Ex Parte Co et al

Patent Trial and Appeal Board

May 26, 2016

13305352 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/305,352 11/28/2011
100462 7590 05/27/2016
Dority & Manning P,A, and Google Inc,
Post Office Box 1449
Greenville, SC 29602
FIRST NAMED INVENTOR
Chris CO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GGL-371 7602
EXAMINER
HUTTON, NAN
ART UNIT PAPER NUMBER
2154
MAILDATE DELIVERY MODE
05/27/2016 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 CHRIS CO and JAY ANT KOLHE
Appeal2014-003640
Application 13/305,352
Technology Center 2100
Before: JEFFREYS. SMITH, DANIEL N. FISHMAN, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4--10, and 13-17. Claims 2, 3, 11, 12, 18, 19, and 20 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-003640
Application 13/305,352
CLAIMED SUBJECT MATTER
The claims are directed to suggesting interesting dates to explore
images in a historical imagery database. Spec. Abstract. Claim 1,
reproduced below with the "disputed limitations" emphasized, is illustrative
of the claimed subject matter:
1. A system for suggesting a date to display an image,
compnsmg:
a memory;
a processor coupled to the memory;
a historical date suggestion module stored in the memory
and executing on the processor and configured to:
receive a request to display a geographic area
having particular geographic coordinates to a user;
identify a plurality of tiles, the plurality of tiles
corresponding to the geographic area having the particular
geographic coordinates in response to the received request;
for each tile:
identify a list of dates, each date being
associated with a historical image geolocated at a geolocation of
each tile on a particular date; and
identify an oldest date in the list of dates;
compile the oldest date from each tile into a
suggested date list; and
select a most recent date or most repeated date from
the suggested date list as a suggested date for displaying the
historical image, whereby the suggested date is selected to
account for the age of available historical images and the
availability of historical images having the suggested date within
the image displayed to the user.
REJECTIONS
Claims 1, 5-10, and 14--17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirmse (U.S. Publication No. 2010/0054527 Al,
published Mar. 4, 2010), Murakami (U.S. Publication No. 2007/0146787
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Application 13/305,352
Al, published June 28, 2007), and Schunder (U.S. Publication No.
2012/0078512 Al, published Mar. 29, 2012). Final Act. 2-7.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirmse, Murakami, Schunder, and Gonano (U.S.
Publication No. 2007/0222227 Al, published Sept. 3, 2009). Final Act. 8.
OPINION
With respect to independent claims 1 and 10, Appellants argue that
the combination of Kirmse, Murakami, and Schunder does not teach or
suggest the disputed limitations and that the combination of Kirmse,
Murakami, and Schunder is improper. App. Br. 10-17. Appellants rely on
these arguments for all remaining claims. App. Br. 17-18.
With respect to the "compil[ing]" limitation, the Examiner relies on
Murakami and Kirmse:
Murakami teaches this limitation in that the system compiles
the oldest date and time information among the date and time
information of the group of the images into a representative
history list (suggestion list) for each group of images that have
the same group identifier ...
Accordingly, it would have been obvious to one of
ordinary skill in the art at the time [] the invention was made to
modify the teachings of Kirmse with the teachings of Murakami
for the purpose of retaining a history of image data processed in
an image processing apparatus, thereby making it possible to
track the processing date and time of the specific image data.
Final Act. 3--4 (citing Murakami i-f 44 and Kirmse i-f 94).
Appellants argue error, stating:
Even if the representative history list includes data
picked based on date, Murakami does not describe that the list
itself is a list of dates. Instead, Murakami' s representative
history list includes a "list of thumbnail images of image data
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Application 13/305,352
contained in the representative histories." (Murakami, i-f45.)
Thus, Murakami fails to disclose "compil[ing] the oldest date
from each tile into a suggested date list" as claimed in claims 1
and 10.
App. Br. 11.
The Examiner responds as follows:
Murakami expressly discloses that the system forms a
representative history list by picking the oldest processing
history information (oldest date and time) from each
processing history information group, see Murakami paragraph
[0044]. The processing history information group is a group
of dates, which are representative of the processing history dates
of the images. The processing history information group is not
the group of images. The representative history list is not picked
from the group of images as the Appellant argues. The
representative history list is picked from the group of dates that
are representative of the processing history dates of the images.
For example, See FIG. 2 of Murakami, the system
comprises a group of images, i.e. dddd and pppp with the
processing dates of bbbb and gggg respectively. bbbb and gggg
forms the processing history information group (a list of
dates). The system picks bbbb (oldest date) out of the
processing history information group (bbbb and gggg, etc.),
not out of the image group ( dddd and pppp, etc.)
Ans. 3.
We are unpersuaded of error. We agree with the Examiner that
Murakami's "representative history list is not picked from the group of
images" and that "[t]he representative history list is picked from the group of
dates that are representative of the processing history dates of the images."
Id.
Moreover, Appellants unpersuasively argue against a single reference
when the Examiner's rejection is based on what the combination of
references would have taught or suggested to one of ordinary skill in the art.
One cannot show nonobviousness by attacking references individually
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where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
With respect to the "select[ing]" limitation, the Examiner relies on
Schunder, Kirmse, and Murakami, stating:
Schunder teaches this limitation in that the system selects a date
based on the total number of time used (most repeated) or the last
date of use (most recent) as suggested date to the user, wherein
the date shows the age and the availability of the image).
Accordingly, it would have been obvious to one of
ordinary skill in the art at the time [] the invention was made to
modify the teachings of Kirmse as modified with the teachings
of Schunder for the purpose of providing and updating the tile
map data efficiently so that user convenience can be improved.
Changes in road routes due to construction and city alterations
can be indicated reliably so that the vehicle can be redirected
efficiently.
Final Act. 4--5(Schunderi-f149, Kirmse i1i167, 115-118, and Murakami i144).
Appellants argue as follows:
First, Schunder does not teach the claimed suggested date list
"compiled from the oldest date from each tile." Rather tiles in
Schunder are only "stored locally until a threshold is reached"
and not in any organized list. ... Second, even if the suggested
date list was disclosed by Schunder or other two references
(which it is not), Schunder fails to select the suggested date from
the suggested date list for displaying the historical image.
Instead, Schunder uses a flag to determine "whether or not a
particular tile is to be stored or discarded in favor of a new tile."
... Third, Schunder also fails to disclose "whereby the suggested
date is selected to account for the age of available historical
images and the availability of historical images having the
suggested date within the image displayed to the user." Even if,
for sake of argument, Schunder could select the claimed recent
date or the most repeated date as a suggested date, (which it
cannot not), Schunder still does not disclose how the suggested
date accounts for multiple historical images. At most, the flag in
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Application 13/305,352
Schunder only determines "whether or not a particular tile is to
be stored or discarded in favor of a new tile."
App. Br. 13.
The Examiner responds by pointing out that Appellants'
arguments are unpersuasively directed to a single reference, rather
than the combination, and that Appellants impermissibly attempt to
distinguish their invention based on an intended use, rather than a
structural distinction. Ans. 4--7 ("the 'suggest date list is compiled
from the oldest date from each tile' feature is taught by the
Murakami" (citing Murakami i-f 44); "Whether the date is used for
suggesting to user or used to determining other system functions is the
intended use. Becuase Schunder structure is capable of performing its
intended use, Schunder meets the claim limitation"; and "Kirmse
discloses that the system provides the dates or range of dates to users
for available map image tiles, wherein the dates account for the age of
the available historical images of the map tiles" (citing Kirmse i-fi-1 67,
115-118)).
We agree with the Examiner for the reasons stated by the
Examiner.
Appellants also argue that the combination of Kirmse,
Murakami, and Schunder is improper because it "teaches away" from
Appellants' claimed invention, the combination could not be made,
and because the proposed combination is based on hindsight
reconstruction. App. Br. 15-17.
We are unpersuaded of error for the reasons stated by the
Examiner. Ans. 7-14. We highlight the following for emphasis.
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First, a reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. In
re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994). Appellants' asserted
"teaching away" deficiency in the Examiner's "logic" for combining
the references (App. Br. 15 ("To a person of ordinary skill in the art,
however, [the Examiner's] logic would only teach away from the
purpose of the invention - which is suggesting a date to display a
historical image of the past")) does not amount to an argument against
obviousness, much less include argument or evidence sufficient to
establish that that the Examiner's proposed combination includes a
reference that "teaches away."
Second, Appellants' "hindsight" argument (App. Br. 16
("combining Murakami, a printing reference, with Kirmse and
Schunder, is hindsight reconstruction")) lacks sufficient persuasive
argument or evidence to convince us that the Examiner's rejection
includes "knowledge gleaned only from the Appellant's disclosure."
See In re Mclaughlin, 443 F.2d 1392 (CCPA 1971).
And third, Appellants' arguments do not persuade us that the
Examiner's reasons for combining the references lacks "'some
articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness."' KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d at 988). Specifically,
the Examiner has shown all the elements of Appellants' claimed
invention to exist in the prior art, and Appellants have not
persuasively established that combining them would have been
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unpredictable. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416 ("'The
combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable
results."')). Accordingly, we find the Examiner to have supported the
conclusion of obviousness with some articulated reasoning with some
rational underpinning.
We are, therefore, unpersuaded of error in the Examiner's
rejection of claims 1 and 10. We sustain the Examiner's rejections of
claims 1 and 10 and the Examiner's rejection of the remaining claims
argued on the same grounds.
DECISION
The Examiner's rejection of claims 1, 4--10, and 13-17 is affirmed.
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)(l )(iv).
AFFIRMED
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