TOMTOM NAVIGATION B.V.

Patent Trials and Appeals Board

Feb 14, 2022

2021000334 (P.T.A.B. Feb. 14, 2022)

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. 14/785,370 10/19/2015 Hendrik Sebastian Ziezold 1068/US 8885 75090 7590 02/14/2022 TOMTOM INTERNATIONAL B.V. IP Creation De Ruyterkade 154 AMSTERDAM, 1011 AC NETHERLANDS EXAMINER AGHARAHIMI, FARHAD ART UNIT PAPER NUMBER 2161 NOTIFICATION DATE DELIVERY MODE 02/14/2022 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): patents@tomtom.com tony@parklegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENDRIK SEBASTIAN ZIEZOLD, SIMONE FRANCINE TERTOOLEN, MATHIEU M. B. DOORDUYN, MARC ALEXANDER VIDDELEER, ADRIAN CATALIN BOGDAN, JOOST CORNELIS FREDERIK VOOGT, RUUD WILLEMSTEIN, MARTIN WOLF, MAURITS HOL, and MICHEL DE BOER Appeal 2021-000334 Application 14/785,370 Technology Center 2100 Before JAMES R. HUGHES, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-4, 8-12, and 15-21.2 We have 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies TomTom Navigation B.V. as the real party in interest. Appeal Br. 1. 2 Although Appellant identifies claims 1, 19, and 20 as the appealed claims (Appeal Br. i, 3), we treat all rejected pending claims as appealed. See 37 C.F.R. § 41.31(c) (2011) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.”). Appeal 2021-000334 Application 14/785,370 2 jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER According to Appellant, the claims relate to “facilitating searching and display of locations relevant to a digital map.” Spec. 1:7-8. Claim 1 is reproduced below and illustrates the claimed subject matter: 1. A portable electronic device comprising: one or more processors; data repository containing: data records representative of locations relevant to or within a digital map, wherein each data record contains a location reference representative of a region of a digital map and a record identifier, wherein the location reference is a Morton code, and wherein the record identifier comprises a first portion and a second portion: the first portion being the location reference; and the second portion being a reference or pointer to location information about the location of the data record that is stored separately in the digital map and not in the data records; and data representative of an index associating words contained in the data records with the records in which those words appear; and computer readable medium comprising instructions which, when executed by the one or more processors, cause the electronic device, in relation to a received search query including a search string derived from user input on a user interface of the electronic device, to: process the search string to provide one or more search words; query the index to identify data records containing the or each search word; Appeal 2021-000334 Application 14/785,370 3 generate a rank for each of the one or more identified data records indicative of the relevance of each identified data record to the search query; and cause the display of the results of the search query on a display of the electronic device. Appeal Br. 13 (Claims App.). REFERENCES The prior art that the Examiner relies on as evidence is: Name Reference Date Stumpf et al. (“Stumpf”) US 6,775,666 B1 Aug. 10, 2004 Ford et al. (“Ford”) US 2003/0195877 A1 Oct. 16, 2003 Bradley et al. (“Bradley”) US 2006/0069504 A1 Mar. 30, 2006 Vailaya et al. (“Vailaya”) US 2008/0263023 A1 Oct. 23, 2008 Feng US 2009/0216732 A1 Aug. 27, 2009 Smyros et al. (“Smyros”) US 2010/0042588 A1 Feb. 18, 2010 Lee3 US 2011/0153654 A1 June 23, 2011 Payne et al. (“Payne”) US 2012/0011463 A1 Jan. 12, 2012 Pfeifle US 2013/0132398 A1 May 23, 2013 REJECTIONS Claims 1-3, 15-17, and 19-21 stand rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, and Bradley. Final Act. 3-12. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, Bradley, and Smyros. Final Act. 12-13. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, Bradley, and Stumpf. Final Act. 14-15. 3 The Examiner refers to this reference as “Chung-Hee” (see, e.g., Final Act. 3), but as the inventor named in the reference is “Chung-Hee LEE,” we use “Lee” to refer to the reference. Appeal 2021-000334 Application 14/785,370 4 Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, Bradley, and Feng. Final Act. 13-14. Claims 10-12 stand rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, Bradley, Feng, and Ford. Final Act. 15-17. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Vailaya, Lee, Pfeifle, Bradley, and Payne. Final Act. 17. ANALYSIS Appellant argues that the Examiner’s rejection of claim 1 as obvious over Vailaya, Lee, Pfeifle, and Bradley is in error because neither Pfeifle nor Bradley teaches or suggests “record identifiers including the first and second portions such as in the independent claims, particularly, where the second portion is a reference or pointer to location information about the location of the data record that is stored separately in the digital map and not in the data records.” Appeal Br. 9-10, 12. We are not persuaded that the Examiner erred. We begin by concluding that the claim language Appellant relies upon to distinguish over the cited references is not due patentable weight. Claim 1 recites “the record identifier comprises a first portion and a second portion: the first portion being the location reference; and the second portion being a reference or pointer to location information about the location of the data record.” After defining the first and second portions of the record identifier, claim 1 does not mention the record identifier again. Accordingly, there is no claimed functional relationship to the portable electronic device to which the record identifier is directed. Rather, the first and second portions of the record identifier are merely descriptive of the arrangement and content of data stored within the data records-i.e., a “location reference” and “a reference Appeal 2021-000334 Application 14/785,370 5 or pointer to location information about the location of the data record.” In other words, the record identifier is non-functional descriptive material. The Board has provided guidance on the appropriate handling of claims that differ from the prior art only based on non-functional descriptive material. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential). In particular, the Board in Nehls found that “the nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Id. at 1889. Although Appellant’s claim 1 recites functional language such as “query the index to identify data records containing the or each search word” and “generate a rank for each of the one or more identified data records indicative of the relevance of each identified data record to the search query,” nothing in the claim defines how any of this functionality depends on the arrangement or content of the first and second portions of the record identifier in each data record. Accordingly, we do not give patentable weight to the claimed “record identifier [which] comprises a first portion and a second portion.” As Appellant’s arguments focus on these limitations (see Appeal Br. 8-12; Reply Br. 2-6), the arguments are not persuasive of Examiner error as they fail to show how claim 1 is distinguished over the cited references, aside from relying on non-functional descriptive material. Even if we were to consider the disputed claim limitations, we agree with the Examiner and find Pfeifle and Bradley collectively teach, or at least suggest, these limitations. Specifically, Pfeifle describes “a location based full text search (LBFTS) index creation system” that includes a location table that “associates locations, such as points of interest, with a location value, such as a Morton code.” Pfeifle ¶¶ 47, 50. Appellant does not Appeal 2021-000334 Application 14/785,370 6 persuasively argue why this teaching is insufficient to the meet the claimed “first portion” of the “record identifier,” where claim 1 defines “the first portion being the location reference,” “wherein the location reference is a Morton code.” Although Appellant argues Pfeifle “is limited to describing storing information about items in a geographic database using interwoven vectors” (Appeal Br. 9; see also Reply Br. 3), claim 1 does not preclude any particular arrangement of data for representing a Morton code. Further, Bradley describes “a system 10 for searching for geographic points of interest (POIs) within a geographical area of interest (AOI),” where “database 30 of the service provider 16 can store or otherwise have accessible one or more additional pieces of information related to the POIs identified in the ranked search records.” Bradley ¶¶ 21, 35. Also, “in lieu of directly storing information relating to a POI, in various instances the service provider may store (or have accessible) links to other locations (e.g., uniform resource locators-URLs) from which such POI information can be accessed and retrieved.” Id. Appellant has not persuaded us that Bradley’s disclosure of URLs for linking to locations where POI information can be retrieved fails to teach the claimed “second portion being a reference or pointer to location information about the location of the data record that is stored separately in the digital map and not in the data records.” Appellant appears to argue that, because the URLs are stored in Bradley’s “database 30 of the service provider 16,” as opposed to Bradley’s “database of POI records 32” (Bradley ¶¶ 35, 27), Bradley fails to teach the claimed second portion of the record identifier (see Appeal Br. 10-11; Reply Br. 3-6). In response, the Examiner points to Bradley’s paragraph 27 (Ans. 5), which provides that “each POI record identif[ies] a POI and includ[es] Appeal 2021-000334 Application 14/785,370 7 one or more pieces of information relating to the POI,” where “[a] POI record can identify the POI in any of a number of different manners” (Bradley ¶ 27). The Examiner then concludes that “the fact that Bradley contemplates ‘any of a number of different’ record identifiers suggests use of the record information in Pfeifle and Bradley as the recited record identifiers in Independent Claims 1, 19, and 20 would have been obvious to one of ordinary skill in the art.” Ans. 5-6. Appellant does not specifically respond to this finding and conclusion in the Reply Brief. We agree with the Examiner and conclude that it would have been obvious to store information in the “database of POI records 32” by using methods disclosed elsewhere in Bradley, such as the URLs in “database 30 of the service provider 16” that link to locations where POI information can be retrieved. See Ans. 5-6; Bradley ¶¶ 27, 35. This would merely be a matter of applying a technique used to improve one device to improve a similar device in the same way, which “is obvious unless its actual application is beyond” the level of skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant has not shown it would have been “uniquely challenging or difficult for one of ordinary skill in the art” to use URLs in Bradley’s database 32 to link to POI information. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Appellant further argues that “neither Pfeifle nor Bradley separately describes or suggest portions of data records in a database such as in the independent claims . . . .” Appeal Br. 11-12. To the extent Appellant here asserts each reference must demonstrate both the first and second portions of the claimed record identifier, this argument is not persuasive. The Examiner relies upon the combination of Pfeifle and Bradley for teaching the first and Appeal 2021-000334 Application 14/785,370 8 second portions of the record identifier (see Final Act. 5-6; Ans. 5-6), and any argument directed to either reference in its individual capacity is not responsive to the Examiner’s rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Accordingly, we sustain the Examiner’s obviousness rejection of claim 1, as well as claims 2, 3, 15-17, and 19-21 not specifically argued separately, over Vailaya, Lee, Pfeifle, and Bradley. Appellant does not provide specific separate arguments regarding the rejections of claims 4, 8- 12, and 18 as obvious over the base combination along with the additional cited references. For the same reasons discussed above, we sustain the Examiner’s obviousness rejections of claims 4, 8-12, and 18. CONCLUSION We affirm the Examiner’s decision rejecting claims 1-4, 8-12, and 15-21. Appeal 2021-000334 Application 14/785,370 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 15-17, 19-21 103 Vailaya, Lee, Pfeifle, Bradley 1-3, 15-17, 19-21 4 103 Vailaya, Lee, Pfeifle, Bradley, Smyros 4 8 103 Vailaya, Lee, Pfeifle, Bradley, Stumpf 8 9 103 Vailaya, Lee, Pfeifle, Bradley, Feng 9 10-12 103 Vailaya, Lee, Pfeifle, Bradley, Feng, Ford 10-12 18 103 Vailaya, Lee, Pfeifle, Bradley, Payne 18 Overall Outcome 1-4, 8-12, 15-21 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED