Ex Parte van Diggelen et al

Patent Trial and Appeal Board

Jun 27, 2013

11775212 (P.T.A.B. Jun. 27, 2013)

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.
11/775,212 07/09/2007 Frank van Diggelen 3875.2140003 4611
26111 7590 06/28/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ISSING, GREGORY C
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
06/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK VAN DIGGELEN and CHARLES ABRAHAM
____________

Appeal 2011-005047
Application 11/775,212
Technology Center 3600
____________

Before JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 23-40 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement and
the enablement requirement. Claims 1-22 are withdrawn. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-005047
Application 11/775,212

2
CLAIMED SUBJECT MATTER
Claims 23 and 31 are the independent claims on appeal. Claims 23
and 31, reproduced below with added emphasis, are representative of the
subject matter on appeal.
23. A method of locating position of a satellite from a satellite
signal receiver, comprising:
receiving a first plurality of data from the satellite;
computing an initial satellite position estimate, estimating
a position of the satellite at a particular time according to a
mathematical model and the first plurality of data;
receiving a second plurality of data from the satellite; and
computing an updated satellite position estimate,
estimating the position of the satellite at the same particular
time as estimated by the initial satellite position estimate,
according to the mathematical model and the second plurality
of data.

31. A system for computing position of a satellite, comprising:
a receiver for receiving a first plurality of data from the
satellite at a first time and receiving a second plurality of data
from the satellite at a second time; and
a processor for using a mathematical model, wherein the
processor computes an initial satellite position estimate,
estimating a position of the satellite at a particular time
according to the mathematical model and the first plurality of
data, and wherein the processor computes an updated satellite
position estimate, estimating the position of the satellite at the
same particular time as estimated by the initial satellite
position estimate, according to the mathematical model and the
second plurality of data.

OPINION
Written Description
The Examiner rejects independent claims 23 and 31, as well as their
dependent claims, under 35 U.S.C. § 112, first paragraph, as failing to
Appeal 2011-005047
Application 11/775,212

3
comply with the written description requirement because “[t]he computing
of an initial satellite position estimate and an updated satellite position
estimate at a same particular time using (1) received, respective first and
second plurality of data from the same satellite, and (2) a mathematical
model is not sufficiently disclosed in the specification as filed.” Ans. 5
(emphasis added).
As for (1), the Appellants contend that “receiving a first plurality of
data from the satellite” is merely the transmission of a pseudo-random noise
(PN) code from a satellite. Reply Br. 7-8. The Specification states that
“GPS signals 104 from a plurality of satellites (not shown) are received at
the GPS antenna 106” and that “[t]he received signals are coupled to the
GPS receiver 108” which “processes the GPS signals to form sub-
millisecond pseudoranges on path 110.” Spec. para. [0036], fig. 1. The
Specification also states that “[e]ach satellite transmits a unique PN code . . .
that identifies the particular satellite, and allows signals transmitted
simultaneously from several satellites to be received simultaneously by a
receiver.” Reply Br. 6 (citing Spec. para. [0008]); see also Reply Br. 7-8
(citing Spec. para. [0009]).
The Appellants also point out that “[a]t step 212, the expected
pseudoranges are formed” and demonstrate how an initial satellite position is
determined by use of specific equations. Reply Br. 8-9 (citing Spec. para.
[0043]). Based on the foregoing, we agree with the Appellants that “[w]ith
an a-priori values given for e, and (xr, yr, zr), it is inherent that an estimated
or a-priori value is used for the location of the satellite (xs, ys, zs).”1 Reply

1 The reference character “e” refers to “common mode error” and the
coordinates “(xr, yr, zr)” represents the GPS receiver position. Reply Br. 8-9.
Appeal 2011-005047
Application 11/775,212

4
Br. 9 (emphasis added). Thus, the Appellants contend that “given the
Specification’s teaching to calculate an expected pseudorange at 212, one of
ordinary skill in the art would inherently have to use known values, i.e.,
estimatations for the satellite position (xs, ys, zs).” Id. (emphasis added). We
agree.
As for (2), the Appellants point to the mathematical model described
at paragraphs [0046]-[0049] and [0071]-[0074] of the Specification and step
216, namely, “FORM MATHEMATICAL MODEL RELATING UI TO
POSITION AND TIME UPDATES, x” of Figure 2. App. Br. 7. The
Examiner finds that “[t]his model says nothing about the satellite position
per se.” Ans. 8; see also Ans. 9. However, the Appellants explain that “the
updates to the absolute time and the position of the GPS receiver [are]
determined from the mathematical model.” Reply Br. 11. The Appellants
further explain that for process 200, “‘typically very few iterations are
required’” and that “with as few as three iterations, the satellite position
calculated during the second iteration can be the initial estimate of the
satellite position that is according to the mathematical model, while the
satellite position calculated during the third iteration is an updated satellite
position according to the mathematical model.” Id. For example,
[d]uring the second pass, during 212, the position of the
satellites would inherently be calculated while calculating the
expected pseudoranges. The updated position of the satellites
would be a function of the new a-priori absolute time. Since
the updated position of the satellites is dependent on the new a-
priori absolute time, and the new a-priori absolute time is
generated from the mathematical model, it follows that the
updated satellite position is according to the mathematical
model, as claimed.

Appeal 2011-005047
Application 11/775,212

5
Id. (emphasis added). Based on the Appellants’ explanation at pages 10-12
of the Reply Brief, we agree with the Appellants that the Specification
describes the claimed invention such that a skilled artisan would understand
the invention and shows that the inventor actually invented the invention
claimed. See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc).
Thus, the Examiner’s rejection of claims 23-40 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is not sustained.
Enablement
At the outset, we note that “[w]hen rejecting a claim under the
enablement requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the application.”
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The Examiner determines
that “[t]he step and processor for estimating the position of the satellite at
the same particular time as estimated by the initial satellite position
estimate, according to the mathematical model and the second plurality of
data is non-enabling to someone skilled in the art to make and/or use such.”
Ans. 6. The Examiner also determines that “[s]ince the specification lacks
. . . [a] written description of the claimed subject matter, the claimed subject
matter also . . . [was not described] to enable someone skilled in the art to
make and/or use the claimed subject matter.” Ans. 9-10. See Ans. 5-6.
Appeal 2011-005047
Application 11/775,212

6
However, the written description requirement and the enablement
requirement are separate requirements. Ariad at 1340; Reply Br. 6.
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). To
evaluate whether a disclosure would require undue experimentation is a
legal conclusion reached by weighing many factual considerations
including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.

Id. The Examiner has not set forth any findings that concern these factors,
i.e., the Wands factors. The Examiner merely relies on the rejection under
Section 112, first paragraph, as failing to comply with the written description
requirement to support the rejection under the same section, as failing to
comply with the enablement requirement. See Ans. 9-10; see also Reply Br.
6. Thus, the Examiner’s rejection of claims 23-40 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement is not
sustained.
DECISION
We REVERSE the rejections of claims 23-40.

REVERSED
Klh