13345604 (P.T.A.B. Feb. 5, 2016)

Ex Parte Byun

Patent Trial and Appeal BoardFeb 5, 2016

13345604 (P.T.A.B. Feb. 5, 2016)

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. 13/345,604 01/06/2012 Jungkhun Byun GGL-862 7219 100462 7590 02/05/2016 Dority & Manning P.A. and Google Inc. Post Office Box 1449 Greenville, SC 29602 EXAMINER PHAM, TUAN A ART UNIT PAPER NUMBER 2163 MAIL DATE DELIVERY MODE 02/05/2016 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 JUNGKHUN BYUN ____________ Appeal 2014-001995 Application 13/345,6041 Technology Center 2100 ____________ Before ROBERT E. NAPPI, CARL L. SILVERMAN, and NORMAN H. BEAMER, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The invention relates to determining a boundary of a geographical area using a plurality of points of interest (POI) names associated with the geographical area. Abstract. 1 According to Appellant, the real party in interest is GOOGLE INC. App. Br. 3. Appeal 2014-001995 Application 13/345,604 2 Claim 1 is exemplary of the subject matter on appeal: 1. A method for determining a boundary of a geographical area, the method comprising: identifying a plurality of point of interest (POI) names associated with the geographical area from one or more web documents; locating, in a POI database, a plurality of POI listings corresponding to the identified POI names; determining location coordinates of each of the POI listings; and calculating, using a processor, the boundary of the geographical area based on the location coordinates derived from the POI listings. App. Br. 15 (Claims Appendix). THE REJECTION Claims 1–20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Onishi (US 2005/0085999 A1; published April 21, 2005) in view of Egnor (US 2006/0149774 A1; published July 6, 2006). Final Act. 2–9. ANALYSIS Appellant and the Examiner dispute whether Onishi teaches the claim 1 limitation “calculating, using a processor, the boundary of the geographical area based on the location coordinates derived from the POI listings.” App. Br. 10–14; Ans. 2–3; Reply Br. 2–5. The Examiner finds Onishi teaches POI listings at the Del Amo Fashion Center (boundary) and the designation “W. 190 th St., Torrance, 1.9 MI” “can be viewed as calculating.” Final Act. 3 (citing Figs. 10, 11, and Figs. 1G, 1H to also show calculating). The Examiner finds Onishi’s navigation system compares the coordinate point information of the POI’s Appeal 2014-001995 Application 13/345,604 3 with the polygon data (from the map database) to determine whether a point of interest (e.g., Burger King) is located within the boundary of the polygon data of the large structure (e.g., shopping mall). Ans. 2–3 (citing Figs. 10, 11, ¶¶ 59–61). The Examiner also finds Onishi’s navigation system calculates and determines a guided route to the destination.” Ans. 3 (citing ¶ 9). Appellant argues Onishi does not teach the disputed limitation because “Onishi uses point location information for a POI and polygon location information for a larger structure such as a shopping mall, which significantly is already contained within the map database, to determine whether the POI is located within the larger structure.” App. Br. 11–12. Therefore, according to Appellant, Onishi does not teach “calculating ... the boundary of the geographical area . . .” Id. Appellant further argues Onishi does not teach calculating the boundary ‘“based on the location coordinates derived from the POI listings” and instead Onishi “merely discloses determining “whether a particular POI is located within a large structure or not based on the map data retrieved from the map data storage.’” (Emphasis added) Reply Br. 3 (citing Onishi ¶ 59). Additionally, Appellant argues, while Onishi may disclose ‘“calculating and determining a guided route to a selected POI, Onishi does not disclose or suggest “calculating ... the boundary of the geographical area” or doing so “based on the location coordinates derived from the POI listings.”’ Id. We are persuaded by Appellant’s arguments. The disputed limitation requires calculating the boundary, rather than Onishi using the “already contained” data (polygon) from the map database. In addition, Onishi’s Appeal 2014-001995 Application 13/345,604 4 boundary is not based on location coordinates derived from POI listings; it is the polygon location already contained in the map database. See Onishi ¶ 59. Moreover, Onishi’s “calculating” for a guided route does not teach calculating the boundary as recited in the disputed claim. In view of the above, we do not sustain the rejection of claim 1, and independent claims 9 and 16 as these claims recite the disputed limitation. We also do not sustain the rejection of dependent claims 2–8, 10–15, and 17–20. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”) DECISION We reverse2 the Examiner’s decision rejecting claims 1–20. REVERSED 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued interim guidance on patent-eligible subject matter, which supplements the June 25, 2014 preliminary examination instructions. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014); “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014; see also July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015).