Iwasaki, Naoki et al.

Patent Trials and Appeals Board

Jan 27, 2020

14327148 - (D) (P.T.A.B. Jan. 27, 2020)

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.
14/327,148 07/09/2014 Naoki Iwasaki 31730/19174-00 3400
12716 7590 01/27/2020
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
LI, MICHAEL J
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOKI IWASAKI, SATOSHI NIWA,
TAKAHIRO KOSAKAI, and DAVID ROBERT GORDON
Appeal 2019-001708
Application 14/327,148
Technology Center 2400
Before DENISE M. POTHIER, BETH Z. SHAW, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as GOOGLE LLC,
Mountain View, California, the assignee of the entire right, title, and interest
to the above-identified application. Appeal Br. 4.
Appeal 2019-001708
Application 14/327,148
2
CLAIMED SUBJECT MATTER
The claims are directed to server-specified end-of-list actions. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method implemented in a client device for providing
geographic content via a user interface of the client device, the
method comprising:
generating, by one or more processors, a description of a
geographic context of the client device;
providing, by the one or more processors, the description
of the geographic context to a network server;
receiving, from the network server, in response to the
provided description of the geographic context:
(i) an ordered list of items, each item including
respective geographic data selected at the network
server in accordance with the geographic context,
and
(ii) an indication of an action to be automatically
executed by a software application at the client
device when a user reaches an end of the ordered
list of items via the user interface;
presenting, by the software application, the ordered list of
items to be presented to a user via the user interface of the client
device; and
in response to an indication that the end of the ordered list
of items is reached by the user, automatically executing, by the
software application, the indicated action.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Perry et al.
Petersen et al.
Rogers et al.
Corella et al.
US 2009/0006211 A1
US 2010/0198814 A1
US 2012/0272181 A1
US 2013/0262445 A1
Jan. 1, 2009
Aug. 5, 2010
Oct. 25, 2012
Oct. 3, 2013

Appeal 2019-001708
Application 14/327,148
3
REJECTIONS
Claims 1, 4–10, 12–17, 19, and 20 are rejected under 35 U.S.C. § 103
as being unpatentable over Petersen and Rogers. Final Act. 4–21.
Claims 2, 3, 11, and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Petersen, Rogers, Corella, and Perry. Final Act. 21–27.
OPINION
Appellant argues the cited art fails to teach “an indication of an action
to be automatically executed by a software application at the client device
when a user reaches an end of the ordered list of items via the user
interface,” as recited in claim 1. Appeal Br. 13. In particular, Appellant
argues Rogers does not teach “that it may be desirable for a network server
to indicate what action a software application at a client device should
execute at the end of a list.” Id.
The Examiner finds that Petersen teaches a web interface provided by
a Mobile Aggregate Profile (“MAP”) server, and presented to a subscriber of
a subscriber device, including presenting an aggregate profile window to the
subscriber, where the subscriber may create an alert for a crowd by selecting
a create an alert button, or create a filter by selecting a create a filter button.
Final Act. 6; Ans. 4 (citing Petersen ¶¶ 255–258). Additionally, Petersen
teaches that the history manager of the MAP server (Petersen ¶¶ 169–176])
obtains history objects, sorts the history objects, creates a list, and populates
the list with relevant history objects. Ans. 5. We agree with the Examiner
that the cited portions of Petersen reasonably teach the claim limitations of
“an ordered list of items, each item including respective geographic data
selected at the network server in accordance with the geographic context,”
Appeal 2019-001708
Application 14/327,148
4
and “an indication of an action to be executed at the client device via the
user interface.” Id.
The Examiner relies on Rogers to teach the indication of an action of
an ordered list to be executed at the client device occurs “when a user
reaches an end of the ordered list of items.” Ans. 5. In particular, the
Examiner finds, and we agree, that Rogers provides a visual indication in a
graphical user interface that a list boundary is or will soon be reached, such
as a scroll animation effect or allowing the list wrapping to quickly jump to
the end or beginning of the list, and indicates what the list will do when the
user finishes the active transition. Ans. 5 (citing Rogers, ¶¶ 3, 20–24, 27–
31). For example, in paragraph 23, Rogers explains:
[s]uch indications of an impending list boundary, such as the
end or beginning of the list, in a scroll animation may be
accomplished via an algorithm that defines an animation effect
based on the visible portions of the document or list (i.e., those
portions that appear in the display window) or the remaining
portion or fraction of the document or list.
Accordingly, we agree with the Examiner that the combination of Petersen
and Rogers therefore teaches the disputed limitation of claim 1.
In the Reply Brief, Appellant argues that Rogers at most teaches
providing a visual indication to a user and does not teach an indication of an
action to be automatically executed by a software application. Reply Br. 2.
Yet, Appellant provides insufficient evidence proving that the Specification
or claims limit “indication of an action” in a way that, under a broad but
reasonable interpretation, is not encompassed by Petersen and Rogers’s cited
teachings. Moreover, Appellant’s arguments regarding Rogers’s alleged
individual shortcomings in this regard are unavailing because the Examiner
Appeal 2019-001708
Application 14/327,148
5
does not rely solely on Rogers alone for teaching this element, but rather the
cited prior art collectively.
Despite Appellant’s arguments to the contrary (Appeal Br. 15–16), we
see no error in the Examiner’s proposed combination. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to combine the MAP system of Petersen with the user interface method of
Rogers to provide a user interface method executed on a computing device
that provides an intuitive response to user inputs that enables efficient
navigation through end boundaries of lists and provides an elegant
mechanism of indicating the edge of a list, allowing list wrapping to quickly
jump to the end or beginning of the list, and indicating what the list will do
when the user finishes the active transition, where the combination of
elements according to known methods would yield a predictable result. Ans.
8–9 (citing Rogers ¶¶ 3, 20). Upon reviewing the record before us, we find
that the Examiner’s suggestion for the proposed modification in the prior art
suffices as an articulated reason with some rational underpinning to establish
a prima facie case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
The ordinarily skilled artisan, being “a person of ordinary creativity,
not an automaton,” would be able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in the claimed system.
Id. at 420–21. Such a combination is an obvious predictable variation of
known elements. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417.
Appeal 2019-001708
Application 14/327,148
6
Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Accordingly, we are not persuaded of error in the Examiner’s
obviousness rejection of claim 1. We sustain the rejection of claim 1, and
independent claims 12 and 17, which were argued together with claim 1. For
the same reasons, we sustain the rejection of dependent claims 2 and 3, for
which Appellant presents the same arguments. See Appeal Br. 17.
With respect to dependent claim 4, Appellant argues
It is not clear in what sense the historical request relates to “the action
to be executed at the client device when the user reaches the end of
the ordered list of items” recited in claim 4; nor is it clear how
“historical aggregate profile data” can be construed as “an additional
list of items or additional map data for displaying a digital map,”
when claim 1 clearly recites that “each item including respective
geographic data selected at the network server in accordance with the
geographic context.”

Appeal Br. 18.
Claim 4 depends from claim 1 and further recites:
the action to be executed at the client device when the user
reaches the end of the ordered list of items includes requesting,
by the one or more processors from the network server, at least
one of an additional list of items or additional map data for
displaying a digital map.
The Examiner explains that by making a historical request with the target
profile, the user can learn whether people matching the target profile are
historically located at a point of interest or area of interest. Ans. 13. We
Appeal 2019-001708
Application 14/327,148
7
agree with the Examiner (Ans. 13) that Figures 15A through 18 of Petersen
illustrate the grid 122 (Figure 18) that provides graphical information
indicative of aggregate profiles for grid locations returned by the MAP
server 12 in response to a historical request, which teaches the disputed
limitation of claim 4. The Examiner further proposes to combine this
teaching with the Rogers. See Final Act. 11. Accordingly, we sustain the
rejection of dependent claim 4.
Dependent claim 8 recites that the action to be executed by the client
device, when the user reaches the end of the ordered list of items, includes a
plurality of different tasks to be performed by the client device, each task
corresponding to a different function of an application executed by the client
device. Appellant argues that Petersen indicates that various actions are
carried out by the MAP server, not the client device. Appeal Br. 18. We are
not persuaded by this characterization of Petersen, because as the Examiner
explains, the MAP application is executed on the mobile device. Ans. 14–
15; see also Petersen ¶ 248–252 (“list screen 198-3 that is presented to the
user 20-1 via the GUI 198 in response to selecting the list button 204”).
Appellant also argues that the tasks have not been “specified by the MAP
server” of Peterson. Appeal Br. 18. However, claim 8 does not require tasks
to be “specified” by a particular server. Accordingly, we sustain the rejection
of dependent claim 8. For the same reasons, we sustain the rejection of
dependent claim 9, for which Appellant offers the same or essentially the
same arguments. We also sustain the rejection of the remaining dependent
claims, for which Appellant presents no additional arguments.

Appeal 2019-001708
Application 14/327,148
8
CONCLUSION
The Examiner’s rejections are affirmed.
We affirm the rejection of claims 1, 4–10, 12–17, 19, and 20 under 35
U.S.C. § 103 as being unpatentable over Petersen and Rogers.
We affirm the rejection of claims 2, 3, 11, and 18 under 35 U.S.C.
§ 103 as being unpatentable over Petersen, Rogers, Corella, and Perry.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–10, 12–
17, 19–20
103 Petersen, Rogers 1, 4–10,
12–17, 19–
20

2, 3, 11, and
18
103 Petersen, Rogers,
Corella, Perry
2, 3, 11,
and 18

Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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