Jonathan Lenchner et al.

Patent Trials and Appeals Board

Jan 23, 2020

14668215 - (D) (P.T.A.B. Jan. 23, 2020)

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.
14/668,215 03/25/2015 Jonathan Lenchner YOR920140547US1 2695
48062 7590 01/23/2020
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
EXAMINER
BARAKAT, MOHAMED
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN LENCHNER, JOHN C. NELSON, and TIMO
JUHANI SANTALA
____________________

Appeal 2018-008731
Application 14/668,215
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, SCOTT RAEVSKY, and
IFTIKHAR AHMED, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 10–13, 15–19, and 21–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party-in-interest as International
Business Machines Corporation. Appeal Br. 1.
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Application 14/668,215

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CLAIMED SUBJECT MATTER
Claim 16 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
16. A system for localizing a source of a set of radio signals,
said system comprising:
a memory; and
at least one hardware device coupled to the memory and
configured for:
[A.] obtaining a plurality of radio signals in said set
by moving a signal reader to a plurality of
locations in an environment, wherein each of
said plurality of radio signals is transmitted by
said source;
[B.] determining
[i.] one or more signal strengths of said radio
signals,
[ii.] a location at which said plurality of radio
signals are obtained, and
[iii.] an identifier of said source;
[C.] determining a directional vector for each of
said plurality of radio signals by comparing
said one or more signal strengths to signal
strengths of other radio signals in said set;
[D.] projecting said determined directional vectors;
and
[E.] determining a location of said source of said set
of radio signals using an intersection selection
criterion that evaluates a number of said
projected determined directional vectors that
intersect for each of said plurality of radio
signals.
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REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
John US 2003/0122666 A1 July 3, 2003
Shoarinejad US 2008/0143482 A1 June 19, 2008
Breed US 2008/0250869 A1 Oct. 16, 2008
Wild US 2009/0212921 A1 Aug. 27, 2009
Liu US 2012/0062381 A1 Mar. 15, 2012
Sternowski US 9,316,719 B1 Apr. 19, 2016

REJECTIONS
A. § 103
The Examiner rejects claims 10, 11, 13, 16, 17, 19, 21, and 23 under
35 U.S.C. § 103 as being unpatentable over the combination of Liu, Wild,
and John. Final Act. 4–9. We select claim 16 as the representative claim for
this rejection. The contentions discussed herein as to claim 16 are
determinative as to this rejection.
The Examiner rejects claims 12 and 18 under 35 U.S.C. § 103 as
being unpatentable over the combination of Liu, Wild, John, and
Shoarinejad (Final Act. 9–10); rejects claims 15 and 24 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Liu, Wild, John, and
Breed (Final Act. 10); and rejects claims 22 and 25 under 35 U.S.C. § 103 as
being unpatentable over the combination of Liu, Wild, John, Breed, and
Sternowski (Final Act. 10–11). The contentions discussed herein as to claim

2 All citations herein to these references are by reference to the first named
inventor only.
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Application 14/668,215

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16 are determinative as to the § 103 rejections of claims 12, 15, 18, 22, 24,
and 25.
Therefore, except for our ultimate decision, we do not address the
§ 103 rejections of claims 10–13, 15, 17–19, and 21–25 further herein.
B. Double Patenting
The Examiner provisionally rejects claims 10–13, 15–19, and 21–25
on the ground of nonstatutory double patenting as being unpatentable over
claims 1–6, 8, and 9 of co-pending U.S. Patent Application No. 14/750,219.
Final Act. 2–4.
Appellant does not present arguments for this provisional nonstatutory
double patenting rejection of claims 10–13, 15–19, and 21–25.
In the Answer, the Examiner states “Every ground of rejection set
forth in the Office action [Final Action] dated 7 November 2017, from
which the appeal is taken is being maintained by the examiner.” Ans. 2.
We select claim 16 as the representative claim for this provisional
rejection. Except for our ultimate decision, we do not address further herein
the provisional rejection of claims 10–13, 15, 17–19, and 21–25.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
A. § 103
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 16 under 35 U.S.C. § 103.
Appellant[] respectfully submit[s] that Liu et al. do not teach
“determining a directional vector for each of said plurality of
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radio signals.” Rather, Liu et al. teach a vector that describes the
motion of the tag. See, e.g., par. 0042, relied upon by the
Examiner (“Motion-related information for the tag is then
determined . . . For example, the vector V determined for the
motion of RFID tag 110 from point A to point D may be used
along with the reference information to estimate a path of motion
of tag 110 and the direction of motion along the path.”)[.]
Appeal Br. 6 (emphasis omitted).
We agree with Appellant’s argument. We are persuaded there is
insufficient articulated reasoning to support the Examiner’s determination
that Liu, Wild, and John render obvious “determining a directional vector for
each of said plurality of radio signals” as required by claim 16. The
Examiner determines that Liu discloses “determin[ing] a directional vector
for each of said plurality of radio signals.” Final Act. 5. However, in the
overall context of claim 16, the directional vectors are from the signal source
to the signal reader. Otherwise, it would not be possible to perform the
function of “determining a location of said source of said set of radio signals
using an intersection selection criterion” as required by the final operation of
claim 16. As the Appellant points out, Liu does not teach a directional
vector (from the signal source to the signal reader), instead Liu teaches “a
vector that describes the motion of the tag.” Appeal Br. 6 (emphasis
omitted). We find nothing in the Examiner’s reasoning that explains why an
artisan would modify the Liu reference to generate the type of directional
vectors required by the overall operation of claim 16.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 16 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention in view of Liu, Wild, and John.
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B. Double Patenting
B.1.
Appellant does not present arguments for this provisional nonstatutory
double patenting rejection of claim 16. Rather, “Appellant[] propose[s] to
defer resolution of the provisional double patenting rejection until there is an
indication of allowable subject matter in at least one of the applications.”
Appeal Br. 5.
B.2.
Where there are two or more applications with conflicting claims,
MPEP § 1490 VI.D.2.(a)–(c), provides guidance when the provisional
nonstatutory double patenting rejection is the only rejection remaining in an
application. If a provisionally rejected application has the earliest effective
U.S. filing date compared to a reference application(s), the examiner should
withdraw the provisional rejection in that application having the earliest
effective U.S. filing date. MPEP § 1490 VI.D.2.(a).
Otherwise, (a) if both applications are actually filed on the same day,
or are entitled to the same earliest effective filing date, then the provisional
nonstatutory double patenting rejection made in each application should be
maintained until the rejection is overcome; or (b) if the provisionally
rejected application has an effective U.S. filing date that is later than the
effective U.S. filing date of at least one of the reference application(s), then
the provisional rejection should be maintained until the applicant overcomes
the rejection. MPEP § 1490 VI.D.2.(b)–(c)
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B.3.
Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections. Ex parte Jerg, Appeal No.
2011-000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative);
see also Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).
A panel will exercises its flexibility, to reach or not reach a provisional
nonstatutory obviousness-type double-patenting rejection, by taking into
consideration (a) the Director’s MPEP guidance and (b) the particular facts
before the panel.
In Moncla, the provisional double-patenting rejection was over claims
of a later-filed, co-pending continuation-in-part application (i.e., not entitled
to the earlier actual filing date of Moncla). Moncla, 95 USPQ2d at 1884.
The Moncla panel concluded that in light of all other rejections being
reversed, it is premature in this circumstance to address the Examiner’s
provisional rejection of the claims. Id.
In Jerg, the provisional double-patenting rejection was over claims of
three co-pending applications including at least one entitled to an earlier
effective filing date than Jerg. 2012 WL 1375142, at *3. The Jerg panel
stated:
[A]t least some of the claims relied upon in the provisional
obviousness-type double patenting rejections on appeal either
clearly are, or may be, different in language or status from the
claims originally relied upon when these rejections were initially
made by the Examiner. We decline to reach these rejections
because the claims now relied upon are not clearly the same as
those originally considered by the Examiner when the rejections
were initially made.
Id.
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In Ex parte Byrne, Appeal No. 2017-011170, 2018 WL 3951632
(PTAB July 30, 2018), the appealed application was a continuation of a
parent application (i.e., same actual/effective filing dates). The Byrne panel
determined that “[b]ecause we affirm the rejections of all claims under either
§§ 102 or 103, we need not reach the provisional double patenting
rejection.” 2018 WL 3951632, at *9.
In Ex parte Burckart, Appeal No. 2017-001067, 2018 WL 4458777
(PTAB August 30, 2018), the appealed application was the parent of a
continuation application (i.e., same actual/effective filing dates). The
Burckart panel “decline[d] to address the merits of the provisional
obviousness-type double patenting rejection. . . . in light of the [intervening]
amendments made to the claims of the ’092 application.” 2018 WL
4458777, at *5.
B.4.
In this appeal, the Examiner provisionally rejects claims 10–13, 15–
19, and 21–25 on the ground of nonstatutory double patenting as being
unpatentable over claims 1–6, 8, and 9 of co-pending U.S. Patent
Application No. 14/750,219. Final Act. 2–4. The U.S. Patent Application
No. 14/668,215 on appeal is the parent of continuation application
14/750,219, and both applications claim the same actual/effective filing date.
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Claim 16 of parent application 14/668,215 is reproduced supra, as the
illustrative claim. Claim 1 of continuation application 14/750,219 reads as
follows (formatting and bracketed material added):
1. A method for localizing a source of a set of radio signals, the
method comprising the steps of:
[A.] obtaining a plurality of radio signals in said set by
moving a signal reader to a plurality of locations in
an environment, wherein each of said plurality of
radio signals is transmitted by said source;
[B.] determining
[i.] one or more signal strengths of said radio
signals,
[ii.] a location at which said plurality of radio
signals are obtained, and
[iii.] an identifier of said source;
[C.] determining a directional vector for each of said
plurality of radio signals by comparing said one or
more signal strengths to signal strengths of other
radio signals in said set;
[D.] projecting said determined directional vectors; and
[E.] determining a location of said source of said set of
radio signals using an intersection selection criterion
that evaluates a number of said projected determined
directional vectors that intersect for each of said
plurality of radio signals,
wherein at least one of said steps are performed by at
least one hardware device.
Claim 16 of appealed application 14/668,215 is a system comprising a
memory and a hardware device for performing steps A–E. Claim 1 of
reference application 14/750,219 is a method for performing the same steps
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A–E on a hardware device. These claims are essentially identical except for
their preambles.
We have determined that:
(a) The claims are essentially identical in the rejected application and
reference application and there are no intervening amendments that
differentiate the claims with the subsequent rejection insufficiently
explained by the Examiner;
(b) Unlike Moncla, the effective filing dates are the same for the
rejected application and reference application; and
(c) All other rejections in the rejected application on appeal are now
reversed.
We exercise our discretion and elect to reach the Examiner’s provisional
rejections. Our decision to so elect is based on the determinations supra and
the Director’s guidance that when (a) a provisional nonstatutory double
patenting rejection is the only rejection remaining in an application and
(b) the filing dates are the same, then “the provisional nonstatutory double
patenting rejection made in each application should be maintained until the
rejection is overcome.” MPEP § 1490 VI.D.2.(b) (emphasis added).
In light of Appellant’s failure to present arguments as to the
provisional rejection, we affirm pro forma the provisional rejection of
claim 16.

CONCLUSION
Appellant has established that the Examiner erred in rejecting claims
10–13, 15–19, and 21–25 as being unpatentable under 35 U.S.C. § 103.
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Application 14/668,215

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The Examiner’s rejections of claims 10–13, 15–19, and 21–25 as
being unpatentable under 35 U.S.C. § 103 are reversed.
The Examiner’s provisional rejection of claims 10–13, 15–19, and
21–25 as being unpatentable on the ground of nonstatutory double patenting
is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
10, 11, 13,
16, 17, 19,
21, 23
103 Liu, Wild, John 10, 11, 13,
16, 17, 19,
21, 23
12, 18 103 Liu, Wild, John,
Shoarinejad
12, 18
15, 24 103 Liu, Wild, John, Breed 15, 24
22, 25 103 Liu, Wild, John, Breed,
Sternowski
22, 25
10–13, 15–
19, 21–25
Provisional Non-statutory
Double Patenting
10–13,
15–19,
21–25

Overall
Outcome

10–13,
15–19,
21–25

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED