T-Mobile U.S.A., Inc.

Patent Trials and Appeals Board

Jul 6, 2021

2020001712 (P.T.A.B. Jul. 6, 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.
15/811,581 11/13/2017 Magesh Annamalai 031419-8093.US03 5304
25096 7590 07/06/2021
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
07/06/2021 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MAGESH ANNAMALAI
____________________

Appeal 2020-001712
Application 15/811,581
Technology Center 2600
____________________

Before ROBERT E. NAPPI, JUSTIN BUSCH, and
CATHERINE SHIANG, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. 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) (2018). According to Appellant, T-Mobile USA, Inc. is
the real party in interest. Appeal Br. 3.
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Application 15/811,581

2
CLAIMED SUBJECT MATTER
The claimed invention relates to a method of determining the location
of a mobile device, in which if the location of the mobile device cannot be
determined with a desired accuracy over a macronetwork, a micronetwork is
used to determine the location. Abstract. Claim 1 is reproduced below.
1. At least one non-transitory, computer-readable
medium carrying instructions, which when executed by at least
one data processor, performs operations to determine a location
of a mobile device, the operations comprising:

determining, by communicating with a wireless
macronetwork, that a geographic location of the mobile device
provided via the macronetwork fails to satisfy a location
determination criterion;

following the determination that the geographic location
of the mobile device provided via the macronetwork would fail
the location determination criterion:

obtaining data related to a wireless micronetwork
after the mobile device has broadcast a distress message; and

maintaining, at the mobile device, a
communication session with the macronetwork while obtaining
the data related to the micronetwork;

wherein location information is obtainable
regardless of whether a two-way communication session is
established between the mobile device and the micronetwork;

determining updated location information for the mobile
device based on the data related to the micronetwork,

wherein the data related to the micronetwork is
provided by the mobile device via the macronetwork.
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EXAMINER’S REJECTIONS2
The Examiner rejects claims 2, 10, and 183 under 35 U.S.C. § 112
first paragraph, as failing to comply with the enablement requirement. Final
Act. 2.
The Examiner rejects claims 1, 2, 4, 6–10, 12, and 14–18 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Ambrosino (US 2005/0105496 A1, May 19, 2005), Stanners (US
2007/0004379 A1, Jan. 4, 2007), and Dunn et al. (US 2007/0149211 A1,
June 28, 2007) (“Dunn”). Final Act. 3–6.
The Examiner rejects claims 3, 11, and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings Ambrosino, Stanners, Dunn, and
Maanoja et al. (US 2004/0259566 A1, Dec. 23, 2004) (“Maanoja”). Final
Act. 6–7.
The Examiner rejects claims 5, 13, and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings Ambrosino, Stanners, Dunn, and
Niemenmaa et al. (US 2005/0153687 A1, July 14, 2005) (“Niemenmaa”).
Final Act. 7.

2 Throughout this Decision, we refer to the Appeal Brief filed July 11, 2019
(“Appeal Br.”); Reply Brief filed January 2, 2020 (“Reply Br.”); Final
Office Action mailed January 11, 2019 (“Final Act.”); and the Examiner’s
Answer mailed November 1, 2019 (“Ans.”).
3 The Final Action refers to claim 16, rather than claim 18. Final Act. 2. We
deem the inclusion of claim 16 and omission of claim 18 harmless error.
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ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, Reply
Brief, the Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 2, 10, and 18 under 35 U.S.C. § 112 first
paragraph, but have not persuaded us of error in the Examiner’s rejection of
claims 1–20 under 35 U.S.C. § 103(a).

Rejection of dependent claims 2, 10, and 18 based upon 35 U.S.C.
§ 112 first paragraph
The Examiner has rejected claims 2, 10, and 18 because the limitation
“location fails to satisfy a desired accuracy” is not enabled by Appellant’s
Specification. Final Act. 2. In the Answer, the Examiner concludes that
“desired accuracy” cannot be calculated without knowing a “true location”
of a mobile device. Ans. 3–4.
Appellant argues that the Examiner’s rejection is in error as the
limitation “location fails to satisfy a desired accuracy” no longer appears in
claims 2, 10, or 18.4 Appeal Br. 9; Reply Br. 2. Appellant further contends
that the Examiner’s rejection is conclusory and devoid of any Wands
factors5 discussion. Appeal Br. 7–8. Appellant argues that the Specification
provides a disclosure of how the invention “determines that a provided
geographic location lacks a level of accuracy desired or is otherwise
unacceptable.” Id. at 8–9 (citing Specification ¶¶ 40–42).

4 We note that “the desired accuracy” is recited in dependent claims 3, 11,
and 19 and lacks antecedent basis. See Claims App.
5 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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We are persuaded of error in the Examiner’s rejection. We agree with
Appellant that the limitation identified by the Examiner as not being enabled
does not appear in claims 2, 10, and 18. Appeal Br. 9; Reply Br. 2.
Additionally, the test for compliance with the enablement requirement under
35 U.S.C. § 112 first paragraph 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 at 737. The Federal Circuit in In re Wands set forth eight factors—not
all of which are required—to be considered to evaluate whether a disclosure
would require undue experimentation. Id.; In Re Hills, 484 Fed. Appx 491,
495 (Fed. Cir. 2012); see also MPEP § 2164.01(a). Here, however, the
Examiner has not addressed any of the factors set forth by the Wands court.
See Final Act. 2; Ans. 3–4. Accordingly, the Examiner has not identified
sufficient evidence to support the conclusion that claims 2, 10, and 18 are
not enabled.
For the foregoing reasons, we are persuaded by Appellant’s arguments
of error in the Examiner’s rejection. Therefore, we do not sustain the
rejections of claims 2, 10, and 18 as failing to comply with the enablement
requirement.

Rejection of independent claim 1 under 35 U.S.C. § 103(a)
Appellant argues, with respect to claim 1, that the Examiner’s
rejection is in error as the combination of Ambrosino, Stanners, and Dunn
does not teach “obtaining data related to a wireless micronetwork” or
“wherein the data related to the micronetwork is provided . . . via the
macronetwork.” Appeal Br. 19; Reply Br. 4–5. In particular, Appellant
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contends that “Ambrosino discloses only providing data from, but not data
related to, a micronetwork.” Appeal Br. 19; Reply Br. 5 (emphases omitted).
Appellant further contends that Dunn does not teach providing data related
to the micronetwork via a macronetwork. Appeal Br. 19. Appellant
additionally argues that Stanners is non-analogous art. Id. at 12–14.
Appellant asserts that the Examiner has not articulated a rational reason to
combine the teachings of Ambrosino, Stanners, and Dunn, because: 1) the
Examiner has identified an advantage to combine that is the same as that
provided by the applicant; 2) using both micronetworks and macronetworks
“adds complexity” and “would be inefficient”; and 3) the Examiner has not
provided evidence that the combination yields a finite number of predictable
results, given the “numerous possible combinations” of the individual
teachings of the references. Appeal Br. 14–17; Reply Br. 2–4. Furthermore,
Appellant argues, Dunn teaches away from using a micronetwork to locate a
mobile device and “would be frustrated by such combination [with
Ambrosino and Stanners].” Appeal Br. 17–18; Reply Br. 4.
We are not persuaded of error in the Examiner’s rejection. Claim 1
recites “obtaining data related to a wireless micronetwork . . . , wherein the
data related to the micronetwork is provided . . . via the macronetwork.” See
Claim 1. The Examiner has found, and we agree, that these claim limitations
are met by Ambrosino’s one or more sensors collecting and sending data to a
WLAN server through a wireless WAN. Ans. 7 (citing Ambrosino ¶¶ 17, 22,
25). We are not persuaded by Appellant’s argument that “the claimed system
uses the geographic location of a WLAN as the location of a mobile device
communicating with that WLAN” and is different from Ambrosino’s system
that “uses the WLAN to relay location data provided by sensors, but does
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not provide information regarding the WLAN itself.” Reply Br. 4–5 (citing
Spec. ¶ 11). This argument is unavailing, because while Appellant’s
Specification may disclose the system using the location of the WLAN,
representative claim 1 does not, and we decline to incorporate limitations
from the specification into the claim. Although claim terms are interpreted in
light of the specification, we do not read limitations from the specification
into the claims. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d
1560, 1571–72 (Fed. Cir. 1988), cert. denied, 488 U.S. 892 (1988). Further,
Appellant’s Specification does not disclose the claimed invention in a
manner that limits “data related to a wireless micronetwork” to a location of,
or information regarding, the micronetwork itself. See, e.g., Spec. ¶¶ 48–49.
Additionally, even if Appellant’s narrow claim construction were
applied, Ambrosino teaches obtaining geographic location data of
components related to and located within the WLAN network, i.e.,
micronetwork. See Ambrosino at Fig. 1, ¶ 22. Ambrosino explains that the
WLAN server 30 computes the location of a device 10 optionally using data
associated with “transmission of signals [to the device] by one of the sensors
at a corresponding known location” within the WLAN network. See id.
(emphasis added).
We are additionally unpersuaded by Appellant’s argument that
Stanners is non-analogous art. Appeal Br. 12–14. “Two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed [‘Field Test’] and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved [‘Problem Test’].” In re Bigio, 381 F.3d 1320, 1325
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(Fed. Cir. 2004) (citations omitted). Whether, as Appellant argues, Stanners
might have been classified by the PTO in a different area than the claimed
invention, or whether the solution of Stanners relies on wired phones, are not
dispositive of the question of analogousness. Appeal Br. 12–14. Instead, the
inquiry is whether Stanners deals with a matter that “logically would have
commended itself to [the] inventor’s attention.” In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992). Here, the problem to be solved by the invention is
locating a mobile device, such as cellular telephones. Abstract; Spec. ¶¶ 2–3.
Stanners similarly relates to “providing precise location data . . . of a cell
phone operator.” See Stanners at Abstract. Thus, Stanners is analogous art
because it attempts to solve the same problem as the invention, finding the
location of a device, and is in the same field of endeavor as Appellant’s field
of endeavor.
Furthermore, even were Stanners deemed non-analogous art, the
Examiner has found teachings in Ambrosino that could be substituted for
those relied upon in Stanners. In particular, the Examiner has relied on
Stanners for teaching the mobile device broadcasting “a distress message.”
Final Act. 4 (citing Stanners ¶ 26); see also Claim 1. The Examiner also
points to Ambrosino’s teaching of a mobile device making an emergency
call. Ans. 4 (citing Ambrosino ¶¶ 4, 17). According to Ambrosino, the
device may initiate location determination using, for example, “emergency
(e.g., e911) condition location.” Ambrosino ¶ 17. Therefore, Ambrosino
provides cumulative teachings of the mobile device broadcasting the claimed
distress message.
We are further unpersuaded by Appellant’s contention that the
Examiner has not articulated a reasoning with rational underpinning to
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combine the teachings of Ambrosino, Stanners, and Dunn. Appeal Br. 14–
17. The Examiner has determined that an ordinarily skilled artisan would
have combined the teachings of the prior art, “in order to efficiently perform
location updates” and “to have efficient emergency communication.” Final
Act. 4–5. We are not persuaded by Appellant’s argument that the reasons to
combine proffered by the Examiner amount to merely “a shared advantage”
with the invention; and “simply identifying a shared advantage is useless as
a way of distinguishing obviousness from nonobvious combinations.”
Appeal Br. 14–15; Reply Br. 2–3. The test set forth by the Supreme Court in
KSR is whether the Examiner has proffered a reasoning with rational
underpinning to support the conclusion of obviousness. KSR v. Teleflex, 550
U.S. 398, 418 (2007). Notably, the test is not whether the Examiner has
articulated a different reason to combine than Appellant. Id. We are
additionally unpersuaded by Appellant’s argument that using both a
micronetwork and a macronework is inefficient. Appeal Br. 15.The
Examiner explains in the Answer, and we concur, that using both types of
networks “increase[s] the probability of reaching at least [one] receiver”
during an emergency and “improves reliability.” Ans. 4–7. Appellant’s
response in the Reply Brief that Stanners does not teach a micronetwork is
not persuasive to show error in the Examiner’s rationale to combine the
references. See Reply Br. 3. The Examiner has relied on Stanners’ teaching
of a distress message, not a micronetwork. Final Act. 3–4. Nor has Appellant
explained why the distress message teachings of Stanners cannot be
combined with the teachings of Ambrosino and Dunn. Id.
We are also not persuaded by Appellant’s argument that Dunn teaches
away from using a micronetwork because Dunn teaches locating a mobile
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device using a macronetwork in an outdoor environment. Appeal Br. 17–18
(citing Dunn ¶¶ 19, 21); Reply Br. 4. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” Ricoh
Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)
(quoting Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978,
989 (Fed. Cir. 2006)). Here, Appellant has not demonstrated that Dunn
discredits or otherwise discourages the use of either micronetworks or
determining a device location indoors. See Appeal Br. 17–18; Reply Br. 4.
Simply because Dunn might have disparate teachings from Ambrosino, does
not teach away from its combination with Ambrosino. Moreover, although
Appellant contends that “the purpose of Dunn would be frustrated” by
combining it with Ambrosino, the Examiner has relied on a certain teaching
of Dunn to form a combination with teachings of Ambrosino and Stanners.
Appeal Br. 18.
Further, we are not persuaded by Appellant’s argument that the
Examiner’s rejection is in error because the Examiner has failed to address
why, from “numerous possible combinations” of the individual teachings of
Ambrosino, Stanners, and Dunn, an ordinarily skilled artisan would have
found it predictable to combine their teachings in a manner to arrive at the
claimed invention. Appeal Br. 16–17; Reply Br. 3–4. Initially, we note that
the Examiner has not alleged that there are a finite number of predictable
solutions to the problem solved by the invention. See generally Final Act.;
see also KSR, 550 U.S. at 417, 421. Instead, the Examiner has articulated
different reasons to combine the teachings of Ambrosino, Stanners, and
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Dunn, specifically improved efficiency and reliability and increasing the
probability of reaching a receiver during an emergency. Final Act. 4–5; Ans.
4–7. Accordingly, the Examiner need not explain why additional reasons to
combine would exist.
Nevertheless, as discussed above, the teachings of Stanners on which
the Examiner relies are also taught by Ambrosino. See supra at 9. Regarding
Dunn, the Examiner similarly provides evidence of overlapping teachings in
Ambrosino. See, e.g., Final Act. 4; Ans. 7 (relying on Dunn or Ambrosino to
teach “wherein the data related to the micronetwork is provided by the
mobile device via the macronetwork,” as claimed). As such, Ambrosino
itself at least suggests the particular combination of elements deduced by the
Examiner. For the foregoing reasons, we are not persuaded that the
Examiner’s rationale to combine the teachings of the references is
unsupported or conclusory or amounts to impermissible hindsight. Appeal
Br. 15, 17; Reply Br. 3. Instead, the Examiner has articulated a reasoned
rationale with rational underpinnings to combine the teachings of
Ambrosino, Stanners, and Dunn. Final Act. 4–5; Ans. 4–7.
Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of claim 1. Independent claims 9 and 17 recite
limitations of similar scope and are not separately argued. Accordingly, we
sustain the Examiner’s obviousness rejection of claims 1, 9, and 17, and
claims 2–8, 10, 11, 13–16, and 18–20 depending therefrom, over
Ambrosino, Stanners, and Dunn.

Rejection of dependent claim 12 under 35 U.S.C. § 103(a)
Appellant argues, with respect to claim 12, that the Examiner’s
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rejection is in error as the combination of Ambrosino, Stanners, and Dunn
does not teach “wherein determining the updated location information for
the mobile device is performed in part by the macronetwork using a location
associated with the micronetwork,” as recited in the claim. Appeal Br. 20–
21.
We are unpersuaded of error in the Examiner’s rejection of claim 12.
The Examiner finds that the claimed limitation is met by Ambrosino’s
teachings of a wireless WAN sending a “location initiation message”
including WLAN server addresses and an emergency responder facility
receiving location information via the wireless WAN. Ans. 8 (citing
Ambrosino ¶¶ 19, 22, 25). Appellant counters that “Ambrosino simply uses
the WLAN to pass on or provide location data, rather than using a
macronetwork-stored location of the WLAN itself as the location of a
mobile device communicating with that WLAN.” Reply Br. 5. However,
Appellant’s argument is unpersuasive for the same reasons as discussed
above with respect to “obtaining data related to a wireless micronetwork” in
claim 1. See supra at 6–8. Specifically, Appellant’s argument is not
commensurate in scope with claim 12, because we do not read limitations
from the specification into the claims. See Constant v. Advanced Micro-
Devices, Inc., 848 F.2d at 1571–72 (Fed. Cir. 1988), cert. denied, 488 U.S.
892 (1988); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of claim 12 based upon Ambrosino, Stanners, and
Dunn.

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CONCLUSION
In summary:
Claim
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
2, 10, 18

112 first
paragraph
Enablement 2, 10, 18
1, 2, 4, 6–10,
12, 14–18
103(a) Ambrosino,
Stanners,
Dunn
1, 2, 4, 6–10,
12, 14–18

3, 11, 19 103(a) Ambrosino,
Stanners,
Dunn,
Maanoja
3, 11, 19
5, 13, 20 103(a) Ambrosino,
Stanners,
Dunn,
Niemenmaa
5, 13, 20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED