Ex Parte Bickel et al

Patent Trial and Appeal Board

Jul 5, 2016

12617487 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/617,487 11112/2009
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
07/07/2016
FIRST NAMED INVENTOR
Steffen Bickel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P3383USOO 4667
EXAMINER
LE, UYENT
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
07/07/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN BICKEL, HANNES KRUPP A, PETER
SIEMEN, and MARK WALDAUKAT
Appeal2013-009105
Application 12/617,487
Technology Center 2100
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3-8, 10-15, and 17-20. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Claims 2, 9, and 16 have been cancelled.
Appeal2013-009105
Application 12/617,487
We REVERSE and enter a NEW GROUNDS OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
STATEMENT OF THE INVENTION
According to Appellants, the claims are directed to a method and
apparatus for the retrieval of similar places (Abstract). Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method comprising:
receiving data specifying a reference point-of-interest and
location data of a search region;
retrieving a reference vector specifying a plurality of features
associated with the reference point -of-interest;
determining a plurality of candidates for similar points-of-
interest based, at least in part, on the search region;
retrieving candidate feature vectors specifying a plurality of
features associated with respective candidates;
determining a similarity score for each of the candidates
based, at least in part, on comparing the plurality of features
of respective candidates to the plurality of features of the
reference point-of-interest; and
generating a list of one or more similar points-of-interest
based on the similarity scores.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sadri US 2006/0287810 Al Dec. 21, 2006
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Application 12/617,487
Sheynblat US 2007/0219706 Al Sep.20,2007
REJECTIONS
Claims 1, 3---6, 8, 10-13, 15, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sadri (Final Act. 2-8).
Claims 7 and 14 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Sadri and Sheynblat (Final Act. 9).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
ISSUES
35 U.S.C. § 102(b): Claims 1, 3-6, 8, 10--13, 15, and 17-20
Appellants argue their invention is not anticipated by Sadri (App. Br.
4--10). The issue presented by the arguments is:
Has the Examiner erred in finding Sadri discloses "determining a
similarity score for each of the candidates based, at least in part, on
comparing the plurality of features of respective candidates to the plurality
of features of the reference point-of-interest," as recited in independent
claim 1, and similarly recited in claims 8 and 15? Appellants assert their
invention is not obvious over Sadri and Sheynblat (App. Br. 10-11).
ANALYSIS
Appellants argue that "Sadri does not disclose 'determining a
similarity score for each of the candidates based, at least in part, on
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Appeal2013-009105
Application 12/617,487
comparing the plurality of features of respective candidates to the plurality
of features of the reference point-of-interest,' as variously recited in
independent claims 1, 8 and 15" (App. Br. 5). Specifically, Appellants argue
that even if the distance between points-of-interest in Sadri is one feature
and the proximity score is a similarity score (points Appellants do not
concede), the resulting proximity score is still only a comparison of a single
feature, not a comparison of a plurality of features (id. at 6; Reply Br. 3--4).
We agree with Appellants that Sadri does not disclose the invention as
recited in representative claim 1. Specifically, we find the Examiner fails to
show Sadri discloses a similarity score for each of the candidates based on
comparing the plurality of features of respective candidates to the plurality
of features of the reference point-of-interest. More specifically, the cited
portions of Sadri do not disclose the comparison of a plurality of features of
a plurality of points of interest.
Accordingly, we find Sadri does not disclose determining a similarity
score, as recited in claim 1 and commensurately recited in independent
claims 8 and 15. Dependent claims 3---6, 10-13, and 17-20, stand with their
respective independent claims. Therefore, we are constrained to reverse the
rejection of claims 1, 3---6, 8, 10-13, 15, and 17-20 under 35 U.S.C. § 102(b)
for anticipation by Sadri.
35 U.S.C. § 103(a): Claims 7 and 14
Appellants assert their invention is not obvious over Sadri and
Sheynblat (App. Br. 10-11 ). The Examiner has not shown Sheynblat cures
the deficiencies of Sadri. Thus, for the reasons set forth above, claims 7 and
14 stand with their respective independent claims.
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Appeal2013-009105
Application 12/617,487
New Ground ofRejection: Claims 1, 8, and 15,
We do, however, in a new ground of rejection, conclude an ordinarily
skilled artisan would have found it obvious to modify the single feature
comparison of points-of-interest disclosed in Sadri to compare multiple
features of the plurality of points-of-interest also disclosed in Sadri. Thus,
we enter a new ground of rejection of claims 1, 8, and 15 under
35 U.S.C. § 103(a) as being unpatentable over Sadri. Specifically, we find
Sadri teaches determining a plurality of point-of-interest candidates based on
a received reference location point-of-interest and a reference vector, the
reference vector specifying a feature associated with the reference point of
interest (Sadri i-fi-f 15-16, 18, 44). We further find Sadri teaches determining
a similarity score for points-of-interest based on proximity, derived from a
comparison of distance, and utilized to generate a list of one or more points-
of-interest based on the score (id. i-fi-f 15, 44, 56, 58-59, 61; see id. at Figs. 3,
5---6). In an example point-of-interest similarity score, Sadri discloses each
point-of-interest may be weighted differently, based on a plurality or
combination of features, including type, quality, and preferences, in addition
to the feature of distance (id. i181; see id. at Figs. 8-9, claims 1, 5, 7).
Therefore, we determine it would have been obvious to one of ordinary skill
in the art, at the time the invention was made to use, to modify the
determinative comparison of the distance feature associated with a point-of-
interest in Sadri to incorporate additional point-of-interest features of the
same reference, to provide a convenient and easy-to-use interface that
locates desirable points-of-interest based on relevance to the user. As
clarified in KSR, the skilled artisan is "a person of ordinary creativity, not an
automaton." See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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Application 12/617,487
We determine that combining the singular feature comparison for points-of-
interest with a plurality of feature comparisons for points-of-interest would
not be "uniquely challenging or difficult for one of ordinary skill in the art"
or "represented an unobvious step over the prior art." Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Moreover, we determine the addition of more feature
comparisons to the proximity based similarity score would not result in a
change in function (Sadri i-fi-f 15-16, 18, 56, 61, and 81).
Thus, we enter a new ground of rejection for claims 1, 8, and 15 using
our authority under 37 C.F.R. § 41.50(b ).
Although we have rejected claims 1, 8, and 15 under 37 C.F.R.
§ 41. 50(b ), we have not reviewed the remaining claims, to the extent
necessary to determine whether these claims are patentable under 35 U.S.C.
§ 103(a). We leave it to the Examiner to determine the appropriateness of
any :farther rejections based thereon.
DECISION
The Examiner's rejection of claims 1, 3-6, 8, 10-13, 15, and 17-20
under 35 U.S.C. § 102(b) as being anticipated by Sadri is REVERSED.
The Examiner's rejection of claims 7 and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Sadri and Sheynblat is REVERSED.
In a new ground of rejection, we reject claims 1, 8, and 15 under 35
U.S.C. § 103(a), as being obvious over Sadri.
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Application 12/617,487
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 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 appellant, 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)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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