Tierney, Timothy

Patent Trials and Appeals Board

Sep 17, 2020

2019004895 (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.
11/038,607 01/18/2005 Timothy Tierney SIMPL-001U.USA 9499
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 2019-004895
Application 11/038,607
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 16–23. Claims 1–15 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.
Appeal 2019-004895
Application 11/038,607

2
RELATED PROCEEDINGS
Appellants identifies an appeal pending before the Board in U.S.
Patent Application No. 12/454,012 as a related proceeding. That related
proceeding has been assigned Appeal No. 2019-003185, 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 16, reproduced below, is illustrative of the claimed subject
matter:
16. A geographic information apparatus, comprising:
at least one server connected to by a plurality of user
platforms and having at least one non-transitory medium for
storage of user-created data, wherein,
at least one server is configured with a package of server
files executing on at least one server, wherein
at least one of the server files is configured to control
interaction by each user platform with multiple online databases
containing geospatial information;
at least one of the server files is configured to control
create/retrieve/update/delete interactions by each user platform
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
Appeal 2019-004895
Application 11/038,607

3
discrete geospatial data layers are uploaded and stored on the
non-transitory medium of at least one server;
at least one of the server files is configured to provide
interactions with each user platform, including
interfacing with the core geographic information
system functionality,
access by a first user of a user platform to geospatial
databases provided by at least one of the servers or
provided by at least one Internet website, the geospatial
databases having discrete geospatial data layers created by
other users of other user platforms, 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 lo 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.
Corrected Appeal Br. (Claims Appendix 2–3).
Appeal 2019-004895
Application 11/038,607

4

REFERENCES
The prior art2 relied upon by the Examiner is:
Name Reference Date
Coch US 7,739,038 B2 June 15, 2010
Von Kaenel US 2004/0117358 A1 June 17, 2004

REJECTIONS
Claims 16–23 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2–3.
Claims 16–23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Von Kaenel and Coch. Final Act. 3–10.
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 standalone usage or
usage in maps,” which is recited in claim 16, is not supported by the
Specification. Final Act. 2–3.
Appellant argues the limitation finds support in the Specification at
paragraphs 6 and 12. Appeal Br. 6. Specifically, Appellant asserts that the
Examiner has misunderstood the meaning of “standalone,” 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.

2 We identify the prior art references according to their first named inventor.
Appeal 2019-004895
Application 11/038,607

5
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.
REJECTIONS UNDER 35 U.S.C. § 103
First Issue
In rejecting claim 16 under § 103, the Examiner concludes the claim
would have been obvious 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. 6 (citing, inter alia, Von Kaenel ¶¶ 43–
Appeal 2019-004895
Application 11/038,607

6
50, 246,263, 408, 465–475, and 488–489). 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 “[n]one of the
applied references make explicit mention or teaching of map data layer
sharing.” Appeal Br. 7.
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
privileges, and share a project with others.” Von Kaenel ¶ 473. 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. ¶ 475.
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. (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
Appeal 2019-004895
Application 11/038,607

7
Act. 8 (italics omitted). 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 renders the prior art
unsatisfactory (Appeal Br. 7–8) and changes the principle of operation of
Von Kaenel (Appeal Br. 8–9), (2) the references teach away from each other
(Appeal Br. 8), and (3) the Examiner relies on impermissible hindsight
reasoning (Appeal Br. 9).
We also 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. 7–8. 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. 9. 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
Appeal 2019-004895
Application 11/038,607

8
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 “[a]s both references only
discuss map (project) sharing, the Examiner has clearly derived the idea of
layer-sharing from Appellant’s application.” Appeal Br. 9. 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.
Because we do not find Appellant’s arguments persuasive of error, we
sustain the rejection of claim 16 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 rejection of the remaining dependent
claims under § 103.
CONCLUSION
We reverse the Examiner’s rejection of claims 16–23 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner’s rejection of claims 16–23 under 35 U.S.C.
§ 103 as being unpatentable over Von Kaenel and Coch.
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).

Appeal 2019-004895
Application 11/038,607

9

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–23 112 Written description 16–23
16–23 103 Von Kaenel, Coch 16–23
Overall
Outcome
16–23

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