IpVenture, Inc.

Patent Trials and Appeals Board

Dec 17, 2021

2020005448 (P.T.A.B. Dec. 17, 2021)

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.
14/493,550 09/23/2014 C. Douglass Thomas IDC1P001D1C2 1032
34071 7590 12/17/2021
IPVENTURE, INC.
4010 Moorpark Avenue
Suite 211
San Jose, CA 95117
EXAMINER
LY, NGHI H
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
12/17/2021 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 C. DOUGLASS THOMAS

Appeal 2020-005448
Application 14/493,550
Technology Center 2600
____________

Before MARC S. HOFF, JASON J. CHUNG, and CARL L. SILVERMAN,
Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 5, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
IpVenture, Inc. Appeal Br. 1.
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Application 14/493,550

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STATEMENT OF THE CASE
Appellant’s disclosure is directed to location monitoring for access to
mobile devices and objects associated with the mobile devices. Abstr.,
¶¶ 21, 22; Fig. 1.
Claim 1 is representative2 of the invention and reads as follows
(emphases added):
1. A location monitoring system for managing access to location
information of a plurality of mobile electronic devices supported by at
least one wireless network, each of the mobile electronic devices being
associated with and proximate to a corresponding object, said location
monitoring system comprising:
a computing device operatively connectable to the wireless
network, said computing device storing locations of the mobile
electronic devices, and said computing device managing authorization
for access to the locations of the mobile electronic devices via one or
more networks,
wherein in managing authorization for access to the locations of
the mobile electronic devices, said computing device (i) receives, from
a requestor via a requestor’s electronic device, a request to view the
location pertaining to a particular one of the objects; (ii) determines
whether the requestor is authorized to receive the location of the
particular one of the objects; and (iii) permits access or delivery of the
location pertaining to the particular one of the objects to the requestor
via the requestor’s electronic device provided that it is determined that
the requestor is authorized to receive the location,
wherein, when said computing device determines that the
requestor is authorized to receive the location of the particular one of
the objects, said computing device causes the mobile electronic device
corresponding to the particular one of the objects to be alerted that the

2 Based on Appellant’s arguments (Appeal Br. 5–13) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
rejection of claims 1, 2, and 5 on the basis of representative claim 1.
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location of the mobile electronic device corresponding to the particular
one of the objects is being monitored such that a notification can be
presented by the mobile electronic device,
wherein the alerting, via the notification, the mobile electronic
device corresponding to the particular one of the objects that the
location of the mobile electronic device corresponding to the particular
one of the objects is being monitored is independent of the location of
the mobile electronic device corresponding to the particular one of the
objects, and
wherein the requestor’s electronic device is different than the
mobile electronic device corresponding to the particular one of the
objects to be monitored by the requestor via the requestor’s electronic
device.
Appeal Br. 14–15 (Claims Appendix).
REFERENCES AND REJECTIONS
The prior art relied upon by the Examiner is:
Name Reference Date
Holland US 6,321,091 B1 Nov. 20, 2001
Ranta US 6,832,093 Bl Dec. 14, 2004
Fulton US 5,940,004 Aug. 17, 1999

Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Holland, Ranta, and Fulton. Final Act. 3–10.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. Arguments which Appellant could have made, but did not
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make, are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). On the
record before us, we are persuaded the Examiner has erred, and provide the
following for highlighting and emphasis.
In the Final Action, the Examiner finds the combination of the
teachings of Holland, Ranta, and Fulton teaches the limitations of
representative claim 1, and provides reasons for the combination of these
teachings. Final Act. 3–8.
The Examiner notes that Holland does not specifically disclose the
limitation “the computing device causes the mobile electronic device
corresponding to the particular one of the objects to be alerted that the
location of the mobile electronic device corresponding to the particular one
of the objects is being monitored such that a notification can be presented by
the mobile electronic device” (also referred to as “disputed limitation (1)”).
Id. at 6. The Examiner finds that Ranta teaches this limitation. Id. at 6–7
(citing Ranta 9:43–46, 12:31–42, 13:26–33; Fig. 4). The Examiner
determines it would have been obvious to one of ordinary skill in the art at
the time the invention was made to provide the teaching of Ranta into the
system of Holland in order to save transmission capacity and reduce
interference. Id. at 7 (citing Ranta 9:15–16).
The Examiner notes that the combination of Holland and Ranta does
not specifically disclose the limitation “wherein the alerting, via the
notification, the mobile electronic device corresponding to the particular one
of the objects that the location of the mobile electronic device corresponding
to the particular one of the objects is being monitored is independent of the
location of the mobile electronic device corresponding to the particular one
of the objects” (also referred to as “disputed limitation (2)”). Id. at 7. The
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Examiner finds Fulton teaches this limitation, and provides reasoning
intended to support the combining the teaching of Fulton into the
combination of Holland and Ranta. Id. at 7–8 (citing Fulton 4:26–40; Figs.
1, 2).
Appellant argues, inter alia, that the Examiner errs regarding disputed
limitation (1) by providing inadequate justification to combine the teaching
of Ranta into the system of Holland as required for obviousness. Appeal Br.
5–12. According to Appellant,
The notion that Ranta can save transmission capacity and reduce
interference is erroneous. Holland is not concerned with limiting
operations at restricted areas, so has no need for transmitting of
coordinates of restricted areas and thus no ability to benefit from
Ranta’s alleged saves of transmission capacity and reduce
interference. Ranta, col. 9, lines 3-15. Moreover, Holland has its
own power saving techniques. Holland, col. 1, line 60 – col. 2,
line 17. Further still, such generalized alleged rationale of as the
basis for combining these prior art references is an inadequate
justification to support the combination of references.
“[R]ejections on obviousness cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.” [KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988,
(Fed. Cir. 2006))]. Appellant submits that the unsupported
conclusory statements in the Final Office Action are not able to
justify support for the combination of these references.

Therefore, there is no reasonable basis to believe one
skilled in the art would seek to combine Ranta’s limiting
operation in restricted areas with Holland’s tracking and locating
system. Holland has nothing to do with limiting cell phones or
other radio devices operation in restricted areas and thus Ranta
cannot be considered to be related prior art. The problems
involved in Holland are different and unrelated to those
addressed by Ranta.
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Id. at 8–9.

In the Answer, regarding the basis for the combination of the
teachings of Holland and Ranta to teach disputed limitation (1), the
Examiner reiterates the Final Rejection statement and adds,
In response to Appellant’s argument that there is no
teaching, suggestion, or motivation to combine the references,
the examiner recognizes that obviousness may be established by
combining or modifying the teachings of the prior art to produce
the claimed invention where there is some teaching, suggestion,
or motivation to do so found either in the references themselves
or in the knowledge generally available to one of ordinary skill
in the art. See In re Fine, 837 F.2d 1071, [] (Fed. Cir. 1988), In
re Jones, 958 F.2d 347, [] (Fed. Cir. 1992), and KSR [Int’l] Co.
v. Teleflex, Inc., 550 U.S. 398, [] (2007). In this case, motivation
to do so found in the references themselves in order to save
transmission capacity and reduce interference (see Ranta,
column 9, lines 15-16).
In addition, the Examiner disagrees with Appellant’s
argument. Ranta can be considered to be related prior art. The
problems involved in Holland are the same and related to those
addressed by Ranta because Holland and Ranta both teach
“wireless communication”. Therefore, the Final Office Action
are able to justify support for the combination of these references
(see the teachings of Holland and Ranta in the Final
Office Action dated 09/19/2019).

Ans. 5–6.
In the Reply Brief, regarding the combination of the references,
Appellant argues the Answer provides “some boiler plate response and
contains no additional supporting argument.” Reply Br. 1 (citing Appeal Br.
8–10; Ans. 4–6).
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On the record before us, we are persuaded by Appellant’s arguments
that the Examiner does not present sufficient articulated reasons to support
the suggested combination of Holland and Ranta for disputed limitation (1).
As discussed below, the Examiner’s reasons are high level and conclusory.
We note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner’s statement that “it would have been obvious to
one of ordinary skill in the art at the time the invention was made to provide
the teaching of Ranta into the system of Holland in order to save
transmission capacity and reduce interference (see Ranta, column 9, lines
15-16)” is, without more, a high level conclusory statement without any
articulation of how or why this would be performed, or any specific teaching
from Ranta beyond the cited portion. See Final Act, 7; Ans. 4. Additionally,
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we note the Answer does not address Appellant’s arguments regarding this
combination nor provide additional basis to support the combination.
Similarly, the Examiner assertion that, because Holland and Ranta both
teach “wireless communication” does not, by itself, provide adequate
justification to support the combination of references. Ans. 4–5
Accordingly, the Examiner does not provide prima facie support for
the rejection. “[T]he [E]xaminer bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On the record before us, we are persuaded by Appellant’s arguments
because the Examiner provides insufficient articulated reasoning with some
rational underpinnings to support the combination of Holland and Ranta.
Therefore, we are constrained to conclude the Examiner errs in rejecting
representative claim 1 for obviousness, and dependent claims 2 and 5.

CONCLUSION
For the reasons stated above, we do not sustain the obviousness
rejections of representative claim 1 and dependent claims 2 and 5.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 5 103(a) Holland, Ranta, Fulton 1, 2, 5

REVERSED