2013 Pat. App. LEXIS 7038
`Patent Trial and Appeal Board Representative Orders, Decisions and Notices
`September 26, 2013, Decided
`
`Appeal 2011-003386; Application 11/718,622 n1; Technology Center 2600n1 The real party in interest is Koninklijke
`Philips Electronics, N.V.
`
`Reporter
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`2013 Pat. App. LEXIS 7038
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`Ex parte MARK L. HITCHIN
`
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`Notice:
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`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion
`below has been designated a routine opinion.
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`Core Terms
`
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`install, sensor, gateway, patent, hardcoded, display
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`Panel: Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and MICHAEL J. STRAUSS, Administrative
`Patent Judges.
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`Opinion By: THOMAS
`
`Opinion
`
`
`THOMAS, Administrative Patent Judge.
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`DECISION ON APPEAL
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`STATEMENT OF THE CASE
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`Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-15, which
`are all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
`
`We AFFIRM-IN-PART.
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`The present invention relates generally to a plurality of sensors devices communicating with a central gateway
`device. See Abstract.
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`Claim 1 is illustrative:
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`1. A system of devices comprising a plurality of sensor devices,
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`each sensor device comprising communicating means for communicating with a central gateway device,
`storage means storing a unique identifier, and display means displaying a location identifier, and
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`a central gateway device comprising communicating means for communicating with the plurality of sensor
`devices,
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1127 p. 1
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`2013 Pat. App. LEXIS 7038
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`Page 2 of 3
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`wherein data corresponding to the location identifier of each sensor device is hardcoded on the central
`gateway device prior to an installation of the system.
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` [*2]
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`Appellant appeals the following rejection:
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`Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wildman (US Patent Pub.
`2002/0183979 A1, Dec. 5, 2002), Higgs (US 5,061,917, Oct. 29, 1991), and Elliott (US Patent Pub. 2003/0096629
`A1, May 22, 2003).
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`ANALYSIS
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`Claims 1-11
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`Issue: Did the Examiner err in finding that Elliott teaches and/or suggests "a location identifier, " as set forth in claim
`1?
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`Appellant contends that Elliott's "GPS signals would be useless in deriving location data prior to installation of a
`system because the components would not be in their installed location" (App. Br. 5) . . . in the claimed invention
`"the hardcoding of the location identifier is done before the installation process has even commenced" (id.).
`
`The Examiner found that in Elliott "the server has previously stored device location data" (Ans. 6) and also
`found that the argued limitation "is a product by process limitation . . . [and therefore] does not have weight" (id. at
`13).
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`Here, the Examiner admits that Wildman in view of Higgs does not explicitly disclose a location identifier being
`hardcoded prior [*3] to an installation of the system, but instead relies upon Elliott to disclose such features (Ans.
`6). As such, we shall look for error in the Examiner's interpretation of Elliott.
`
`As a preliminary matter of claim construction, Appellant's Specification discloses that "[t]he location identifier 30
`informs the installer of the location in the house 10, in which they should install the sensor device" (6:5-7). In other
`words, Appellant defines "location identifier" as the location in which the sensor device should beinstalled, as
`opposed to the current location of the sensor device. Thus, we broadly but reasonably construe the claim term
`2
`"location identifier" as denoting any location that a sensor should be installed .
`
` [*4]
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`Elliott discloses that a GPS receiver is used to determine a geographic location of the device and that the
`"[d]evice location 1025 may include a location associated with device identifier 1005 that has been previously
`stored in server 120" (P [0038]). In other words, the geographic location in Elliott corresponds to a current
`location as detected by a GPS receiver. Furthermore, in Elliott, the device identifier 1005, not device location
`1025, is previously stored in the server 120. As such, we find that Elliott's geographic location of the device
`corresponds to a current location of the device as detected by the GPS and not the location at which the device
`should be installed.
`
`While Elliott fails to disclose that any location information related to an intended installation location being
`previously stored before the actual installation of the device, we find that the claimed "the location identifier . . . is
`hardcoded on the central gateway device prior to an installation of the system" is merely non-functional
`
`
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`2 During ex parte prosecution, the Patent & Trademark Office (PTO) determines the scope of the claims by giving the language
`"the broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art.'"
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`1359, 1364 (Fed. Cir. 2004)).
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1127 p. 2
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`2013 Pat. App. LEXIS 7038
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`Page 3 of 3
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`descriptive material as the data content, i.e., the location identifier, does not exhibit a functional interrelationship
`with the sensors and/or [*5] the central gateway device, as no actual installation is required in claim 1. The
`Examiner need not give patentable weight to descriptive material absent a new and unobvious functional
`relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed.
`Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render
`nonobvious an invention that would have otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276
`(BPAI 2005) (nonprecedential), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006).
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`In claim 1, the "location identifier" is merely a characterization of a type of "data" and does not affect the
`communicating with the central gateway device because the "location identifier" is directed to mere content which
`bears no functional or structural significance to the steps of the claims. Therefore, no patentable weight needs to
`be given to the "type" of data and/or the hardcoding on the central gateway device prior to an installation of the
`system.
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`Furthermore, while claim [*6] 1 calls for "displaying a location identifier, " Appellant's Specification discloses that
`"a system is labelled with text indicating its location" (Spec., 3:6-8). In other words, a label such as "Kitchen 1" may
`be used (id.). As such, the features in Appellant's claim 1 directed to a location identifier is "useful and intelligible
`only to the human mind." See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d
`1395, 1399 (CCPA 1969)) (distinguishing such claim limitations from claim limitations defining functional
`characteristics). The "location identifier" does not exploit or interrelate with any other structural elements of the
`underlying system. Accordingly, we do not find that the "location identifier" limitation at issue is functionally related
`to the system so as to patentably distinguish the subject matter of Appellant's claims from the applied prior art. As
`such, the limitation "displaying a location identifier" will not be given any patentable weight as this is merely
`printed matter.
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`Here, the Examiner established that Wildman discloses a system for tracking an activity using sensors [*7] and a
`master station (see Abstract), Higgs discloses displaying the location of the transmitter (col. 8, ll. 22-31), and
`Elliott discloses a device location (P [0038]). Therefore, we find no error in the Examiner's obviousness rejection of
`representative claim 1, for at least the reason noted supra, and claims 2-11 for similar reasons.
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`Claims 12-15
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`Unlike claim 1, claim 12 explicitly includes an installing step (see claim 12). As such, we find that the claimed "the
`location identifier of each sensor device is hardcoded on the central gateway device prior to installation of the
`system" carries a functional relationship to the claimed installing step and the location identifier, as defined by
`Appellant. As noted supra, the Examiner has failed to show that Elliott discloses hardcoding the location identifier,
`i.e., an intended location, prior to installation of the system, as Elliott merely discloses using a GPS for current
`location and is silent about storing location information prior to any installation of a system.
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`Therefore, based on the record before us, we find that the Examiner erred in rejecting claim 12 and dependent
`claims 13-15 for similar reasons. [*8]
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`DECISION
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`We affirm the Examiner's § 103(a) rejection of claims 1-11, and
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`We reverse the Examiner's § 103(a) rejection of claims 12-15.
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`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).
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`AFFIRMED-IN-PART
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`End of Document
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1127 p. 3