Ex Parte Toyama et al

Board of Patent Appeals and Interferences

Nov 18, 2010

10673111 (B.P.A.I. Nov. 18, 2010)

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.
10/673,111 09/26/2003 Kentaro Toyama 81190-0007 2316
29693 7590 11/19/2010
WILEY REIN LLP
1776 K. STREET N.W.
WASHINGTON, DC 20006
EXAMINER
COLAN, GIOVANNA B
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
11/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENTARO TOYAMA and RON LOGAN
____________________

Appeal 2009-006527
Application 10/673,1111
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed September 26, 2003. The real party in interest is
PlanetEye Co., ULC. (App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006527
Application 10/673,111

2
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-22 and
26-30 under authority of 35 U.S.C. § 134(a). Claims 23-25 have been
canceled. (App. Br. 3.) The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
The invention at issue on appeal relates to a process or method for
“for combining the precision estimate of a database entry’s coordinate value
such that the precision information is included as part of a one-dimensional
index by constructing a hierarchical index in which the size of the grid is
related to the precision of the coordinate value.” (Spec. 2:29-3:2.)3
Representative Claim
Independent claim 1further illustrates the invention. It reads as
follows:
1. A computer-implemented process for combining a
precision estimate of a database entry’s coordinate value with
the coordinate value into a single index, comprising the process
actions of:
inputting one or more location entities;
computing a one-dimensional grid index series wherein
each location entity is represented as a series of grids that
incorporate the location of each location entity; and
outputting said grid index series to a database.

3 We refer to Appellants’ Specification (“Spec.”); Second Amended Brief
on Appeal (“App. Br.”) filed February 29, 2008; and Reply Brief (“Reply
Br.”) filed October 3, 2008. We also refer to the Examiner’s Answer
(“Ans.”) mailed August 8, 2008.
Appeal 2009-006527
Application 10/673,111

3

References
The Examiner relies on the following references as evidence of
unpatentability:
Agrawal US 5,647,058 Jul. 8, 1997

Porcelli US 6,333,924 B1 Dec. 25, 2001

McBride US 6,370,476 B1 Apr. 9, 2002

Enomoto US 6,603,885 B1 Aug. 5, 2003

Na EP 0838 764 A2 Apr. 29, 1998

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 26-30 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1-6, 14-18, 21, 22, 26, 27, 29, and 30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of McBride and
Agrawal.
Claims 7, 8, and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McBride, Agrawal, and Enomoto.
Claims 9-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McBride, Agrawal, Enomoto, and
Porcelli.
Claims 19 and 20 under stand rejected 35 U.S.C. § 103(a) as being
unpatentable over the combination of McBride, Agrawal, Enomoto, and Na.

Appeal 2009-006527
Application 10/673,111

4
ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in rejecting Appellants’ claims 26-30
under 35 U.S.C. § 101? The issue turns on whether the claimed invention is
directed to statutory subject matter.
2. Does the Examiner err in finding the combination of McBride
and Agrawal would have collectively taught or suggested computing a one-
dimensional grid index series wherein each location entity is represented as a
series of grids that incorporate the location of each location entity as recited
in Appellants’ claim 1?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ claims 26-30 each recite a “computer-readable
medium.” (App. Br. 17-18, Claim App’x.)
2. Appellants’ Specification describes the computer readable
media as comprising communication media such as data signal or carrier
wave. (Spec. 8:24-9:9.) Specifically, Appellants’ Specification explains
that “computer readable media may comprise computer storage media and
communication media.” (Spec. 8:27-29.) Appellants’ Specification further
explains that “[c]ommunication media typically embodies computer readable
instructions, data structures, program modules or other data in a modulated
data signal such as a carrier wave or other transport mechanism and includes
any information delivery media.” (Spec. 9:6-9.)
Appeal 2009-006527
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McBride Reference
3. McBride describes a method for transforming survey location
points from “a first, globally defined datum” to “a second datum over a
chosen region, that varies continuously with the (arbitrary) choice of survey
points within the region.” (Col. 2, ll. 25-28.) McBride describes a grid of
survey points (locations) including corresponding location coordinates and a
grid point index “m” (col. 3, l. 23 to col. 4, l. 44; Fig. 3) – “grid G of spaced
apart points Pm,G, with corresponding location coordinates (xm,G, ym,G, zm,G)
(m=1, 2, . . . , M), is first imposed on the survey region SR in the first
datum” (col. 3, ll. 57-59) for a “grid point index m” (see col. 4, l. 33).

ANALYSIS
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation for a reasoned conclusion that claims 26-30 are directed
to non-statutory subject matter in the Examiner’s Answer. (Ans. 4.) The
Examiner also sets forth a detailed explanation of a reasoned conclusion of
obviousness in the Examiner’s Answer with respect to claim 1. (Ans. 5-6,
19-20.) Therefore, we look to Appellants’ Briefs to show error in the
proffered reasoned conclusions. See Kahn, 441 F.3d at 985-86.

Appeal 2009-006527
Application 10/673,111

6
Arguments Concerning the Examiner’s Rejection
of Claims 26-30 under 35 U.S.C. § 101
The Examiner rejects Appellants’ claims 26-30 for being directed to
non-statutory subject matter – finding that the claims are directed to signals
that do not fall within a proper statutory category (citing In re Nuijten, 500
F.3d 1346 (Fed. Cir. 2007)). (Ans. 4.) Appellants contend that the subject
matter is statutory. (Reply Br. 4-5.) Based on the record before us, we do
not find error in the Examiner’s rejection of claims 26-30 under § 101.
We agree with the Examiner’s findings with respect to Appellants’
Specification, construction of the recited “computer-readable medium,” and
interpretation of the legal precedent. We find Appellants mischaracterize the
current state of the law, and consequently their countervailing legal
arguments to be unpersuasive for the reasons that follow.
Appellants’ claims 26-30 recite a “computer-readable medium” (FF 1)
that Appellants describe as comprising communication media, which
embodies “a modulated data signal such as a carrier wave.” (FF 2.) We
find Appellants’ claimed “computer-readable medium” implicates a
transitory signal. Specifically, claims 26-30 encompass the use of a
computer data signal embodied in a carrier wave to store, transfer, or
manipulate information. A computer data signal embodied in a carrier wave
is a transitory, propagating signal not within any of the four statutory
categories and, therefore, non-statutory. See In re Nuijten, 500 F.3d at 1357;
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010). It follows that claims 26-30 are directed to non-
statutory subject matter. Accordingly, we affirm the Examiner’s rejection
claims 26-30 under § 101.

Appeal 2009-006527
Application 10/673,111

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Arguments Concerning the Examiner’s Rejection
of Claim 1 under 35 U.S.C. § 103
The Examiner rejects Appellants’ independent claim 1 as being
unpatentable over the combination of McBride and Agrawal. (Ans. 5-6, 19-
20.) The Examiner finds that McBride discloses a “one-dimensional grid
index series wherein each location entity is represented as a series of grids
that incorporate the location of each location entity.” (Ans. 5-6, 19 (citations
omitted).) Appellants contend that McBride does not disclose, teach, or
suggest the disputed limitation. (App. Br. 5-10.) Specifically, Appellants
contend that:
McBride’s “grid point index” is substantially different from – in
fact, wholly unrelated to – the claimed “one-dimensional grid
index series.”. . . For example, whereas the claimed “grid index
series” identifies the grid squares to which a location entity is
mapped for grids of varying size, McBride’s “grid point index”
identifies the single point to which a location entity directly
corresponds on a single grid.
(App. Br. 10.) Based on the record before us, we find error in the
Examiner’s obviousness rejection of Appellants’ claim 1. We agree with
Appellants that McBride (or McBride and Agrawal collectively) would not
have taught or suggested the disputed features of Appellants’ claim 1 to one
skilled in the art for essentially the reasons espoused by Appellants.
Based on a broad but reasonable interpretation of Appellants’ disputed
claim limitation in light of Appellants’ Specification and their explanation in
their Briefs, we find that Appellants’ recited “computing a one-dimensional
grid index series wherein each location entity is represented as a series of
grids that incorporate the location of each location entity” means computing
a series (one-dimensional series) of grid values (grid index values) for a
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location entity (or entities) for multiple grids of varying size. (See Spec.
12:22-13:7, 15:19-16:19, 18:1-12, 18:24-19:6; Fig. 6.)
As detailed in the Findings of Fact section supra, McBride describes a
grid having location points and a grid point index (FF 3), which one of skill
in the art would understand to be an index of a grid (points on a grid)
incorporating locations (survey point locations). As pointed out in detail by
Appellants (see App. Br. 7-9), McBride’s grid and grid point index are very
different from the recited grid index series. During the patent examination
process, claims receive their broadest reasonable interpretation. See In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the Examiner must still examine the entire patent disclosure to
discern the meaning of a disputed claim limitation. See, e.g., In re Paulsen,
30 F.3d 1475, 1479-80 (Fed. Cir. 1994) (Application examined in its entirety
to determine meaning). Although we agree with the Examiner that McBride
teaches a grid and a grid index, McBride does not describe utilizing multiple
grids (having different sizes) to calculate a series of index values (grid series
index) or values (index values) dependent on grid structure (size) – much
less calculating these values for each location entity (point in the grid). The
addition of Agrawal does not cure this deficiency.
Consequently, we are constrained by the record before us to find that
McBride (or McBride and Agrawal collectively) would not have taught or
suggested the disputed features of Appellants’ claim 1. It follows that
Appellants have persuaded us of error in the Examiner’s obviousness
rejection of Appellants’ claim 1.
Appeal 2009-006527
Application 10/673,111

9
Arguments Concerning the Examiner’s Rejection of the
Remaining Claims under 35 U.S.C. § 103(a)
Appellants’ independent claim 26 includes a limitation of
commensurate scope. Appellants’ dependent claims 2-6, 14-18, 21, 22, 27,
29, and 30 depend on claims 1 and 26, respectively. It follows that
Appellants have also persuaded us of error in the Examiner’s obviousness
rejection of Appellants’ claims 2-6, 14-18, 21, 22, 26, 27, 29, and 30.
Similarly, the Examiner rejects Appellants’ other dependent claims as
obvious in view of McBride and Agrawal in combination with additional
prior art references. The Examiner rejects Appellants’ claims 7, 8, and 28 as
being obvious in view of the combination of McBride, Agrawal, and
Enomoto. The Examiner rejects Appellants’ claims 9-13 as being obvious in
view of the combination of McBride, Agrawal, Enomoto, and Porcelli. The
Examiner also rejects Appellants’ claims 19 and 20 as being obvious in view
of the combination of McBride, Agrawal, Enomoto, and Na. Appellants’
dependent claims 7-13, 19, and 20 depend on claim 1; and Appellants’
dependent claim 28 depends on claim 26. For the reasons set forth with
respect to claim 1 (supra), we find that McBride does not teach “computing
a one-dimensional grid index series wherein each location entity is
represented as a series of grids that incorporate the location of each location
entity” as recited in Appellants’ claim 1. The additional cited references –
Agrawal, Enomoto, Porcelli, and/or Na – do not cure the deficiencies of
McBride. Consequently, we are constrained by the record before us to find
that cited references would not have taught or suggested at least this
disputed feature. It follows that Appellants have persuaded us of error in the
Examiner’s obviousness rejection of Appellants’ claims 7-13, 19, and 20.
Appeal 2009-006527
Application 10/673,111

10
Therefore, based on the record before us, we find that the Examiner
erred in finding McBride discloses a one-dimensional grid index series
recited in Appellants’ claims 1-22 and 26-30. Accordingly, we reverse the
Examiner’s obviousness rejection of these claims.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
26-30 under 35 U.S.C. § 101.
Appellants have shown that the Examiner erred in rejecting claims 1-
22 and 26-30 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 26-30 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 1-22 and 26-30 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED-IN-PART

Appeal 2009-006527
Application 10/673,111

11

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