Ex Parte Cornell

Patent Trial and Appeal Board

Feb 9, 2016

13566387 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/566,387 08/03/2012
12716 7590 02/11/2016
Marshall, Gerstein & Bornn LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
FIRST NAMED INVENTOR
Brian Cornell
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.
31730112465-00C 9808
EXAMINER
CRADDOCK,ROBERTJ
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN CORNELL
Appeal2014-002719
Application 13/566,387
Technology Center 2600
Before ALLEN R. MacDONALD, KEVIN C. TROCK, and
AARON W. MOORE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002719
Application 13/566,387
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claim 1 under appeal reads as follows (emphases added):
1. A computer-implemented method for rendering a three-
dimensional map on a display device comprising:
determining, using a computer device, a map surface
plane and a viewing plane, wherein the viewing plane is at a
non-zero angle of incidence with respect to the map surface
plane;
determining, using the computer device, a first unit of
area on the map surface plane, the first unit of area representing
a map area viewed at a first zoom level through the viewing
plane when the viewing plane is at a zero angle of incidence
with respect to the map surface plane, wherein the first unit of
area has two dimensions along the map surface plane;
calculating, using the computer device, a projection of a
first dimension along the map surface plane of the first unit of
area onto a first dimension along the viewing plane at the
non-zero angle of incidence with respect to the map surface
plane;
determining, using the computer device, if the projection
is at a threshold of the viewing plane, wherein the threshold
relates to a length on the viewing plane;
determining, using the computer device, a boundary on
the viewing plane when the projection is determined to be at the
threshold such that the location of the boundary changes as a
function of a change in the non-zero angle of incidence; and
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Appeal2014-002719
Application 13/566,387
rendering on the viewing plane a projection of a first area
of the map surface plane on one side of the boundary using a
first density of map data and rendering a projection of a second
area of the map surface plane on a second side of the boundary
using a second density of map data lower than the first density
of map data.
Rejections on Appeal
The Examiner rejected claims 1-20 on the ground of nonstatutory
obviousness-type double patenting as not being patentably distinct from
claims 1---6, 8-15, and 17-22 ofUS Patent No. 8,243,102 Bl, Aug. 14, 2012.
Final Act. 13-15. 1
The Examiner rejected claims 1, 4--7, 10, 13-16, and 19 on the ground
of nonstatutory obviousness-type double patenting as not being patentably
distinct from claims 1, 10, and 19 of US Patent No. 8,243,102 in view of
Nakayama (US 5,742,924, Apr. 21, 1998). Final Act. 16-17.2
The Examiner rejected claims 1, 4--7, 10, 13-16, and 19 under
35 U.S.C. § 102(b) as being anticipated by Nakayama. 3
1 Appellant does not appeal this rejection. App. Br. 11 ("GROUNDS OF
REJECTION TO BE REVIEWED ON APPEAL"). Therefore, we affirm
proforma. Except for our ultimate decision, this rejection is not discussed
further herein.
2 Appellant does not appeal this rejection. App. Br. 11 ("GROUNDS OF
REJECTION TO BE REVIEWED ON APPEAL"). Therefore, we affirm
proforma. Except for our ultimate decision, this rejection is not discussed
further herein.
3 Separate patentability is argued for claims 1, 5, and 6. However, we
conclude the arguments directed to claim 1 are determinative. Except for
our ultimate decision, this rejection of claims 4--7, 10, 13-16, and 19 is not
discussed further herein.
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Appeal2014-002719
Application 13/566,387
The Examiner rejected claims 2, 3, 8, 9, 11, 12, 17, 18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over various combinations of
Nakayama and other prior art references. 4
Appellant's Contention
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Nakayama ... fails to disclose or suggest determining if the
projection is at a threshold of the viewing plane, wherein the
threshold relates to a length on the viewing plane. As the
boundaries in Nakayama are not based on any projection,
Nakayama does not disclose or suggest determining if the
projection is at a threshold of the viewing plane.
App. Br. 14--15, emphasis added.
2. Also, Appellant contends that the Examiner erred in rejecting
claim 1under35 U.S.C. § 102(b) because:
[T]he boundaries on the viewing screen in Nakayama are not
determined based on a projection, much less based on when the
projection is determined to be at the threshold. In fact, the
boundaries are always fixed in Nakayama, and thus the
location of the boundaries on the viewing plane do not change
as a function of a change in the non-zero angle of incidence
between viewing plane and the map surface plane. In other
words, the boundaries and their locations in Nakayama are
unrelated and unaffected by any projection or by any change in
the non-zero angle of incidence.
App. Br. 15, emphasis added. Therefore:
4 Separate patentability is not argued for these claims. Rather, the rejections
of these claims turns on our decision as to the underlying § 102 rejection.
Except for our ultimate decision, these rejections of these claims are not
discussed further herein.
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Appeal2014-002719
Application 13/566,387
Nakayama fails to disclose or suggest determining a boundary
on the viewing plane when the projection is determined to be at
the threshold such that the location of the boundary changes
as a function of a change in the non-zero angle of incidence.
App. Br. 15, emphasis added.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated under
35 U.S.C. § 102(b) because Nakayama fails to disclose the argued
limitation?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred.
As to Appellant's above contentions 1 and 2, we agree. In response to
Appellant's arguments, the Examiner disagrees and responds:
The examiner notes, as per Nakayama col. 11 line 6 - 55, Fig.
2 and Fig. 5, that the position determines how the viewing
plane receives and calculates the view on the viewing plane.
The threshold affects the length of the viewing plane as length
is a component of the viewing plane.
The examiner notes, as per Nakayama col. 11 line 6 - 55, and
Fig. 1, 2, 5, 7, 11, 12, 22 and 37-40, that the boundary on the
viewing plane is determined by a positional threshold, and the
position may change thus changing the boundaries as well.
Furthermore as shown in the figures the angle of incidence may
be changed as well, as the figure shows a different view angle.
Furthermore the examiner notes a "function" as is claimed is
fairly broad and can encompass anything from a software
function or just mere steps. Furthermore the examiner notes, the
Figures previously cited clearly indicate a dynamic changing
nature of Nakayama.
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Appeal2014-002719
Application 13/566,387
Ans. 14-15, emphases added. In this response, the Examiner points to forty-
nine lines of column 11 of Nakayama and to eleven figures of Nakayama
with only very limited explanation of the Examiner's reasoning. This is, at
best, an indication that the Examiner believes that the Final Action and cited
Nakayama reference speak for themselves in response to Appellant's
arguments. We have reviewed the Final Action and Nakayama, and find
that, without more, they are insufficient to overcome Appellant's arguments.
The Examiner's rejection analysis in the Final Action and the Answer
fail to convince us that Nakayama teaches "determining if the projection is
at a threshold of the viewing plane, wherein the threshold relates to a length
on the viewing plane" or "determining a boundary on the viewing plane
when the projection is determined to be at the threshold such that the
location of the boundary changes as a function of a change in the non-
zero angle of incidence" (emphasis added), as claimed.
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1, 4-7, 10, 13-16, and 19 as being anticipated by Nakayama under
35 U.S.C. § 102(b).
(2) Appellant has established that the Examiner erred in rejecting
claims 2, 3, 8, 9, 11, 12, 17, 18, and 20 as being unpatentable under 35
U.S.C. § 103(a).
(3) The Examiner did not err in rejecting claims 1-20 on the ground
of nonstatutory obviousness-type double patenting as not being patentably
distinct.
( 4) Claims 1-20 are not patentable.
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Appeal2014-002719
Application 13/566,387
DECISION
The Examiner's rejection of claims 1, 4--7, 10, 13-16, and 19 as being
anticipated under 35 U.S.C. § 102(b) is reversed.
The Examiner's rejection of claims 2, 3, 8, 9, 11, 12, 17, 18, and 20 as
being unpatentable under 35 U.S.C. § 103(a) is reversed.
The Examiner's rejection of claims 1-20 on the ground of
nonstatutory obviousness-type double patenting 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)(l )(iv).
AFFIRMED
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