Obviousness

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 9,042,910

This analysis considers whether the independent claims of US Patent 9,042,910 (hereinafter "the '910 patent") would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of the invention (priority date: March 28, 2006), by combining prior art references identified within the '910 patent itself.

The '910 patent identifies two key prior art references:

• US20020094801 (referred to as "US'801" for brevity)
• International application WO 00/27152 (referred to as "WO'152" for brevity)

Core Independent Claims of US 9,042,910

The independent claims of the '910 patent (Claims 1, 11, 16, 18, and 19) generally cover a method and system for monitoring a mobile station's presence in a special area. The key inventive step, as highlighted in the patent's abstract and detailed description, lies in how the special area is associated with the mobile station.

Claim 1 (Method):
A method comprising:
a. A radio communication defining device transmitting a distinctive defining signal.
b. A mobile station observing and processing signals.
c. The mobile station determining if a received signal is the distinctive defining signal for the special area.
d. The mobile station sending an updating signal to a mobile telephone network about its presence.
e. The mobile telephone network routing the updating signal to special operating means that adapt an operating parameter.
Characterizing Feature: The special area is associated with the mobile station by transmitting to the mobile station a checking data, which the mobile station uses to determine if the received signal is distinctive, and the same checking data is sent to any mobile station whose presence in this special area is monitored.

Claim 11 (System):
A mobile system comprising means for carrying out the steps of Claim 1, including: a radio communication defining device, a mobile station with observing/processing/storing means, transmission means, and special operating means. The core difference echoes Claim 1's characterizing feature: the mobile station has storing means for checking data, and processing means use this checking data, with the same checking data sent to any monitored mobile station.

Claims 16, 18, 19: Are directed to a server, a radio communication defining device, and a mobile station, respectively, configured to operate within the system described in Claim 11, or carry out the method of Claim 1.

Analysis of Prior Art and Motivation to Combine

The '910 patent explicitly discusses the limitations of the identified prior art, thereby providing a clear motivation for a PHOSITA to combine or modify existing technologies.

1. Teachings of WO 00/27152:
WO'152 describes a guide unit broadcasting a short-range radio signal that defines a "home area." The signal contains the identity code of said mobile station, and the mobile station identifies its own identity code to notify a mobile switching center of its location. This "home message" can be used for defining price/service for telephone calls.

• Elements covered by WO'152:

  • Claim 1a (radio device transmitting a distinctive signal defining an area): Yes, a "guide unit that broadcasts a short range radio signal which defines a home area."
  • Claim 1b & 1c (mobile station observing and determining if it's the distinctive signal): Yes, the "mobile station that has to identify its own identity code in order to notice to a mobile switching centre that it is located in its home area."
  • Claim 1d (mobile station sending an updating signal to a mobile network): Yes, the "mobile station transmits then a home message to the mobile network."
  • Claim 1e (network adapting an operating parameter): Yes, the "home message being possibly used notably for defining the price/service connected to telephone calls."

• Elements NOT covered by WO'152 (the characterizing feature of '910 patent):
  WO'152 does not disclose "transmitting to the mobile station a checking data" for area identification, where "the same checking data is sent to any mobile station whose presence in this special area is monitored." Instead, WO'152 describes the guide unit broadcasting the mobile station's own identity code, meaning the guide unit must know the individual identities of all mobile stations, and the mobile station looks for its own ID.

Motivation to modify WO 00/27152: The '910 patent explicitly criticizes WO'152 for its lack of flexibility: "the guideunit has to know the identity of the mobile station and this last solution is thought to be used for a home special area. However, this last technical solution does not allow the mobile network, to add for a mobile station one or more special areas wherein the presence of a mobile station is monitored without having to at least modify one or more guide units broadcasting in such areas. It lacks therefore of flexibility." It further notes that "it would be necessary to store and transmit in and from a single radio communication defining device all the mobile station identity codes of the potential mobile stations... operation which would difficult or even impossible considering that the radio spectrum is a limited resource."

A PHOSITA, faced with these clear limitations of WO'152 (inflexibility, scalability issues due to broadcasting individual mobile station IDs, and burden on guide units), would be highly motivated to find a more flexible and scalable solution.

2. Combination with General Knowledge in Mobile Network Provisioning:
To address the scalability and flexibility issues of WO'152, a PHOSITA would consider an alternative to having guide units broadcast individual mobile station IDs. Instead, it would be an obvious design choice to have the guide unit broadcast a generic identifier for the special area itself (the "checking data" of the '910 patent).

To enable mobile stations to recognize this generic area identifier, the mobile stations would need to be provisioned with this "checking data" in advance. The practice of transmitting configuration data or service parameters to mobile stations via the mobile telephone network (e.g., through SMS or Over-The-Air (OTA) provisioning) was well-known and commonplace in the mobile telecommunications industry by the priority date of the '910 patent. The '910 patent itself explicitly suggests methods for "transmitting the checking data to the mobile station... via the mobile telephone network".

Rationale for Obviousness:

By combining the teachings of WO 00/27152 with the general knowledge of mobile network provisioning, a PHOSITA would arrive at the claimed invention with a reasonable expectation of success, for the following reasons:

1. Overcoming WO'152's limitations: The explicit problems identified with WO'152 (inflexibility, scalability, burden on guide units, spectrum usage) directly motivate the modification.
2. Obvious modification of broadcast content: Instead of the guide unit broadcasting a mobile-station-specific ID (as in WO'152), broadcasting a generic area identification code (the "checking data") would be an obvious way to allow multiple mobile stations to use the same guide unit without requiring the guide unit to manage individual subscriber identities.
3. Obvious method for provisioning mobile stations: Providing the mobile station with this generic "checking data" (area identification code) via standard mobile network provisioning methods (e.g., OTA updates, SMS, or even manual entry, as described in the '910 patent) would be a straightforward and well-known approach for configuring mobile devices for new services.
4. Straightforward adaptation of mobile station processing: The mobile station in WO'152 already performs a comparison (its own ID vs. broadcast ID). Adapting this processing to compare pre-stored area checking data with a broadcast area identification signal is a mere design choice and not inventive, as the underlying mechanism of comparison remains the same.

Therefore, the combination of WO 00/27152 with the general knowledge of mobile network configuration and provisioning practices would render the characterizing features of Claim 1, and consequently the dependent claims (11, 16, 18, 19) relating to the system, server, device, and mobile station configured to perform this method, obvious. The motivation stems directly from the '910 patent's own critique of the prior art and the common desire for more flexible and scalable mobile network services.

While US20020094801 mentions an "encoded first signal" and "protection against the abuse of the system" through access codes, its relevance to the core "checking data transmitted to the mobile station" aspect for multiple users is less direct compared to the deficiencies highlighted in WO 00/27152. However, the general concept of securing location-based services (as in Claim 18, "means for obtaining reliable information indicating whether or not the said wireless device is located into a predetermined environment") could be motivated by such general concerns about system abuse, making such additions obvious enhancements in a practical system.