Ex Parte RE41,983 et al

Patent Trial and Appeal Board

Feb 26, 2014

95001801 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,801 11/02/2011 RE41,983 TIER-REX1 4229
20995 7590 02/26/2014
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
AHMED, SALMAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE, INC.
Requester and Appellant

v.

TIERRAVISION, INC.
Patent Owner and Respondent
____________

Appeal 2013-010662
Reexamination Control 95/001,801
Technology Center 3900
Patent RE 41,983
____________

Before RICHARD M. LEBOVITZ, JOHN A. JEFFERY, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Tierravision, Inc. appeals under 35 U.S.C. § 134(b) and
35 U.S.C. § 315(a) the Examiner’s final decision to reject claims 69-77.
Requester Google, Inc. appeals the Examiner’s decision not to reject claims
60-77 and 86-111 under its proposed rejections.
An oral hearing was held on January 8, 2014 with both parties in
attendance. The record will include a written transcript of the oral hearing.
We affirm-in-part.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent No.
RE 41,983 E (the ’983 patent), assigned Reexamination Control
No. 95/001,801, was filed on November 2, 2011, by Third-Party Requester
Google, Inc.
The ’983 patent, entitled “Method of Organizing and Compressing
Spatial Data,” issued on December 7, 2010, to Alfred M. Wallner, based on
Application No. 12/198,047, filed August 25, 2008, which is a reissue of
U.S. Patent No. 6,703,947, issued March 9, 2004, based on Application
No. 09/668,695, filed September 22, 2000, which is divisional of
Application No. 11/006,471, filed December 6, 2004, now U.S. Patent No.
RE 40,466, issued August 26, 2008.
The ’983 patent is assigned to Tierravision, Inc., the real party in
interest.

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Related Litigation
The ’983 patent has been asserted in the following patent infringement
suits, Tierravision, Inc. v. Research in Motion, Ltd., No. 3:11-CV-00639
(S.D. Calif. Mar. 30, 2011), Tierravision, Inc. v. Google Inc., No. 3:11-CV-
02170 (S.D. Calif. Sept. 16, 2011), and Tierravision, Inc. v. Microsoft Corp.,
No. 3:11-CV-02171 (S.D. Calif. Sept. 16, 2011), all of which have been
stayed. (Requester App. Br. 5.)

The Claims
The original patent claims were amended during the reexamination
proceedings. Independent claims 60 and 69 are exemplary, with disputed
limitations in italics and underlining and bracketing to illustrate claim
amendments:
60. A map display system operating in conjunction with a
portable wireless device, comprising:
an input interface layer handling communication between a user
and the device and being configured to capture user input position
information;
a geocoding engine, residing on a server, configured to:
receive user input position information from the portable
wireless device;
compute a geodetic coordinate from the user input
position information; and
transmit the geodetic coordinate to the portable wireless
device; and
a map display engine configured to use the geodetic
[coordinates] coordinate to generate a plurality of data structure
names and request the data structures from a map segment server.
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69. A method of operating a map display system in
conjunction with a portable wireless device, comprising:
receiving user input position information from the portable
wireless device;
computing, at a geocoding engine at a server, a geodetic
coordinate from the user input position information;
generating, at the portable wireless device, a plurality of names
based on the geodetic [coordinates] coordinate; and
transmitting, to the portable wireless device, a plurality of data
structures comprising map data associated with the geodetic
coordinate and associated with the respective data structure names
from a map segment server.

The Non-Adopted Rejections
Requester appeals the Examiner’s decision not to adopt the 19
proposed rejections listed in Requester’s Appeal Brief (Requester App.
Br. 6-9). Rather than reproducing the grounds here, we refer to the relevant
portions of Requester’s Appeal Brief.

The Rejections
Patent Owner appeals the Examiner’s decision to reject the pending
claims on three grounds listed in Patent Owner’s Appeal Brief (PO App.
Br. 6-7), which are as follows:
1. Claims 69-75 and 77 under 35 U.S.C. § 102(b) as anticipated by
Phelan (WO 97/07467 A1; Feb. 27, 1997).
2. Claims 69-71 and 74-77 under 35 U.S.C. § 103(a) as obvious over
Gale (US 6,487,495 B1; Nov. 26, 2002) and Machii.
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3. Claims 69-75 and 77 under 35 U.S.C. § 103(a) as obvious over
MapObjects (ENVTL. SYS. RESEARCH INST., MAPOBJECTS™ INTERNET MAP
SERVER (1998)), ArcSDE (ENVTL. SYS. RESEARCH INST., UNDERSTANDING
ARCSDE™: ARCSDE™ 8 (1999)), and ArcPad (ENVTL. SYS. RESEARCH
INST., USING ARCPAD™: ARCPAD™ 5 (2000)).

Requester’s Appeal
ANALYSIS
§ 314 Rejection
During reexamination prosecution, Patent Owner amended claims 60
and 69. The Examiner found that Patent Owner’s amendments of
independent claims 60 and 69 from plural “geodetic coordinates” to a
singular “geodetic coordinate” does not enlarge the scope of the claims of
the patent. (RAN 8-10.) In particular, the Examiner found that “[c]laims 60
and 69 twice recites to the ‘geodetic coordinate’ in addition to the instance
that was amended and there is no other term in the claim that can be
construed as referring to another geodetic coordinate” and “amending the
term ‘coordinates’ to ‘coordinate’ amounts to a typographical correction.”
(RAN 9.) Patent Owner argues that “the word ‘coordinates’ is not broader
in scope than ‘coordinate’” and that “[t]hose skilled in the art use the terms
‘coordinate’ and ‘coordinates’ interchangeably when referring to a pair of
latitude and longitude numbers” (PO Resp. Br. 8). We do not agree.
The ’983 patent explains that “[t]he example shown in FIG. 3 applies
the above formulas to convert the geodetic coordinates 37.308805 and
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-122.843710 in block 30.” (Col. 5, ll. 17-20 (emphasis added).) Thus, in
one example disclosed in the ’983 patent, a “coordinate” refers to a single
longitude or a single latitude. The ’983 patent also explains that “[t]he
North Pole of the earth is at coordinate (0,0) and the South Pole is at
(360,360)” (col. 5, ll. 49-51) and that “[a]s is well known in the art, a
geocoding engine computes a geodetic coordinate (longitude/latitude)”
(col. 6, ll. 23-24). Thus, in another example disclosed in the ’983 patent, a
“coordinate” refers to a longitude and latitude pair. Because the ’983 patent
is ambiguous as to whether the term “coordinate” means (i) a singular
longitude or a singular latitude (col. 5, ll. 17-20) or (ii) a latitude and
longitude pair (col. 5, ll. 49-51; col. 6, ll. 23-24), the preponderance of the
evidence does not support Patent Owner’s argument that “[t]hose skilled in
the art use the terms ‘coordinate’ and ‘coordinates’ interchangeably when
referring to a pair of latitude and longitude numbers” (PO Resp. Br. 8).
Under the broadest reasonable interpretation in light of the ’983 patent, one
reasonable construction of the term “coordinate” is either a singular
longitude or a singular latitude.
During a reexamination proceeding, “[a] new claim enlarges if it
includes within its scope any subject matter that would not have infringed
the original patent.” Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691,
692 (Fed. Cir. 1997) (citing Quantum Corp. v. Rodime, PLC, 65 F.3d 1577,
1580 (Fed.Cir.1995)). Prior to amendment, claim 60 of the ’983 patent
recites “a map display engine configured to use the geodetic coordinates”
and, thus, requires multiple coordinates. Claim 60, as amended, recites
“coordinate” and, thus, requires a singular coordinate. Similarly, claim 69
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of the ’983 patent recites “generating a plurality of names based on the
geodetic coordinates” and, thus, requires multiple coordinates. Claim 69, as
amended, however, recites “coordinate” and, thus, requires a singular
coordinate.
Thus, amending claims 60 and 69 from the plural “geodetic
coordinates” to a singular “geodetic coordinate” enlarges the scope of such
claims because instead of requiring multiple geodetic coordinates, the
amended claims 60 and 69 require only a single geodetic coordinate to
accomplish the claimed method. The unamended claim required at least two
coordinates, but now the amended claim requires one. Accordingly, we are
persuaded by Requester’s argument that a “hypothetical product [that
employs only one coordinate] would not have infringed claim 60 prior to
amendment but could infringe claim 60 after the amendment.” (Requester
App. Br. 13.)
Accordingly, we reverse the Examiner’s decision not to reject
claims 60-77 and 86-111 under 35 U.S.C. § 314(a) as enlarging the scope of
the claims of the patent being reexamined.

Claim Construction
The Examiner interpreted claim 60 as requiring the “the map display
engine to reside in the portable wireless device.” (RAN 133.) In particular,
the Examiner found that “[t]o determine that the map display engine can be
located anywhere other than the portable wireless device would require a
reading of the claim that disconnects the last element (map display engine)
from the rest of the claim” (id.), and “[p]lacing the map display engine at the
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server would result in a system that still suffers from slow performance since
the portable wireless device would no longer be responsible for requesting
and downloading the segments of the map” (RAN 135). Patent Owner
contends that “[n]umerous disclosures of the claimed map display engine
and its functionality of computing names of files/data structures from a
geodetic coordinate appear in the Specification,” and “all such disclosures
refer directly or indirectly to a map display engine and/or its functionality
residing on a remote, portable wireless device, client, and/or standalone
device, but never to a map display engine (or such functionality) residing on
a server.” (PO Resp. Br. 19.) We do not agree with the Examiner’s
interpretation of claim 60 with respect to the location of “the map display
engine.”
Requester argues that “[t]he specification also does not support the
Examiner’s construction, and in fact, demonstrates that a map display engine
need not reside on a portable wireless device” (Requester App. Br. 39), and
that “[t]his statement [‘[i]n a typical embodiment, the map display program
is installed on a wireless device’ from the Specification’ (col. 6, ll. 13-16)]
suggests that there are other, non-typical embodiments where the map
display engine is not on the portable wireless device” (Requester App.
Br. 40).
The ’983 patent discloses that:
In accordance with a preferred embodiment of the present
invention, map display client software computes data file names
based on user interactions or device-supplied location
information (GPS), fetches the computed file names from a
remote server, combines data from several data files to produce
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an in-memory map image and draws the image on the display
screen.
(Col. 2, ll. 57-63 (emphasis added).) However, this text from the ’983 patent
does not expressly identify the location of the map display client software
that draws an image on a display screen (i.e., the claimed “the map display
engine”). Furthermore, in reference to Figure 4, which illustrates a map
display engine 46 located in a map display system 40, rather than a
server 47, the ’983 patent discloses that “[i]n a typical embodiment, the map
display program is installed on a wireless device such as a smartphone or
personal digital assistant.” (Col. 6, ll. 13-16.) However, because the map
display program installed on a wireless device is disclosed as a “preferred
embodiment” or “typical embodiment,” the importation of this narrow
embodiment into the broader independent claim 69 is improper. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”).
Thus, we do not agree with the Examiner’s interpretation that
claim 60 requires the claimed “map display engine” to be located on the
claimed “server.”

§ 103 Rejection – Machii and Zavoli
The Examiner found that Machii does not teach the claim 60
limitation “a map display engine configured to use the geodetic coordinates
coordinate to generate a plurality of data structure names and request the
data structures from a map segment server.” (RAN 136.) In particular, the
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Examiner found that “Machii’s interpreted map display engine (i.e. search
engine 403) is not located in the user terminal; rather it is in the server.”
(RAN 138.) Patent Owner further argues that “[e]very example describing
other map display engine functionality (e.g., caching, options to enable
offline capability when not connected to a server) is consistent with having
the map display engine functionality to reside on a client device, such as a
portable wireless device, but not on a server.” (PO Resp. Br. 21.) We do
not agree with the Examiner’s determination.
Machii relates to “an information terminal for accessing a network
and a server system for providing information” (col. 1, ll. 4-6), in particular,
an information terminal that accesses the Internet and a server for providing
location information (col. 1, ll. 7-12). Figure 4 of Machii illustrates a
server 1302 that includes a search engine 403 (i.e., the claimed “a map
display engine”). (Col. 9, ll. 26-32.) As illustrated in Figure 18 of Machii, a
destination name (e.g., Oomika) is entered to a place-name input field on a
destination setting screen 700, such that the search engine 403 searches the
place-name word dictionary 413 for names matching the search keyword.
(Col. 19, l. 64 to col. 20, l. 2.) “The search engine 403 then searches the
map data base 405 for map data matching the latitude and the longitude of
the selected place name, and displays the map as a map 1802 of the
destination.” (Col. 20, ll. 8-11.) Furthermore, Machii explains that as the
vehicle 1305 approaches a map display location, “the terminal 1306
automatically makes a telephone call to the server 1302, requesting the
server 1302 to transmit the map.” (Col. 7, ll. 35-40.) As discussed
previously, the proper construction of claim 60 does not require the claimed
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“map display engine” to be located on the claimed “server.” Because the
search engine 403 of Machii searches the map data base 405 based on
latitude and the longitude, such that the maps are continuously updated,
Machii teaches the claim 60 limitation “a map display engine configured to
use the geodetic coordinates coordinate to generate a plurality of data
structure names and request the data structures from a map segment server.”
Accordingly, we are persuaded by Requester’s argument that “[t]he
specification also does not support the Examiner’s construction, and in fact,
demonstrates that a map display engine need not reside on a portable
wireless device.” (Requester App. Br. 39.)
Accordingly, we reverse the Examiner’s decision not to reject
claims 60-68 and 98-100 under 35 U.S.C. § 103(a) over Machii and Zavoli.
Independent claim 69 recites limitations similar to those discussed
with respect to independent claim 60, and claims 70-77 depend from
claim 69. We reject claims 69-77 under 35 U.S.C. § 103(a) over Machii and
Zavoli for the same reasons provided by the Requester. (Requester App.
Br. 42.)
Claims 86-92 and 94-97 depend from claim 60 and claims 101-106
and 108-111 depend from claim 69. We reject claims 86-92, 94-97, 101-
106, and 108-111 under 35 U.S.C. § 103(a) over Machii, Zavoli, and
Nakano for the same reasons provided by the Requester. (Requester App.
Br. 43.)
Claim 93 depends from claim 60 and dependent claim 107 depends
from claim 69. We reject claims 93 and 107 under 35 U.S.C. § 103(a) over
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Machii, Zavoli, Nakano, and Davies for the same reasons provided by the
Requester. (Requester App. Br. 43.)
We do not reach the cumulative rejections of claims 60-77 and 86-111
under 35 U.S.C. §§ 102(e) and 103(a) because it unnecessary to reach the
propriety of the Examiner’s decision not to reject these claims on a different
basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching
additional obviousness rejections).

Patent Owner’s Appeal
Claim Construction
The Examiner interpreted “the word ‘respective’ in front of the ‘data
structure names’” in claim 69 as not “much more than the ‘associated with’
because the claim is not clear as to what the ‘data structure names’ is
‘respective’ to.” (RAN 18.) The Examiner further found that “[u]nder the
broadest reasonable construction, all the term ‘respective’ could designate is
that the data structure names individually relate (i.e. ‘associated with’) to the
map data.” (Id.) The Requester concurs and contends that “[f]ollowing the
noun ‘map data,’ claim 69 recites two phrases written in parallel form and
beginning with the word ‘associated with’: ‘[1] associated with the geodetic
coordinate and [2] associated with the respective data structure names’” and
“[a] more rational reading of this language is that the ‘geodetic coordinate’
and ‘respective data structure names’ are ‘associated with’ the ‘map data,’
and not the ‘plurality of data structures.’” (Requester Resp. Br. 16.) We
agree with the Examiner’s claim interpretation.
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Patent Owner argues “that by applying a meaning of ‘respective’
where respective ‘does not say much more than the “associated with,”’
disregards the term ‘respective,’ and improperly renders the term
‘respective’ superfluous” (PO App. Br. 14), and “that the plain meaning of
the claim terms ‘data structure names’ and ‘data structure’ makes clear that a
‘data structure name’ is a name of a ‘data structure’” (PO App. Br. 15).
However, independent claim 69 recites “a plurality of data structures
comprising map data associated with the geodetic coordinate and associated
with the respective data structure names from a map segment server”
(emphases added). We note that these terms are not defined in the ’983
patent. From claim 69, the claim language “associated with the respective
data structure names” immediately follows the phrase “map data associated
with the geodetic coordinate,” rather than immediately following the phrase
“data structures.” One interpretation is that the “respective data structure
names from a map segment server” is associated with the “plurality of data
structures.” Alternatively, the “respective data structure names from a map
segment server” is associated with the “map data.” The latter interpretation
is more reasonable because both involving mapping data, and the data
structures thus, further define the map data.
Thus, we agree with the Examiner’s interpretation that the language of
claim 69, “associated with the respective data structure names,” modifies the
claimed “map data.”

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§ 102 Rejection – Phelan
The Examiner found that Phelan describes the claim 69 limitation
“transmitting, to the portable wireless device, a plurality of data structures
comprising map data associated with the geodetic coordinate and associated
with the respective data structure names from a map segment server.” In
particular, the Examiner found that displaying a map from the map server on
the client computer visual display unit of Phelan corresponds to the
limitation “transmitting, to the portable wireless device, a plurality of data
structures comprising map data associated with the geodetic coordinate and
associated with the respective data structure names from a map segment
server.” (RAN 12.) The Examiner further found that the icons of Phelan
returned with the map correspond to the claimed “data structures.”
(RAN 15, 18.) Requester concurs and argues that “Phelan’s icons, some of
which are mapped to a screen position corresponding to specific latitude and
longitude locations, constitute the claimed ‘data structures comprising map
data’” (Requester Resp. Br. 17-18); “PO does not address Phelan’s map
image, which is identified in the Request as the claimed data structure;” and
“the specific one-to-one relationship PO argues should exist is not required
by the claims; given a proper construction, Phelan’s data structures are
associated with its names” (Requester Resp. Br. 18). We agree with the
Examiner’s determination.
Phelan relates to a client device that transmits names or geographical
coordinates to its surrounding cellular base stations to map and overlay
server computers, such that a map of the current location along with
identified facilities are transmitted to the client device. (P. 5, ll. 5-13; see
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also fig. 3.) Figure 3 of Phelan illustrates a map request to a map server
computer 11 from a client computer 10 that specifies geographical
coordinates. (P. 8, ll. 3-6.) “The map server contains map data, including
coordinate data representing the spatial coordinates of at least one point on
the area represented by the map.” (P. 5, ll. 20-23.) Phelan explains that
“[a]lso supplied by the map server 11 are the icons 6, 7, 8, 9, which are
displayed within the ‘info’ frame 5” such that “[i]con 6 indicates banks,
icon 7 restaurants, icon 8 hotels, etc.” (P. 8, ll. 18-21.) Phelan also explains
that the “Map request” illustrated in Figure 3 takes the form:
http://www.multimap.com?lon="0.1666"&lat="51.545&scale=
"25000"&xp="500"&yp="300".
(P. 10, ll. 10-14.) Furthermore, Phelan explains that “[t]his map request
contains parameters specifying the longitude, latitude and scale of the map,
and also its dimensions in horizontal and vertical pixels (xp and yp).”
(P. 10, ll. 16-18.) Thus, because the map data of Phelan includes icons to
indicate banks, restaurants or hotels, and such map data is requested from
the map server via geographical coordinates (i.e., longitude and latitude),
Phelan teaches the claim 69 limitation “a plurality of data structures
comprising map data associated with the geodetic coordinate and associated
with the respective data structure names from a map segment server.”
First, Patent Owner argues that “[t]he icons returned by the map
server in Phelan are not part of the map image displayed on the client
device” because “Phelan discloses that the icons are displayed within the
‘info’ frame 5” and “Phelan refers to the HTML document containing
references to one or more overlay icons.” (PO App. Br. 19.) However, the
icons in the “info” frame of Phelan are supplied with the map data according
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to longitude and latitude (i.e., coordinates) and are, thus, “associated with
the geodetic coordinate.”
Second, Patent Owner argues that “characterizing icons as the claimed
‘data structures’ is inconsistent with the Specification” because “the
Specification [col. 6, ll. 47-67] provides examples of transmitted data
structures where pre-partitioned map segments are fetched from a map
server, combined, and used to draw a map to a screen.” (PO App. Br. 19;
see also PO App. Br. 16.) However, because the “map picture” drawn on a
map display screen, as disclosed in the Specification, is a “preferred
embodiment,” the importation of this narrow embodiment into the broader
independent claim 69 is improper. See SuperGuide, 358 F.3d at 875.
Third, Patent Owner argues that “the ordinary meaning of ‘data
structure names’ and ‘data structures’ requires that there be some
relationship between the name and the thing being named.” (PO App.
Br. 20.) Similarly, Patent Owner argues that “there is no data structure in
Phelan that is named by the ‘lat’ parameter, and thus it is not a data structure
name” and “there is no data structure that is named by the ‘lon’ parameter,
and it is not a data structure name in Phelan.” (PO App. Br. 20.)
However, because the “Map request” of Phelan uses “lat” and “lon”
information (e.g., http://www.multimap.com?lon="0.1666"&lat="51.545. . .)
to request map data, the longitude and latitude are “associated with” such
icons (i.e., “[i]con 6 indicates banks, icon 7 restaurants, icon 8 hotels, etc.”
(p. 8, ll. 18-21)).
Accordingly, we affirm the Examiner’s decision to reject claims 69-75
and 77 under 35 U.S.C. § 102(b) as anticipated by Phelan.
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§ 103 Rejection – Gale and Machii
The Examiner found that Machii teaches the claim 69 limitation
“generating, at the portable wireless device, a plurality of names based on
the geodetic coordinate.” (RAN 23-24.) In particular, the Examiner found
that measuring the latitude and the longitude of the vehicle and the literal
information on the destination, collectively, correspond to the limitation
“generating, at the portable wireless device, a plurality of names based on
the geodetic coordinates coordinate.” (RAN 23.) Requester concurs and
argues that “Machii . . . demonstrate[s] that converting literal place
information to geodetic coordinates was well known.” (Requester Resp.
Br. 23.) We agree with the Examiner’s determination.
Figure 1 of Machii illustrates a terminal 1306, which includes a GPS
unit 102, a position determination unit 103, a display control unit 106, and a
communication unit 109. (Col. 5, ll. 28-33.) The input unit 104 is used for
inputting destination information (col. 5, ll. 57-58) and the “[t]he position
determination unit 103 identifies what road and what place the vehicle 1305
located . . . on the basis of the latitude and the longitude of the present
position of the vehicle 1305 computed by the GPS 102” (col. 5, ll. 41-45).
Furthermore, Machii explains that “the position of the vehicle 1305 and the
literal information on the destination are transmitted to the server 1302 by
using the communication unit 109” (col. 6, ll. 27-29) such that “the server
1302 computes a location to display as a map on the terminal 1306” (col. 6,
ll. 62-64). Thus, because Machii explains that the position of the vehicle
and its destination are used to locate a corresponding map mesh, Machii
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teaches the limitation “generating, at the portable wireless device, a plurality
of names based on the geodetic coordinate.”
First, Patent Owner argues that “the ‘literal information’ is not
a name generated based on a geodetic coordinate” and “[t]he literal
information in Machii is information entered by the user operating the
terminal.” (PO App. Br. 22.) However, the Examiner found that the
position of the vehicle and the literal information, collectively, rather than
only the literal information, corresponds to the claim 69 limitation “a
plurality of names based on the geodetic coordinate.” (RAN 39, 40.)
Second, Patent Owner argues that that “the ordinary meaning of ‘data
structure’ and ‘data structure names’ dictates that the generated data
structure names are names associated with the respective data structures”
and, accordingly, “the mesh formatted map segments are not named by a
particular position of the vehicle and particular literal information.” (PO
App. Br. 23.) However, because each map mesh of Machii is referenced
using “the position of the vehicle 1305 and the literal information on the
destination” (col. 6, ll. 27-29), such map meshes are “named” according to
the position of the vehicle and its destination.
Last, Patent Owner argues that “in Machii, the terminal does not
generate such requests” but instead, “in Machii, the command 501, member
ID 502, vehicle position 503, destination 504, and the terminal
information 505 are placed into a single packet and sent to the server.” (PO
App. Br. 24.) However, because the vehicle position 503 and the
destination 504 of Machii are transmitted by the terminal and compute the
appropriate map mesh, Machii teaches the claim 69 limitation “generating,
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at the portable wireless device, a plurality of names based on the geodetic
coordinate.”
The Examiner further found that Machii teaches the claim 69
limitation “transmitting, to the portable wireless device, a plurality of data
structures comprising map data associated with the geodetic coordinate and
associated with the respective data structure names from a map segment
server.” (RAN 24-26.) In particular, the Examiner found that the automatic
transmission of maps by the server of Machii corresponds to the limitation
“transmitting, to the portable wireless device, a plurality of data structures
comprising map data associated with the geodetic coordinate and associated
with the respective data structure names from a map segment server.”
(RAN 24-25.) The Examiner further found that the post office, police office
and school illustrated in Figures 15A-C of Machii corresponds to the “map
data.” (RAN 25-26.) The Requester concurs and contends that “a
construction requiring data structures to be ‘pre-partitioned map segments’ is
an unsupported attempt to contravene the proper examination procedure”
(Requester Resp. Br. 24) and “[e]ach time a request [by Machii’s terminal]
(i.e. the claimed data structure name) is made, corresponding map
information (i.e. the claimed data structure) is returned” (Requester Resp.
Br. 26). We agree with the Examiner’s determination.
Figure 14 of Machii illustrates examples of map meshes 1404 to 1410
transmitted from the server 1302 to the terminal 1306 when traveling from
Hitachi-city to Tokyo, along a route 1403 with a starting point 1401 and an
end point 1402. (Col. 17, l. 56 to col. 18, l. 3.) Machii explains that “as the
vehicle 1305 is approaching the map display location . . . the terminal 1306
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automatically makes a telephone call to the server 1302, requesting the
server 1302 to transmit the map.” (Col. 7, ll. 36-40.) Thus, because the
server 1302 of Machii automatically updates the terminal 1306 with map
meshes, as the vehicle moves, Machii teaches the claim 69 limitation
“transmitting, to the portable wireless device, a plurality of data structures.”
Figures 15C of Machii includes map data (i.e. the claimed “map data”)
transmitted to the terminal 1306 that includes “the post office 1501, the
police office 1502, the school 1504 and the route 1505.” (Col. 18, ll. 38-41.)
Machii further explains that “[w]hile the vehicle 1305 is running, the
GPS 102 keeps measuring the position of the vehicle 1305 . . . and
processing [to determine whether or not the position is the map display
location] is carried out in accordance with the newly measured position.”
(Col. 7, ll. 19-24.) Thus, Machii teaches the claim 69 limitation “associated
with the geodetic coordinate and associated with the respective data
structure names from a map segment server.”
Patent Owner argues the “the discussion related to FIG. 14 and mesh
format does not teach or suggest transmission of a plurality of data structures
comprising map data associated with the same geodetic coordinate” (PO
App. Br. 24) because “Machii discusses the server calculating a route and
selecting roads and information from map meshes based on the route for
transmission to the terminal” (PO App. Br. 24-25). However, Machii
explains that “[w]hile the vehicle 1305 is running, the GPS 102 keeps
measuring the position of the vehicle 1305 . . . and processing is carried out
in accordance with the newly measured position” (col. 7, ll. 19-24), and
accordingly, the GPS of Machii is used to generated the map meshes.
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Patent Owner also argues the “[c]haracterizing roads and information
in Machii as the claimed ‘data structures’ is inconsistent with the
Specification” because “the Specification provides examples of transmitted
data structures where pre-partitioned map segments are fetched from a map
server, combined, and used to draw a map to a screen.” (PO App. Br. 25.)
However, as discussed previously, because the “map picture” drawn on a
map display screen as disclosed in the Specification is a “preferred
embodiment,” the importation of this narrow embodiment into the broader
independent claim 69 is improper. See SuperGuide, 358 F.3d at 875.
Accordingly, we affirm the Examiner’s decision to reject claims 69-71
and 74-77 under 35 U.S.C. § 103(a) as obvious over Gale and Machii.
We do not reach the cumulative rejection of claims 69-71 and 74-77
under 35 U.S.C. § 103(a). Affirmance of the anticipation and obviousness
based rejections discussed previously renders it unnecessary to reach the
remaining obviousness rejections, as all of pending claims have been
addressed and found unpatentable. Cf. Gleave, 560 F.3d at 1338.

DECISION
We reverse the Examiner’s decision not to adopt the rejection of
claims 60-77 and 86-111 under 35 U.S.C. § 314(a) as enlarging the scope of
the claims of the patent being reexamined.
We reverse the Examiner’s decision not to adopt the rejection of
claims 60-68 and 98-100 under 35 U.S.C. § 103(a) over Machii and Zavoli.
We reject claims 69-77 under 35 U.S.C. § 103(a) over Machii and
Zavoli.
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We reject claims 86-92, 94-97, 101-106, and 108-111 under 35 U.S.C.
§ 103(a) over Machii, Zavoli, and Nakano.
We reject claims 93 and 107 under 35 U.S.C. § 103(a) over Machii,
Zavoli, Nakano, and Davies.
We affirm the Examiner’s decision to adopt the rejection of
claims 69-75 and 77 under 35 U.S.C. § 102(b) as anticipated by Phelan.
We affirm the Examiner’s decision to adopt the rejection of
claims 69-71 and 74-77 under 35 U.S.C. § 103(a) over Gale and Machii.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal of the
Examiner’s decision not to adopt the rejection of claims 60-77 and 86-111
under 35 U.S.C. § 314(a) and under 35 U.S.C. § 103(a) over various
combinations of Machii, Zavoli, Nakano, and Davies constitutes a new
ground of rejection and is hereby designated as such. Section 41.77(b)
provides that “a new ground of rejection . . . shall not be considered final for
judicial review.” That section also provides that Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
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entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002, may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

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For PATENT OWNER:

KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614

For THIRD PARTY REQUESTER:

STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

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