Ex Parte Carlsson et al

Patent Trial and Appeal Board

Jun 1, 2018

14354977 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/354,977 04/29/2014
102721 7590 06/05/2018
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
FIRST NAMED INVENTOR
Richard Carlsson
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.
1009-0927 I P34781 USl 3762
EXAMINER
OBAYANJU, OMONIYI
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD CARLSSON, STAFF AN LARSSON, and
HJALMAR OLSSON
Appeal2017-010243
Application 14/354,977 1
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 28-54, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-27 have been cancelled.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. App. Br. 2.
Appeal2017-010243
Application 14/354,977
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a method for
retrieving maps on the basis of location data (Spec., Abstract). Claim 28,
reproduced below, is illustrative of the claimed subject matter:
28. A method executed in a map server for enabling selection
of maps at a user device, the method comprising:
receiving, from the user device, a request for map meta-
data, the request comprising at least one map criterion,
specifying at least one map selecting condition, and location
data, indicating the location of the user device;
searching, in a map meta-data database, for map meta-data
matching the received location data and the at least one map
criterion;
retrieving, from the map meta-data database, map meta-
data associated with at least one map, in the event of at least one
match between the map meta-data, the location data and the at
least one map criterion; and
providing the retrieved map meta-data to the user device,
thereby enabling the user device to automatically select, from a
map database, via the map server, at least one map, at least partly
on the basis of the retrieved map meta-data;
receiving, from the user device, a request for a selected
map;
acquiring the requested map from the map database, and
providing the selected map to the user device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jendbro
Gold
Onishi
US 2007 /0233734 Al
US 2007 /0257792 Al
US 2008/0288166 Al
2
Oct. 4, 2007
Nov. 8, 2007
Nov. 20, 2008
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Application 14/354,977
Fong
Sathish
US 2012/0019513 Al
US 2013/0110841 Al
REJECTIONS
Jan.26,2012
May 2, 2013
Claims 28-33, 39--41, and 43--49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fong and Onishi (Final Act. 7-11).
Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fong, Onishi, and Sathish (id. at 11-12).
Claims 34--36, 50, 51, and 54 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jendbro and Onishi (id. at 12-14).
Claims 37, 38, 52, and 53 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jendbro, Onishi, and Gold (id. at 14--15).
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ISSUE 1
35 U.S.C. § 103(a): Claims 28-33 and 39-49
Appellants contend their invention as recited in independent claims
28, 30, 39, 43, 44, and 49 is patentable over Fong and Onishi (App. Br. 14--
22). The issue presented by the argument is:
Issue 1: Has the Examiner shown the combination of Fong and
Onishi teaches "a request for map meta-data, the request comprising ...
location data, indicating the location of the user device," as recited in
independent claim 28 and similarly recited in independent claims 30, 39, 43,
44, and 49?
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Application 14/354,977
ANALYSIS
Appellants contend the Examiner erred in finding Fong discloses "a
request for map meta-data, the request comprising ... location data,
indicating the location of the user device," as recited in claim 28 and
similarly recited in claims 30, 39, 43, 44, and 49 (App. Br. 14--22; Reply
Br. 2-7). Specifically, Appellants argue the location data in Fong's request
is "a virtual geographical position, arbitrarily defined by user input, and not
the actual location of the user device that renders the map" (App. Br. 17;
Reply Br. 4--5).
We agree with Appellants' contentions. The Examiner finds (Final
Act. 7-8; Ans. 3) Fong teaches "a request for map information (Fong i-fi-169,
71, Fig. 9). The "request can include a viewer position in 3D space" (Fong
i-fi-1 7 0-71). The Examiner further finds that Fong discloses "the request for
map meta-data includes and/or specifies search terms or query and viewer
position [i.e. user position on a mobile client device]" (Ans. 3 (citing Fong
i-fi-f 12, 49, 71) (alteration in original); Final Act. 8 (citing Fong, Fig. 10)).
The Examiner further finds Fong discloses "process[ing] user input to
determine changes in viewer position" (Ans. 3 (emphasis omitted) (citing
Fong i182); Final Act. 3).
Although Fong discloses viewer positions and geographic positions,
the Examiner's findings do not show where Fong teaches that those viewer
positions or the geographic positions are positions based on the location of a
user device. For example, Fong discloses a "geographic position changes
during navigation ... in 3D space" (Fong i157; see also Fong i161), "a
request for map information ... can include a viewer position in 3D space"
(Fong i-fi-170-71), and a "positioning engine (316) determines a viewer
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position in 3D space" (Fong i-f 48). The Examiner, however, has not
explained adequately where Fong teaches that the viewer positions and
geographic positions are the locations of the user device. Nor does the
Examiner explain why an ordinarily skilled artisan would have found the
limitation obvious upon reading Fong.
As such, we determine the Examiner has not explained sufficiently
how Fong teaches "a request for map meta-data, the request comprising ...
location data, indicating the location of the user device," as recited in
independent claim 28 and similarly recited in independent claims 30, 39, 43,
44, and 49. Dependent claims 29, 31-33, 40-42, and 45--48 stand with their
respective independent claims.
Accordingly, we are constrained by the record to reverse the rejection
of claims 28-33, 39--41and43--49 under 35 U.S.C. § 103(a) as being
unpatentable over Fong and Onishi and the rejection of claim 42 under 35
U.S.C. § 103(a) as being unpatentable over Fong, Onishi, and Sathish.
Because we reverse the Examiner's rejection of independent claims 30 and
44, we need not reach the merits of Appellants' arguments directed to
dependent claims 31 and 45, which depend from independent clams 30 and
44 (see App. Br. 22-23).
We do, however, in a new ground of rejection, conclude that an
ordinarily skilled artisan would have found it obvious for location data to
indicate the actual location of the user's device. Fong teaches that its device,
which uses location data to request map meta-data, includes "a satellite
navigation system receiver (1084), such as a Global Positioning System
(GPS) receiver" (Fong i-f 81, Fig. 10). Fong further discloses that
"[c]omputer-aided map navigation tools" include "GPS devices [that] have
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provided rudimentary road navigation for years" (Fong i-f 1) and that "a
default viewer position" may be used as the viewer position (Fong i-f 38).
This disclosure of Fong teaches, or at least suggests, to the skilled artisan to
use the navigation device's position as the location for requested map data,
for example, as the "default" location in the absence of any other input as to
location. In light of Fong's teachings that map navigation tools use GPS
data for location positioning, and that Fong's map device includes a GPS
receiver, we determine that using the actual location of a navigation device
as a location input for requesting map meta-data would not have been
"uniquely challenging or difficult for one of ordinary skill in the art" or have
"represented an unobvious step over the prior art" (Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
Even further, Onishi teaches "us[ing] the GPS reception section 102
to receive a GPS satellite signal and, based on this, calculat[ing] the current
position" (Onishi i-f 85). Onishi additionally teaches the "current position of
the navigation device triggers the need for the display of new map data"
(Onishi i-f 24), i.e., receiving a map based on the device location. Thus, Fong
teaches a location-based request for map-metadata (to search for a map) and
Onishi teaches using GPS data to determine a location. In light of these
teachings, we conclude that it would have been obvious to combine the
teachings and suggestions of Fong and Onishi to teach "a request for map
meta-data, the request comprising ... location data, indicating the location
of the user device." One of ordinary skill in the art would have been
motivated to combine Fong and Onishi to use the actual location of the user
device in a request for map-metadata (and to ultimately receive the map
based on that request) to provide the user a map that corresponds to, and is
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relevant to, the user's location-particularly when the user uses the map for
guided navigation (see Onishi i-fi-f l-3, 5 ("access route guidance from their
current position to a certain destination.")).
Thus, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
new ground of rejection of independent claims 28, 30, 39, 43, 44, and 49
under 35 U.S.C. § 103 as being unpatentable over Fong and Onishi.
However, we have not reviewed dependent claims 29, 31-33, 40-42, and
45--48 to the extent necessary to determine whether these claims are
unpatentable over Fong and Onishi or any other references. We leave it to
the Examiner to determine the appropriateness of any further rejections
based on these or other references. Our decision not to enter a new ground
of rejection for all claims should not be considered an indication of the
appropriateness of further rejection or allowance of the non-rejected claims.
ISSUE 2
35 U.S.C. § 103(a): Claims 34-38 and 50--54
Appellants contend their invention as recited in independent claims
34, 50, and 54, is patentable over Jendbro and Onishi (App. Br. 24--25). The
issue presented by the argument is:
Issue 2: Has the Examiner shown Onishi teaches "converting the
retrieved map data into a common data format," as recited in claim 34 and
similarly recited in clams 50 and 54?
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ANALYSIS
Appellants contend the Examiner erred in finding Onishi teaches
"converting the retrieved map data into a common data format," as recited in
claim 34 and similarly recited in clams 50 and 54 (App. Br. 24--25; Reply
Br, 9-12). Specifically, Appellants argue that "Onishi is converting the
route guidance data, not the map data" (App. Br. 25; Reply Br. 10) and that
Onishi' s "route guidance is not part of the map data" (Reply Br. 11 ).
We are not persuaded. The Examiner finds (Final Act. 10; Ans. 6-7),
and we agree, Onishi teaches "a request for display map information
specifying position coordinates and route guidance" and "convert[ing] such
route guidance data into vector data to plot a road in a specific color and
incorporate it into the map data" (Onishi i-f 10).
Appellants' argument that route guidance data is not map data (Reply
Br. 11; App. Br. 25) is not commensurate with the scope of the claim.
Neither the claims nor the Specification define "map data," and, in
particular, neither precludes route guidance data from the meaning of "map
data." As such, Onishi's "route guidance" data, which is "display map
information" (Onishi i-f 10 (emphasis added)), teaches "map data" within the
scope of the claims.
Accordingly, we are not persuaded the Examiner erred in finding
Onishi teaches "converting the retrieved map data into a common data
format," as recited in claim 34 and similarly recited in clams 50 and 54.
Claims 35-38 and 51-53 depend from claims 34, 50, or 54 and are not
separately argued (see App. Br. 25-26). Therefore, we sustain the rejection
of claims 34--36, 50, 51, and 54 under 35 U.S.C. § 103(a) as being
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unpatentable over Jendbro and Onishi and claims 37, 38, 52, and 53 under
35 U.S.C. § 103(a) as being unpatentable over Jendbro, Onishi and Gold.
DECISION
The Examiner's rejection of claims 28-33, 39--41, and 43--49 under
35 U.S.C. § 103(a) as being unpatentable over Fong and Onishi is reversed.
The Examiner's rejection of claim 42 under 35 U.S.C. § 103(a) as
being unpatentable over Fong, Onishi, and Sathish is reversed.
The Examiner's rejection of claims 34--36, 50, 51, and 54 under 35
U.S.C. § 103(a) as being unpatentable over Jendbro and Onishi is affirmed.
The Examiner's rejection of claims 37, 38, 52, and 53 under 35 U.S.C.
§ 103(a) as being unpatentable over Jendbro, Onishi, and Gold is affirmed.
In a new ground of rejection, we reject claims 28, 30, 39, 43, 44, and
49 under 35 U.S.C. § 103(a), as being unpatentable over Fong and Onishi.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, 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
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examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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.
§ 41.50(f).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(B)
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