Ex Parte Van De Sluis et al

Patent Trial and Appeal Board

Nov 18, 2013

10567037 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte BARTEL MARINUS VAN DE SLUIS,
VINCENTIUS PAULUS BUIL, and
ELMO MARCUS ATTILA DIEDERIKS
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Appeal 2011-005171
Application 10/567,037
Technology Center 2100
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Before ROBERT E. NAPPI, JEAN R. HOMERE, and
DEBRA K. STEPHENS, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL
Appeal 2011-005171
Application 10/567,037

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 9.
We affirm.
INVENTION
The invention is directed to a method of presenting items for selection
on an electronic device, where the presentation of the items is dependent
upon a geographical location of the item. See pages 1 and 2 of Appellants’
Specification. Claim 1 is representative of the invention and reproduced
below:
1. A method of presenting a plurality of items, comprising the
steps of:
enabling a user to select an item in a selection context, a
selection context representation representing the selection context,
the selection context representation including at least a parameter
indicating a geographical area:
associating said item with said selection context
representation; and
presenting a plurality of items including said item in a
presentation context in dependence upon a relation between a
presentation context representation representing the presentation
context and said selection context representation, the presentation
context representation including at least a parameter indicating a
geographical area.

REJECTIONS AT ISSUE
Appeal 2011-005171
Application 10/567,037

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The Examiner has rejected claims 1 through 3, 6, 8, and 9 under 35
U.S.C. § 103(a) as unpatentable over Nakajima (US 6,008,806) and
Salmimaa (US 2002/0160817). Final Rejection 7-12.1
The Examiner has rejected claims 4, 5, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Nakajima, Salmimaa and Roth (US
2001/0019338 A1). Final Rejection 12-16.

ISSUES
Appellants argue on pages 2 through 7 of the Appeal Brief that the
Examiner’s rejection of independent claims 1 and 9 is in error. The issue
presented by these arguments is whether the Examiner erred in finding the
combination of Nakajima and Salmimaa teaches a selection context as
recited in independent claims 1 and 9?

ANALYSIS
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellants’ arguments. We
disagree with Appellants’ conclusions that the Examiner erred. Appellants’
arguments center around Salmimaa not teaching the selection context. The
Examiner’s response to Appellants’ arguments provides a comprehensive
rationale supported by citations to show that Salmimaa teaches the selection
context as claimed. Ans. 13-20. We have reviewed the evidence cited by

1 Throughout this opinion, we refer to the Final Office Action mailed March
30, 2010, the Examiner’s Answer mailed on November 23, 2010, the Appeal
Brief filed September 13, 2010, and the Reply Brief dated January 24, 2011.
Appeal 2011-005171
Application 10/567,037

4

the Examiner and we concur with the Examiner’s rationale. We further note
that Appellants’ arguments that the term “selection context” relates to “the
user’s previous selections at a certain geographical area” (App. Br. 7) and
that “the ‘selection context’ refers . . . to history information of the user’s
previous selections. . .” (Reply Brief 5) are not persuasive as they are not
commensurate with the scope of the claim and not explicitly defined in the
Specification. While Appellants’ Specification may discuss the “selection
context” as including information related to previous selections, we decline
to import such limitations into the claims. Accordingly, we sustain the
Examiner’s obviousness rejections of claims 1 through 3, 6, 8, and 9.
Appellants argue that the Examiner’s obviousness rejection of claims
4, 5, and 7 is in error as Roth fails to cure the deficiency noted in the
rejection of claim 1 and is therefore in error for the same reasons as claim 1.
As Appellants have not persuaded us of a deficiency in the rejection of claim
1 we sustain the Examiner’s rejection of claims 4, 5, and 7 for the same
reasons as claim 1.

DECISION
We sustain the Examiner’s rejection of claims 1 through 9.
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)(iv) (2010).

AFFIRMED

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