Ex Parte Borak et al

Patent Trial and Appeal Board

Sep 21, 2017

12904247 (P.T.A.B. Sep. 21, 2017)

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.
12/904,247 10/14/2010 Jason Borak 10171-12126A 5517
(NC58270US)
101535 7590 09/25/2017
Lempia Summerfield Katz LLC/HERE
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
HE, WEIMING
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
docket-us @ lsk-iplaw.com
pair_lsk @ firsttofile.com
hereipr @ here, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON BORAK and JAMES RONALD BENNETT
Appeal 2017-005425
Application No. 12/904,2471
Technology Center 2600
Before JOHN A. JEFFERY, MARC S. HOFF, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 28—30, 32-44, and 46.2 We have jurisdiction under 35 U.S.C. § 6(b)
We affirm and enter a new ground of rejection.
Appellants’ invention is a method and system for displaying a map
that depicts landmarks with brand identity. A map display application fills
the footprint of a landmark with the brand identity of a company and/or a
1 The real party in interest is HERE GLOBAL B.V.
2 Claims 1—27, 31, and 45 have been cancelled.
Appeal 2017-005425
Application No. 12/904,247
product associated with the landmark. The map display application can also
render the landmark in three dimensions. See Abstract.
Claim 28 is exemplary of the claims on appeal:
28. A computer-implemented method for displaying a
map that depicts landmarks using brand identity, the method
comprising:
receiving a request for a map display including a
landmark;
retrieving data about the landmark, wherein the data
includes a location identifier associated with the landmark;
accessing at least landmark dimension data and a chain
identifier based on the location identifier, wherein the chain
identifier includes a brand icon;
rendering, using a processor, a three-dimensional
representation of the landmark on the map display using the
landmark dimension data;
selecting, using the processor, a background color for the
three-dimensional representation of the landmark based on a
footprint color attribute from a logo attribute associated with the
chain identifier;
draping the background color over the three-dimensional
representation of the landmark;
selecting an orientation for the brand icon based on one or
more nearby streets; and
overlaying the brand icon on the background color
according to the landmark dimension data and the orientation for
the brand icon.
THE REJECTIONS
Claims 44 and 46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith (US 2009/0073191 Al; published Mar. 19, 2009)
and Ettinger (US 2008/0262717 Al; published Oct. 23, 2008).
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Application No. 12/904,247
Claims 28, 30, and 32—34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Ettinger, and Suzuki (JP 2007-166335 A;
published June 28, 2007).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Ettinger, Suzuki, and Iannace (US 2011/0231233
Al; published Sept. 22, 2011).
Claims 35—43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Ettinger, Suzuki, and Safoutin (US 2007/0156613
Al; published July 5, 2007).
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Jan. 15, 2016) and the Examiner’s Answer (“Ans.,”
mailed Oct. 28, 2016) for their respective details.
ISSUE
Are Appellants’ arguments for the patentability of the appealed claims
directed to limitations that constitute nonfunctional descriptive material, and
as such, are not given patentable weight?
ANALYSIS
Claims 28-30,32-36,44, and 46
Appellants’ argument for patentability
Appellants argue that the Examiner erred in rejecting independent
claims 28 and 44, and the claims dependent therefrom, by alleging that the
prior does not disclose or suggest three limitations. First, Appellants
contend that the combination of Smith and Ettinger (and, in the case of
independent claim 28, Suzuki) fails to disclose or suggest selecting an
orientation for a brand icon based on one or more nearby streets. App. Br. 5.
Second, Appellants assert that the cited prior art fails to disclose “accessing
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Application No. 12/904,247
at least landmark dimension data and a chain identifier based on the location
identifier, wherein the chain identifier includes a brand icon.” Appellants
allege that “Smith does not disclose or suggest how a logo containing an
image would be entered by a user to perform the keyword search.” App. Br.
7—8. Third, Appellants argue that the cited prior art “does not select a
background color for the three-dimensional representation of the landmark
based on a footprint color attribute from a logo attribute associated with the
chain identifier and draping the background color over the three-dimensional
representation of the landmark.”3 App. Br. 10.
Appellants’ arguments are not persuasive to establish that the
Examiner erred in rejecting the claims under § 103(a) because we find that
the limitations at issue are concerned with nonfunctional descriptive material
that is not given patentable weight.
Legal standard for nonfunctional descriptive material
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
3 With respect to claim 44, Appellants argue that the cited prior art “does not
render a three-dimensional computer generated graphical model, the
background color, and the brand icon according to an orientation attribute
that identifies a direction that the brand identity faces based on one or more
nearby streets.” App. Br. 13. We consider this limitation to be a
combination of the first and third argued limitations of claim 28.
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Application No. 12/904,247
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
The descriptive material at issue
As mentioned supra, Appellants’ arguments for patentability turn on
three recitations of descriptive material, which we discuss in turn.
First, selection of an orientation for a brand icon based on one or more
nearby streets is not functionally related to either the computer used to
process the map depicting the landmarks, or the display used to visually
present the map to a user. Appellants disclose only that “the direction may
be chosen based on the location of nearby streets and other features in the
geographic area.” Spec. 11. Appellants disclose no functional objective or
advantage to be gained by orienting a brand icon in any particular manner.
Second, a chain identifier in the form of a brand icon is also not
functionally related to either the computer used to process the map depicting
the landmarks, or the display used to visually present the map to a user.
Appellants disclose that a “brand may be used in the image to aid in the
identification of the landmark. A brand is an identity of a specific product,
service, or business. The brand can take many forms, including a trade or
service mark, a name, a sign, a symbol, a color combination, and/or a
slogan.” Spec. 8. Appellants disclose no functional objective or advantage
to be gained by displaying a “chain identifier” in the form of a brand icon,
rather than any of the other forms listed, or rather than any of the forms of
the “identity of a specific product, service, or business” known in the prior
art.
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Application No. 12/904,247
Third, selecting a background color for the three-dimensional
representation of the landmark based on a footprint color attribute from a
logo attribute associated with the chain identifier, and draping the
background color over the three-dimensional representation of the landmark,
is not functionally related to either the computer used to process the map
depicting the landmarks, or the display used to visually present the map to a
user. Appellants disclose that “footprint colors can vary from landmark to
landmark. For example, the DSW store may have a white DSW brand icon
image overlaying a brown footprint color, while the Michael’s store may
have a red MICHAEL’S brand icon image overlaying a white footprint
color.” Spec. 14. Appellants do not disclose a functional objective or
advantage to be gained by displaying a landmark with a particular footprint
color.4
Analogy to case law facts
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai, 367 F.3d at 1339. Thus, adding instructions to a kit
that describe a method of using it does not make the kit patentable over the
same kit with a different set of instructions.
There are cases where the descriptive material can form a
functional relationship with the underlying substrate. For example, the
addition of printed matter to the outside of a cup permitted an otherwise
4 Appellants disclose, but do not claim in claims 28 or 44, that a footprint
color “may also indicate that a store is out of business, a store is currently
closed and/or open, a store is opening soon, merchant coupons are available,
and/or other landmark status information.” Spec. 14.
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ordinary cup to be used like a measuring cup for recipes. In re Miller,
418 F.2d 1392 (CCPA 1969). The printed matter in Miller served as a
computing or mathematical recipe conversion device permitting a cook
to perform calculations automatically with no further thought.
The Federal Circuit has held that an FDA label providing the
dosage instructions for using a medical product was printed matter.
AstraZeneca LP v. Apotex Inc., 633 F.3d 1042 (Fed. Cir. 2010). The
court held that the instructions did not function with the drug to create
a new, unobvious product. Just as in Ngai, simply adding new
instructions to a known product does not create the functional
relationship necessary to distinguish the product from the prior art. Id.
Our reviewing court has also held that a label instructing a patient to
take a drug with food constituted printed matter. See King Pharm.
The claim before us is more like the claim in Ngai or
AstraZeneca than the claim in Miller. The display of brand icons on
the map, or their orientation relative to a nearby street, or the display of
a landmark using a color related to the color of a brand icon, is
analogous to the inclusion of assembly or dosage instructions, as in
Ngai ox AstraZeneca. These display choices do not change the already-
existing “product” of a map displayed on a computer. As pointed out
supra, Appellants’ Specification gives no reasons related to
functionality why the disclosed map display choices are made.
Avoidance of repeated patenting
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non­
functional descriptive material. King Pharm., Inc. v. Eon Labs, Inc., 616
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Application No. 12/904,247
F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”). Cf. In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004) (“If we were to adopt Ngai’s position,
anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”). Were we to agree with
Appellants that the argued limitations defined patentable subject matter, we
would be permitting the patenting of a method of displaying of a known map
that depicts landmarks, except that the known map would be modified
merely to allow the display of brand icons in different orientations, or to
show landmarks in different colors, than were used in the prior art.
Conclusion of analysis
We agree with the Examiner that the combination of Smith and
Ettinger (claim 44) or the combination of Smith, Ettinger, and Suzuki (claim
28) discloses or suggests every limitation of the claims. The argued
differences between the prior art and the claimed invention are merely the
substitution of one item of nonfunctional descriptive material (a particular
brand icon, a brand icon’s orientation, or the display of a landmark in a
particular color) for another, known item of nonfunctional descriptive
material (the prior art map image, with text labels for landmarks). These
substitutions do not change the functioning of the method for displaying a
map that depicts at least one landmark. Therefore, we sustain the
Examiner’s § 103(a) rejection of claims 28 and 44, as well as dependent
claims 29, 30, 32—36, and 46 not separately argued.
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Application No. 12/904,247
Claims 37-43
Appellants state explicitly in the Brief that “[^independent claim 37
and its dependent claims 38-43 are not addressed herein.” App. Br. 5. We
therefore sustain pro forma the Examiner’s § 103(a) rejection of claims 37—
43 over Smith, Ettinger, Suzuki, and Safoutin. See Final Act. 13—19.
CONCLUSION
Appellants’ arguments for the patentability of the appealed claims are
directed to limitations that constitute nonfunctional descriptive material, and
as such, are not given patentable weight.
ORDER
The Examiner’s decision to reject claims 28—30, 32-44, and 46 under
35 U.S.C. § 103(a) is affirmed.
Because our affirmance rests on findings not relied upon by the
Examiner, we designate this decision as containing 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 rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides 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. . . .
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Application No. 12/904,247
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
record. .. .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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).
AFFIRMED
$ 41.50(b)
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