Ex Parte Matas et al

Patent Trial and Appeal Board

Sep 8, 2017

13461635 (P.T.A.B. Sep. 8, 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.
13/461,635 05/01/2012 Michael Matas 106842147301
(P6043USC1)
4047
150004 7590 09/12/2017
DFNTONS T TS TIP. Annie
EXAMINER
P.O. Box 061080
Wacker Drive Station, Willis Tower
LEE, JUSTIN S
Chicago, IL 60606 ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MATAS, CHRIST BLUMENBERG, STEPHEN O.
LEMAY, and RICHARD WILLIAMSON
Appeal 2016-003 7771
Application 13/461,63 52
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER,
and MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—30 and 32. Claim 31 is canceled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held August 31, 2017.
2 Appellants identify Apple Inc. as the real party in interest. (App. Br. 3.)
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Application 13/461,635
THE INVENTION
Appellants’ disclosed and claimed inventions are directed to
placement of a user moveable location marker on a map displayed on a
touch screen, and display of user options associated with the marker in
response to a gesture. (Spec. Tflf 183, 248.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method, comprising:
at a computing device with a touch screen display:
displaying a map application, wherein the map
application is configured to display a map;
detecting a first finger gesture on an icon for adding a
user-moveable location marker to the map;
displaying the user-moveable location marker on the
map;
in response to detecting a second finger gesture on the
user-moveable location marker, moving the user-
moveable location marker on the map in
accordance with the second finger gesture;
while displaying the map and the user-moveable location
marker, displaying a user-selectable region for
obtaining information associated with a current
location of the user-moveable location marker on
the map;
in response to detecting a third finger gesture on the user-
selectable region for obtaining information,
entirely replacing the display of the map and the
user-moveable location marker with a display of a
plurality of option icons, wherein the plurality of
option icons include:
a first option icon, wherein in response to detection
of a finger gesture on the first option icon,
the display of the plurality of icons is
replaced with a display of a user interface
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for adding an entry to a set of bookmarked
locations, the added entry corresponding to
the current location of the user-moveable
location marker on the map;
a second option icon, wherein in response to
detection of a finger gesture on the second
option icon, the display of the plurality of
icons is replaced with a display of a user
interface for getting directions to the current
location of the user-moveable location
marker on the map from another location;
and
a third option icon, wherein in response to
detection of a finger gesture on the third
option icon, the display of the plurality of
icons is replaced with a display of a user
interface for getting directions from the
current location of the user-moveable
location marker on the map to another
location.
REJECTIONS
The Examiner rejected claims 1, 5—11, 15—21, 25—30, and 32 under 35
U.S.C. § 103(a) as being unpatentable over Jouline et al. (US 2008/0208456
Al, pub. Aug. 28, 2008), Geelen et al. (US 2004/0243307 Al, pub. Dec. 2,
2004), and Vertelney et al. (US 2006/0229802 Al, pub. Oct. 12, 2006).
(Final Act. 3—18.)
The Examiner rejected claims 2, 12, and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Jouline, Geelen, Vertelney, and Hofmeister et al.
(US 2006/0284852 Al, pub. Dec. 21, 2006). (Final Act. 18-20.)
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The Examiner rejected claims 3—4, 13—14, 23, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Jouline, Geelen, Vertelney, and Kim et
al. (US 2007/0273664 Al, pub. Nov. 29, 2007). (Final Act. 20-22.)
ISSUES ON APPEAL
Appellants’ arguments present the following issues3:
Issue One: Whether the Examiner erred in finding the combination of
Jouline, Geelen, and Vertelney teaches or suggests all of the limitations of
independent claims 1,11, and 21. (App. Br. 12—32.)
Issue Two: Whether the Examiner erred in finding the combination of
Jouline, Geelen, and Vertelney teaches or suggests all of the limitations of
independent claim 32. (App. Br. 33—36.)
Issue Three: Whether the Examiner erred in finding the combination
of Jouline, Geelen, and Vertelney teaches or suggests the additional
limitations of dependent claims 5, 15, and 25. (App. Br. 36—37.)
Issue Four: Whether the Examiner erred in finding the combination
of Jouline, Geelen, and Vertelney teaches or suggests the additional
limitations of dependent claims 9, 19, and 29. (App. Br. 37—39.)
Issue Five: Whether the Examiner erred in finding the combination of
Jouline, Geelen, and Vertelney teaches or suggests the additional limitations
of dependent claims 10, 20, and 30. (App. Br. 39-41.)
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed July 21, 2015); the Reply Brief
(filed Jan. 4, 2016); the Final Office Action (mailed Jan. 13, 2015); and the
Examiner’s Answer (mailed Nov. 2, 2015) for the respective details.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner errs. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 3—22)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 2—16).
We concur with the applicable conclusions reached by the Examiner and
emphasize the following.
Issue One
In finding Jouline, Geelen, and Vertelney teach or suggest the
limitations of independent claims 1,11, and 21, the Examiner relies on the
disclosure in Jouline of a map user interface in which location markers are
placed, via a mouse, on selected starting, intermediate, and ending locations
on a map to mark a route, with the ability of the user to drag the markers to
different locations using the mouse. (Final Act. 3—4, 13; Jouline Figs. 5, 10,
20, 21, || 22, 123, 141, 142.) The Examiner also relies on the disclosure of
Geelen of a navigation device which displays points of interest (POI) on a
map, with the ability of the user to select via a finger gesture a particular
POI and display a pop-up menu list of options including setting the POI
location as a departing or destination point, or adding the POI to a list of
favorites. (Final Act. 5—7; Geelen Figs. 7A, 7B, || 56—57, 73 (at p. 6: “user
can readily operate with one finger.”)) The Examiner also relies on the
disclosure of Vertelney of a vehicle navigation device with a touch sensitive
screen that allows selection of options by touching the screen with a finger,
including a gesture to switch, for example, from a map displaying bank
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locations, to a listing of those bank locations, and a gesture selecting an
“[A]dd [T]o [Fjavorites” option, causing replacement of the option display
with a form to enter the applicable information. (Final Act. 8—9; Vertelney
Figs. 31, 32, 55-58, 93, H 25, 36, 40.)
Appellants argue the Examiner improperly dissects the claim
requirement, “entirely replacing the display of the map and the user-
moveable location marker with a display of a plurality of option icons,” by
relying on Geelen for partially replacing a map display containing location
markers with a display of option icons, and relying on Vertelney for entirely
replacing a map display with a list. (App. Br. 13—17.) Appellants also argue
the display of option icons in Geelen does not even partially replace the map
display because it is a pop-up menu that overlays the map display rather than
replacing it. (App. Br. 15, 18—22.) Based on this distinction between
overlay and replacement, Appellants argue it is improper to modify Geelen
in light of Vertelney because to do so would change the principle of
operation of Geelen from a pop-up menu to a full replacement screen,
because a pop-up menu maintains the context of the user interface whereas
full replacement does not, or because the menu objects and state variables
preserved with the pop-up approach are not available with a simple full
replacement screen. (App. Br. 14—15, 23—26.) Appellants also argue the
Examiner has failed to provide a credible motivation to combine Geelen and
Vertelney. (App. Br. 16, 31—32.)
Appellants go on to argue that, even if Geelen were modified in
accord with Vertelney, the combination fails because neither Geelen nor
Vertelney disclose user-moveable location markers on a map that would be
replaced as required by the claims — only a POI marker or a flag is
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replaced, which markers are at fixed locations. (App. Br. 26—28.) Also,
argue Appellants, in Vertelney the screen that replaces the map does not
include option icons, as required by the claims, but rather is only a list of
locations. (App. Br. 14—16, 28—31.)
We are not persuaded by these arguments. Although it is error to fail
to consider a claim as a whole and instead dissect a claimed invention into
discrete elements and then evaluate the elements in isolation, the Examiner
has not done so in this case. The Examiner properly relies on Vertelney to
confirm the finding that it would be obvious to one of ordinary skill, given
the disclosure in Geelen of replacing all but a small border portion of a map
display with an option display, to instead entirely replace the map. (Ans. 2—
4.) As Appellants put it, the Examiner “rel[ies] on Vertelney just for the
‘entirely’ limitation, and combining the teaching of that single concept with
Geelen’s pop-up menu.” (App. Br. 14; see also Ans. 6: “While Examiners
agree that Geelen fails to teach ‘entirely replacing,’ Vertelney cures the
deficiency and teaches ‘entirely replacing.’”)
Moreover, we agree with the Examiner’s broad but reasonable
interpretation of “replace” to encompass the overlay of a pop-up menu on a
screen. (Ans. 4—7.) As the Examiner finds, in the context of the claims,
there is no patentable distinction between almost entirely covering the map
with the option list, as is done in the illustrative embodiment of Geelen, and
entirely covering that map, as suggested by Vertelney. (Ans. 5.) Moreover,
as the Examiner also finds, when viewed “in a pixel aspect,” there is no
question that the map image pixels are replaced by menu image pixels.
(Ans. 5—6.) Certainly, from the user’s point of view, the one image is
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replaced by the other, regardless of the behind-the-scenes mechanisms that
achieve this effect, which the claims do not address.
Because the Examiner has not erred in regard to the interpretation of
“replace” in the claims, Appellants’ argument that it is improper to modify
Geelen in light of Vertelney because to do so would change the principle of
operation of Geelen is unpersuasive. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425
(CCPA 1981). Instead, the relevant issue is “what the combined teachings
of the references would have suggested to those of ordinary skill in the art.”
Id. “Combining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
Appellants’ additional arguments that neither Geelen nor Vertelney
disclose user-moveable location markers, and that Vertelney does not
disclose a screen that replaces the map with option icons, are unpersuasive
because the Examiner relies on the combination of Jouline, Geelen, and
Vertelney as teaching or suggesting these limitations. In re Mouttet, 686
F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d at 425)
(“[T]he test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”).
In particular, Jouline teaches user-moveable location markers, and Geelen
teaches the option icon replacement screen. (Ans. 8—10.)
Nor are we persuaded the Examiner has failed to justify basing the
rejection on the combination of Jouline, Geelen, and Vertelney. As the
Examiner finds, the provision in Geelen for the “more” item on the disclosed
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option menu would provide sufficient motivation to one of ordinary skill to
enlarge the replacement option menu to cover the entire map display as
suggested by Vertelney. (Ans. 11; Geelen Fig. 7B.) Appellants do not point
to any evidence of record that the resulting combination would 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 Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418—19 (2007)). The Examiner’s findings are reasonable
because the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” because the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21.
We are persuaded the claimed subject matter exemplifies the principle that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
Issue Two
In addition to the requirements of the other independent claims, which
as discussed above the Examiner correctly finds are taught or suggested by
the combination of Jouline, Geelen, and Vertelney, independent claim 32
additionally requires “detecting a first finger gesture on the displayed map.”
(App. Br. 52.) Appellants argue the combination of Jouline, Geelen, and
Vertelney fails to teach or suggest this additional limitation. (App. Br. 33—
36.)
For this limitation, the Examiner relies, inter alia, on the disclosure in
Jouline of adding a location marker on a map via the user right clicking on
an “Add location” menu item, together with the finger gesture teachings of
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Geelen discussed above. (Final Act. 12—14.) Appellants argue the
Examiner errs because the “Add location” operation of Jouline requires
several successive mouse operations, and involves placement of the mouse
on a menu item rather than on a map. (App. Br. 35.) However, we agree
with the Examiner that the broadest reasonable interpretation of “finger
gesture on the displayed map” encompasses a multi-step gesture that begins
on the displayed map, as is the case for the “Add location” operation of
Geelen. (Ans. 13—14; see also Spec. 1116: “gesture is double tap.”)
Issue Three
Dependent claims 5, 15, and 25 add the requirement of a fourth option
icon, “wherein in response to detection of a finger gesture on the fourth
option icon, the user-moveable location marker is deleted.” (App. Br. 45,
48, 51.) In rejecting these claims, the Examiner relies on the disclosure in
Jouline of a “deletion selector” to delete location markers that have been
placed on the map display. (Final Act. 9; Jouline Fig. 23,1151.)
Appellants argue the Examiner errs because the deletion selector is
not included on a list of option icons that “entirely replace” the display of
the map, as required by the claims. (App. Br. 37.) However, we agree with
the Examiner, given Geelen’s teaching of option icons, the combination of
Geelen and Jouline teaches or suggests the subject matter at issue. (Ans.
14.)
Issues Four and Five
Dependent claims 9, 19, and 29 additionally require “adding an entry
to a set of contacts, the added entry including location information
corresponding to the map location of the marker,” and dependent claims 10,
20, and 30 additionally require, “updating an entry in a set of contacts to
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include location information corresponding to the current location of the
user-moveable location marker on the map.” (App. Br. 45, 48, 49, 51.) In
rejecting these claims, the Examiner relies on the disclosure in Geelen of
automatically adding or updating contact information based on location data,
and the disclosure in Vertelney of adding or updating lists of favorite
locations. (Final Act. 11—12; Geelen 175; Vertelney Figs. 57, 79.)
With respect to the “adding an entry” claims, Appellants argue the
operation in Geelen discloses matching location information to previously
existing contacts, and the favorites lists described in Vertelney are not
contacts. (App. Br. 37—39.) For the “updating an entry” claims, Appellants
argue Geelen does not disclose user-moveable location markers, and the
update process of Geelen relates to an address in a database rather than one
associated with a location marker. (App. Br. 39-41.)
We are not persuaded the Examiner errs. The disclosures relied on by
the Examiner, taken as a whole, reasonably teach or suggest the limitations
at issue. (Ans. 15—16.)
CONCEUSIONS
For the reasons stated above, we sustain the obviousness rejections of
claims 1, 5, 9, 10, 11, 15, 19, 20, 21, 25, 29, 30, and 32 over Jouline, Geelen,
and Vertelney.
We also sustain the obviousness rejections of claims 6—8, 16—18, and
26—28 over Jouline, Geelen, and Vertelney; of claims 2, 12, and 22 over
Jouline, Geelen, Vertelney, and Hofmeister; and of claims 3—4, 13—14, 23,
and 24 over Jouline, Geelen, Vertelney, and Kim, which rejections are not
argued separately with particularity.
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DECISION
We affirm the Examiner’s obviousness rejections of claims 1—30
and 32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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