Ex Parte MatsuokaDownload PDFPatent Trial and Appeal BoardOct 27, 201411520596 (P.T.A.B. Oct. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIROMICHI MATSUOKA ____________ Appeal 2012-008172 Application 11/520,596 Technology Center 3600 ____________ Before JOHN C. KERINS, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hiromichi Matsuoka (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 2, 4–8, and 10–25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed to an application control system for use in a navigation system of a vehicle. Independent claim 25 is illustrative: 25. An application control system for use in a navigation system of a vehicle comprising: Appeal 2012-008172 Application 11/520,596 2 a current region detector that detects a current region where the vehicle is operating; an application storage that stores in a retrievable manner, a plurality of map data handling software applications, each of the plurality of map data handling software applications being associated with a map data format from among a plurality of map data formats, each of a plurality of preset regions being associated with a map data format from among the plurality of map data formats; and a control unit, wherein the control unit determines if the current region is one of the plurality of preset regions, and when it is determined that the current region is one of the plurality of preset regions, the control unit determines a map data format associated with the current region, and further determines a map data handling software application associated with the map data format associated with the current region; the control unit further determines whether the map data handling software application associated with the map data format associated with the current region is currently being executed by the control unit; when the control unit determines that the map data handling software application associated with the map data format associated with the current region is currently being executed by the control unit, the control unit continues to execute the map data handling software application associated with the map data format associated with the current region; when the control unit determines that the map data handling software application associated with the map data format associated with the current region is not currently being executed by the control unit, the control unit determines whether the map data handling software application associated Appeal 2012-008172 Application 11/520,596 3 with the map data format associated with the current region is stored in the application storage; and when the control unit determines that the map data handling software application associated with the map data format associated with the current region is stored in the application storage, the control unit retrieves and executes the map data handling software application associated with the map data format associated with the current region. THE REJECTIONS The Examiner has rejected: (i) claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and (ii) claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. ANALYSIS Claims 2, 4–8, and 10–25--§ 112, first paragraph--Written Description The Examiner, citing to independent claim 25 as being representative of it and independent claim 7, finds that there is no written descriptive support for several limitations found in claim 25. Specifically, the Examiner maintains that there is no written descriptive support for the following limitations found in claim 25: (a) the control unit determines if the current region is one of the plurality of preset regions; (b) when it is determined that the current region is one of the plurality of preset regions; (c) the control unit determines a map data format associated with the current region; Appeal 2012-008172 Application 11/520,596 4 (d) when the control unit determines that the map data handling software application associated with the map data format associated with the current region is not currently being executed by the control unit, the control unit determines whether the map data handling software application associated with the map data format associated with the current region is stored in the application storage; and (e) when the control unit determines that the map data handling software application associated with the map data format associated with the current region is stored in the application storage, the control unit retrieves and executes the map data handling software application associated with the map data format associated with the current region. We are of the opinion that Appellant’s application as filed evidences that Appellant was in possession of the above aspects of the system set forth in claim 25, as well as similar aspects of the system and method set forth in independent claims 7, 13, and 14. Although it is somewhat unclear, with respect to limitations (a)–(c) above, whether the Examiner bases the rejection on the appearance of the term “plurality,” or “preset,” or both, the discussion at page 7, lines 17–23, and illustration in corresponding Figure 4, as well as Figure 2, evidence possession of those limitations. There is clearly contemplation of a plurality of regions (“each of a plurality of regions”), and the term “preset” would be understood by persons of ordinary skill in the art as referring to those regions for which application software resides in the claimed application storage.1 The determinations in limitations (a) and (b) are seen to have 1 We note that the Examiner did not take issue with the recitation of the application storage as storing “a plurality of map data handling software applications, each of the plurality of map data handling software applications Appeal 2012-008172 Application 11/520,596 5 written descriptive support at steps S2 and P2 in the flowcharts of Figures 2 and 4, respectively, with a “YES” result being the determination that the current region is one of the plurality of preset regions. The limitation directed to determining a map data format associated with the current region is, as Appellant maintains, “[i]mplicit in [the] process of switching software (or continuing to use software currently being executed) . . . is first determining the map data format that is associated with the current region.” Appeal Br. 19 (emphasis omitted). The entire premise of Appellant’s invention, as well as what is described relative to the prior art and the drawbacks of the prior art2, is a recognition that different regions may (and do) employ different map data formats, and thus require different types or forms of application software “to accommodate the different map data formats,” in order to “suitably handle the map data of a region.” Spec., p. 7, ll. 20–22; see also, Spec., p. 1, ll. 14–19. In other words, persons of ordinary skill in the art would understand that the map data format associated with a region must be determined before it can be determined what application software is to be retrieved (Figure 2, step S4), or what is the suitable application software for the current region (Figure 4, step P4). being associated with a map data format from among a plurality of map data formats, each of a plurality of preset regions being associated with a map data format from among the plurality of map data formats.” Appeal Br., Claims Appendix, claim 25. 2 The prior art approach, according to Appellant, was to provide a different product for each region in which a map data format was different from another region, whereas Appellant’s invention appears to be directed to storing a plurality of map data handling software applications in a single product or device, such that the product or device would be operable in a plurality of regions. Spec., p. 2, ll. 4–12, ll. 24–25. Appeal 2012-008172 Application 11/520,596 6 That Appellant presents an “edited version” of Figure 3 including a column identifying “Map Data Format,” is not, as the Examiner asserts, “proof that appellant absolutely has no possession of the claimed subject matter.” Answer 11. Instead, Appellant merely makes an attempt to illustrate explicitly that which is implicit in the disclosure, as discussed above. The Examiner’s issues with respect to a perceived lack of written descriptive support directed to limitations (d) and (e) above appear to have as their genesis the alleged lack of disclosure of limitations (a)–(c). In any event, these limitations are seen as finding adequate disclosure in steps S5– S8 in Figure 2, as well as in steps P4–P8 in Figure 4. In sum, Appellant’s application as filed is seen as evidencing that Appellant was in possession of the invention set forth in claim 25 on appeal. As the Examiner makes no separate findings regarding independent claims 7, 13, and 14, as well as all claims depending from the independent claims, the same can be said as to all claims currently on appeal. Accordingly, the rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement, is not sustained. Claims 2, 4–8, and 10–25--§ 112, first paragraph--Enablement Appellant argues that the rejection of the claims as not being enabled by the Specification is little more than an extension of the rejection of the claims as lacking written descriptive support, in that the Examiner has failed to address, let alone establish, that the invention set forth in the claims would require undue experimentation on behalf of persons of ordinary skill in the art to be able to make and use the invention. Appeal Br. 25–27. Appeal 2012-008172 Application 11/520,596 7 The Examiner’s position relative to an alleged lack of enablement does indeed, in large part, identify limitations and assert that such limitations are not mentioned or supported in the Specification. Answer 6–7. In particular, the Examiner takes the position that there is no disclosure of retrieving and executing the [application] software. The application only mentions determining the application software to be retrieved based on a current position. It fails to mention or provide support for executing the retrieved map data handling software application. The map data handling software is non-existent. Answer 7. Elsewhere, the Examiner restates this position, asserting that, although the Specification describes determining what application software is to be retrieved according to a current position of a vehicle, it “fails to mention executing the retrieved software application.” Answer 13. The Examiner also reiterates that the limitations referencing “map data handling software” are “non[]existent and are not supported in the specification.” Id. Although the reasons advanced by the Examiner can be said to address the Wands3 factor directed to “the amount of direction provided by the inventor,” the analysis fails to support a conclusion that undue experimentation would be required in order to make and use the claimed invention. The Examiner has not established that undue experimentation on the part of a person of ordinary skill in the art would be required in order to be able to produce a system in which a software application that has been retrieved is executed as well. Further, the Examiner’s position relative to the alleged lack of disclosure of “map data handling software” is not supported 3 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal 2012-008172 Application 11/520,596 8 by a preponderance of the evidence, given the disclosure in the Specification that the control process illustrated in Figure 4 “switches the application software that suitably handles the map data of a region where the vehicle is currently traveling.” Spec., p. 7, ll. 19–21 (emphasis added). Accordingly, the rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, is not sustained. DECISION The rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement is reversed. REVERSED mls Copy with citationCopy as parenthetical citation