Satoshi Kira et al.

Patent Trials and Appeals Board

Jul 23, 2019

14078855 - (D) (P.T.A.B. Jul. 23, 2019)

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.
14/078,855 11/13/2013 Satoshi KIRA AC-723-3883 7650
27562 7590 07/23/2019
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ABAZA, AYMAN A
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SATOSHI KIRA, AKIHIRO UMEHARA,
and TOSHIAKI SUZUKI
________________

Appeal 2018-004613
Application 14/078,8551
Technology Center 2400
________________

Before JENNIFER S. BISK, JUSTIN BUSCH, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, 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 1–15 and 17–21.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter a new ground of rejection.
INVENTION
The invention relates to an information transmission/reception method
in an information system that allows a panoramic image to be displayed on a
display device. Spec. ¶ 1. Claim 1 is illustrative of the invention and is

1 According to Appellants, Nintendo Co., Ltd. is the real party in interest.
App. Br. 3.
2 Appellants’ claims filed on 7/11/2017 indicate that claim 16 is cancelled.
Appeal 2018-004613
Application 14/078,855

2
reproduced below:
1. An information processing system comprising:
a plurality of information processing apparatuses each
capable of displaying, on a corresponding display device, a
plurality of panoramic images that are associated with a map,
where each of the plurality of panoramic images are associated
with a corresponding one of a plurality of different points that
are located in correspondence with different locations on the
map;
a transmission-side apparatus of the plurality of
information processing apparatuses, the transmissions-side
apparatus including at least one first hardware processor and
electronic memory, the at least one first hardware processor
configure to:
track a target point that is moved, based on
operation(s) performed by a user, over a map displayed on
a display screen of the transmission-side apparatus, the
target point being along a path from a first position of the
map to a second position of the map;
determine which multiple points of the plurality of
different points to select based on the path along which the
target point moved according to the operation(s)
performed by the user;
generate path information that at least includes a list
of the selected multiple points; and
transmit the generated path information to another
computer apparatus,
a reception-side apparatus of the plurality of information
processing apparatuses, the reception-side apparatus including at
least one second hardware processor and electronic memory, the
at least one second hardware processor configured to:
receive the generated path information from another
computer apparatus;
acquire plural different panoramic images based on
the selected multiple points included in the path
information, where each of the selected multiple points
included in the path information corresponds to at least
one of the acquired plural different panoramic images; and
Appeal 2018-004613
Application 14/078,855

3
for each one of the plural different panoramic
images, output, to the corresponding display device, an
image that is based on the acquired panoramic image.

REJECTIONS AT ISSUE
Claims 1–5, 8–12, 14, 15, and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of JPREF (JP2002-081951
published Mar. 22, 2002) and Ohashi (US 2012/0262492 A1; published Oct.
18, 2012). Final Act. 5–10.
Claims 6, 7, 13, and 17–20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of JPREF, Ohashi, and Lynch (US
2013/0169685 A1; filed Dec. 30, 2011). Final Act. 10–12.
Claims 12, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Zhu (US 8,633,964 B1; filed
Sept. 27, 2010) and Ohashi. Final Act. 12–16.
ANALYSIS
I. Claims 1–10, 12–15, and 17–21 Rejected Under 35 U.S.C. § 103 as
being unpatentable over the combination of either: (1) JPREF and Ohashi;
or (2) JPREF, Ohashi, and Lynch

The Examiner finds JPREF teaches storing map information in a
storage means, inputting origin and destination position information (e.g., an
address) on the map, and generating route information between the origin
and destination, which the Examiner maps to the limitation “track a target
point that is moved, based on operation(s) performed by a user” recited in
claim 1 (and similarly recited in claims 10 and 12). Final Act. 5–6, 10
(citing JPREF ¶¶ 18–19).
Appellants argue JPREF fails to teach “tracking a target point over a
Appeal 2018-004613
Application 14/078,855

4
map where the target point is being moved based on operations performed
by a user” because JPREF appears to permit the user to input a destination
into their navigation device, and then have a server provide route
information to the car navigation device. App. Br. 13 (emphasis added by
Appellants). We agree with Appellants.
JPREF provides the user the ability to input an origin and destination
into their navigation device, and then have a server provide route
information to the car navigation device. JPREF ¶¶ 18–19 (cited at Final
Act. 5–6). However, JPREF fails to teach “track a target point that is
moved, based on operation(s) performed by a user, over a map displayed on
a display screen of the transmission-side apparatus, the target point being
along a path from a first position of the map to a second position of the map”
(hereinafter “disputed limitation”).
We disagree with the Examiner that Appellants are arguing limitations
(i.e., “tracking a target point over a map where the target point is being
moved based on operations performed by a user”) not recited in claim 1.
Ans. 11. Although the quoted language from the preceding sentence is not
recited explicitly in claim 1 using the exact sequence of words presented by
Appellants, it is recited implicitly in claim 1. Stated differently, Appellants’
arguments (App. Br. 13) paraphrase claim 1’s language without departing
from the scope of claim 1.
We, therefore, also disagree with the Examiner’s two claim
interpretations and mappings. Ans. 11–12. The Examiner’s first
interpretation construes the disputed limitation as merely displaying the
selected user operation route; this construction is flawed because it ignores
“track,” which is recited in claim 1 explicitly. Reply Br. 3. The Examiner’s
Appeal 2018-004613
Application 14/078,855

5
second interpretation implicitly acknowledges that the references fail to
teach “track” and merely concludes this missing feature is an obvious
variant. Id.; Reply Br. 3.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 1, 10, and 12; and (2) dependent claims 2–9, 13–15,
and 17–21 under 35 U.S.C. § 103 as being unpatentable over the
combination of either JPREF and Ohashi or JPREF, Ohashi, and Lynch.
II. Claim 11 Rejected Under 35 U.S.C. § 103
The Examiner finds JPREF teaches storing map information in a
storage means, a user inputting origin and destination position information
(e.g., an address) on the map, and generating route information between the
origin and destination, which the Examiner maps to the limitation “accept a
user operation that moves a target point on the map that is being
concurrently displayed” recited in claim 11. Final Act. 5–6, 10 (citing
JPREF ¶¶ 18–19). In addition, the Examiner finds Ohashi teaches service
server 300 transmits operation display information to mobile terminal 100,
which then transmits the operation display information to TV 200, which the
Examiner maps to the limitation “transmit the [] information to another
processing apparatus” recited in claim 11. Final Act. 6–7, 10 (citing Ohashi
¶¶ 33, 35–39). The Examiner finds it would have been obvious to a person
having ordinary skill in the art at the time of the invention to combine
JPREF, Ohashi, and Lynch to rotate the path side data. Final Act. 10–11
(citing Lynch ¶¶ 5, 29); Ans. 16.
Appellants argue JPREF fails to teach concurrently displaying a map
or moving a target point on that concurrently displayed map based on the
accepted user operation. App. Br. 18. Appellants argue JPREF fails to teach
Appeal 2018-004613
Application 14/078,855

6
“determine which multiple points of the plurality of different points to select
based on the path along which the target point moved according to the user
operation” because JPREF does not teach based on a tracked target point.
Id. (citing id. at 14 (i.e., citing to what Appellants refer to as “Argument
2”)). Appellants argue neither JPREF nor Ohashi teaches the limitation
“generate path information that includes a list of the determined multiple
points; transmit the path information to another information processing
apparatus” recited in claim 11 because JPREF and Ohashi fail to teach
transmitting path information. Id. at 18–19 (citing id. at 14–15 (i.e., citing to
what Appellants refer to as “Argument 3”)). Appellants argue neither
JPREF nor Ohashi teaches panoramic images. Id. at 18 (citing id. at 15–16
(i.e., citing to what Appellants refer to as “Argument 4”)). Appellants argue
the Answer issues a new ground of rejection without an underlying
explanation as to how Lynch, JPREF, and Ohashi would be combined.
Reply Br. 2. We disagree with Appellants.
JPREF teaches storing map information in a storage means, a user
inputting (i.e., user operation) origin and destination position information
(i.e., moves a target point) on the map, and generating route information
between the origin and destination, which teaches the limitation “accept a
user operation that moves a target point on the map that is being
concurrently displayed” recited in claim 11. Final Act. 5–6, 10 (citing
JPREF ¶¶ 18–19).
We disagree with Appellants’ argument that because JPREF does not
teach based on a tracked target point, JPREF fails to teach “determine which
multiple points of the plurality of different points to select based on the path
along which the target point moved according to the user operation.” App.
Appeal 2018-004613
Application 14/078,855

7
Br. 18 (citing id. at 14 (i.e., “Argument 2)). “[A]ppellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.” See In re Self, 671 F.2d at 1348 (CCPA 1982). In this case,
although “track” is recited in claims 1, 10, and 12, “track” is not recited in
claim 11.
We disagree with Appellants’ argument that JPREF and Ohashi fail to
teach the limitation “generate path information that includes a list of the
determined multiple points; transmit the path information to another
information processing apparatus” recited in claim 11. App. Br. 18–19
(citing id. at 14–15 (i.e., “Argument 3”)). One cannot show nonobviousness
“by attacking references individually” where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In
this case, the Examiner relies on JPREF teaching generating route
information between the origin and destination, which teaches, or at least
suggests the limitation “generate path information that includes a list of the
determined multiple points” recited in claim 11. Final Act. 5–6, 10 (citing
JPREF ¶¶ 18–19). The Examiner relies on Ohashi’s service server 300
transmitting operation display information to mobile terminal 100, which
then transmits the operation display information to TV 200, which teaches
the limitation “transmit the [] information to another processing apparatus”
recited in claim 11. Final Act. 6–7, 10 (citing Ohashi ¶¶ 33, 35–39).
Moreover, Appellants’ argument pertaining to Ohashi fails to
demonstrate error in the Examiner’s findings. App. Br. 18–19. In order to
rebut a prima facie case of unpatentability, Appellants must point out the
supposed Examiner errors distinctly and specifically, and the specific
Appeal 2018-004613
Application 14/078,855

8
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). In this case, Appellants merely conclude
that “claim 11 is not obvious over the alleged JPRef and Ohashi
combination” (emphasis added) without pointing out the supposed Examiner
errors distinctly and specifically. App. Br. 19.
We disagree with Appellants’ argument that the cited references fail
to teach “panoramic images” recited in claim 11. App. Br. 18 (citing id. at
15–16 (i.e., “Argument 4”)). In this case, the Examiner finds Lynch teaches
panoramic images. Final Act. 10–11 (citing Lynch ¶¶ 5, 29); Ans. 16.
To the extent that Appellants are arguing the Examiner’s new ground
of rejection is improper, we disagree. Reply Br. 2. We note the issue of
whether an Examiner improperly introduced a new ground of rejection is a
petitionable matter and not an appealable matter. See 37 C.F.R. § 41.40(a).
Appellants’ failure to file timely such a petition waives the argument. See
id. And we note that the Examiner does include an underlying explanation
as to how Lynch, JPREF, and Ohashi would be combined, which Appellants
do not rebut distinctly and specifically. That is, the Examiner finds it would
Appeal 2018-004613
Application 14/078,855

9
have been obvious to a person having ordinary skill in the art at the time of
the invention to combine JPREF, Ohashi, and Lynch to rotate the path side
data. Final Act. 10–11 (citing Lynch ¶¶ 5, 29); Ans. 16.
Accordingly, we sustain the Examiner’s rejection of claim 11 under
35 U.S.C. § 103.
III. Claims 12 and 15 Rejected Under 35 U.S.C. § 103 as being
unpatentable over the combination of Zhu and Ohashi
The Examiner finds Zhu teaches a user choosing a location 104 at a
distance from current location 102, generating navigation path 106 that
includes points along path 106, wherein the points have corresponding
panoramic images of parked car 202, tree 204, and house 206, which the
Examiner maps to the limitation “tracking a target point that is moved, based
on operation(s) performed by a user, over a map displayed on the
transmission-side apparatus, the target point being along a path from a first
position of the map to a second position of the map” recited in claim 12.
Final Act. 13 (citing Zhu 2:59–3:15, Fig. 1).
The Examiner finds Zhu teaches a user choosing a location 104 at a
distance from current location 102, generating navigation path 106 that
includes points along path 106, wherein the points have corresponding
panoramic images of parked car 202, tree 204, and house 206, which the
Examiner maps to the limitation
determining which ones of the plurality of points correspond to
the path along which the target point is moved, the determined
ones of the plurality of points being multiple points that are each
associated with a different panoramic image of the plurality of
panoramic images

recited in claim 12. Final Act. 13 (citing Zhu 2:59–3:15; Fig. 1).
The Examiner finds Zhu teaches a user choosing a location 104 at a
Appeal 2018-004613
Application 14/078,855

10
distance from current location 102, generating navigation path 106 that
includes points along path 106, wherein the points have corresponding
panoramic images of parked car 202, tree 204, and house 206 and a series of
video images, which the Examiner maps to the limitation “generating path
information that at least includes a list of each one of the multiple points”
recited in claim 12. Final Act. 13 (citing Zhu 2:59–3:28; Figs. 1–3).
In addition, the Examiner finds Ohashi teaches service server 300
transmits operation display information to mobile terminal 100, which then
transmits the operation display information to TV 200, which the Examiner
maps to the limitation “transmitting the [] information to another computer
apparatus” recited in claim 12. Final Act. 14 (citing Ohashi ¶¶ 6, 33, Fig. 1);
Ans. 30. The Examiner finds a person having ordinary skill in the art at the
time of the invention (hereinafter “PHOSITA”) would have combined Zhu
and Ohashi to display information having a different scale. Final Act. 14;
Ans. 8.
Appellants argue Zhu does not teach the limitation “tracking a target
point that is moved, based on operation(s) performed by a user, over a map
displayed on the transmission-side apparatus, the target point being along a
path from a first position of the map to a second position of the map” recited
in claim 12 because Zhu corresponds to a position of a video that is being
shown between positions 102 and 104 and Zhu fails to teach displaying map
100 and tracking a target point that is being moved over that displayed map.
App. Br. 24–25; Reply Br. 6.
Appellants argue Zhu fails to teach the limitation
determining which ones of the plurality of points correspond to
the path along which the target point is moved, the determined
ones of the plurality of points being multiple points that are each
Appeal 2018-004613
Application 14/078,855

11
associated with a different panoramic image of the plurality of
panoramic images

recited in claim 12 because Zhu determines a path from selected images,
whereas claim 12 determines images from a provided path. App. Br. 25.
Appellants argue Zhu and Ohashi fail to teach the limitation
“generating path information that at least includes a list of each one of the
multiple points; transmitting the generated path information to another
computer apparatus” recited in claim 12 because Zhu fails to teach
generating and transmitting. App. Br. 25–26. Appellants argue that Ohashi
fails to teach transmitting generated path information. Reply Br. 7.
Appellants argue a PHOSITA would not have combined Zhu and Ohashi
because the Examiner’s motivation of displaying information having a
different scale has nothing to do with claim 12’s sending generated path
information. Id. We disagree with Appellants.
Zhu teaches a user choosing a location 104 at a distance from current
location 102 generates navigation path 106 that includes points along path
106 with corresponding panoramic images of parked car 202, tree 204, and
house 206, which at least suggests the limitation “tracking a target point that
is moved, based on operation(s) performed by a user, over a map displayed
on the transmission-side apparatus, the target point being along a path from a
first position of the map to a second position of the map” recited in claim 12.
Zhu 2:59–3:15; Fig. 1 (cited at Final Act. 13).
Zhu teaches a user choosing a location 104 at a distance from current
location 102 generates navigation path 106 (i.e., determining which ones of
the plurality of points correspond to the path) that includes points along path
106 with corresponding panoramic images of parked car 202, tree 204, and
Appeal 2018-004613
Application 14/078,855

12
house 206 (i.e., multiple points that are each associated with a different
panoramic image), which teaches the limitation
determining which ones of the plurality of points correspond to
the path along which the target point is moved, the determined
ones of the plurality of points being multiple points that are each
associated with a different panoramic image of the plurality of
panoramic images

recited in claim 12. Final Act. 13 (citing Zhu 2:59–3:15; Fig. 1).
We disagree with Appellants’ argument that Zhu and Ohashi fail to
teach the limitation “generating path information that at least includes a list
of each one of the multiple points; transmitting the generated path
information to another computer” recited in claim 12. App. Br. 25–26. One
cannot show nonobviousness “by attacking references individually” where
the rejections are based on combinations of references. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). In this case, Zhu teaches a user choosing a location
104 at a distance from current location 102 generates navigation path 106
that includes points along path 106 with corresponding panoramic images of
parked car 202, tree 204, and house 206 and a series of video images (i.e.,
list of each one of the multiple points), which teaches the limitation
“generating path information that at least includes a list of each one of the
multiple points” recited in claim 12. Final Act. 13 (citing Zhu 2:59–3:28;
Figs. 1–3).
In addition, the Examiner finds Ohashi teaches service server 300
transmits operation display information to mobile terminal 100, which then
transmits the operation display information to TV 200, which the Examiner
maps to the limitation “transmitting the [] information to another computer
Appeal 2018-004613
Application 14/078,855

13
apparatus” recited in claim 12. Final Act. 14 (citing Ohashi ¶¶ 6, 33, Fig. 1).
Moreover, Appellants’ argument pertaining to Ohashi fails to
demonstrate error in the Examiner’s findings. App. Br. 26. In order to rebut
a prima facie case of unpatentability, Appellants must point out the supposed
Examiner errors distinctly and specifically, and the specific distinctions
believed to render the claims patentable over the applied references. See 37
C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); see also Lovin, 652 F.3d at 1357; cf. Baxter, 952 F.2d at 391. In
this case, Appellants merely conclude that “the alleged combination of Zhu
and Ohashi fails to render obvious independent claim 12” (emphasis added)
without pointing out the supposed Examiner errors distinctly and
specifically. App. Br. 26.
Appellants’ arguments that (1) Ohashi fails to teach transmitting
generated path information (Reply Br. 7); and (2) a PHOSITA would not
have combined Zhu and Ohashi because the Examiner’s motivation of
displaying information having a different scale has nothing to do with claim
12’s sending generated path information (id.) are untimely.
Appellants’ argument that Ohashi fails to teach transmitting generated
path information (see Reply Br. 7) is untimely and waived because the
Examiner did not change the theory in the Answer while Appellants’
proffered new arguments in the Reply Brief without showing good cause.
See 37 C.F.R. § 41.41(b)(2); compare Final Act. 14 (citing Ohashi ¶¶ 6, 33,
Fig. 1) with Ans. 8, 30 (citing Ohashi ¶¶ 6, 33, Fig. 1); compare App. Br.
24–26 with Reply Br. 6–7. Moreover, even if this argument was not
untimely, which it is, as stated supra on page 12 of this Decision, Appellants
Appeal 2018-004613
Application 14/078,855

14
are attempting to show nonobviousness “by attacking references
individually” where the rejections are based on combinations of references.
In addition, as stated supra on pages 12–13 of this Decision, the
combination of Zhu and Ohashi teaches the limitation “transmitting the
generated path information” recited in claim 12.
Appellants’ argument that a PHOSITA would not have combined Zhu
and Ohashi because the Examiner’s motivation of displaying information
having a different scale has nothing to do with claim 12’s sending generated
path information (Reply Br. 7) is untimely and waived because the Examiner
did not change the theory in the Answer while Appellants’ proffered new
arguments in the Reply Brief without showing good cause. See 37 C.F.R.
§ 41.41(b)(2); compare Final Act. 14 (stating a PHOSITA would have
combined Zhu and Ohashi to display information having a different scale)
with Ans. 8 (stating a PHOSITA would have combined Zhu and Ohashi to
display information having a different scale); compare App. Br. 24–26 with
Reply Br. 6–7. Furthermore, even if this argument was not untimely, which
it is, Appellants’ argument that the Examiner’s motivation of displaying
information having a different scale has nothing to do with claim 12’s
sending generated path information (Reply Br. 7) is unpersuasive because
the Examiner’s motivation does not negate necessarily a suggestion for
modifying the prior art to arrive at the claimed invention. In re Fulton, 391
F.3d 1195, 1202 (Fed. Cir. 2004) (“Furthermore, as we emphasized in In re
Beattie, ‘[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.’ 974 F.2d at 1312. Accordingly, this argument is unpersuasive
Appeal 2018-004613
Application 14/078,855

15
because the Board need not have found the combination of Bowerman and
Pope to be desirable for the reason stated in the ’198 application.”).
Appellants do not argue dependent claim 15 separately with
particularity. App. Br. 24–26. Accordingly, we sustain the Examiner’s
rejection of: (1) independent claim 12; and (2) dependent claim 15 under
35 U.S.C. § 103 as being unpatentable over the combination of Zhu and
Ohashi.

IV. Claim 19 Rejected Under 35 U.S.C. § 103 as being unpatentable over
the combination of Zhu and Ohashi
The Examiner finds Zhu teaches a position of a camera, which the
Examiner maps to the limitation “line of sight direction” recited in claim 19.
Final Act. 15 (citing Zhu 5:48–60); Ans. 8–9 (citing Zhu 5:48–60).
Appellants argue Zhu’s position of a camera fails to teach the
limitation “line of sight direction” recited in claim 19. App. Br. 26; Reply
Br. 7. Appellants argue Zhu fails to teach transmitting line of sight direction
in the generated path information that is transmitted. Reply Br. 7–8. We
disagree with Appellants.
Zhu teaches capturing panoramic images, wherein capturing
panoramic images involves positioning a camera to capture the images,
which teaches the limitation “line of sight direction” recited in claim 19.
Zhu 5:48–60 (cited at Final Act. 15).
Regarding Appellants’ argument that Zhu fails to teach transmitting
line of sight direction in the generated path information that is transmitted
(Reply Br. 7–8), this argument is untimely. This argument is untimely and
waived because the Examiner did not change the theory in the Answer while
Appellants’ proffered new arguments in the Reply Brief without showing
Appeal 2018-004613
Application 14/078,855

16
good cause. See 37 C.F.R. § 41.41(b)(2); compare Final Act. 15 (citing Zhu
5:48–60; stating a position of the camera teaches the limitation “line of sight
direction” recited in claim 19) with Ans. 8–9 (citing Zhu 5:48–60; stating a
position of the camera teaches the limitation “line of sight direction” recited
in claim 19); compare App. Br. 26 with Reply Br. 7–8.
Moreover, even if this argument was not untimely, which it is, as
stated supra on page 12 of this Decision, Appellants are attempting to show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In addition, as stated supra on
pages 15–16 of this Decision, Zhu teaches line of sight direction; and as
stated supra on pages 12–13 of this Decision, the combination of Zhu and
Ohashi teach “transmitting the generated path information.”
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 103 as being unpatentable over the combination of Zhu and
Ohashi.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
NEW GROUNDS OF REJECTION
I. Claims 1–10, 12–15, and 17–21 Rejected Under 35 U.S.C. § 112(a)
for Lacking a Written Description of the Invention
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1–10, 12–15, and 17–21 under 35 U.S.C.
§ 112 (a), for lacking a written description of the invention.
Independent claims 1 and 10 recite “track” and independent claim 12
recites “tracking.” “Track” and “tracking” were not part of the originally
Appeal 2018-004613
Application 14/078,855

17
filed Specification; instead, these features were added via an Amendment
filed on July 11, 2017. According to Appellants, paragraph 56 and Figures 5
and 6 support the limitations “track” and “tracking.” App. Br. 5, 7, 9 (citing
Spec. ¶ 56, Figs. 5–6).
However, paragraph 56 merely states “determining” rather than
“track” or “tracking.” Spec. ¶ 56. Figures 5 and 6 do not remedy this
deficiency because they do not state “track” or “tracking.” Although “track”
or “tracking” may be an obvious variant of “determining,” the
Specification’s disclosure of “determining” does not provide inherent
support for “track” or “tracking.” Further, a description in the Specification
that merely renders the invention obvious does not satisfy the written
description requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). As such, Appellants did not
have possession of the limitation “track” recited in claims 1 and 10 and
“tracking” recited in claim 12 at the time of filing the application.
Accordingly, we enter a new ground of rejection for: (1) independent
claims 1, 10, and 12; and (2) dependent claims 2–9, 13–15, and 17–21 under
35 U.S.C. § 112(a).

II. Claim 11 Rejected Under 35 U.S.C. § 112(a) for Lacking a Written
Description of the Invention
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 11 under 35 U.S.C. § 112 (a), for lacking a
written description of the invention.
Independent claim 11 recites “concurrently.” “Concurrently” was not
part of the originally filed Specification; instead, this feature was added via
Appeal 2018-004613
Application 14/078,855

18
an Amendment filed on June 16, 2016. According to Appellants, paragraph
56 supports the limitation “concurrently.” App. Br. 8 (citing Spec. ¶ 56).
However, paragraph 56 does not state or support “concurrently.”
Spec. ¶ 56. Further, a description in the Specification that merely renders
the invention obvious does not satisfy the written description requirement.
See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (en banc). As such, Appellants did not have possession of the
limitation “concurrently” recited in claim 11 at the time of filing the
application.
Accordingly, we enter a new ground of rejection for claim 11 under
35 U.S.C. § 112(a).
III. Claim 11 Rejected Under 35 U.S.C. § 112(b) as Being Indefinite
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 11 under 35 U.S.C. § 112(b) as being
indefinite.
There are more than two reasonable constructions for “accept a user
operation that moves a target point on the map that is being concurrently
displayed.” That is, within this limitation there are three elements: (1) a
user operation; (2) a target point; and (3) the map. It is unclear what
combination of elements (1), (2), or (3) occur or are displayed
“concurrently.”
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211–1212 (BPAI 2008) (precedential).
Appeal 2018-004613
Application 14/078,855

19
Moreover, claim 11 states “is being displayed concurrently” (rather
than “are”), which implies that one element is displayed. If only one
element is displayed, this contradicts the limitation “concurrently.” To the
extent the Appellants intend the claim to require that one element “is being
displayed concurrently” with another element, the claim does not clearly
describe this requirement and the claim suffers from the same issue
discussed in the prior paragraph.
Accordingly, we enter a new ground of rejection for claim 11 under
35 U.S.C. § 112(b).
DECISION
We reverse the Examiner’s decision rejecting claims 1–10, 13, 14, 17,
18, 20, and 21 under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 11, 12, 15, and 19
under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
claims 12, 15, and 19, the Examiner’s decision with respect to claims 12, 15,
and 19 is affirmed. See 37 C.F.R. § 41.50(a)(1).
We enter a new ground of rejection for claims 1–15 and 17–21 under
35 U.S.C. § 112(a) as explained supra.
We enter a new ground of rejection for claim 11 under 35 U.S.C.
§ 112(b) as explained supra.
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).
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
Appeal 2018-004613
Application 14/078,855

20
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provide that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)