Al Chakra et al.

Patent Trials and Appeals Board

Jul 24, 2019

14497035 - (D) (P.T.A.B. Jul. 24, 2019)

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.
14/497,035 09/25/2014 Al Chakra CAM920140022US1_8150-0513 1062
52021 7590 07/24/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
MARTINEZ BORRERO, LUIS A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AL CHAKRA, JONATHAN DUNNE,
LIAM HARPUR, and JOHN RICE
____________

Appeal 2018-008726
Application 14/497,035
Technology Center 3600
____________

Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Al Chakra, Jonathan Dunne, Liam Harpur, and John Rice (hereinafter
collectively “Appellant”)1 seek our review under 35 U.S.C. § 134(a) of the
final rejection of claims 1, 4, 5, and 7 under 35 U.S.C. § 103(a) as
unpatentable over Jiang (US 6,898,432 Bl, iss. May 24, 2005) and Dave
(US 9,057,620 B2, iss. June 16, 2015).2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

1 International Business Machines Corporation is the Applicant and real
party in interest. Appeal Br. 3.
2 The Examiner withdrew a Double-Patenting rejection. Ans. 3.
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THE INVENTION
Appellant’s invention relates to determining a route of travel. Spec.
¶ 3. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of determining a travel route, comprising:
receiving an origin and a destination of intended travel;
receiving a plurality of first inputs entered into a
communication device, each first input being related to the
availability of a respective communication channel between the
origin and the destination, each first input creating at least one
data item representing the availability of the respective
communication channel;
receiving at least one second input entered into the
communication device, wherein the second input is related to at
least one communication parameter, the communication device
is configured to communicate using a plurality of different
types of communication channels, and the at least one
communication parameter indicates a subset of the different
types of communication channels preferred by the user and a
respective threshold value for a preferred minimum level of
availability for each type of communication channel preferred
by the user, and the at least one communication parameter
indicates a maximum communication dead zone desired by the
user, wherein the communication dead zone is an area in which
the different types of communication channels are not available
or their respective signal strengths are below at least one
threshold level;
determining, using a processor, a plurality of suggested
travel routes between the origin and the destination based on at
least one of the received plurality of first inputs and the
communication parameter that indicates the subset of the
different types of communication channels preferred by the
user, wherein each of the plurality of suggested travel routes is
determined based on a respective availability of each of a
plurality of different types of communication channels, or each
of a plurality of different groups of types of communication
channels, satisfying the respective threshold value for the
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preferred minimum level of availability specified by the second
user input, and based on each suggested travel route not having
a dead zone that exceeds the maximum communication dead
zone desired by the user; and
displaying, via the communication device, visual
information, or generating, via the communication device, an
audio output signal, indicating at least a subset of the
determined plurality of suggested travel routes to a user.
OPINION
Appellant argues claims 1, 4, 5, and 7 as a group. Appeal Br. 9–16.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Jiang discloses the invention substantially as
claimed except for receiving an origin and destination of intended travel and
suggesting/displaying a plurality of travel routes, for which the Examiner
relies on Dave. Final Action 7–8. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify Jiang by the teachings of Dave to achieve the
claimed invention. Id. at 9. According to the Examiner, a person of
ordinary skill in the art would have done this to consider wireless network
signal strength in selecting a route of travel. Id.
Appellant argues that Jiang fails to disclose a maximum
communication dead zone as claimed. Appeal Br. 11. Jiang contemplates
traveling outside a communication “coverage area,” which Appellant
considers distinguishable from a “dead zone.” Id. Appellant supports this
position with dictionary definitions of “coverage” and “service area.” Id.
at 12. Appellant also argues that Jiang does not disclose communication
parameters related to a second user input. Id. at 13.
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In response, the Examiner states that Jiang refers to traveling out of a
coverage area. Ans. 4 (citing Jiang col. 6, ll. 21–23). The Examiner further
notes that Jiang stores boundary locations for coverage areas along a route.
Id. (citing Jiang col. 3, ll. 50–53). Essentially, the Examiner equates
traveling outside of a coverage area as traveling into a “dead zone”.
In reply, Appellant accuses the Examiner of making conclusory
statements that lack rational underpinning. Reply Br. 4–6. Appellant argues
that the Examiner’s chosen passages from Jiang and Dave fail to disclose the
“dead zone” limitation of claim 1. Id. at 4–8.
Jiang is directed to a method for selecting among wireless
communication options along a route. Jiang, Abstract. Jiang features
wireless coverage manager (42) that predicts network coverage for a
particular route. Id. col. 7, ll. 42–43. Location manager (44) accepts a list
of boundary locations along the vehicle’s route from coverage manager (42)
and stores it. Id. col. 8, ll. 1–23. Navigation system (26) figures out the
details of the route 300 and passes such information to coverage manager
(42). Id. col. 8, ll. 19–21. Coverage manager (42) uses the route
information to predict wireless communication services that are available
along the route. Id. col. 10, ll. 27–34.
In operation, as Jiang’s vehicle traverses a route, it may reach a point
along the route that is a coverage boundary for a communication option. Id.
col. 6, ll. 6–11. When that happens, availability monitor (34) informs
communication manager (36) when coverage is available. Id.
Communication manager (36) determines, based on factors such as
performance, whether to switch to another network. Id. col. 6, ll. 11–19.
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Availability monitor (34) determines whether a vehicle will travel out of a
coverage area. Id. col. 6, ll. 19–26.
Dave is directed to a mobile device that transmits data to a vehicle
navigation system that selects a route of travel between a source and
destination. Dave, Abstract. Dave’s system takes signal strength from a
network map into account when selecting the route. Id. When selecting
from among multiple routes, Dave’s system employs an algorithm that
considers signal strength. Id. Consequently, Dave’s system can select a
longer route with better signal strength over a shorter route with worse
signal strength. Id. Dave’s system presents and displays a plurality of
suggested routes to a user. Id.
We first address Appellant’s argument that the prior art does not
disclose a maximum communication dead zone desired by the user. Appeal
Br. 11. Both Jiang and Dave contemplate wireless communication coverage
along a route. Appellant’s argument that the Examiner confuses coverage
with dead zone mischaracterizes the Examiner’s position. The Examiner
interprets “dead zone” as an area where coverage is not available. Ans. 4.
Thus, when a vehicle travels out of a coverage area, causing signal failure,
the vehicle has entered a “dead zone” as a person of ordinary skill in the art
would understand the term. The Examiner’s interpretation is perfectly
consistent with Appellant’s own definition of the term, which is: “an area in
which a communication channel is not available or signal strength or other
characteristic of the communication channel is below a predefined
threshold.” Spec. ¶ 24.3 A person of ordinary skill in the art, having read

3 Similarly, claim 1 recites: “the communication dead zone is an area in
which the different types of communication channels are not available or
their respective signal strengths are below at least one threshold level.”
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the teachings in Jiang and Dave regarding signal strength and coverage,
would understand that Jiang and Dave not only contemplate geographic
regions of coverage, but also geographic regions where there is a lack of
coverage or, in other words, “dead zones.” In this regard, we note that
Appellant defines “dead zone” broadly so as to encompass quantification by
“any suitable manner,” including, but not limited to time, distance, ratio
between time and needed bandwidth, and/or combinations thereof. Id. 4
Next, we turn to Appellant’s argument that Jiang fails to disclose a
communication parameter related to a second user input. Appeal Br. 13. In
claim 1, the “second input” is related to a “communication parameter” in the
form of a “maximum communication dead zone” that is “desired by the
user.” Claims App. In the final rejection, the Examiner finds that Jiang
contemplates a value for a preferred minimum of availability for each type
of communication channel. Final Action 5 (citing Jiang, col. 2, ll. 7–10).
Jiang explicitly discloses that wireless communication network system
“performance” is taken into account when selecting a network. Jiang, col. 3,
ll. 10–11.
Furthermore, Dave discloses that its navigation system can receive the
map data from a mobile device. Dave, col. 6, l. 37– col. 7, l. 3. The system
can determine one or more routes along available travel channels. Id. The
system calculates, for each route, a score based at least in part on the
wireless network signal strengths of the regions through which that route

4 As we understand Appellant’s disclosure, Appellant does not “desire” to
have dead zones, in general, or to maximize the size of dead zones along a
route, in particular. Rather, we understand that a “maximum” dead zone
“desired by the user” relates to a user desiring that a dead zone be no larger
than a specified amount. See Spec. ¶ 44 (explaining that user may desire to
avoid dead zones).
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passes. Id. Routes passing through regions having higher wireless network
signal strength are scored more favorably than routes passing through
regions with lower network signal strength. Id. Weighting factors relating to
each route and its signal strength are specified by the user. Dave, col. 6,
l. 37 – col. 7, l. 3.
A person of ordinary skill in the art would have understood that the
concept of a “dead zone” is inextricably related to the concept of “signal
strength” along a vehicle’s route. In other words, as the vehicle is transiting
a route and enters a geographic region of little or no signal strength, the
vehicle has entered a “dead zone.”
Next, we turn to Appellant’s argument that Jiang fails to disclose
“determining a plurality of suggesting travel routes . . . based on . . . a dead
zone” as claimed. Appeal Br. 14. This argument is not persuasive. In the
final rejection, the Examiner relies on Dave as suggesting a plurality of
routes. Final Action 8. It is well established that non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Finally, we turn to Appellant’s argument that Dave fails to disclose
the “determining a plurality of suggesting travel routes . . . based on . . . a
dead zone” limitation. Appeal Br. 15. Appellant’s argument in this regard
is abbreviated and conclusory in nature. Id. Dave explicitly discloses
suggesting a plurality of routes based, in part, on wireless signal strength.
Depending on the importance given to having a strong wireless
network signal during a trip, the vehicular navigation system
can select a longer, slower route having better total wireless
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network signal strength over a shorter, faster route having
worse total wireless network signal strength
Dave, col. 2, ll. 29–34, see also col. 2, ll. 34–39 (“multiple different
suggested routes”). Appellant fails to undertake any analysis as to what it
means for Dave to give weight to wireless signal strength along a route in
determining suggested routes. See generally Appeal Br.; Reply Br.; In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (explaining that when a
prima facie case of obviousness is made, the burden shifts to the applicant to
come forward with evidence and/or argument supporting patentability).
Notwithstanding, the Examiner’s proposed combination of Jiang and
Dave arguably fails to explicitly disclose a second input indicating a
maximum communication dead zone desired by the user with respect to the
size of any particular individual dead zone along the route. However,
whether Dave contemplates the relative amounts of coverage versus dead
zone(s) along a route in the aggregate instead of using the size of an
individual dead zone as a route selection criterion, such a minor difference
(if indeed there is one) does not impart patentability to Appellant’s
invention. Section 103 expressly contemplates that there may be differences
between the prior art and the claimed invention. 35 U.S.C. § 103. Thus, the
issue is not whether there are differences, but whether the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. Id. It is well settled that an obviousness analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Consequently, a claim
can be obvious even where all of the claimed features are not found in
specific prior art references, where there is a showing of a reason to modify
the teachings of the prior art to achieve the claimed invention. See Randall
Mfg. v. Rea, 733 F.3d 1355, 1361-62 (Fed. Cir. 2013); see also Broadcom
Corp. v. Emulex Corp. 732 F.3d 1325, 1334 (Fed. Cir. 2013).
In the instant case, a person of ordinary skill in the art would have had
reason to make such a minor and predictable variation in order to plan a
route where the vehicle would not be out of communication, in any one
particular instance, for more than a predetermined period of time. Randall,
733 F.3d at 1361-62. Appellant presents neither evidence nor persuasive
technical reasoning that isolating and measuring the size of an individual
dead zone and comparing it to a criterion of a maximum desired dead zone
requires more than ordinary skill or produces unexpected results. In view of
the combined teachings of Jiang and Dave, we view Appellant’s use of a
maximum desired dead zone as a selection criterion for a route of travel, at
best, as a mere predictable variation of Jiang and Dave. See KSR, 550
U.S. at 417 (explaining that if a person of ordinary skill can implement a
predictable variation of an existing work, Section 103 likely bars its
patentability).
Nevertheless, when we make new and/or additional findings that tend
to change the thrust of a rejection, we are obliged to designate a new ground
of rejection to provide Appellants with a fair opportunity to react to the
thrust of the rejection. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir.
2013). Given the facts and circumstances presented by the instant case, we
elect to exercise our discretion to designate a new ground of rejection.
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In view of the foregoing discussion, we sustain the Examiner’s
unpatentability rejection of claims 1, 4, 5, and 7, but designate our
affirmance as a NEW GROUND OF REJECTION.
DECISION
The decision of the Examiner to reject claims 1, 4, 5, and 7, is
affirmed, but we hereby designate such affirmance as a NEW GROUND OF
REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that: “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS 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 as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01. 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)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)