Ex Parte Bell et al

Patent Trial and Appeal Board

Jan 12, 2018

13567333 (P.T.A.B. Jan. 12, 2018)

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.
13/567,333 08/06/2012 Denise A. Bell RS W920120066U S1 (775) 4886
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
KING, RODNEY P
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENISE A. BELL, TRAVIS GRIGSBY,
JANA JENKINS, and TREVOR LIVINGSTON
Appeal 2017-002042
Application 13/567,333
Technology Center 3600
Before ST. JOHN COURTENAY III, ERIC FRAHM, and
DAVID J. CUTITTAII, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed October
31, 2017 (“Decision”). Our Decision affirmed the Examiner’s decision
rejecting claims 1—18 under pre-AIA 35 U.S.C § 103(a).
Appeal 2017-002042
Application 13/567,333
In the Request (4—5), Appellants advance the following principal
arguments:
The "visual notifications" of Arastafar are not taught in
Arastafar as being equivalent to a route that has been classified
as "familiar". Thus, the two teachings as combined by Examiner
cannot result in the claimed, "determination of one segment of
many segments of a route that is familiar, removing from that
one segment turn by turn directives". Despite Appellants'
arguments directed to the distinction between "frequency of
notifications" and "without turn by turn directives" the Board
elected not to provide judgment as to the merits of such an
argument. The Board indicates that the frequency may be
"ZERO" but the Board provides no evidentiary basis for having
made such a statement.
Thus, Appellants believe that the factual conclusion of
the Board at page 7 of the Decision that Arastafar teaches a
frequency of ZERO is unsupported by the evidence of
record.
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request {id.), and are not persuaded that we misapprehended or
overlooked any points in rendering our Decision. We decline to change or
modify our prior Decision for the reasons discussed infra.
Turning to the Appeal Brief (5), Appellants reproduced the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness from pages 3 and 4 of the Final Action:
ARASTAFAR does not specifically disclose the method of
displaying the route in the navigation computing system with the
familiar segment without turn by turn directives that have been
removed as part of the segment while providing other turn by
turn directives of the computed route. However, ARASTAFAR
discloses that the user interface 400 provides an increased
number or decreased number of visual notifications of turn
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Appeal 2017-002042
Application 13/567,333
arrows 420 based upon the travel patterns of the device 100
[0042- 0045; Fig. 5]. Therefore, it would have been obvious to a
person of ordinary skill in the art at the time of Applicant's
invention to modify the method of ARASTAFAR to include the
method of displaying the route in the navigation computing
system with the familiar segment without turn by turn
directives that have been removed as part of the segment while
providing other turn by turn directives of the computed route,
since it is considered that decreasing an item inherently
encompasses removing it.
(Final Act. 3 4) (emphasis added).1
Thus, the Examiner grounds the legal conclusion of obviousness on an
inherent underlying factual finding: “since it is considered that decreasing
an item inherently encompasses removing it.” (Final Act. 4). Our
reviewing court has long “recognized that inherency may supply a missing
claim limitation in an obviousness analysis.” PAR Pharmaceutical, Inc. v
TWIPharmaceuticals, Inc., 773 F.3d 1186, 1194—95 (Fed Cir. 2014).
However,
[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient. In re Oelrich, 666 F.2d at 581
(emphasis added) (citations and quotation marks omitted). Thus,
our early precedent, and that of our predecessor court,
established that the concept of inherency must be limited when
applied to obviousness, and is present only when the limitation
at issue is the “natural result” of the combination of prior art
elements. Id.
1 See also Ans. 4 (“it is well known, common, and widely considered that
removing any item from an original number of items encompasses
decreasing the original number of items to a different, updated, lower
number of items.”) (emphasis added).
3
Appeal 2017-002042
Application 13/567,333
PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)).
Applying this guidance here, we find the evidence cited by the
Examiner (Final Act. 3—4\ citing inter alia, ARASTAFAR ]f]f 42-45, Fig. 5)
is sufficient to show that “the natural result flowing from the operation as
taught would result in the performance of the questioned function.” PAR
Pharm., 773 F.3d at 1194—95. (internal citation omitted).
In support, we find the natural result flowing from the operation of
decreasing the frequency of notifications in a familiar neighborhood, as
expressly taught by ARASTAFAR, Figure 5, would eventually result in zero
notifications in a familiar neighborhood. See also ARASTAFAR 142, in
pertinent part:
Using the present technology, therefore, when the user travels
along a route (or route segment) that is classified (designated) as
a familiar path 300, the frequency of notifications is
automatically decreased. Conversely, when the user travels
along a route (or route segment) that is classified (designated) as
an unfamiliar path 310, the frequency of notifications is
automatically increased.
(emphasis added).
Moreover, we find the eventual result of zero notifications when
traveling through a familiar neighborhood (where such notifications are
unneeded and thus annoying) would have been a predictable result from
ARASTAFAR’s teachings (e.g., 1 52; Fig. 5).2
2 See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
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Appeal 2017-002042
Application 13/567,333
ARASTAFAR, Figure 5, is depicted below expressly teaching the
frequency of notifications is increased in unfamiliar neighborhoods and the
frequency notifications is decreased in familiar neighborhoods:
j UNFAMILIAR
| NEIGHBORHOOD
V (INCREASE
FREQUENCY OF
NOTIFICATIONS
ARASTAFAR, Figure 5, is depicted above with circle annotation added
around the textual caption “FAMILIAR NEIGHBORHOOD (DECREASE
FREQUENCY OF NOTIFICATIONS)” for emphasis.
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Appeal 2017-002042
Application 13/567,333
Nevertheless, Appellants urge: “The ‘visual notifications’ of Arastafar
are not taught in Arastafar as being equivalent to a route that has been
classified as ‘familiar’. Thus, the two teachings as combined by [the]
Examiner cannot result in the claimed, ‘determination of one segment of
many segments of a route that is familiar, removing from that one segment
turn by turn directives’.” (Request 4) (emphasis added).
We note an “equivalent” teaching in the reference(s) is not required
to support a legal conclusion of obviousness. See Request 4. Rather, “the
question under [35 U.S.C. § 103] is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made.” Merck & Co. v. Biocraft Laboratories,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re
Lamberti, 545 F.2d 747, 750 (Fed. Cir. 1976); see also MPEP § 2123.
Here, we find ARASTAFAR teaches that the decreased frequency of
notifications is associated with a familiar route (i.e., familiar neighborhood),
as expressly depicted in Figure 5. See also ARASTAFAR 142. Moreover,
to the extent Appellants note the Examiner is combining embodiments found
in ARASTAFAR to support an obviousness rejection (Request 4), our
reviewing court guides: “[combining two embodiments disclosed adjacent
to each other in a prior art patent does not require a leap of inventiveness.”
Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir.
2009).
Based upon a preponderance of the evidence relied upon by the
Examiner, we restate our findings in our Decision (6):
The Examiner finds at least Figure 5 and paragraphs 42-45 of
ARASTAFAR teach or suggest the contested limitations. (Final
Act. 3). We note Figure 5 of ARASTAFAR depicts a bottom
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Application 13/567,333
half portion expressly labeled: “FAMILIAR
NEIGHBORHOOD (DECREASE FREQUENCY OF
NOTIFICATIONS).” Thus, we find ARASTAFAR’s Figure 5
and paragraphs 42-45 (see Final Act. 3) teach an embodiment
wherein a single or last notification (i.e., tum-by turn-directive),
when leaving an unfamiliar area, would be decreased to ZERO
notifications (i.e., “directives”) while driving within the familiar
area.[3]
Buttressing the Examiner’s findings, see also adjacent
paragraphs 48—51, describing Figures 6 and 7 of ARASTAFAR.
These paragraphs (and Figures 6 and 7) describe an embodiment
in which an advance notification and a final notification are given
regarding an approaching turn onto a familiar street (i.e., when
entering a familiar area). Thus, we find ARASTAFAR teaches
or suggests that, when approaching a familiar area, and after
an advance notification and a final notification, then
notifications (“turn by turn directives”) are suspended (i.e.,
removed) for the duration of travel through the familiar
area.
(emphasis added).
See also our Decision 8:
Moreover, we find removing ARASTAFAR's tum-by-tum
directives (which would be unnecessary and even annoying
while driving through a familiar area) would have merely been a
“predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
Further, regarding any information that is selectively
displayed (i.e., displayed, or not displayed), which is intended
for human perception, see Ex parte Nehls, 88 USPQ2d 1883,
1889 (BPAI 2008) (precedential) (“[T]he nature of the
information being manipulated does not lend patentability to an
3 See Decision 6, n.3: “ARASTAFAR expressly teaches: ‘The navigation
application may provide a visual notification and/or an audible notification.
An example of a visual notification is a turn arrow 420 (and/or a highlighted
path) which may be depicted onscreen to visually indicate to the user where
he should turn.’ Id. 145. (emphasis added).”
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Appeal 2017-002042
Application 13/567,333
otherwise unpatentable computer-implemented product or
process.”). The Manual of Patent Examining Procedure (MPEP
additionally guides: “where the claim as a whole is directed [to]
conveying a message or meaning to a human reader independent
of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no
functional relationship exists.”
MPEP § 2111.05 (III.) (9th Ed., Rev. 07.2015, Last Revised Nov.
2015).
Therefore, for at least the aforementioned reasons, we find the
Examiner's underlying factual findings and legal conclusion of obviousness
are supported by a preponderance of the evidence. Accordingly, we have
reconsidered our Decision, but we find unpersuasive Appellants’ contentions
as presented in the Request.
We have only considered those timely arguments actually made by
Appellants in deciding this Request. See 37 C.F.R. § 41.52(a)(1)
(“Arguments not raised, and Evidence not previously relied upon, pursuant
to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section.”).
We reproduce the exceptions to our rehearing rule below:
(2) Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board’s decision contains an
undesignated new ground of rejection are permitted.
37 C.F.R. § 41.52(a)(2-4).
None of the exceptions 2-4 is applicable here. Any additional
arguments not presented in the Appeal Brief, or not advanced in the Reply
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Appeal 2017-002042
Application 13/567,333
Brief in response to a shift in the Examiner’s position in the Answer, are
considered untimely.4
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision.
DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See also 37
C.F.R. § 41.52(b).
REQUEST FOR REHEARING DENIED
4 As noted in our Decision (9): To the extent Appellants have advanced
“new arguments in the Reply Brief not in response to a shift in the
Examiner’s position in the Answer, we note arguments raised in a Reply
Brief that were not raised in the Appeal Brief or are not responsive to
arguments raised in the Examiner’s Answer will not be considered except
for good cause, which Appellants have not shown.” See 37 C.F.R. §
41.41(b)(2). See also 37 C.F.R. § 41.52(a)(1) regarding untimely arguments
presented in the Request.
9