Ex Parte Saarinen et al

Board of Patent Appeals and Interferences

Jun 11, 2012

10952195 (B.P.A.I. Jun. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOUNI SAARINEN, MATTI SEPPA, PASI KAIPAINEN and
KIMMO KINNUNEN
____________________

Appeal 2010-007627
Application 10/952,195
Technology Center 3600
____________________

Before JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jouni Saarinen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-11 and 25-31. Claims
12-24 stand withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed to an electronic device or system in
which navigation applications are able to quickly and easily interact with
personal information management applications. Spec., para. [0005]. Claim
1, reproduced below, is illustrative of the subject matter on appeal.
1. An electronic device, comprising:
a processor; and
a memory unit operatively connected to the
processor and including:
a navigation program for directing a
user of the device to a remote location,
a personal information management
program including stored information regarding a
location of a particular contact, and
an input association mechanism
operatively connected to the navigation program
and the personal information management
program,
wherein actuation of the input
association mechanism automatically associates at
least some of the stored information in the personal
information management program with the
navigation program.
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THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-5, 7, 8, 10, 11, 25 and 27-31 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Stephens (US 2003/0023371 A1,
published January 30, 2003) in view of Ausems (US 2001/0044321 A1,
published November 22, 2001).
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stephens in view of Ausems and further in view of Pocket
PC magazine’s New Product Report (http://www.pocketpcmag.com/newsl_
NPR/NPR_ 01-26-06.htm, accessed January 23, 2008).
3. Claims 9 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stephens in view of Ausems and further in view of
Sandhu (US 2002/0145561 A1, published October 10, 2002).

ISSUES
Did the Examiner err in finding that Stephens discloses an “input
association mechanism” as recited in independent claims 1 and 25?
Did the Examiner err in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
system of Stephens to implement the personal information management
program and the navigation program on a single device?
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ANALYSIS
1. Claims 1-5, 7, 8, 10, 11, 25 and 27-31--Obviousness--
Stephens/Ausems
Appellants do not present any separate arguments for the patentability
of dependent claims 2-5, 7, 8, 10, 11, and 27-31 apart from independent
claims 1 and 25. App. Br. 12-13. Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), claims 2-5, 7, 8, 10, 11, and 27-31 stand or fall with
representative claims 1 and 25.
The Examiner found that Stephens discloses an electronic device (the
navigation system 10) comprising a processor (processor 20 or 30) and a
memory unit (memory 18 or 28) that is operatively connected to the
processor and includes a navigation program and a personal information
management program. Ans. 4. The Examiner further found that Stephens
discloses an input association mechanism wherein actuation of the input
association mechanism automatically associates at least some of the stored
information in the personal information management program with the
navigation program. Id.
Appellants contend that Stephens does not teach or suggest an input
association mechanism as recited in independent claims 1 and 25. App. Br.
8. The term “input association mechanism” is not clearly defined in the
Specification, but Appellants point to page 4, lines 24-31 of the
Specification as describing the operation of the input association
mechanism. App. Br. 5. This passage describes implementing a “start
navigation” option through an icon 185, a drop-down menu 190, or other
systems. We thus conclude that an “input association mechanism” can be an
icon, a drop-down menu or any similar device.
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As pointed out by the Examiner, paragraph [0017] of Stephens
discloses using input interface 26 to activate a personal information
management program (i.e., Microsoft Outlook) and to select the desired
stored address information. Paragraph [0019] discloses using an input
association mechanism in the form of a menu on the display 24 to select a
transmit-address function and cause the selected address information to be
downloaded to the navigator 14. In response to the address information
being downloaded, the navigator 14 calculates a route from the starting
address to the destination address (see paragraph [0026]). This calculation is
done automatically because the user does not need to separately actuate the
navigator 14 to perform the calculation. The address information selected
from the personal information management program is thus automatically
associated with the navigator’s navigation program.
We thus agree with the Examiner that Stephens discloses an input
association mechanism that is operatively connected to the personal
information management program and the navigation program and wherein
actuation of the input association automatically associates stored information
from the personal information management program with the navigation
program. Although not directly connected to the navigation program, the
input association mechanism is “operatively connected” to the navigation
program because using the input association mechanism to select the
transmit-address function results in the navigation program being operated.
The Examiner determined that Stephens fails to disclose the
navigation program and the personal information management program
being on the same memory or same device. Ans. 5. The Examiner found
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that Ausems discloses a PDA that has GPS integrated in the same device that
contains an address book and concluded:
it would have been obvious to one skilled in the art
(e.g. an electrical engineer) at the time the invention
was made, to integrate the navigation functionality
and address functionality of the devices of Stephens,
for the advantage of reducing the time and steps it
takes to find a route to a contact in an address book.
Id.
Appellants argue that Ausems fails to cure the deficiencies of
Stephens because Ausems does not disclose the use of a navigation program
in any context. App. Br. 8. However, whether the GPS functionality of
Ausems includes a navigation function1 has no bearing on the Examiner’s
position. The Examiner does not rely on Ausems for a teaching of a
navigation function. As noted above, Stephens includes a navigation
program and a personal information management program in the same
system, albeit on different devices within the system. Instead, the Examiner
relies on Ausems as disclosing combining different functionalities, including
a GPS-based function, on a single device. In view of this teaching, we agree
with the Examiner that it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify Stephens to combine
the navigation program and the personal information management program
on a single device as taught by Ausems. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007) (combining elements found in the prior art

1 While the Examiner appears to have conceded that Ausems does not
disclose GPS with navigation capability (Ans. 6), we note that paragraph
[0044] of Ausems states “[t]he use of such GPS technology may allow for
the inclusion of mapping and other features associated with conventional
GPS devices.”
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“according to known methods is likely to be obvious when it does no more
than yield predictable results”).
Appellants further argue that Ausems does not teach or suggest an
input association mechanism or an automatic association of stored
information in a personal information management program with a
navigation program. App. Br. 9. We are not persuaded by this argument.
As noted above, we agree with the Examiner that these claimed features are
disclosed by Stephens.
With respect to claim 25, Appellants contend that Stephens does not
teach or suggest “a connectivity program configured to receive information
transmitted from a remote location.” App. Br. 8. The Examiner found that
Ausems discloses such a connectivity program. Ans. 6. We agree with the
Examiner, but moreover note that Stephens would seem to include such a
connectivity program as well. Specifically, paragraph [0055] of Stephens
describes GPS engine 275 receiving signals from GPS satellites and
calculating the position of the PDA telephone 100 in the conventional
fashion. Although not explicitly described, Stephens must have some sort of
connectivity program in order to receive the signals from GPS satellites.
Those signals would represent information from remote locations.
Lastly, Appellants argue that Stephens teaches away from the
combination set forth by the Examiner, asserting that the combination runs
contrary to the intended principle of operation and purpose of Stephens.
App. Br. 10. To support this argument, Appellants point to the discussion of
the problems of using navigators in rental cars found in paragraph [0004] of
Stephens. App. Br. 11. However, paragraph [0004] is discussing problems
of prior art navigators and does not directly relate to the invention disclosed
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in Stephens. Nor is there any indication that the system of Stephens is
limited to use in rental cars. The security and privacy concerns raised by
Appellants would exist whether the system of Stephens comprised two
devices or was modified to comprise a single device. As such, these
concerns would not discourage one of ordinary skill in the art from making
the proposed combination.
The Federal Circuit has held “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)). Nothing in Stephens can be said to discourage a
person of ordinary skill in the art from modifying the system by
implementing both the personal information management program and the
navigation program on a single device. Contrary to Appellants’ assertion,
the proposed modification would not change the basic principle of operation
of the Stephens system. The Stephens system, when modified in the manner
set forth by the Examiner, would still operate on the same principle. A user
would find the desired address information on the personal information
management program and select the transmit-address function, thereby
causing the address information to be downloaded to the navigation
program. The navigation program would then calculate a route for the
selected address information. Accordingly, we find Appellants’ argument
that Stephens teaches away from the proposed combination unpersuasive.
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For all of the reasons discussed above, we find the Examiner did not
err in rejecting claims 1 and 25 under 35 U.S.C. § 103, and claims 2-5, 7, 8,
10, 11, and 27-31, which fall therewith.
2. Claim 6--Obviousness--Stephens/Ausems/Pocket PC magazine
Claim 6 stands rejected over the same references (Stephens and
Ausems) applied in rejecting claim 1, with the Pocket PC magazine
reference being cited as disclosing the subject matter of claim 6. However,
Appellants rely solely on its dependence from claim 1 as imparting
patentability to claim 6. App. Br. 13. Thus, for the reasons set forth above
in our analysis of the rejection of claim 1, the rejection of claim 6 is
sustained.
3. Claims 9 and 26--Obviousness--Stephens/Ausems/Sandhu
Claims 9 and 26 stand rejected over the same references (Stephens
and Ausems) applied in rejecting claims 1 and 25, respectively, with the
Sandhu reference being cited as disclosing the subject matter of claims 9 and
26. However, Appellants rely solely on their dependence from claims 1 and
25, respectively, as imparting patentability to claims 9 and 26. App. Br. 13.
Thus, for the reasons set forth above in our analysis of the rejection of
claims 1 and 25, the rejections of claims 9 and 26 are sustained.

CONCLUSIONS
The Examiner did not err in finding that Stephens discloses an “input
association mechanism” as recited in independent claims 1 and 25.
The Examiner did not err in concluding that it would have been
obvious to one skilled in the art at the time the invention was made to
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modify the system of Stephens to implement the personal information
management program and the navigation program on a single device.

DECISION
The Examiner’s rejection of claims 1-5, 7, 8, 10, 11, 25 and 27-31
under 35 U.S.C. § 103(a) as being obvious over Stephens in view of Ausems
is affirmed.
The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as
being obvious over Stephens in view of Ausems and further in view of
Pocket PC magazine’s New Product Report is affirmed.
The Examiner’s rejection of claims 9 and 26 under 35 U.S.C. § 103(a)
as being obvious over Stephens in view of Ausems and further in view of
Sandhu is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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