Ex Parte Graf et al

Patent Trial and Appeal Board

Dec 20, 2018

13929582 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/929,582 06/27/2013
12716 7590 12/25/2018
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
FIRST NAMED INVENTOR
Daniel Graf
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.
31730/17963-00 7757
EXAMINER
DASGUPTA, SHOURJO
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL GRAF and DARREN DELA YE
Appeal2017-006094
Application 13/929,582 1
Technology Center 2100
Before DAVID M. KOHUT, KAMRAN JIVANI, and SCOTT E. BAIN,
Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review, under 35 U.S.C. § 134(a), of the
Examiner's final rejection of claims 1-14 and 16-21. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and add a new ground of rejection under
37 C.F.R. § 41.50(b).
1 Appellants identify Google Inc. as the real party in interest. App. Br. 3.
2 Claim 15 was previously cancelled.
Appeal2017-006094
Application 13/929,582
INVENTION
The invention "relates to digital maps and, more particularly, to
providing an interactive digital map on a portable device." Spec. ,r 2. The
independent claims on appeal are claims 1, 10, and 17. Claim 1 is
illustrative.
1. A method in a portable device for efficiently managing
screen real estate in a software application that displays
interactive digital maps, the method comprising:
displaying a digital map of a geographic area in a map sheet;
displaying a plurality of individually selectable location
indicators at different respective locations over the digital map
in the map sheet;
in response to a first one of the plurality of location indicators
being selected on the map sheet, generating an informational
sheet related to the selected location indicator, wherein the
informational sheet occludes a portion of the map sheet; and
in response to detecting a gesture applied to the informational
sheet, (a) automatically indicating, on the digital map in the
map sheet, a selection of a second one of the plurality of
location indicators, and (b) updating the informational sheet to
display information related to the newly selected location
indicator.
REJECTIONS
Claims 1-9 and 17-21 are rejected under 35 U.S.C. § I03(a) as
obvious over Sheha (US 2012/0254804 Al; Oct. 4, 2012) and Tang
(US 2014/0101601 Al; Apr. 10, 2014). Final Act. 3-9 (Sept. 18, 2015).
Claims 10-14 and 16 are rejected under 35 U.S.C. § I03(a) as obvious
over Sheha, Tang, and Mullet (US 5,638,523; June 10, 1997). Final Act. 9-
13.
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Application 13/929,582
ANALYSIS
Claims 1 and 17
Appellants argue independent claims 1 and 17 together because they
contain similar limitations. App. Br. 13. Appellants argue Sheha's
back/forward arrows of Figure 70's screen (shown below; see bottom left
and right comers) and Tang's back/forward arrows of Figure 18 's screen
overlay 41 (also shown below) do not, as found by the Examiner, teach or
suggest claim 1 's following limitations:
displaying a plurality of individually selectable location
indicators at different respective locations over the digital map
in the map sheet;
in response to detecting a gesture applied to the informational
sheet, (a) automatically indicating, on the digital map in the
map sheet, a selection of a second one of the plurality of
location indicators, and (b) updating the informational sheet to
display information related to the newly selected location
indicator.
App. Br. 13-16.
Sheha's Figure 70 is reproduced below:
SEARCH> RES UL TS SEARCH ;:.-· RESULTS
Hilton Hotel
4331 Airport Way
51:ln JO$e CA 9456-6
Figure 70 shows how a user can click on any point of interest (POA)
in order to see a brief description of the POA.
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Application 13/929,582
Tang's Figure 18 is reproduced below:
r:1
-~ ... ~
'
Figure 18 shows a paging mechanism in a map-based user interface program
that allows the user to select a target location.
Appellants contend that neither Sheha's nor Tang's arrows sits within
an informational sheet (to "detect[] a gesture" therein), selects a different
respective location (step (a)), and updates the informational sheet to
reference the new location ( step (b) ), as required by the disputed limitation.
App. Br. 13-16. As to Sheha, Appellants contend the arrows do not sit
within the informational sheet (termed a "balloon"). Reply Br. 2; App. Br.
13. As to Tang, Appellants contend the arrows do not select a different
respective location, but rather select between two portions of the same or
clustered location. Reply Br. 2; App. Br. 14--15.
We are unpersuaded by Appellants' contentions, which only address
Sheha and Tang separately, rather than addressing the combination cited by
the Examiner. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Nonobviousness cannot be established by attacking references
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Application 13/929,582
individually where the rejection is based upon the teachings of a
combination of references." (citation omitted)). Specifically, the Examiner
finds Sheha's device, in response to touching the arrows that sit outside of
the informational sheet, selects a new location and updates the informational
sheet. 3 Ans. 3--4; Sheha ,r 556. The Examiner further finds Tang's device
teaches a paging mechanism located within the informational sheet that
allows a user to provide an input to iterate from one search result to another.
Ans. 5; Tang ,r 78 and Fig. 18 (arrows select between location-based content
for respective map markers "Beijing!" and "Beijing2"). In view of these
teachings, the Examiner finds it would have been obvious to modify Sheha's
device to allow for iterating through search results within the informational
sheet as described by Tang. Ans. 5---6. Thus, the Examiner concludes, the
combination of references teach the disputed limitations. Id. We agree with
the Examiner.
Appellants further contend that the Examiner is using impermissible
hindsight to combine the references. App. Br. 16. First, Appellants note
that neither Sheha nor Tang advances a balloon ( or in-situ window) to a
different location in response to a gesture applied to the balloon. App. Br.
16. Second, Appellants argue that the motivation to combine the references
was obtained solely from Appellants' Specification. App. Br. 16.
We are not persuaded by Appellants' arguments. The Examiner
provides sufficient "articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007) (citation omitted). As the Examiner finds,
3 Note that the Examiner indicates that perhaps Sheha alone discloses the
disputed limitation, but added Tang to bolster the rejection. Ans. 5.
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Application 13/929,582
and we agree, it would have been obvious to one of ordinary skill in the art
to combine Sheha and Tang "to allow for a user to traverse all the results in
a geographical area via readily-available soft button features embedded into
the balloon/pop-up in a manner that is not device/platform-specific." Final
Act. 5. As such, the Examiner provides sufficient motivation, and
Appellants have not explained sufficiently why the Examiner's analysis is
incorrect. Furthermore, the Examiner's findings rely on the knowledge of a
person with ordinary skill in the art (Ans. 7-9) and does not rely solely on
knowledge gleaned from Appellants' application. Therefore, we are
unpersuaded that the Examiner lacks a sufficient rationale for the
combination or that the Examiner engaged in an impermissible hindsight
reconstruction of the disputed claim features. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper.").
For the foregoing reasons, Appellants do not persuade us the
Examiner erred in rejecting claims 1 or 17. Accordingly, we sustain the
rejection of claims 1 and 17.
Claims 2, 5 -9, and 18
Appellants indicate that dependent claims 2, 5-9, and 18 are on
appeal. App. Br. 5. Appellants, however, do not argue any of these claims
with particularity. We, therefore, sustain the Examiner's rejection of
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dependent claims 2, 5-9, and 18 for the same reasons we sustain the
Examiner's rejection of their respective independent claims 1 and 17.
Claims 3 and 19
Appellants select claim 3 as representative of the group comprising
claims 3 and 19, because they contain similar limitations. App. Br. 16-17.
Claim 3 depends from claim 1 and recites:
in response to a third one of the plurality of location indicators
being selected on the map sheet, (a) automatically indicating a
selection of the third one of the plurality of location indicators
on the map sheet, and (b) updating the informational sheet to
display information related to the newly selected location
indicator.
Appellants argue that claim 3, by adding "a third one of the plurality of
location indicators being selected on the map sheet" to incorporated base
claim 1, requires a user option of selecting a location by touching the
informational sheet (claim 1) or map sheet (claim 3). App. Br. 17.
Appellants further argue:
Id.
Sheha and Tang do not disclose selecting another location in
two different ways, nor does the Examiner appear to suggest
otherwise. Rather, the Examiner cites par. 556 of Sheha, where
the same single approach to selecting [points of interest], i.e.,
"clicking the back/forward screen arrows," is discussed.
We are unpersuaded because, even assuming Appellants' above
contentions are correct, the Examiner finds that Tang alternatively teaches
claim 3 's limitations in paragraphs 89-96. Appellants do not address this
finding. See Reply Br. 2 et seq. (not addressing claims 3 and 19).
Furthermore, the above contentions neglect that both Sheha and Tang teach
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selecting a location in a manner other than the above-addressed use of
arrows ( claims 1 and 17). Tang teaches selecting a map marker to display
information about the respective location. Tang ,r 91 ("showing ... the
location-based content of the clicked map marker" (emphasis added)).
Sheha similarly teaches selecting a map pin to display information about the
respective location. Sheha ,r 557 ("Clicking on a pin displays the balloon for
that pin independent from the back/forward buttons.").
Accordingly, we sustain the Examiner's rejection of claims 3 and 19.
Claims 4 and 20
Claims 4 and 20 stand rejected over Sheha and Tang. Appellants
argue claims 4 and 20 together as they teach similar limitations. App. Br.
17. Claim 4 recites: "wherein detecting the gesture applied to the
informational sheet includes detecting a swipe gesture applied left to right or
from light to left."
Appellants argue the Examiner erred in finding this limitation in the
combination of Sheha's Figure 62 swiping gesture with Sheha-Tang's
informational sheet (to replace or augment the arrows). App. Br. 17-18; see
also Final Act. 6; Ans. 11. Specifically, Appellants present two arguments.
Appellants firstly contend Sheha does not teach the swiping gesture as
applicable to Sheha's Figure 70 display (which is the combination's display
as modified). App. Br. 17. We are unpersuaded because, as the Examiner
finds, Sheha discloses replacing and augmenting user control buttons with
swiping gestures See Ans. 11-12; Sheha ,r 5 ("[T]he plurality of carousel
pages of information ... is rotated ... by hand gestures on a touch screen"),
,r,r 342--43 ("[G]estures such as swipe ... mimic actions typically used with
a mouse or keyboard. Gestures can be used to navigate[.]"), ,r 359 ("A
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Application 13/929,582
horizontal swipe is used for navigating to the next or previous item of detail
screens.").
Appellants secondly contend modifying the swiping gesture would, in
navigating an unseen control list of the displayed locations (e.g., left/right
swipe navigates down/up the list), sometimes result in awkwardly swiping in
a direction opposite of the next location (e.g., if left-swiping selects a
next-listed location right of the prior selection). Id. We are unpersuaded
because claim 3 does not require directing the swipe toward the next
location. Further, Appellants do not present sufficient evidence that one of
ordinary skill would view the modification's "awkwardness" as an
unacceptable tradeoff of augmenting or replacing the arrows with swiping.
See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825
F.3d 1373, 1381 (Fed. Cir. 2016) ("A given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine."); In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (Unsupported statements of fact are entitled to little probative
value.).
Accordingly, we sustain the Examiner's rejection of claims 4 and 20.
Claim 21
Claim 21 stands rejected over Sheha and Tang. Claim 21 depends
from claim 1 and adds a step of:
displaying the informational sheet in a fixed position relative to
the map sheet, to display information to the first one of the
plurality of location indicators in a first instance and
information related to the second one of the plurality of location
indicators in a second instance.
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Application 13/929,582
Appellants argue Sheha does not teach, "displaying the informational
sheet in a fixed position," because Sheha states "[ c ]licking the back/forward
screen arrows moves the balloon to/from the next/previous [point of
interest]." App. Br. 19 (addressing Sheha ,r 556). The Examiner responds:
Applicants argue that because the balloon may be caused to
move, e.g.[,] when a user selects a different location ... the
balloon cannot possibly be considered "fixed." The Examiner
respectfully disagrees [.] . . . For the time that [the]
balloon ... is displayed to provide information regarding a first
location, that balloon's position is undeniably fixed. When the
user desires to see information regarding a different location,
then the balloon does admittedly move[,] but then again
becomes fixed in the manner described above[.]
Ans. 13-14.
We disagree with the Examiner. We find claim 21 requires that the
informational sheet is fixed in the same place ("fixed position") relative to
the map sheet for at least two locations.
Although the Examiner has not cited a teaching or suggestion in the
references, we find that the fixed location of the informational sheet is
merely a design choice that is well within the level or ordinary skill in the art
at the time of the Appellants' invention. In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and "would be an obvious matter of design choice
within the skill of the art" ( citations omitted)). Appellants' Specification
fixes the informational sheet in a specific location but makes no mention as
to why the informational sheet is fixed or how fixing the informational sheet
to a specific spot provides an unexpected result. Spec. ,r 55. Additionally,
other descriptions of Appellants' invention contemplate that the
informational sheet either be opaque, semi-transparent, or be located on
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Application 13/929,582
some other portion of the screen. Spec. ,r 55. Thus, we find that one of
ordinary skill in the art would have found the location of the informational
sheet and whether it is fixed to a specific location or not to be an obvious
design choice.
Therefore, we find claim 21 unpatentable under 35 U.S.C. § 103(a)
over the combination of Sheha and Tang. Because we deviate from the
Examiner's reasoning, we designate this as a new ground of rejection.
Claims 10-14 and 16
Independent claim 10 stands rejected as obvious over Sheha, Tang,
and Mullet. Claim 10 recites:
in response to a user gesture selecting one of the plurality of
location indicators on the map sheet ... determining a current
state of the digital map ... and
automatically selecting a size and content of the informational
sheet according to the current state of the digital map.
Claims 11-14 and 16 depend from claim 10.
Appellants argue that the combination of Sheha, Mullet, and Tang
does not teach or suggest selecting the informational sheet's "size and
content" according to the respective map's "current state," as recited in
claim 10. App. Br. 19-20; Reply Br. 4. In the Answer, the Examiner finds
that Sheha teaches changing its informational sheet based on the current
state of the underlying map, because:
Sheha discloses various states for its maps, e.g. a default map, a
more searchable or search-friendly map, a map that further
incorporates real-time traffic information, etc. . ..
Sheha [also] teaches a drill-down feature, e.g. the
balloon/"informational sheet" ... that provides further
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Application 13/929,582
information as to what is represented on the map[.] It
intuitively follows that ... Sheha's balloon[] is tethered to the
nature of the map. This is frankly obvious[.]
Ans. 14--15. We disagree.
Although Sheha's informational sheet is bound to the map's selected
location, namely by informing the user about the location, that does not
mean the sheet's size is varied in accordance with the underlying map
sheet's current state (particularly default, search, and direction states), as
required by claim 10. Further, Appellants persuade us that neither Mullet's
browsing tool nor Tang's content-editing window changes in size based on
the underlying map sheet's current state. App. Br. 19--20.
Accordingly, we do not sustain the Examiner's rejection of claim 10
or dependent claims 11-14 and 16.
DECISION
We affirm the rejection of claims 1-9 and 17-20.
We reverse the rejection of claims 10-14, 16, and 21.
We enter a new ground of rejection for claim 21 under 35 U.S.C.
§ 103(a).
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this
does not result in allowance of the application, abandonment or a
second appeal, this case should be returned to the Patent Trial and
Appeal Board for final action on the affirmed rejection, including any
timely request for rehearing thereof.
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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