Ex Parte Rueben et al

Patent Trial and Appeal Board

Sep 11, 2017

11974258 (P.T.A.B. Sep. 11, 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.
11/974,258 10/12/2007 Steven L Rueben EMP0102-US 5251
67050 7590
KASHA LAW LLC
14532 Dufief Mill Road
North Potomac, MD 20878
09/13/2017 EXAMINER
ABDUL-ALI, OMAR R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/13/2017 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):
JOHN.KASHA@KASHALAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN L RUEBEN and GABRIEL JAKOBSON
Appeal 2017-002138
Application 11/974,2581
Technology Center 2100
Before MARC S. HOFF, LARRY J. HUME, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 28—38, all remaining claims in the application.
Appellants have canceled claims 1—27. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Empire IP LLC. App.
Br. 1.
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Application 11/974,258
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
mapping on electronic devices . . . [and m]ore particularly ... to relaying
address information to a mapping application and/or mapping service for
display on a common map." Spec. 12.
Exemplary Claim
Claim 28, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
28. A system for displaying multiple points-of-interest
on a common map image, comprising:
a user interface on a user device receiving first location-
related information corresponding to a point-of-interest;
a mapping component on the user device transmitting the
first location-related information to a mapping application on a
remote device; and
a map-display application on the user device receiving
from the remote device second location-related information
corresponding to the first location-related information and
displaying on a common map a first graphical location indicator
corresponding to the point-of-interest based on the second
location-related information with a plurality of second
graphical location indicators corresponding to a plurality of
other points-of-interest preselected by the mapping application
for display on the common map based on the second location-
related information.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
May 26, 2016); Reply Brief ("Reply Br.," filed Nov. 22, 2016); Examiner's
Answer ("Ans.," mailed Sept. 27, 2016); Final Office Action ("Final Act.,"
mailed Jan. 6, 2016); Advisory Action ("Adv. Act." mailed Feb. 8, 2016);
and the original Specification ("Spec.," filed Oct. 12, 2007).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Kreitler et al. ("Kreitler") US 2006/0026170 A1 Feb. 2, 2006
Cooper et al. ("Cooper") US 2006/0058951 Al Mar. 16, 2006
Tse et al. ("Tse") US 2008/0134088 Al June 5, 2008
Rejections on AppeaP
R1. Claims 28—33, 35, and 36 stand rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Kreitler. Ans. 2; see also Final
Act. 4.
R2. Claim 34 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kreitler and Cooper. Ans. 6; see
also Final Act. 8.
R3. Claims 37 and 38 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kreitler and Tse.
Ans. 7; see also Final Act. 9.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 8—13), we decide the
appeal of anticipation Rejection R1 of claims 28—33, 35, and 36 on the basis
of representative claim 28.
3 We note the rejection of claims 28—38 under pre-AIA 35 U.S.C. § 112,
first paragraph, as lacking written description support, was withdrawn by the
Examiner. See Adv. Act.
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Remaining claims 34, 37, and 38 in Rejections R2 and R3, not argued
separately or with specificity, stand or fall with the respective independent
claim from which they depend.4
ISSUE
Appellants argue (App. Br. 8—13; Reply Br. 2—5) the Examiner's
rejection of claim 28 under 35 U.S.C. § 102(b) as being anticipated by
Kreitler is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses "[a]
system for displaying multiple points-of-interest on a common map image"
that includes, inter alia, "a map-display application on the user device . . .
displaying on a common map ... a plurality of second graphical location
indicators corresponding to a plurality of other points-of-interest preselected
by the mapping application for display on the common map based on the
second location-related information," as recited in claim 28?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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We disagree with Appellants' arguments with respect to claims 28—38
and, unless otherwise noted, we incorporate herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We highlight and
address specific findings and arguments regarding claim 28 for emphasis as
follows.
Kreitler Preselects Points-of-Interest for Display
Appellants contend "the sponsor items [of Kreitler] are not
'preselected ... for display,' because all items, sponsor and non-sponsor, are
selected for display in response to a search query." App. Br. 9.
Thus, whether an item is sponsored or not only pertains to how
the item is displayed, not whether the item will be displayed.
Merely because a certain item is displayed more prominently in
the list 1604 does not mean that the item has been "preselected
... for display" — each search result is displayed regardless of
whether it was a sponsored item or not.
App. Br. 10.
In response to Appellants' contentions, the Examiner finds, and we
agree:
Kreitler discloses a mapping method and system which
transmits a map request from a client computer to a server, and
rendering a map and points of interest based on search query.
Specifically, Kreitler discloses based on a user query,
preselected sponsored content results are displayed (page 4,
paragraphs 71—72) along with the specific landmarks requested
by the user. This is a teaching of "a plurality of other points of
interest preselected by the mapping application/web map
service for display on the common map based on the second
location-related information" because sponsored results are
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arranged between advertisers and a web map service prior to
search operation being performed by a user.
Ans. 8—9.
We agree because, as our reviewing court holds, "[i]n the patentability
context, claims are to be given their broadest reasonable interpretations . . .
limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any
special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description."). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
The Examiner further finds:
Since the claim requires only that the plurality of points-of-
interest are preselected for display on the map based on second
location related information, the broadest reasonable
interpretation of the claim language is supported by Kreitler.
Kreitler preselects sponsor results that are displayed along with
the location results searched by a user. The Claim language
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does not specify which items are excluded from being
displayed.
Ans. 9 (emphasis added). We note Appellants have not cited to a definition
of "preselected" in the Specification that would preclude the Examiner's
broader reading.
We agree with the Examiner because, under the broadest reasonable
interpretation, Kreitler's disclosure flflf 71—72, 207; Fig. 16) of means for
"displaying the selected item(s) on the map simultaneously while displaying
items found by a subsequent query, regardless of whether the at least one
selected item satisfies a search criterion used in the subsequent query,"
discloses the recited "plurality of second graphical location indicators
corresponding to a plurality of other points-of-interest preselected by the
mapping application for display on the common map based on the second
location-related information," as recited in claim 28.5
Unpersuasive Argument Distinguishing "Selected" and "Preselected" Items
Appellants contend, "under the Examiner's interpretation, there is no
distinction between an item 'selected' for display and an item 'preselected' for
display." App. Br. 10.
The Examiner alleges that the sponsored items are "preselected"
for display because they are paid for by advertisers (and thus
displayed at the beginning of the list 1604), while the non-
sponsored items are merely "selected" for display because they
5 We further note claim 28 recites an intended use, i.e., "graphical location
indicators. . . preselected by the mapping application for display . . . ."
(Emphasis added). Under the broadest reasonable interpretation set forth by
the Examiner (Ans. 9), Kreitler's text-based list 1604, corresponding to
graphically displayed locations on map 1602, discloses a plurality of points-
of-interest preselected by the mapping application "for display" on the
common map. See Kreitler Fig. 16; 71—72.
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are not paid for by advertisers. The Examiner's distinction
focuses on how an item is displayed (if sponsored, at the
beginning of the list), not whether an item will be displayed. If
the Examiner's overly broad interpretation of "preselected"
were correct, each of the items displayed in the list 1604 would
be "preselected," because the list 1604 is ordered.
Id.
Appellants' contentions are unpersuasive because they are not
commensurate with the scope of the claim because the claim does not
preclude sponsorship. Further, Appellants again do not point to an explicit
definition of "preselected" that would render the Examiner's construction
overly broad, unreasonable, or inconsistent with their Specification. Instead,
they point to an exemplary embodiment in Appellants' Figure 4A. App. Br.
11; see also Reply Br. 2 ("Kreitler does not disclose or suggest 'a plurality of
other points-of-interest preselected by the [mapping application / web map
service] for display on the common map,' because the 'sponsored listings' in
Kreitler are merely highlighted items within a result set retrieved in response
to a user's search query.").
Throughout their briefs, Appellants never persuasively explain how
the Examiner erred by distinguishing between the claimed "preselection"
and Kreitler's "selection."
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitation of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 28, and grouped
claims 29-33, 35, and 36 which fall therewith. See Claim Grouping, supra.
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Rejections R2 and R3 of Claims 34, 37, and 38
In view of the lack of any substantive separate arguments directed to
obviousness Rejections R2 and R3 of claims 34, 37, and 38 under § 103 (see
App. Br. 13), we sustain the Examiner's rejection of these claims.
Arguments not made are waived.6
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 28—33, 35, and 36 under 35 U.S.C. § 102(b) over the cited prior
art of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 34, 37, and 38 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
6 Appellants merely argue dependent claims 34, 37, and 38 in Rejections R2
and R3 are allowable by virtue of their dependence on independent
claims 33 and 35. App. Br. 5.
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DECISION
We affirm the Examiner's decision rejecting claims 28—38.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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