Ex Parte Tanabe

Board of Patent Appeals and Interferences

Jan 30, 2009

10336830 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ATSUSHI TANABE
____________

Appeal 2008-5672
Application 10/336,830
Technology Center 3600
____________

Decided:1 January 30, 2009
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Atsushi Tanabe (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3-12, and 15-17, which are the only

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5672
Application 10/336,830

2
claims pending in the application. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a navigation apparatus
and method. Claims 4, 10, and 11, reproduced below, are illustrative of the
claimed subject matter.
4. A navigation apparatus comprising:
a current position determination means for
determining a current position of a vehicle;
a storage means for storing map data;
a route searching means for searching for a
route from the current position of the vehicle
determined by said current position determination
means to a destination by referring to the map data
stored in said storage means;
a screen producing means for producing a
route guidance screen for providing the route
searched for by said route searching means and the
current position of the vehicle, the route guidance
screen including a name and number of a road on
the route; and
a display means for displaying the route
guidance screen produced by said screen
producing means.

10. A navigation method comprising the steps of:
determining a current position of a vehicle;
searching for a route from the determined
current position of the vehicle to a destination by
referring to map data;
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Application 10/336,830

producing a route guidance screen for
providing the route and the current position of the
vehicle, the route guidance screen including a
name and number of a road on the route; and
displaying the produced route guidance
screen.

11. An apparatus for providing navigation
information, comprising:
a position measurement unit configured to
provide a current position;
a storage device configured to retain
navigation data; and
a navigation control unit operatively
connected to said position measurement unit and
said storage device, wherein said navigation
control unit is configured to:
search for a route from the current position
to a destination using the navigation data,
determine targets for guidance which are
associated with the route, and
produce a route list which provides
information associated with each of the targets for
guidance, including a name and a route number of
a road.

The Rejection
Appellant seeks review of the Examiner’s rejection of claims 1, 3-12,
and 15-17 under 35 U.S.C. § 103(a) as being unpatentable over McDonough
(US 6,163,749, issued December 19, 2000) and Childs (US 6,647,337 B1,
issued November 11, 2003).

Appeal 2008-5672
Application 10/336,830

SUMMARY OF DECISION
We AFFIRM.

OPINION
The Issue
The issue presented in this appeal is whether Appellant demonstrates
that the Examiner errs in rejecting the claims because McDonough and
Childs do not teach or suggest all features of the claims. In particular,
Appellant argues that McDonough and Childs do not teach or suggest a
means for or step of producing a route list screen or route guidance screen
including a name and a route number of a road and means for or step of
displaying the produced route list screen or route guidance screen, as called
for in claims 1, 4, 9, and 10; and a navigation control unit configured to
produce a route list providing information associated with each guidance
target, including a name and a route number of a road, as called for in claim
11. Appeal Br. 7-10.
Facts Pertinent to the Issue
• McDonough teaches the basic elements of a navigation system, including a
processor 12, drive 14, memory storage device 16 for storing a navigation
software program 18, and a positioning system 24. McDonough, col. 3, ll.
34-36 and 45-46.
• McDonough’s navigation software program 18 includes functions and
features such as route calculation and route guidance. McDonough, col. 6,
ll. 48-54.
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Application 10/336,830

• McDonough further discloses a map display tool 40 for creating and
rendering a map and displaying it on display 27. McDonough, col. 7, ll.
25-62.
• McDonough teaches producing a priority list for placement of names and
shields (e.g., a blue shield icon for an interstate) of roadways and points of
interest. McDonough, col. 9, ll. 5-9.
• McDonough’s system produces a name storage table including two lists, a
road name list and a road shield list, and prepares the name data for
display. McDonough, col. 9, ll. 28-37; col. 14, ll. 32-36 and 57-62; col.
15, ll. 15-20; and col. 16, ll. 15-20.
• McDonough teaches running a name placement routine to determine
placement of names on the map display. McDonough, col. 15, ll. 39-52.
• McDonough teaches ensuring that names and icons do not overlap, and
following a prioritization to omit names that do not fit or would cause
overlap. McDonough, col. 17, ll. 12-33.
• McDonough does not explicitly teach displaying both the road name and
the road shield on the display.
• Childs describes labelling of thoroughfares (roads) in a navigational device
using shielded names and non-shielded names, and points out that some
thoroughfares have multiple names. Childs gives as an example the use of
the non-shielded name “Jeff Davis Highway” for the same thoroughfare
whose shielded name is “US1.” Childs, col. 1, ll. 19-32. A shielded name
thus includes a route number.
• Childs points out problems for users of cartographic data from navigation
devices posed by identification of thoroughfares by more than one name.
In particular, if the road signs and the navigation system use different
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Application 10/336,830

names for a road, the driver may not correctly identify the road and may
travel past, or miss, the intended course of navigation. Childs, col. 1, ll.
46-55.
• Childs uses an algorithm, with certain criteria, such as the type of road at
issue, for selecting the best known name for a road and for displaying that
selected name on the map. Childs, col. 6, ll. 38-45; col. 9, ll. 16-30; col.
11, ll. 9-28; col., 12, ll. 36-45; and col. 14, ll. 41-51.
Analysis
Appellant and the Examiner appear to be in agreement that
McDonough satisfies all of the limitations of independent claims 1, 4, 9, and
10, with the exception that McDonough does not explicitly teach a means for
or step of producing a route list screen or route guidance screen including a
name and a route number of a road and means for or step of displaying the
produced route list screen or route guidance screen. Likewise, Appellant
and the Examiner appear to be in agreement that McDonough satisfies all of
the limitations of independent claim 11, with the exception that McDonough
does not explicitly teach a navigation control unit configured to produce a
route list providing information associated with each guidance target,
including a name and a route number of a road. Appellant does not identify
any other claimed features lacking in McDonough. The Examiner relies
upon the combined teachings of McDonough and Childs to address this
deficiency. Accordingly, the issue presented in this appeal turns on whether
the combined teachings of McDonough and Childs are sufficient to have
prompted a person of ordinary skill in the art to modify McDonough’s map
display tool 40 to produce a route list, or route list screen, including a name
and a route number of a road for display on the map display.
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Application 10/336,830

We begin our analysis by pointing out that while the requirement of
demonstrating a teaching, suggestion, or motivation to combine known
elements in order to show that the combination is obvious may be “a helpful
insight,” it cannot be used as a rigid and mandatory formula. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).
Additionally, while there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id.
As noted in our findings above, both McDonough and Childs
evidence that the use of both names (non-shielded names) and route numbers
(shielded names) for roads in navigation systems was well known in the art
at the time of Appellant’s invention. Appellant urges that Childs cannot
remedy the above-noted deficiency of McDonough, because Childs teaches
displaying only the best-known name. Appeal Br. 9. While this is the
particular approach elected by Childs to resolve the well-established
problem of user confusion presented by the use of multiple names for roads,
a person of ordinary skill in the art, being also a person of ordinary creativity
and not an automaton,2 would readily appreciate that there are other possible
approaches to address that problem utilizing the names and route numbers
compiled in the name storage table.3 For example, a person of ordinary skill

2 Id. at ___, 127 S. Ct. at 1742.
3 Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. See In re
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Application 10/336,830

in the art would immediately envisage from the combined teachings of
McDonough and Childs another, perhaps superior, approach wherein both
the name (non-shielded name) and the route number (shielded name) are
included on the map display, where permitted by McDonough’s
prioritization routine, to further minimize the chance of confusion. The
results obtained by selecting such an approach over the approach selected by
Childs are predictable, and are the product not of innovation, but of ordinary
creativity and common sense.
Conclusion
In light of the above, we conclude that Appellant’s argument does not
demonstrate error in the Examiner’s rejection of independent claims 1, 4,
and 9-11. Appellant does not present any separate arguments for the
patentability of the dependent claims apart from the independent claims
from which they depend. Therefore, the dependent claims stand or fall with
the independent claim from which they depend. We sustain the rejection of
claims 1, 3-12, and 15-17.

DECISION
The Examiner’s decision is affirmed.
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) (2007).
AFFIRMED

Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgement. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
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Application 10/336,830

hh

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