Ex Parte van Diggelen et al

Patent Trial and Appeal Board

Oct 12, 2017

12026915 (P.T.A.B. Oct. 12, 2017)

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.
12/026,915 02/06/2008 Frank van Diggelen 3875.2080006 3881
49579 7590 10/16/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK VAN DIGGELEN and MATTHEW RIBEN
Appeal 2016-001694
Application 12/026,9151
Technology Center 3600
Before BRUCE R. WINSOR, AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1—5, 7—16, 18—21, and 23—25, which constitute all of the pending
claims.2 Appeal Br. 14, 16, and 17. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Broadcom
Corporation. See Appeal Br. 3.
2 Claims 6, 17, and 22 are cancelled. See Appeal Br. 22.
Appeal 2016-001694
Application 12/026,915
STATEMENT OF THE CASE
According to Appellants, the application relates to a GPS receiver that
excludes long-term-orbit (“LTO”) information that determines position with
less accuracy than ephemeris data to form truncated data with a shorter
validity than the original LTO. Spec. 1 56.3
CLAIMED SUBJECT MATTER
Claims 1, 12, and 23 are independent. Claim 1 is illustrative and is
reproduced below with the dispositive disputed limitation (the “disputed
limitation”) italicized:
1. A method, comprising:
obtaining long-term-orbit information having a first period
of validity, wherein the first period of validity is an amount of
time greater than a period of validity for ephemeris broadcast
from at least one satellite of a constellation of satellites; and
truncating, by a processing device, the long-term-orbit
information as a function of time, by excluding a portion of the
long-term orbit information that, if used to determine a position,
determines the position with less accuracy than the ephemeris
broadcast from the at least one satellite of the constellation of
satellites so as to form truncated long-term-orbit information
having a second period of validity, wherein the second period of
validity is shorter than the first period of validity.
Appeal Br. 13.
3 Our Decision refers to: (1) Appellants’ Specification filed February 6,
2008 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed June 3,
2014; (3) the Appeal Brief (“Appeal Br.”) filed February 3, 2015; (4) the
Examiner’s Answer (Ans. ”) mailed October 7, 2015; and (5) the Reply
Brief (“Reply Br.”) filed November 18, 2015.
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Appeal 2016-001694
Application 12/026,915
REFERENCES AND REJECTIONS
Claims 1—5, 7—16, 18—21, and 23—25 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. Final Act. 3—A.
Claims 1—5, 7—16, 18—21, and 23—25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Appellants’ Admitted Prior Art, Zhao et
al. (US 6,429,811 Bl; August 6, 2002) and Syrjarinne (US 7,701,387 B2;
April 20, 2010). Final Act. 4—9.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(l)(iv)(2014).
ISSUES
1. Whether the Examiner errs in rejecting claim 1 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement?
2. Whether the Examiner errs in finding the combination of
Appellants’ Admitted Prior Art, Zhao, and Syrjarinne teaches or suggests
the disputed limitation, as recited in claim 1?
CONTENTIONS AND ANALYSIS
35 U.S.C. § 112: Claim 1
Issue 1
We sustain the Examiner’s decision to reject claim 1 under § 112, first
paragraph, as failing to comply with the written description requirement by
impermissibly adding new matter to the original disclosure.
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Appeal 2016-001694
Application 12/026,915
The written description requirement of 35 U.S.C. § 112, first
paragraph, “requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.”
AriadPharms, Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
A written-description question often arises when an applicant, after
filing a patent application, subsequently adds “new matter” to the claims not
present in the original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560 (Fed. Cir. 1991). When an applicant amends a claim to
introduce new elements or limitations or adds claims during prosecution, for
example, the newly claimed subject matter must find written description
support in the original specification. Id.; see also TurboCare Div. of Demag
Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001). Without written description support, claims containing new
matter are properly rejected under 35 U.S.C. § 112. Ariad at 1348. This
required compliance with 35 U.S.C. § 112 ensures that the applicant fully
possessed the entire scope of the claim as of the original filing date.
TurboCare, 264 F.3d at 1118. While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. Ariad at 1352.
The Examiner finds the Specification fails to provide support for
“truncating ... by excluding a portion of the long-term orbit information
that, if used to determine a position, determines the position with less
accuracy than the ephemeris broadcast from the at least one satellite of the
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Appeal 2016-001694
Application 12/026,915
constellation of satellites,” as recited in claim 1, because the “Examiner is
unable to find clear or concise support for truncating a portion of the LTO
information that, if used, would determine position with less accuracy.”
Final Act. 4; Ans. 3.
The disputed limitation was newly added by amendment during
prosecution. See Amendment filed February 25, 2014, page 2. Appellants
argue the Specification provides support for the limitation because “[i]n the
event that the predicted position of the GPS receiver determined using the
FTO information is deemed invalid, the ’915 specification discloses
excluding at least one portion of the current FTO information (i.e.,
truncating), such as ‘the current FTO information associated with satellite or
satellites from which the measured pseudo ranges are determined.’” Appeal
Br. 8 (citing Spec. Tflf 117—127); Reply Br. 3.
Appellants, however, fail to demonstrate that the cited portions of the
Specification provide support for the disputed limitation. See Spec. ]Hf 56,
117—127. Appellants’ rely on paragraph [0127] of the Specification, which
states:
If, on the other hand, any of the predicted location
parameters are deemed invalid, then the GNSS receiver 104
may exclude (e.g., mark to prevent use, remove, delete, etc.) at
least one portion of the current FTO/Truncated-FTO
information from the current FTO/Truncated-FTO information
(“excluded FTO/Truncated-FTO information”). The excluded
FTO/Truncated-FTO information may be, for example, the
current FTO/Truncated-FTO information associated with
satellite or satellites from which the measured pseudoranges are
determined.
Spec. 1127.
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Appeal 2016-001694
Application 12/026,915
The Specification describes excluding at least one portion of the
current LTO/Truncated-LTO information (the “excluded LTO/Truncated-
LTO information”) if any of the predicted location parameters are deemed
invalid; a determination that is made by comparing the difference between
individual predicted and measured location parameters and a threshold. Id. 1
122. The portions of the Specification cited by Appellants, however, are
silent with respect to excluding a portion of the long-term orbit information
that determines the position with less accuracy than the ephemeris broadcast
because it does not follow from the fact the difference between two
parameters exceeds a threshold that either is more or less accurate than the
other.
Accordingly, Appellants fail to demonstrate support for the disputed
limitation. Appeal Br. 13. We, therefore, find Appellants’Specification
fails to reasonably convey to those skilled in the art that the inventor had
possession of the subject matter at issue as of the filing date, and the
rejection of claim 1 is sustained.
Appellants provide similar arguments for independent claims 12 and
23. Appellants’ arguments also fail to demonstrate support for the similar
limitations in these claims, and so we sustain the rejection of claims 12 and
23 for the same reasons provided above. Dependent claims 2—5, 7—11, 13-
lb, 18—21, 24, and 25 include all of the limitations of their respective
independent claims and so we also sustain the rejection of these claims.
Accordingly, based on the record before us, we sustain the Examiner’s
rejection of claims 1—5, 7—16, 18—21, and 23—25 for failing to comply with
the written description requirement of 35 U.S.C. § 112, first paragraph.
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Appeal 2016-001694
Application 12/026,915
35 U.S.C. § 103: Claims 1-5, 7-16, 18-21, and23-25
Issue 2
In rejecting claim 1, the Examiner finds Zhao teaches or suggests
“truncating, by a processing device, the long-term-orbit information as a
function of time, by excluding a portion of the long-term orbit information
that, if used to determine a position, determines the position with less
accuracy than the ephemeris broadcast from the at least one satellite of the
constellation of satellites so as to form truncated long-term-orbit information
having a second period of validity,” as recited in claim 1. Final Act. 4—7.
With respect to the latter part of the disputed limitation the Examiner finds
Although art has been applied to the recitation “that, if used to
determine a position, determines the position with less accuracy
than the ephemeris broadcast from the at least one satellite of
the constellation of satellites,” the Examiner takes the position
that such recitation is a mere label or non-fimction[al]
descriptive material for the information which adds little, if
anything, to the claimed structure, acts or steps (e.g.
truncating); and thus fails to distinguish over the prior art. Any
differences related merely to the meaning and information
conveyed through labels which do not explicitly alter or impact
the structure/steps of the programmed method do not patentably
distinguish the claimed invention from the prior art in terms of
patentability. Therefore, in any event, [it] would have been
obvious to a person of ordinary skill in the art at the time the
invention was made to have the processing device programmed
to (medium provided with instructions) to truncate information
that “if used to determine a position, determines the position
with less accuracy than the ephemeris broadcast from at least
one satellite,” because the type of information [does] not
functionally alter or relate to the structure or steps of the
programmed method, and merely labeling the information
differently from that in the prior art does not patentably
distinguish the claimed invention.
Final Act. 5-6 (citing MPEP § 2111.05).
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Application 12/026,915
Appellants argue the Examiner errs because the alleged descriptive
material “has a functional relationship with the inventions recited in [the]
claims” and “specifies what type of information is to be truncated and results
in the formation of ‘truncated long-term orbit information’ with a shorter
period of validity. Therefore, the alleged descriptive material is in a
functional relationship with the . . . claims . . . and should be afforded
patentable weight.” Appeal Br. 10—11 (citing MPEP § 2111.05).
We find Appellants’ arguments persuasive because we determine as
erroneous the Examiner’s decision not to consider the portion of the disputed
limitation allegedly reciting non-functional descriptive material. See Final
Act. 5—6. We disagree with the Examiner’s finding that the limitation
“truncating ... by excluding a portion of the long-term orbit information
that, if used to determine a position, determines the position with less
accuracy than the ephemeris broadcast” is “a mere label or non-function[al]
descriptive material” (id.) not entitled to any weight in the patentability
analysis. Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the other limitations of the
claim and does not affect the way the claimed method is performed. See
MPEP § 2106.01 (“‘Nonfunctional descriptive material’ includes but is not
limited to music, literary works, and a compilation or mere arrangement of
data.”). Because the Examiner fails to demonstrate the portion of the long­
term orbit information excluded here is a mere arrangement of data that does
not alter how the computer system functions, we find the disputed limitation
must be considered in its entirety. See Ex parte Nehls, 88 USPQ2d 1883,
1887—88 (BPAI 2008) (precedential). As a result, the Examiner fails to
consider whether the entire limitation is taught by Zhao.
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Appeal 2016-001694
Application 12/026,915
Thus, while we agree with the Examiner’s finding that “Zhao
discloses truncating] or removing bits of orbit information” (Ans. 5), the
Examiner fails to demonstrate that the removed bits of orbit information
suggest “excluding a portion of the long-term orbit information that. . .
determines the position with less accuracy than the ephemeris broadcast,” as
recited in claim 1. Rather, the cited portion of Zhao discusses removing
from the orbit information redundant data such as a preamble occurring in
every subframe. See Zhao 10:9-17.
We therefore do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1. We also do not sustain the rejection of independent
claims 12 and 23, which recite commensurate limitations, and of dependent
claims 2—5, 7—11, 13—16, 18—21, 24, and 25, which include the language of
their respective independent claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—16, 18—21,
and 23—25 under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision rejecting claims 1—5, 7—16, 18—
21, and 23—25 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1—5, 7—16,
18-21, and 23-25 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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