br. 10).
In contrast the Examiner has determined that Ernst does disclose the
cited limitation (Ans. 3-4, 9).
We agree with the Appellant. Claim 11 requires a first message
having both 1) “a definition of the geographic region of relevance” and 2)
“an associated indicium of the geographic region of relevance.” Claim 11
further requires the “messages being labeled by the indicium of a geographic
region of relevance.” Ernst does not disclose the broadcast messages both
having a definition of a geographic region of relevance and an associated
indicium of the geographic region of relevance or the messages being
labeled by the indicium of a geographic region of relevance (FF5) as
required by the claim. For these reasons the rejection of claim 11 under 35
U.S.C. § 102(b) as anticipated by Ernst is not sustained. Claim 14 also
contains a limitation for “receiving a first message having a definition of a
geographic region of relevance and an associated indicium of the geographic
region” and the rejection of this claim is not sustained for the reasons given
above. Claims 12-13 and 15-16 depend from claims 11 and 14 respectively
and the rejection of these claims is not sustained for these same reasons.

Claims 17-23
The Appellant argues that the rejection of claim 17 is improper
because it requires Ernst to disclose the claim limitation for the processor:
to determine a geographic region of interest based on
said geographic location of said telecommunications
terminal, to determine whether said determined
geographic regions of relevance overlap said
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geographic region of interest, and to filter out said
broadcasted geographically-sensitive messages whose
determined geographic regions of relevance fail to
overlap said geographic region of interest.
In contrast the Examiner has determined that Ernst does disclose this
limitation since a matching process through a processor is used (Ans. 5-6).
We agree with the Appellants. Claim 17 requires operations “to
determine a geographic region of interest based on said geographic location
of said telecommunications terminal, to determine whether said …..regions
of relevance overlap said ….regions of interest” (emphasis added). Ernst
discloses that the selection criteria for information dissemination may
include positions, velocities, times, as well as event specific tags and that
this information is the basis for defining matching conditions (FF3).
However Ernst does not disclose the system “to determine a geographic
region of interest based on said geographic location of said
telecommunications terminal, to determine whether said determined
geographic regions of relevance overlap said geographic region of interest”
(emphasis added) (FF6) since a matching and not an “overlapping” process
is undertaken. For these reasons the rejection of claim 17 is not sustained.
Claim 23 contains a limitation similar to the one above and the rejection of
this claim is not sustained for same reasons. Claims 18-22 and 24-28
depend from claims 11 and 14 respectively and the rejection of these claims
is not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-4, 6-9, 11-12, 14-15, 17-21, and 23-27 under 35 U.S.C. §
102(b) as anticipated by Ernst.
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We conclude that Appellant has shown that the Examiner erred in
rejecting claims 5, 10, 13, 16, 22, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Ernst.

DECISON
The Examiner’s rejection of claims 1-28 is reversed.

REVERSED

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