Ex Parte Aoki

Patent Trial and Appeal Board

Mar 17, 2015

12013254 (P.T.A.B. Mar. 17, 2015)

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.
12/013,254 01/11/2008 Norihiro Edwin Aoki 10587.0308-00000 8256
100692 7590 03/17/2015
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
MANCHO, RONNIE M
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
03/17/2015 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
____________

Ex parte NORIHIRO EDWIN AOKI
____________

Appeal 2012-011888
Application 12/013,254
1

Technology Center 3600
____________

Before ANNETTE R. REIMERS, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Norihiro Edwin Aoki (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1−9, 11−26, and 28−38
under 35 U.S.C. §102(e) as being anticipated by Cobbold (US
2008/0077309 A1, pub. Mar. 27, 2008). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1
According to Appellant, AOL Inc. is the real party in interest. Appeal
Br. 3.
Appeal 2012-011888
Application 12/013,254

2
CLAIMED SUBJECT MATTER

Claims 1, 2, 19, and 36 are independent. Claims 3–18 depend from
claim 2. Claims 20–26 and 35 depend from claim 19. Claims 28–34 depend
from canceled claim 27. Claims 37 and 38 depend from claim 36. An
understanding of the invention can be derived from a reading of independent
claim 1, which is reproduced below, with emphasis on the key disputed
claim limitation.
1. A computer-implemented method for enabling a user to
perceive map or route information based on previous user input
of conditions of features, the method comprising:
receiving, from a first user at a client device on a
network, a request for a first route;
responsive to the request, determining the first route as
having a plurality of features associated therewith;
enabling the client device to display the first route,
including the plurality of features, to the first user;
receiving input from the first user, the input including:
selecting at least one of the plurality of features of the
displayed first route; and
specifying a condition of the selected at least one feature
of the first route;
determining, based on the condition of the selected at
least one feature input by the first user and on condition
information received from sources other than the first
user, a status of the selected at least one feature of the first
route;
storing the determined status of the selected at least one
feature of the first route;
receiving, from a second user, a request for a second
route, the second route comprising a plurality of features
including the selected at least one feature of the first route; .
accessing the stored status of the selected at least one
feature of the first route; and
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enabling the second user to perceive the second route and
the accessed status of the selected at least one feature of the first
route.

Appeal Br. 19−20, Claims App. (emphasis added).

ANALYSIS
Anticipation of claims 1−9, 11−26, and 28−38 by Cobbold
Claim 1
The Examiner finds that Cobbold teaches the method steps of claim 1
including “receiving input from the first user (i.e. user of one of 44-46
inputting e.g. traffic conditions of a selected portion of route in user's
terminal),” the input including: (1) “selecting at least one of the plurality of
features of the displayed first route (i.e. user of one of 44-46 inputting e.g.
traffic conditions of a selected portion of route in user's terminal;” and (2)
“specifying a condition of the selected at least one feature of the first route
(i.e. user of one of 44-46 specifying e.g. traffic conditions of a selected
portion of route in user’s terminal.” Final Act. 3 (citing Cobbold ¶¶ 29, 33,
and 34); see also Ans. 5, 17−20. In addition, the Examiner takes the
position that “[A]ppellant’s claims are very broad as they do not particularly
indicate who is receiving, selecting and specifying.” Ans. 17.
Appellants argue that “claim 1 recites that a user provides input to
select at least one of a plurality of features of a route that is displayed and to
specify a condition of the selected at least one feature of the displayed
route.” Appeal Br. 11 (emphasis added). Appellant also contends that
“[a]lthough Cobbold’s system may allow users in the same commuter group
to share traffic updates, accident reports, and other current information,
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Cobbold does not teach specifically how this is done, except perhaps by
some form of a ‘message.’” Id. at 12−13.
Appellants continue by pointing out that ¶ 29, relied on by the
Examiner, merely “explains how the disclosed commuter service uses
location information of users to determine which users are in close proximity
to one another, in order to allow these users to communicate with one
another about their commute,” and that ¶ 33, also relied on by the Examiner,
merely
explains how “[an] application may present the user with a user
interface through which the user may access and modify the
user’s profile at the CGS, interact with the CGS during the
commute, obtain traffic alerts and maps of congestion pertinent
to their commuting route, obtain live video data of portions of
an upcoming route, and otherwise be presented with
information pertinent to the commute.”

Id. at 14.

Appellants also argue that “[e]ven though Cobbold discloses that
members of commuter members can share and obtain information about
traffic conditions, road conditions, and hazards with other members of
their commuter group, Cobbold does not go into any detail of the specific
means or methods for doing so,” and “[t]here is no requirement in Cobbold
that the system display a route and receive input from a user selecting at
least one feature of the displayed route and specifying a condition of the
selected at least one feature, as claimed.” Reply Br. 7−8.
We are persuaded by Appellant’s arguments that the Examiner fails to
establish a prima facie showing of anticipation in rejecting claim 1 as
anticipated by Cobbold. Cobbold discloses that
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[l]ocation information of users in the system may
be determined using Global Positioning System
(GPS) 48, cellular triangulation methods, or other
methods of locating a mobile terminal. For
example, the locations of users as they commute
through the city may be detected by mobile
terminals 46 configured to include a GPS receiver.
The GPS location information may then be
transmitted to the commuter groups service [CGS]
40.

Cobbold, para. 27. Cobbold further discloses that “[s]ince the CGS knows
the location of the group members, it may select sub-groups of members
based on proximity to each other that are at approximately the same point in
the commute to enable the members in the subgroups to communicate with
each other while traveling along the route.” Id. at para. 33. Cobbold also
discloses that
the location information may be used by the
commuter groups service [CGS] to determine
which users of a particular commuter group are in
relatively close proximity to each other on the
road. The proximity information may enable users
to message other users that are located close by so
that the users may communicate about particular
items of interest. For example, commuters may
alert each other of particular road hazards,
particularly annoying/aggressive drivers, and other
items of interest to commuters in the same general
area on the roadway.

Id. at 29.
In other words, Cobbold discloses that because the commuter groups
service (CGS) knows the location of the group members, it may use the
location information to determine (identify) the users of a particular
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commuter group that are in relatively close proximity to each other on the
road. Cobbold further discloses that these identified users may communicate
with each other (i.e., message/alert each other) regarding a condition along
the route (e.g., particular road hazards, annoying/aggressive drivers). As
such, Cobbold discloses specifying a condition of the route. However, claim
1 requires “a condition of the selected at least one feature of the first route.”
Appeal Br. 19, Claims App. (emphasis added). The Examiner does not
direct us to any section of Cobbold that describes that the condition (e.g.,
particular road hazards, annoying/aggressive drivers) is “of the selected at
least one feature of the first route.”
Claim 1 further recites the step of “selecting at least one of [a]
plurality of features of the displayed first route.” Id. Although we
acknowledge that a user in Cobbold “may access and modify [his] profile at
the [commuter groups service] CGS, interact with the CGS during the
commute, and obtain traffic alerts and maps of congestion pertinent to [his]
commuting route” (see Cobbold, para. 33; see also Ans. 5, 17−20), the
Examiner does not direct us to any section of Cobbold that describes the user
“selecting at least one of a plurality of features of the displayed first route.”
For the foregoing reasons, we are persuaded by Appellant’s arguments
that the Examiner failed to establish a prima facie showing of anticipation in
rejecting claim 1 over Cobbold.

Claims 2−9, 11−26, and 35−38
Independent claim 2 recites a computer-implemented method
including the steps of “selecting one or more features of the map; and
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specifying a condition of the selected one or more features perceived by the
first user.” Appeal Br. 20, Claims App. Independent claim 19 recites a
system having “a communications module configured to: receive input from
the first user, the input including: selecting one or more features of the map;
and specifying a condition of the selected one or more features perceived by
the first user.” Id. at 24, Claims App. Independent claim 36 recites a
computer-implemented method including the steps of “selecting features of
the displayed routes, and specifying traffic condition information associated
with the selected features of the routes.” Id. at 28−29, Claims App. The
Examiner relies on the same deficient findings for independent claims 2, 19,
and 36 as discussed above in claim 1. See Ans. 4–7, 11, 15–16; Final Act.
2–5, 8–9, 12–13. Thus, the Examiner’s findings with respect to Cobbold are
deficient for claims 2, 19, and 36 as well.
For the reasons set forth above with regard to claim 1, we likewise do
not sustain the Examiner’s rejection of independent claims 2, 19, and 36 and
their respective dependent claims 3−9, 11−18, 20−26, 35, 37, and 38 as
anticipated by Cobbold.

Claims 28−34
For the reasons set forth below in the new ground of rejection, claims
28−34 depend directly or indirectly from canceled dependent claim 27,
thereby rendering claims 28−34 indefinite.
Having determined that claims 28–34 are indefinite, we cannot sustain
the rejection of these claims under 35 U.S.C. § 102(e) because to do so
would require speculation as to the scope of the claims. See In re Aoyama,
656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in
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affirming an anticipation rejection of indefinite claims). In re Steele, 305
F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims).
We do not sustain the rejection of claims 28–34 as anticipated by
Cobbold.
NEW GROUND OF REJECTION
Claims 28−34
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
28–34 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 28−34 depend directly or indirectly from dependent claim 27,
which was canceled in an Amendment filed January 31, 2011. Thus, claims
28−34 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failure to particularly point out and distinctly claim the subject
matter which the Appellant regards as the invention.
The language of a claim satisfies 35 U.S.C. § 112, second paragraph,
only if “one skilled in the art would understand the bounds of the claim
when read in light of the specification.” Exxon Research & Eng’g Co. v.
U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 . . . .
[T]his section puts the burden of precise claim drafting squarely on the
applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
We find that dependent claims 28−34 fail to comply with 35 U.S.C.
§ 112, second paragraph, in failing to particularly point out and distinctly
claim the subject matter which the Appellant regards as the invention, by
failing to depend from a pending claim.
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Application 12/013,254

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For the above reasons, a person of ordinary skill in the art would not
be able to ascertain the metes and bounds of claims 28−34 with any
reasonable degree of certainty. Thus, claims 28−34 are indefinite.

DECISION
The rejection of claims 1−9, 11−26, and 28−38 as anticipated by
Cobbold under 35 U.S.C. § 102(b) is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 28−34 under
35 U.S.C. § 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)
rvb