Ex Parte Hua et al

Patent Trial and Appeal Board

Aug 21, 2017

13236350 (P.T.A.B. Aug. 21, 2017)

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.
13/236,350 09/19/2011 Suzann Hua 809877 9001
50525 7590 08/23/2017
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
TORCHINSKY, EDWARD
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
docketing @ dbflaw. com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUZANN HUA and AHMED N. ZAKI
Appeal 2015-002843
Application 13/236,350
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Suzann Hua and Ahmed N. Zaki (“Appellants”)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—21,
which are all the pending claims. See Appeal Br. 6—12; Reply Br. 2.2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alcatel Lucent.
Appeal Br. 3.
2 We note that the Reply Brief (filed December 9, 2014) does not
provide page numbers. For reference convenience, we designate the cover
page of the brief as page 1 and number the pages consecutively therefrom.
Appeal 2015-002843
Application 13/236,350
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to communication systems,
such as a global positioning system (GPS) navigation system. See, e.g.,
Spec., p. 1,1. 5 — p. 2,1. 6. Claims 1, 8, and 15 are independent. Claim 1,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
1. A navigation system comprising:
a controller;
a Global Positioning System (GPS) receiver configured
to identity GPS location data indicating a current location of a
vehicle; and
a user interface configured to display a map based on the
current location of the vehicle, to display a plurality of
navigable points of interest proximate to the current location of
the vehicle on the map, and to receive a selection of one of the
plurality of navigable points of interest proximate to the current
location of the vehicle from a user;
wherein the controller is configured to identify a network
resource for obtaining additional information about the selected
one of the plurality of navigable points of interest, the
navigation system not having access to the additional
information;
wherein the controller is further configured to generate a
machine readable code that indicates the identified network
resource for obtaining the additional information for the
selected one of the plurality of navigable points of interest, and
to provide the machine readable code to the user interface for
capture by a mobile device; and
wherein the controller is further configured to provide
navigation directions from the current location of the vehicle to
the selected one of the plurality of navigable points of interest
without receiving the additional information from the network
resource over a network.
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Appeal 2015-002843
Application 13/236,350
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Odamura US 7,487,042 B2 Feb. 3, 2009
Khan US 8,368,594 B2 Feb. 5,2013
Yuan-Cheng Lai et al., A GPS Navigation System with QR Code
Decoding and Friend Positioning in Smart Phones, from 2010 2nd
International Conference on Education Technology and Computer
(ICETC), pp. V5—66 to V5-70 (IEEE June 2010) (“Lai”)
Mark Ireland, FME 2011 Use Case: QR Codes, from
http://blog.safe.com/ (posted July 11, 2011) (“Ireland”)
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 4—6, 8, 11—13, 15, and 18—20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Khan and
Ireland.3 Final Act. 3—5.
II. Claims 2, 3, 7, 9, 10, 14, 16, 17, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Khan, Ireland,
and Odamura. Id. at 6—7.
3 We note that claims 6, 13, and 20 are not listed in the caption of this
rejection, but are specifically addressed in the body of the rejection. See
Final Act. 5. Appellants present argument for all dependent claims together.
See Appeal Br. 12. Thus, we treat the omission of claims 6, 13, and 20 from
the caption of the rejection as an inadvertent and harmless error, and we
refer to the rejection as including these claims herein.
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Appeal 2015-002843
Application 13/236,350
ANALYSIS
Rejection I— Claims 1, 4—6, 8, 11—13, 15, and 18—20 as unpatentable
over Khan and Ireland
Appellants argue the rejection of independent claims 1, 8, and 15
together (see Appeal Br. 6—12), and rely on the same argument for the
dependent claims (see id. at 12). We select independent claim 1 as
representative of the issues that Appellants present in the appeal of this
rejection, with claims 4—6, 8, 11—13, 15, and 18—20 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determined that a combination of teachings from Khan
and Ireland renders obvious the subject matter of claim 1. Final Act. 3—5.
Appellants argue that the rejection is improper, based on a contention that
Khan’s system has access to a network resource, while the claimed system
does not have access to a network resource. See Appeal Br. 7—10.
Appellants also assert that modifying Khan’s system so that the navigation
system is prevented from reaching a network resource would render Khan
inoperable for its intended purpose. See id. After careful consideration of
the record before us, Appellants’ arguments do not apprise us of error in the
Examiner’s factual findings from Khan and Ireland, which are supported by
a preponderance of the evidence, or the Examiner’s reasonable conclusion of
obviousness, which is rationally articulated based on the prior art teachings.
In short, we sustain the rejection based on the reasoned position set forth
therein and in light of the Examiner’s responses to Appellants’ arguments.
See Final Act. 3—5; Ans. 7—13.
Specifically, Appellants’ argument is premised on a contention that
the claimed subject matter is not rendered obvious by the cited art because
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Appeal 2015-002843
Application 13/236,350
Khan’s navigation system has access to a network, whereas the claimed
navigation system purportedly does not have access to a network. See
Appeal Br. 7—10; Reply Br. 4—7. This contention is misplaced and does not
apprise us of error in the Examiner’s rejection because the purported feature
relied on—namely, the navigation system being without access to a
network—is not required by the claim. It is well established that limitations
not appearing in the claims cannot be relied upon to distinguish for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Here, the claim simply recites that the navigation system not have
access to “additional information” about a selected one of a plurality of
navigable points of interest; it does not constrain that the navigation system
is prohibited from network access generally. See Appeal Br. 13, Claims
App. Therefore, regardless of whether Khan’s navigation system generally
has access to a network, this purported distinction alone does not identify
error in the Examiner’s position that a combination of Khan and Ireland
could use embedded QR codes to store links to “additional information” that
Khan’s navigation system does not have access to, as required by the claim.
See Final Act. 6; Ans. 9—11.
We note that any other arguments not specifically addressed in detail
herein have been thoroughly considered by the panel but are not persuasive
for the reasons expressed in the Examiner’s Answer.
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain the
rejection of claim 1, and claims 4—6, 8, 11—13, 15, and 18—20 falling
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Appeal 2015-002843
Application 13/236,350
therewith, under 35 U.S.C. § 103(a) as being unpatentable over Khan and
Ireland.
Rejection II— Claims 2, 3, 7, 9, 10, 14, 16, 17, and 21 as unpatentable
over Khan, Ireland, and Odamura
With respect to the rejection of these claims, Appellants do not set
forth any additional substantive arguments separate from the arguments
discussed supra', instead expressly relying on their dependency from one of
the independent claims. See Appeal Br. 12. Thus, for the same reasons that
Appellants’ arguments do not apprise us of error in Rejection I, Appellants
also do not apprise us of error in Rejection II.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 2,3,1, 9, 10, 14, 16, 17, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Khan, Ireland, and Odamura.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 4—6, 8,
11—13, 15, and 18—20 under 35 U.S.C. § 103(a) as being unpatentable over
Khan and Ireland.
We AFFIRM the Examiner’s decision rejecting claims 2, 3, 7, 9, 10,
14, 16, 17, and 21 under 35 U.S.C. § 103(a) as being unpatentable over
Khan, Ireland, and Odamura.
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)(l)(iv).
AFFIRMED
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