Tierney, Timothy

Patent Trials and Appeals Board

Sep 17, 2020

2019003185 (P.T.A.B. Sep. 17, 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.
12/454,012 05/11/2009 Timothy Tierney SIMPL-002U.USA 5501
7590 09/17/2020
Timothy Tierney
7435 N. Figueroa Street
Box No. 41403
Los Angeles, CA 90041
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
09/17/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY TIERNEY
Appeal 2019-003185
Application 12/454,012
Technology Center 2100
Before ALLEN R. MacDONALD, GREGG I. ANDERSON, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–31. Claims 1–12 are cancelled. 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(a). Appellant identifies the real party in interest as the
inventor. Appeal Br. 2.
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Application 12/454,012

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RELATED PROCEEDINGS
Appellant identifies an appeal pending before the Board in U.S. Patent
Application No. 11/038,607 as a related proceeding. That related
proceeding has been assigned Appeal No. 2019-004895, and we decide the
related appeal in a concurrently issued decision.
CLAIMED SUBJECT MATTER
The claims are directed to an internet based geographic information
system. Claim 13, reproduced below, is illustrative of the claimed subject
matter:
13. A process for using a geographic information system,
comprising:
providing at least one resident Internet server;
providing a package of server files executing on the at
least one resident Internet server, wherein
at least one of the server files is configured to control user
interaction with multiple online databases containing geospatial
information;
at least one of the server files is configured to control
create/retrieve/update/delete interactions with multiple online
databases containing geospatial information;
at least one of the server files is configured to interface
with an Internet browser or equivalent client accessible from a
user platform;
at least one of the server files is configured to provide core
geographic information system functionality, including map
navigation, discrete geospatial data layer presentation, data
transformations, and discrete geospatial data layer creation at the
user level through the browser interface, wherein user created
discrete geospatial data layers are uploaded and stored on a non-
transitory medium of at least one resident Internet server;
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at least one of the server files is configured to provide user
interactions, including
interfacing with the core geographic information
system functionality,
access by a first user to geospatial databases
provided by at least one of the resident Internet servers or
provided by at least one Internet website, the geospatial
databases having discrete geospatial data layers created by
other users of the geographic information system, and
provision of map-based data to the first user,
including discrete geospatial data layers created by other
users;
at least one of the server files is configured to support
simultaneous multiple user access to the user created discrete
geospatial data layers and the core geographic information
system functionality; and
at least one of the server files is configured to allow a user
to grant data layer access permissions to discrete geospatial data
layers for stand-alone usage or usage in maps created and owned
on at least one server by the first user so as to allow the first user
to allow access by a second user that creates and owns on at least
one server discrete geospatial data layers, and at least one of the
server files is configured to allow a user to grant data layer access
permissions to discrete geospatial data layers for stand-alone
usage or usage in maps to allow the second user to share discrete
geospatial data layers created and owned on at least one server
by the second user, wherein the data layer access permissions are
uploaded to and stored on a non-transitory medium of a server
and enforced by a fully online resident program; and
providing access to the user created discrete geospatial
data layers and the core geographic information system
functionality for a fee.
Appeal Br. 14–15 (Claims Appendix).
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REFERENCES
The references2 relied upon as prior art the Examiner are:
Name Reference Date
Von Kaenel US 7,107,285 B2 Sept. 12, 2006
Coch US 7,739,038 B2 June 15, 2010
Klein US 2003/0140064 A1 July 24, 2003
REJECTIONS
Claims 13–31 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2.
Claims 13–30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Von Kaenel and Coch. Final Act. 3–21.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Von Kaenel, Coch, and Klein. Final Act. 21–22.
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner rejects the claims for lack of written description,
finding that the limitation “configured to allow a user to grant data layer
access permissions to discrete geospatial data layers for stand-alone usage
or usage in maps,” which is recited in each independent claim, is not
supported by the Specification. Final Act. 2–3. The Examiner determines
that although the Specification discloses “users may share data amongst
themselves merely by granting access permissions,” it does not describes
that the shared data include “discrete geospatial layers for standalone usage,”
as recited in the claim. Ans. 3–4.
Appellant argues the limitation finds support in the Specification at
paragraphs 13 and 22. Appeal Br. 7. Specifically, Appellant asserts that the

2 We identify the prior art references according to their first named inventor.
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Examiner has misunderstood the meaning of “stand-alone,” and that when
correctly understood to mean “without a map,” the Specification describes
that permissions are applied to data “with no mention of ‘maps’.” Reply
Br. 3.
We are persuaded that Examiner erred in rejecting the claims for lack
of written description. The Specification discloses “by providing a
simplified navigation and data creation user interface, [the invention] allows
for many more users to create GIS data layers.” Spec. ¶ 12. Thus, the
Specification discloses that users can create geospatial data layers. The
Specification further discloses that “users may create data layers [and]
analyze the data at least partially themselves” (Spec. ¶ 12), indicating that
layers may be handled individually, and not necessarily in a larger map
platform environment. The Specification further discloses that “users may
allow other users to access their data, promoting data sharing,” and may do
so “by granting access permissions.” Spec. ¶ 13.
We agree with Appellant that, taken together, these passages would
indicate to a person of ordinary skill in the art that the inventor possessed
geospatial data layers granting data layer access permissions “for standalone
usage” and also for incorporating them into maps via a mapping platform.
As such, we agree with Appellant that the Examiner erred in rejecting the
claims for lack of written description, and we do not sustain the rejection
under 35 U.S.C. § 112, first paragraph.
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REJECTIONS UNDER 35 U.S.C. § 103
First Issue
In rejecting the independent claims under 35 U.S.C. § 103, the
Examiner concludes the claims would have been obvious3 over the
combined teachings of Von Kaenel and Coch. Final Act. 3–8. Relevant to
the issues raised by Appellant, the Examiner finds Von Kaenel teaches “at
least one of the server files is configured to allow a user to grant data layer
access permissions for discrete geospatial data layers.” Final Act. 5–6
(claim 13), 12 (claim 19), 17 (claim 23) (citing, inter alia, Von Kaenel col.
18, ll. 49–67; col. 20, ll. 36–45; col. 35, ll. 52–67; col. 36, ll. 1–10; col. 58,
ll. 1–67; col. 59, ll. 1–67). The Examiner finds this limitation also taught by
Coch. Final Act. 6 (citing Coch col. 2, ll. 26–57; col. 4 ll. 38–67; col. 5,
ll. 1–67; and col. 11, ll. 36–67).
Appellant argues the Examiner has erred because “none of the applied
references make explicit mention or teaching of map data layer sharing.”
Appeal Br. 9. More specifically, Appellant argues the cited passages in Von
Kaenel merely teach “project sharing rather than map data layer sharing.”
Appeal Br. 9.
We disagree with Appellant that the cited references fail to teach or
suggest map data layer sharing because Von Kaenel teaches layer-based
access to map projects. Specifically, Von Kaenel teaches a scenario in
which a “sales director will modify the composite image, assign access

3 In the statement of the rejection, the Examiner states the claims are
“anticipated” by the prior art. Final Act. 3. However, we consider this to be
a typographical error because the Examiner also states that the statutory
basis for the rejection is 35 U.S.C. § 103(a), and provides analysis for each
rejected claim on that basis.
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privileges, and share a project with others.” Von Kaenel col. 57, ll. 48–50.
Von Kaenel further teaches that the sales director can upload a project and
“assign specific access privileges to team members for this new project.” Id.
col. 57, ll. 64–65. Von Kaenel teaches that different types of access, such as
“view” or “modify” can be granted to different individuals. Id. Von Kaenel
goes on to state that “[t]he sales director grants “view & modify” access to
the project to team member “B” to the sales territory data layer, and to no
other user.” Id. col. 58, ll. 4–6 (reference numbers omitted). This statement
indicates that in Von Kaenel’s system, permissions can be granted to
specific data layers, and are not limited to projects as a whole. As such, we
are not persuaded by Appellant’s argument that the cited references do not
teach map data layer sharing.
Second Issue
In combining the teachings of Von Kaenel and Coch, the Examiner
finds that the references “are from the analogous art of methods and systems
that provide collaborating and access to geospatial information.” Final
Act. 8. The Examiner further determines that it would have been obvious to
combine Von Kaenel and Coch “to provide users with the ability to choose
to share all or portions of their own geospatial information with other users.”
Final Act. 8 (citing Coch col. 2, ll. 38–41).
Appellant argues against the combination, asserting that the
combination is improper because (1) the combination changes the principle
of operation of Von Kaenel (Appeal Br. 11), (2) the references teach away
from each other (Appeal Br. 10), Br. and (3) the Examiner relies on
impermissible hindsight reasoning (Appeal Br. 11–12).
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We do not find Appellant’s arguments against the combination of
references persuasive of error. Appellant argues that the proposed
modification of Von Kaenel by Coch would change its principle of operation
and render it unsuitable for it intended purpose because it would change Von
Kaenel from an enterprise-centric system to an individual-user driven
system. Appeal Br. 10–11. Appellant further argues Von Kaenel and Coch
teach away from each other because Von Kaenel’s system is for sharing of
third-party or enterprise-owned data, while Coch teaches user-owned content
sharing. Appeal Br. 11. We disagree.
Although Von Kaenel generally relates to sharing of data within an
enterprise, the sharing of data within the enterprise is carried out by
individual employees. This is not inconsistent with the teachings of Coch,
as Coch also relates to the sharing of map data among individuals. We do
not understand the combination proposed by the Examiner to be a
modification that calls for eliminating Von Kaenel’s enterprise-centric
system. Rather, the Examiner’s rationale for combining references merely
proposes extending the sharing capability taught by Von Kaenel to
additional data sharing contexts.
We also do not agree with Appellant that the Examiner relies on
impermissible hindsight. Appellant argues “as both references only discuss
map (project) sharing, the Examiner has clearly derived the idea of layer-
sharing from Appellant’s application.” Appeal Br. 11. As we noted above,
Von Kaenel teaches layer-based sharing. As such, the Examiner had no
reason to resort to Appellant’s application to derive the idea of layer-sharing,
and we disagree with Appellant that the Examiner has relied on
impermissible hindsight to arrive at the claimed invention.
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Because we do not find Appellant’s arguments persuasive of error, we
sustain the rejection of independent claims 13, 19, and 23 as being
unpatentable over Von Kaenel and Coch.
Remaining Claims
Appellant does not argue separately for patentability of any other
claim. As such, we also sustain the rejections of the remaining dependent
claims under § 103.
CONCLUSION
We reverse the Examiner’s rejection of claims 13–31 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner’s rejection of claims 13–30 under 35 U.S.C.
§ 103 as being unpatentable over Von Kaenel and Coch.
We affirm the Examiner’s rejection of claim 31 under 35 U.S.C. § 103
as being unpatentable over Von Kaenel, Coch, and Klein.
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–31 112 Written
Description
13–31
13–30 103 Von Kaenel, Coch 13–30
31 103 Von Kaenel, Coch,
Klein
31
Overall
Outcome
13–31

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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