Ex Parte Chao et al

Patent Trial and Appeal Board

Aug 30, 2016

12365128 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/365, 128 0210312009
111332 7590 09/01/2016
Intellectual Property Investment Law Group
3150 De La Cruz Blvd.
Suite 206
Santa Clara, CA 95054
FIRST NAMED INVENTOR
Yi-Chung Chao
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.
59-018 5390
EXAMINER
BAYAT,BRADLEYB
ART UNIT PAPER NUMBER
PTAB
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
efs@ipinvestlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI-CHUNG CHAO,
ROBERT W. RENNARD,
ZHIQI LUO, and.
MUSIRI S. SHRIVATHSAN
Appeal2014-003567
Application 12/365, 128 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yi-Chung Chao, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-20. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
1 The Appellants identify TeleNav, Inc., as the real party in interest. App.
Br. 3.
Appeal2014-003567
Application 12/365, 128
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of operation of a navigation system having
adaptive coverage comprising:
detecting an intermittent loss of service region, where
multiple disconnects of service have occurred, upcoming in a
route;
selecting an adaptive coverage operations block based on
the intermittent loss of service region for storing on a device;
and
sending data from the adaptive coverage operations block
for displaying on the device.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kaplan
Krause
US 2002/0169549 Al
US 2007/0112504 Al
The following rejection is before us for review:
Nov. 14, 2002
May 17, 2007
1. Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Krause and Kaplan.
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Appeal2014-003567
Application 12/365, 128
ISSUE
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Krause and Kaplan?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
We will sustain the rejection.
The sole argument challenging the rejection is that "the claim
limitation of detecting the intermittent loss of service region, where multiple
disconnects of service have occurred is not taught or suggested in Krause,
Kaplan, or a combination thereof." App. Br. 11.
The Examiner found that "Krause does not explicitly disclose wherein
multiple disconnects of service have occurred upcoming in a route." Final
Act. 3. Accordingly, there is no dispute that Krause does not disclose the
claim limitation of detecting the intermittent loss of service region, where
multiple disconnects of service have occurred.
Nor is there any dispute that Kaplan does not expressly disclose the
claim limitation of detecting the intermittent loss of service region, where
multiple disconnects of service have occurred. The Examiner takes the
position that
Kaplan teaches a navigation system whereby users of the
systems are provided with backup driving instructions
(abstract), wherein the system includes detecting a no service
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Appeal2014-003567
Application 12/365, 128
region or an intermittent loss of service region upcoming in a
route [0007, 54]; and sending data from the adaptive coverage
operations block for displaying on the device [0012].
Final Act. 3. The Examiner is not saying that Kaplan discloses the claim
limitation of detecting the intermittent loss of service region, where multiple
disconnects of service have occurred.
Rather, the Examiner is arguing that it would have been obvious to
detect the intermittent loss of service region, where multiple disconnects of
service have occurred, given what Krause and Kaplan disclose.
It would have been obvious to one skilled in the art to combine
the teachings of Krause with Kaplan in order to provide
navigation instructions to a driver in areas where coverage may
be disconnected, lost or intermittent, as per teachings of
Kaplan. Furthermore, since the claimed invention is merely a
combination of old elements, and in the combination each
element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination \Vere predictable.
Final Act. 3.
The Appellants' argument seeks to challenge the Examiner's
characterization of the scope and content of the cited prior art. But there
appears to be no dispute about that. The Examiner did not find that the cited
references disclose the claim limitation of detecting the intermittent loss of
service region, where multiple disconnects of service have occurred. Rather,
the argument the Examiner is making is that the combination of cited prior
art disclosures would have led one of ordinary skill in the art to the claimed
subject matter, including the claim limitation of detecting the intermittent
loss of service region, where multiple disconnects of service have occurred.
The Appellants have not addressed the position the Examiner is in fact
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Application 12/365, 128
taking. The Appellants have instead addressed an argument the Examiner
has not made. For these reasons, the Appellants' argument is unpersuasive
as to error in the rejection as the Examiner has articulated it.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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).
AFFIRMED
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