Ex Parte Foster et al

Patent Trial and Appeal Board

Jul 13, 2017

14291987 (P.T.A.B. Jul. 13, 2017)

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.
14/291,987 05/30/2014 Andrew Foster 31730/21097-00 7914
12716 7590 07/17/2017
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
MARTINEZ BORRERO, LUIS A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
07/17/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW FOSTER, NICHOLAS JULIAN PELLY, and
MICHAEL GRAHAM WOODWARD1
Appeal 2017-000452
Application 14/291,987
Technology Center 3600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
MATTHEW J. McNEILL Administrative Patent Judges.
NAPPI, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1 through 15 and 17 through 21. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
The invention is directed to interactive digital maps and to generating
automatic suggestions when a user interacts with a digital map. See
paragraphs 1, 4, and 5 of Appellants’ Specification.
Appeal 2017-000452
Application 14/291,987
Claim 1 is illustrative of the invention and reproduced below:
1. A system comprising:
a non-transitory computer-readable medium storing thereon
profile data for a registered user, the profile data including
indications of previous interactions of the user with a digital
mapping service; and
processing hardware coupled to the non-transitory computer-
readable medium, the processing hardware configured to: receive a
request for geographic content from a client device, wherein the
request includes an indication that the user invoked the digital
mapping service while the client device is coupled to a head unit of
a vehicle via a short-range communication link,
in response to the request, automatically generate geographic
content based at least in part on the indications of previous
interactions, including select the geographic content in view of its
relevance to an automotive context, and
provide the geographic content to the client device for
presentation in the vehicle.
REJECTIONS AT ISSUE
The Examiner has rejected claims 9 through 15 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Final Action 8—9;
Answer 3.1 2
The Examiner has rejected claims 1 through 8 under 35 U.S.C.
§ 102(a)(2) as anticipated by Letz (US 2014/0005924 Al, issued Jan. 2,
2014). F inal Action 9—18; Answer 3.
1 According to Appellants, the real party in interest is Google Inc. App.
Br. 3.
2 Throughout this opinion we refer to the Appeal Brief, filed May 16, 2016;
Reply Br., filed October 4, 2016; Final Action mailed December 15, 2015,
and the Examiner’s Answer, mailed on August 4, 2016.
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Appeal 2017-000452
Application 14/291,987
The Examiner has rejected claims 9 through 15, and 17 through 21
under 35 U.S.C. § 103 as unpatentable over Letz and Hassan et al. (US
2012/0190379 Al, pub. July 26, 2012). Final Action 18—34; Answer 3.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellants’
arguments. Initially, we note Appellants have not addressed the Examiner’s
rejection under 35 U.S.C. § 101, accordingly we summarily sustain the
Examiner’s rejection. Appellants’ arguments have persuaded us of error in
the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102 and
independent claim 17 under 35 U.S.C. § 103.
With respect to independent claim 1, the dispositive issue presented
by Appellants’ arguments is did the Examiner err in finding Letz teaches
“receiv[ing] a request for geographic content from a client device, wherein
the request includes an indication that the user invoked the digital mapping
service while the client device is coupled to a head unit of a vehicle via a
short-range communication link,” as recited in claim 1.
Appellants argue Letz teaches generating personalized travel routes,
but that Letz does not disclose any techniques for selecting content in an
automotive context. App. Br. 12—13; Reply Br. 2—3. Thus, Appellants
conclude there “is simply no reason why it would matter to the system 100
in Letz whether a ‘request for routing information,’ (see e.g., par. 42), is
generated ‘while the client device is coupled to a head unit of a vehicle’ or in
some other state.” App. Br. 13.
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Appeal 2017-000452
Application 14/291,987
The Examiner finds that Letz is directed to route planning and
navigation, that the system determines requests for routing information in
real-time, and is applicable to vehicular route planning. Answer 4 (citing
Letz para. 31). Further, the Examiner states that Letz teaches coupling the
client device to the head unit. Id. at 5 (citing Letz para. 67).
We have reviewed the teachings relied upon by the Examiner in the
rejection and disagree with the Examiner’s findings that the cited passages
of the references teach a request for content from a client device, where the
request includes an indication that the user invoked the mapping service is
coupled to a head unit of a vehicle. Paragraph 67 of Letz, cited by the
Examiner, does not discuss a head unit, and it is not clear from the record
what the Examiner is equating to the claimed head unit. Thus, we do not
find sufficient evidence to support a finding that Letz discloses the request
includes an indication that the user invoked the mapping service when the
client device is connected to the head unit. Accordingly, we do not sustain
the Examiner’s rejection of independent claim 1 or the rejection of claims 2
through 8, which depend upon claim 1.
With respect to independent claim 17, the dispositive issue presented
by Appellants’ arguments is did the Examiner err in finding the combination
of Letz and Hassan teaches: determining that a computing device is
connected to a head unit of a vehicle and sending a request for geographic
content to a network including an indication that the computing device is
currently operating in a vehicle, as recited in independent claim 17. App.
Br. 14—15; Reply Br. 3.
The Examiner relies upon Letz to teach claim 17’s limitation directed
to the computing device being connected to the head unit of a vehicle. Final
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Appeal 2017-000452
Application 14/291,987
Action 28; Answer 7. Further, the Examiner relies upon Hassan to teach
sending an indication that the computing device is in a vehicle. Final
Action 21 (citing Hassan paras. 27, 30, 41, and 84).
We disagree with the Examiner’s findings that these teachings make
obvious the disputed claim limitation. As discussed above, paragraph 67 of
Letz cited by the Examiner, does not discuss a head unit, and it is not clear
from the record what the Examiner is equating to the claimed head unit.
Further, although paragraph 41 of Hassan does discuss the vehicle providing
an indication to a telecommunication device (phone) that the device that the
vehicle is in use, this indication is used to restrict calling or texting. The
Examiner has not established how such a teaching would apply to a request
for geographic content communicated between network interface and
network server as recited in claim 17. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claim 17 or claims 18 through 21,
which depend upon claim 17.
DECISION
The decision of the Examiner to reject claims 9 through 15 under
35U.S.C. § 101 is affirmed.
The decision of the Examiner to reject claims 1 through 8 under
35 U.S.C. § 102 and to reject claims 9 through 15, and 17 through 21 under
35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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