Ex Parte 6360167 et al

Patent Trial and Appeal Board

Apr 28, 2014

90012272 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/012,272 04/26/2012 6360167 B063-0005RE 2039
29150 7590 04/28/2014
LEE & HAYES, PLLC
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/28/2014 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 BEACON NAVIGATION GMBH1
Patent Owner, Appellant

____________

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Technology Center 3900
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
JASON V. MORGAN, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

1 Beacon Navigation GMBH is the real party in interest. App. Br. 3.

2 Issued Mar. 19, 2002 to Millington (hereinafter the “’167 Patent”).
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DECISION ON APPEAL
STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Final Rejection of claims 1 and 32.3 App. Br. 7.
An oral hearing was conducted on this appeal on April 16, 2014. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Apr. 23, 2013), the Answer (mailed Aug.
15, 2013), and the Reply Brief (filed Aug. 30, 2013) for the respective
details. We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a vehicle navigation system that
provides location-based multimedia annotations. More particularly,
advertisements (“ads”) are periodically presented based upon the current
location of the vehicle. See generally ’167 Patent, Abstract.

3 In response to a Request for Ex Parte Reexamination filed Apr. 26, 2012,
seeking reexamination of independent claims 1 and 32, an Order Granting
Request for Ex Parte Reexamination was issued June 2, 2012, ordering
reexamination of claims 1 and 32. Claims 2-31 and 33-44 are not subject to
reexamination.
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Claims 1 and 32 under reexamination are reproduced as follows:

1. A method for communication information in a vehicle
navigation system including the steps of:
(a) determining a vehicle position relative to a database of roads;
(b) selecting an ad based upon the vehicle position;
(c) displaying the selected ad in a first portion of a screen; and
(d) displaying route guidance information in a second portion of the
screen.

32. A method for communicating information in a vehicle
navigation system including the steps of:
(a) determining a position of the system relative to a database of
roads;
(b) associating each of a plurality of ads with at least one of a plurality
of categories;
(c) selecting one of the plurality of categories;
(d) selecting one of said ads associated with said selected category
based upon said position; and
(e) displaying the selected ad.

The Examiner’s Rejections

The Examiner relies on the following prior art references:
Kurihara US 4,951,212 Aug. 21, 1990
Yano US 5,289,572 Feb. 22, 1994

Claims 1 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yano in view of Kurihara.4

4 In the Final Office Action mailed Dec. 19, 2012, the Examiner withdrew
the separate 35 U.S.C. § 102(b) rejections of claims 1 and 32 based on

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ANALYSIS
Claim 1
Appellant’s arguments with respect to the obviousness rejection of
independent claim 1 initially contend that the Examiner has not provided a
proper basis for the proposed combination of Yano and Kurihara. App. Br.
6-7; Reply Br. 2-3. We do not agree. Contrary to Appellant’s contention,
we find that the Examiner has provided a valid articulated line of reasoning
with a rational underpinning to support the legal conclusion of obviousness
for the proposed combination of Kurihara with Yano. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007).
As explained by the Examiner, Kurihara’s teaching (Fig. 8) of
displaying an advertisement (“ad”) on a separate portion of the same display
that provides route guidance information would provide an obvious benefit
to Yano which requires separate display pages for service-type information
and route guidance information. Ans. 8. Further, contrary to Appellant’s
interpretation (Reply Br. 2-3), the Examiner is not suggesting modifying
Kurihara by adding information from Yano but, instead, is proposing
modifying Yano by adding Kurihara’s teaching of providing ad information
and route guidance information on separate portions of the same display.
We further find unpersuasive Appellant’s contention that the
combination of Yano and Kurihara would not perform all of the elements of

Fujiwara (EP Patent No. 0 829 704 A2) and Asahi (EP Patent No. 0 785 535
A1).
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the claim. In particular, Appellant contends the Examiner improperly
construed the claim term “ad” as simply requiring a display of information
regarding a facility at a particular location. While Appellant contends (App.
Br. 7) that the ’167 Patent defines the term “ad” as “ads 64, which comprise
multimedia annotations (such as text, graphics, audio, MPEG (or similar), or
other multimedia files,” we agree with the Examiner (Ans. 10) that the
textual description of the Isejin 20% children’s clothing discount in
Kurihara’s Figure 8 satisfies the asserted definition.
In further support of the contention that the Examiner misconstrued
the displayed Isejin 20% children’s clothing discount data in Kurihara as an
“ad” as claimed, Appellant argues there is no indication in Kurihara that the
displayed 20% discount data was sent by an advertiser, i.e., Isejin, or even
associated with Isejin. App. Br. 8. As alluded to by the Examiner (Ans. 10-
11), however, Appellant’s argument is not commensurate with the scope of
claim 1 which merely provides for an “ad” being displayed.
While Appellant refers (App. Br. 7) to an exemplary embodiment
described in the ’167 Patent (col. 5, ll. 15-20) in which advertisers associated
with an account are charged for the ads, there is nothing in claim 1 which
requires the association of the claimed “ad” with an account of an advertiser
for which the advertiser may be charged. “Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004). It is also noteworthy that the Kurihara reference
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itself refers to the bargain clothing sale information transmitted to a user as
an “advertisement.” Kurihara, col, 2, ll. 49-56.
In view of the above discussion, we sustain the Examiner’s
obviousness rejection of appealed claim 1.

Claim 32
We also sustain the Examiner’s obviousness rejection (Ans. 13-14) of
claim 32 which includes, inter alia, limitations directed to the association of
a plurality of “ads” with a plurality of categories. Although Appellant (App.
Br. 9-11; Reply Br. 1-4) nominally argues claim 32 separately, the
arguments are directed to the same issue as claim 1, i.e., the alleged error by
the Examiner in misconstruing the claim term “ad.” For all of the previously
discussed reasons, we find Appellant’s arguments unpersuasive.

CONCLUSION
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1 and 32 for obviousness under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1 and 32 under
35 U.S.C. § 103(a).

TIME PERIOD FOR RESPONSE

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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AFFIRMED

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