Ex Parte Nesbitt

Patent Trial and Appeal Board

Jun 10, 2014

11320495 (P.T.A.B. Jun. 10, 2014)

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.
11/320,495 12/29/2005 David W. Nesbitt 10587.0301-00000 7612
100692 7590 06/11/2014
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
DAGER, JONATHAN M
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
06/11/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID W. NESBITT
____________

Appeal 2011-000501
Application 11/320,495
Technology Center 3600
____________

Before ALLEN R. MACDONALD, MICHAEL C. ASTORINO,
SCOTT A. DANIELS, LYNNE E. PETTIGREW, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY OF THE DECISION
(a)
We affirm the Examiner’s rejection of claim 22 under 35 U.S.C.
§ 112, first paragraph (now § 112(a)).
The Examiner explains at pages 11-12 of the Answer that claim 22 is
a single means claim that does not meet the enablement requirement of 35
U.S.C. § 112(a) because claim 22 covers every conceivable means for
achieving the stated result while the specification discloses at most only
those means known to the inventor. For this panel to agree that a single
means claim is recited, we must reach two conclusions:
(1) that claim 22 is drafted in means-plus-function format; and
(2) that claim 22 is drawn to a single element.
See, e.g., In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
Claim 22 fails to use the term “means,” and is presumed not to be in
means-plus-function format. However, in this case the recited claim term
“apparatus” is a generic term that fails to recite sufficiently definite
structure. Moreover, the remainder of claim 22 recites functional language
without sufficient structure for performing the recited functions. Because
the term “apparatus” and the functional language that follows are
“essentially . . . devoid of anything that can be construed as structure,” the
presumption is overcome. See Flo Healthcare Solutions, LLC v. Kappos,
697 F.3d 1367, 1374 (Fed. Cir. 2012). We conclude that claim 22 is drafted
in means-plus-function format.
Even though we conclude that claim 22 recites a means-plus-function
element, as was made clear in Hyatt, the “combination” requirement of
§ 112, sixth paragraph (now §112(f)), precludes this section of the statute
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being invoked when the claim is drawn to a single element. Although claim
22 recites a combination of steps (i.e., receive, use, and enable), this
combination does not invoke § 112(f) because, again on its face, claim 22 is
directed to an apparatus and not to a process. The appropriate issue is
whether claim 22 is drawn to a single element (a mechanical structure or
electrical structure or other structure), or to a combination of such elements.
On its face, claim 22 recites only the single element of an “apparatus for
determining a route using a computer-implemented mapping system.”
Claim 22 then sets forth various steps (i.e., receive, use, and enable) to be
performed by this element. We conclude that claim 22 is drawn to a single
element.
We agree with the Examiner that (1) claim 22 is a single means claim,
(2) Appellant’s Specification discloses only those means known to the
inventor for performing the recited functions, and (3) as such, Appellant’s
Specification does not provide enabling disclosure for the full scope of the
claims, which “covers every conceivable means for achieving the stated
result.” See Hyatt, 708 F.2d at 714.
We also affirm the Examiner’s rejection of dependent claims 23-30,
32, 33, and 37 under 35 U.S.C. § 112(a).
(b)
As to the remaining rejections, we reverse the Examiner’s rejections
of: claim 34 under 35 U.S.C. § 112, second paragraph (now § 112(b)), as
indefinite; claims 1-3, 11, 17, 19-24, and 32-37 under 35 U.S.C. § 102(b) as
anticipated; claims 4-9 and 25-30 under 35 U.S.C. § 103(a) as unpatentable;
and claim 38 under 35 U.S.C. § 103(a) as unpatentable.
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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-9, 11, 17, 19-30, and 32-38. Claims 10,
12-16, 18, and 31 have been cancelled. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Rejections
The following Examiner’s rejections are before us for review1:
I. claims 22-30, 32, 33, and 37 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
II. claim 34 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite;
III. claims 1-3, 11, 17, 19-24, and 32-37 are rejected under 35 U.S.C.
§ 102(b) as anticipated by DeLorme (US 6,321,158 B1, issued
Nov. 20, 2001);
IV. claims 4-9 and 25-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DeLorme and DeGraaf (US 5,878,368, issued
Mar. 2, 1999); and
V. claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
DeLorme.

1 We review the rejections in a different order than they are presented in the
Examiner’s Answer. In our analysis, Rejections I and II address the New
Grounds of Rejection (Ans. 11-14) entered by the Examiner in the
Examiner’s Answer mailed June 29, 2010, pursuant to an Order Remanding
Appeal to Examiner mailed June 8, 2010.
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Claimed Subject Matter
Claims 22 and 34, reproduced below, are illustrative of the subject
matter on appeal.
22. An apparatus for determining a route using a computer-
implemented mapping system, the apparatus being configured
to:
receive a designation of a point on a map presented by a
computer-implemented mapping system as input to influence
route determination between an origin and a destination, the
designation being received from a user of the computer-
implemented mapping system and the designation being in a
location other than a location of the origin or the destination;
use the designation of the point to influence
determination of a route from the origin to the destination
toward or away from a location corresponding to the point, the
route not including the location corresponding to the point, and
the designation indicating the user’s preference for one of
multiple alternative routes between the origin and the
destination; and
enable presentation of the route to the user.
34. An apparatus for determining a route using a computer-
implemented mapping system, the apparatus comprising:
means for receiving a designation of a point on a map
presented by a computer-implemented mapping system as input
to influence route determination between an origin and a
destination, the designation being received from a user of the
computer-implemented mapping system and the designation
being in a location other than a location of the origin or the
destination;
means for using the designation of the point to influence
determination of a route from the origin to the destination
toward or away from a location corresponding to the point, the
route not including the location corresponding to the point, and
the designation indicating the user’s preference for one of
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multiple alternative routes between the origin and the
destination; and
means for enabling presentation of the route to the user.

OPINION
Rejection I: Enablement
(A)
The Examiner explains that claim 22 is a single means claim that does
not meet the enablement requirement of 35 U.S.C. § 112, first paragraph,
because claim 22 “covers every conceivable means for achieving the stated
result while the specification discloses at most only those means known to
the inventor.” Ans. 11-122 (citing In re Hyatt, 708 F.2d 712, 714-715 (Fed.
Cir. 1983) (citing O’Reilly v. Morse, 56 U.S. 62, 112 (1853))); see also
Manual of Patent Examining Procedure (MPEP) § 2164.08(a).
The Appellant contends that the Examiner’s interpretation of claim 22
as a single means claim is incorrect because claim 22 is directed to an
apparatus and does not recite the term “means” or “explicitly recite ‘means
plus function’ language necessary to invoke 35 U.S.C. § 112, sixth
paragraph.” Reply Br. 5. The Appellant further contends that “even if claim
22 could be interpreted as invoking 35 U.S.C. § 112, sixth paragraph, claim
22 is not a ‘single means claim’ as asserted by the Examiner” because the
term “apparatus” is defined in the Specification as “including ‘input and
output devices,’ a ‘computer processor,’ and ‘a computer program product’

2 “Ans.” refers to the Answer mailed June 29, 2010.
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which is ‘embodied in a machine readable storage device.’” Id. (citing
Nesbitt, ¶ [0170]3).
To find that a single means claim is recited, two conclusions must be
reached. First, that the claim is drafted in means-plus-function format; and
second, that the claim is drawn to a single element. Cf. Hyatt, 708 F.2d at
714 (“It is not disputed that [claim 35] is drafted in means-plus-function
format, and it is not disputable that [claim 35] is drawn to a single
element.”). A claim that is not drawn to a combination is instead drawn to a
single element. Id. (“Indeed, appellant has admitted that claim 35 is drawn
to only a single element when he asserts that it is not drawn to a
combination.”). When it is concluded that a single means claim is being
recited, that claim “covers every conceivable means for achieving the stated
result while the specification discloses at most only those means known to
the inventor.” Id. (citations omitted). Such a claim “is based on an
insufficient disclosure (§ 112, first paragraph) and should be rejected on that
ground.” Id. at 715 (citations omitted).
The final paragraph of § 112 saves combination claims
drafted using means-plus-function format from this problem by
providing a construction of that format narrow enough to avoid
the problem of undue breadth as forbidden by the first
paragraph. But no provision saves a claim drafted in means-
plus-function format which is not drawn to a combination, i.e.,
a single means claim.
Id.
We address first whether claim 22 recites means-plus-function
language, and second whether claim 22 invokes 35 U.S.C. § 112, sixth

3 Nesbitt (US 2007/0156326 A1, publ. Jul. 5, 2007) is the Pre-Grant
publication of the presently appealed Application. Paragraph [0170] of
Nesbitt corresponds with the Specification at page 37, lines 3-26.
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paragraph (i.e., whether claim 22 is drawn to a single element which does
not invoke the sixth paragraph, or to a combination of elements which does
invoke). In addressing whether claim 22 invokes 35 U.S.C. § 112, sixth
paragraph, we address whether as argued by Appellant, the “apparatus” term
is defined in the specification so that claim 22 avoids being a single means
claim as asserted by the Examiner.
As to the Appellant’s contention that claim 22 is not in means-plus-
function format, we are not persuaded. Because claim 22 fails to use the
term “means,” the claim is presumed strongly not to be in means-plus-
function format. Cf. Lighting World, Inc. v. Birchwood Lighting, Inc., 382
F.3d 1354, 1358 (Fed. Cir. 2004). Nonetheless, the presumption can be
overcome if “the claim term fails to recite sufficiently definite structure or
else recites function without reciting sufficient structure for performing that
function.” Id. (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1369 (Fed. Cir. 2002) (internal quotation marks and citation omitted)).
In this case, the claim term “apparatus” is a generic term that fails to recite
sufficiently definite structure. See Mass. Inst. of Tech. v. Abacus Software,
462 F.3d 1344, 1354 (Fed. Cir. 2006) (holding that generic terms such as
“mechanism,” “means,” “element,” and “device” typically do not connote
sufficiently definite structure). Moreover, the remainder of the claim recites
functional language without sufficient structure for performing the recited
functions. Although the Specification offers examples of the term
“apparatus,”4 the term “apparatus” itself is a non-structural term, i.e., a

4 The Specification states that an “Apparatus . . . may include appropriate
input and output devices, a computer processor, and a computer program
product tangibly embodied in a machine-readable storage device for
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nonce word, which is merely a substitute for the term “means.” See Lighting
World, 382 F.3d at 1360 (“What is important is whether the term is one that
is understood to describe structure, as opposed to a term that is simply a
nonce word or a verbal construct that is not recognized as the name of
structure and is simply a substitute for the term ‘means for.’”). Because the
term “apparatus” and the functional language that follows are “essentially
. . . devoid of anything that can be construed as structure,” the presumption
is overcome. Cf. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
1374 (Fed. Cir. 2012).
Under 35 U.S.C. § 112, sixth paragraph,
[a]n element in a claim for a combination may be expressed as
a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). Even though we
conclude that claim 22 recites a means-plus-function element, as was made
clear in Hyatt, the “combination” requirement of § 112, sixth paragraph
precludes this section of the statute being invoked when the claim is drawn
to a single element.
The word ‘combination’ in this paragraph includes ‘not only a
combination of mechanical elements, but also a combination of
substances in a composition claim, or steps in a process claim.’

execution by a programmable processor.” Spec. 37, ll. 5-7 (emphasis
added).
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In re Fuetterer, 319 F.2d 259, 264 (1963) (quoting P.J. Federico,
Commentary on the New Patent Act, 35 U.S.C.A. Vol. 1, p. 25 (1954),
reprinted in, 75 J. Pat. & Trademark Off. Soc'y 161, 186 (Mar. 1993)).5
We begin by noting that on its face, claim 22 clearly recites a
combination of steps (i.e., receive, use, and enable). However, this
combination does not invoke § 112, sixth paragraph, because, again on its
face, claim 22 is directed to an apparatus and not to a process. The
appropriate issue before us is whether claim 22 is drawn to a single element
(a mechanical structure or electrical structure or other structure), or to a
combination of such elements. We conclude that on its face, claim 22
recites only the single element of an “apparatus for determining a route
using a computer-implemented mapping system.” Claim 22 then sets forth
various steps to be performed by this single element.
The Appellant contends that “an enabled ‘apparatus’ is disclosed by
Appellant’s specification that includes, among other things, hardware for
performing the functions recited in claim 22.” Reply Br. 5-6. Appellant
further asserts that claim 22 may be enabled by disclosure of a mouse input
device, a special purpose computer mapping system, a special purpose client
device, communication pathways for exchanging information between a
client computer system and a computer based mapping system, a client
display, or computers that include “hardware processors that implement
program code and hardware memory for storing the program code.” Reply

5 Although Fuetterer is not binding precedent because only two judges on
the five judge panel joined the opinion (Judge Martin concurred in the result
only), this portion of Fuetterer has been cited with approval repeatedly. See
In re Barr, 444 F.2d 588, 594 (CCPA 1971) and O.I. Corp. v. Tekmar Co.
Inc., 115 F.3d 1576, 1582 (Fed. Cir. 1997).
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Br. 6 (citing Nesbitt, ¶¶ [0032], [0037], [0040], [0045], [0053], and [0170]6).
Contrary to Appellant’s arguments, it is not required that claim 22 be
interpreted as being limited to this disclosed combination of elements.
Rather, this combination represents only an example of the multitude of
structures covered by claim 22.
It is therefore important not to confuse exemplars or preferred
embodiments in the specification that serve to teach and enable
the invention with limitations that define the outer boundaries
of claim scope. [Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005)].
Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010). We agree
with the Examiner that Appellant’s Specification discloses only those means
known to the inventor for performing the recited functions and does not
provide enabling disclosure for the full scope of the claims, which “covers
every conceivable means for achieving the stated result.” See Hyatt, 708
F.2d at 714.
We have concluded that claim 22 is drafted in means-plus-function
format, and is drawn to a single element. Accordingly, under Hyatt, claim
22 recites a single functionally defined means that fails to meet the
enablement requirement of 35 U.S.C. § 112, first paragraph, because of
undue breadth. See Hyatt, 708 F.2d at 715 (“The final [(sixth)] paragraph of
§ 112 saves combination claims drafted using means-plus-function format
from this problem by providing a construction of that format narrow enough
to avoid the problem of undue breadth as forbidden by the first paragraph,”

6 The cited paragraphs correspond with the Specification at page 5, ll. 24-
31, page 7, ll. 12-19, page 8, ll. 8-11, page 9, ll. 17-24, page 11, ll. 5-6, and
page 37, ll. 3-26, respectively.
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but “no provision saves a claim drafted in means-plus-function format which
is not drawn to a combination, i.e., a single means claim.”).
(B)
The Appellant also contends that the rejection of claim 22 and its
dependent claims under 35 U.S.C. § 112, first paragraph, is improper
because the application was remanded to the Examiner to determine if
claim 22 and its dependent claims met the requirements of 35 U.S.C. § 112,
second paragraph. Reply Br. 4.
The Order Remanding Appeal to Examiner (“Order”) stated,
“[c]laim[] 22 . . . of the instant application contain[s] functional language
that may be indefinite under 35 U.S.C. § 112, 2nd paragraph.” Order 1
(emphasis added). The Order also raised a question whether claim 22 was
definite under 35 U.S.C. § 112, second paragraph, because it may include
means-plus-function claim limitations. See Order 2. Subsequently, the
Examiner reviewed the functional language of claim 22. See Ans. 11-12.
The Examiner’s rejection of claim 22 under the enablement requirement of
35 U.S.C. § 112, first paragraph, is directed to the functional language of
claim 22. See id.
Contrary to Appellant’s overly narrow focus on the Order’s citation of
the second paragraph of section 112, the premise of the Order questioning
claim 22 and the premise of the New Ground of Rejection in the Examiner’s
Answer rejecting claim 22 are consistent. The subject of the Order and the
subject of the New Ground both are directed to the functional language of
claim 22 and its analysis under section 112. Thus, notwithstanding
differences between the Order and the Examiner’s rejection, it would be
wasteful to return the application to the Examiner when the premise of the
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rejection is the same. See Hyatt, 708 F.2d at 715 (holding that “it would be
wasteful [to return the case to the Board] . . . notwithstanding the differences
between our reasoning and the [B]oard’s.”).
For the reasons above, we sustain the Examiner’s rejection of claim
22, and its dependent claims 23-30, 32, 33, and 37, as failing to comply with
the enablement requirement.

Rejection II: Indefiniteness
The Examiner explains that “means for using the designation of the
point to influence determination of a route from the origin to the destination
toward or away from a location corresponding to the point,” as recited in
claim 34, is indefinite. Ans. 12. The Examiner also explains that the
aforementioned recitation of claim 34 invokes the application of 35 U.S.C.
§ 112, sixth paragraph. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,
1375 (Fed. Cir. 2003). Appellant does not dispute that claim 34 invokes the
application of 35 U.S.C. § 112, sixth paragraph, but does contend that the
Examiner erred because “corresponding structure for the ‘means’ of claim
34 is disclosed in the specification.” Reply Br. 7.
A proper rejection of a claim containing a means-plus-function
limitation under 35 U.S.C. § 112, sixth paragraph, must include an analysis
of the structure recited in the specification for performing the claimed
function as it relates to the structure or equivalents thereof. See In re
Donaldson Co., 16 F.3d 1189, 1194-1195 (Fed. Cir. 1994) (en banc). For
computer-implemented means-plus-function claim elements, the
corresponding structure is the algorithm disclosed in the specification for
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performing the recited function. Aristocrat Techs. Australia Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
The Examiner’s analysis of the structure is directed to an example of
the algorithm disclosed in the Specification at page 35, line 25 through page
36, line 12, and Figure 12B, designation 1230. Ans. 13-14. In this case, the
Examiner improperly analyzes the Specification because the Examiner’s
analysis is directed to an example of the algorithm rather than the algorithm
itself. Indeed, Figures 12A and 12B are described as illustrating “exemplary
maps 1200A and 1200B,” and depict merely exemplary results of executing
the claimed algorithm. Spec. 35, l. 25.
The algorithm is disclosed as part of the flowchart depicted in Figure
5, which illustrates “a process for receiving a designation of a geographic
region related to a route from an origin to a destination.” Spec. 3, ll. 14-15.
The flowchart of Figure 5, particularly steps 540, 550a, 550b, and 560,
describes the algorithm that performs the function. At step 540, a mapping
system determines if a designation received by a user at step 520 is a favored
designation. Spec. 13, l. 26. “If the designation is determined to be a
favored [designation], the mapping system selects a route closest to the
favored designation (step 550a)” and if “the designation is not a favored
designation . . . , the mapping system may select a route that is farthest away
from the disfavored designation (step 550b).” Spec. 14, ll. 17-20. “The
route selected in step 550a or step 550b, depending on the type of user-
identified designation received in step 520, is presented by the mapping
system (step 560).” Spec. 14, ll. 21-22. Thus, the Specification provides
adequate support for the algorithm performing the claimed function, i.e.,
“using the designation of the point to influence determination of a route
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from the origin to the destination toward or away from a location
corresponding to the point,” as recited in claim 34. See Reply Br. 6-7.
Accordingly, the Examiner’s rejection of claim 34 as indefinite is not
sustained.

Rejection III: Anticipation by DeLorme
Claim 1 is directed to a method for determining a route using a
computer-implemented mapping system comprising the steps of “receiving a
designation of a point on a map presented by a computer-implemented
mapping system” and “using the designation of the point to influence
determination of a route from the origin to the destination toward or away
from a location corresponding to the point, the route not including the
location corresponding to the point.” App. Br., Claims App’x. (emphasis
added). Claims 22 and 34 are directed to an apparatus and are substantially
similar to the method of claim 1 in that they also call for the “designation of
a point on a map,” and a “determination of a route . . . not including the
location corresponding to the point [on a map].”
The Examiner finds DeLorme discloses that a user can select an
origin, a destination, and a point of interest (POI) near major roads and
highways. Ans. 16. Indeed, DeLorme’s system calculates, delineates, and
displays a travel route between the origin and destination and waypoints in
between. Ans. 17; DeLorme, col. 6, ll. 34-36. The Examiner finds that
DeLorme defines the term “waypoint” to include “place names situated on
major roads and highways, and as hereafter described, POIs [(points of
interest)] near the major roads and highways.” Ans. 17 (emphasis omitted);
DeLorme, col. 5, l. 2, col, 6, ll. 41-50. The Examiner also finds that “a
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waypoint of designation does not have to be on the route, just near the
route.” Ans. 17.
The Appellant asserts that DeLorme’s waypoints, including POIs, are
“intermediate destinations which become part of the route” and contends
that “DeLorme’s inclusion of the waypoint into the route is in direct
contravention to claim 1.” App. Br. 8.7
The Appellant’s contention is persuasive. POIs are used in a routing
operation 203 or a multimedia operation 204. DeLorme, fig. 2, col. 29,
ll. 34-35. In the routing operation 203, POIs are a part of the route. Id. at
col. 29, ll. 43-46; see also id. at col. 31, ll. 53-56. In the multimedia
operation 204, POIs do not affect the route. See id. at col. 31, ll. 57-59.
DeLorme also discloses an operation 207 in which the routing operation 203
and multimedia operation 204 interact. Id. at col. 29, ll. 29-33. When the
two operations interact, POIs are able to be accessed in a multimedia
presentation and integrated on a route by either being part of the route or
being placed on the map without affecting the route. See id. at col. 32, ll. 5-
25. In other words, when combining the two operations, POIs do not
influence the determination of a route from the origin to the destination
toward or away from a location corresponding to the POI.
Alternatively, the Examiner finds that DeLorme’s Figure 1H includes
a list of route features to be favored or avoided in determining a preferred
route. Ans. 17-18. For example, a car ferry could be a point of influence
that could be chosen to be avoided when determining a route. Ans. 18. The
Appellant contends that DeLorme’s Figure 1H offers global preferences in a
dialogue box and that selecting a global preference in the dialogue box does

7 “App. Br.” refers to the Supplemental Appeal Brief filed May 23, 2008.
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not correspond to a “point on a map” as required in claim 1. App. Br. 10.
The Appellant’s contention is persuasive.
Thus, the Examiner’s rejection of claims 1-3, 11, 17, 19-24, and 32-37
as anticipated by DeLorme is not sustained.

Rejection IV: Obviousness over DeLorme and DeGraaf
The rejection of claims 4-9 and 25-30 over DeLorme and DeGraaf
relies on the same incorrect finding discussed above, i.e., DeLorme discloses
a point on a map that is not on a route. Thus, we cannot sustain the rejection
under 35 U.S.C. § 103(a) of claims 4-9 and 25-30 as unpatentable over
DeLorme and DeGraaf.

Rejection V: Obviousness over DeLorme
Claim 38 is directed to a method for determining a route using a
computer-implemented mapping system comprising the steps of “receiving a
designation of a direction of travel as input to influence route determination
between an origin and a destination” and “using the designation of the
direction of travel to influence determination of a route from the origin to the
destination.” App. Br., Claims App’x.
The Examiner finds that “DeLorme discloses multiple influences, but
does not disclose specific direction input to influence route selection.”
Ans. 11. The Examiner then concludes, “[h]owever, it would be obvious to
one of ordinary skill in the art at the time of the invention that the system
and method of DeLorme would infer the user’s preferential direction of
travel.” Id. (emphasis added). The Appellant contends that the Examiner’s
reasoning “declares this claim limitation as obvious without citing a portion
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within DeLorme (or elsewhere) as seen to somehow suggest or render the
claim language as obvious and without taking official notice regarding the
claim limitation.” App. Br. 12.
In response, the Examiner determines that:
it would be obvious to one of ordinary skill in the art at the time
of the invention that the system and method of DeLorme would
infer the user’s preferential direction of travel when the user
inputs the origin and destination of travel. Otherwise, the
system and method of DeLorme would not be able to perform
the task of providing the shortest route to the user.
Further, it would be obvious to one of ordinary skill in
the art that the system and method of DeLorme would further
interpret an intention of direction of travel from the user from
each waypoint selected/added in the route.
Ans. 20-21 (emphasis added). The Appellant contends that claim 38 “does
not recite inferring a preferential direction or interpreting an intention of
direction.” App. Br. 12. That a route determined by DeLorme has a
direction, as any route must have, does not explain why it would be obvious
to one of skill in the art to have a user-defined designation of preferred
direction of travel influence the route selection. In DeLorme, the direction is
merely a passive result. As claimed, the direction of travel is a primary,
determinative input factor and the Examiner has not adequately explained
why or how a resulting known, inferred, or interpreted direction of travel
would lead one of ordinary skill in the art to input a preferred direction of
travel as the determining factor in route selection. The Appellant’s
contentions are persuasive.
Thus, the Examiner’s rejection of claim 38 as unpatentable over
DeLorme is not sustained.

Appeal 2011-000501
Application 11/320,495

19
DECISION
We AFFIRM the rejection of claims 22-30, 32, 33, and 37 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We REVERSE the rejections of: claim 34 under 35 U.S.C. § 112,
second paragraph, as indefinite; claims 1-3, 11, 17, 19-24, and 32-37 under
35 U.S.C. § 102(b) as anticipated by DeLorme; claims 4-9 and 25-30 under
35 U.S.C. § 103(a) as unpatentable over DeLorme and DeGraaf; and claim
38 under 35 U.S.C. § 103(a) as unpatentable over DeLorme.
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)(1)(iv).

AFFIRMED-IN-PART

mls