Ex Parte Cubillo

Patent Trial and Appeal Board

Jun 26, 2013

11612687 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PEDRO A. CUBILLO
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Appeal 2011-004204
Application 11/612,687
Technology Center 3600
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Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pedro A. Cubillo (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-6 and 8-24. Appellant cancelled
claim 7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2011-004204
Application 11/612,687

2
Claimed Subject Matter
The claimed subject matter relates to “systems and methods for
printing driving directions.” Spec. 2, para. [0012]. Claims 1, 12, and 17 are
the independent claims on appeal. Claim 1, reproduced below, with
emphasis added, is illustrative of the appealed subject matter.
1. A system comprising:
a driving directions subsystem configured to
provide data representative of driving
directions to an access device communicatively
coupled to said driving directions subsystem, and
provide at least one print tool
including a plurality of selectable map views to the
access device, said at least one print tool enabling
a user of the access device to select, from the
selectable map views, at least one map view-for
inclusion in a printing of at least a subset of the
driving directions, wherein the at least one print
tool includes a plurality of selectable print options
corresponding to different formats for printing at
least a subset of the driving directions for the
selected map view.

Independent claim 12 is directed to a system including, inter alia, a
driving directions subsystem which is configured to provide the access
device with “at least one print tool including a plurality of selectable print
options corresponding to different formats for printing at least a subset of the
driving directions.”
Independent claim 17 is directed to a method including, inter alia, the
method step of providing at least one print tool, “wherein said at least one
print tool includes a plurality of selectable print options corresponding to
different formats for printing at least a subset of the driving directions for the
selected map view.”
Appeal 2011-004204
Application 11/612,687

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Rejections
The following Examiner’s rejections are before us for review:
I. claims 1-5, 8-14, 17, 18, and 20-22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over DeLorme (US 2003/0182052 A1, published
Sep. 25, 2003) and Goldberg (US 6,452,597 B1, issued Sep. 17, 2002); and
II. claims 6, 15, 16, 19, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over DeLorme, Goldberg, and American Map Road
Atlas 2005 United States, published by American Map (August 2004)
(hereinafter referred to as “American Map”).1

OPINION
Rejection I – Obviousness based on DeLorme and Goldberg
Independent claims 1, 12, and 17
The Examiner finds that DeLorme substantially discloses the subject
matter of independent claims 1, 12, and 17, except that DeLorme fails to
disclose that “the at least one print tool includes a plurality of selectable
print options corresponding to different formats for printing at least a subset
of the driving direction[s].” Ans. 4-5, 8, 10, and 16. To cure the deficiency
of DeLorme, the Examiner turns to Goldberg for its disclosure of “a vehicle
computer system (100) featuring a display device (104) for providing
address information in a size defined by the user,” wherein “text size is

1 On the record before us, Appellant does not appeal the Examiner’s
provisional rejection of claims 1 and 17 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1 and 11,
respectively, of copending U.S. Patent Application Serial No. 11/500,604.
App. Br. 9. Accordingly, the provisional obviousness-type double patenting
rejection of claims 1 and 17 is not addressed in this opinion.
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directly related to usefulness of address information,” and including
“peripheral output devices such as printers that are coupled to the processing
unit (152) through the input/output interface (168).” Ans. 5, 11, and 17
(citing Goldberg, col. 5, ll. 24-41, col. 6, ll. 47-64, col. 11, ll. 11-50, and
Figs. 2 and 5a-5g). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art
to include a user-defined driving direction format as per
Goldberg within the map and direction system of DeLorme
since doing so would improve the usefulness of printed
directions given that DeLorme suggests that . . . a hardcopy
printout (126) is useful to be easily read in field situations . . .
and Goldberg suggests that text size is one measure of
usefulness.

Ans. 5 and 11 (citing DeLorme, p. 5, para. [0046]).
Appellant argues that the Examiner’s reliance on Goldberg to disclose
claim 1’s “plurality of selectable print options corresponding to different
formats for printing at least a subset of the driving directions for the selected
map view” and the same or similar language in claims 12 and 17 is
misplaced. App. Br. 10-11, 13. Appellant notes that while Goldberg teaches
a user-selectable button, the text size within that button is not user-
selectable. App. Br. 11. Rather, “Goldberg discloses automatically
adjusting text size to fit within the display area available.” Id. Further,
Appellant argues that Goldberg’s disclosure of a printer does not mean “that
resizing the text for printing is an available option to the user.” Id.
Goldberg generally discloses displaying text on a limited-area display
surface, wherein “[t]he size of information being display[ed] by a computer
is automatically adjusted in order to make the information easily readable,
while at the same time leaving most (or all) of the information displayed on
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Application 11/612,687

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a single screen.” Goldberg, Title and Abstr. More particularly, Goldberg
discloses that a
[s]ize adjuster 202 receives the information to be displayed and
optionally an indication of the size of the display area. For
example, an application having a user-selectable button with
text inside the button can provide the text and an indication of
the size of the button (e.g., in pixels) to adjuster 202. The size
of the button is then used by adjuster 202 as the display area
and the text is automatically adjusted for display within the
button. In situations where an indication of the size of the
display area is not given, adjuster 202 uses a default value (e.g.,
the entire surface of display 134) as the display area.
Alternatively, adjuster 202 may limit the display area based on
other information (e.g., icons or other text) already being
displayed. The portion of the display occupied by such other
information can be provided to adjuster 202 from the operating
system 164 of FIG. 2, or alternatively may be known by
adjuster 202 if adjuster 202 is part of the operating system 164.

Goldberg, col. 6, ll. 47-64.
The Examiner relies on the above-quoted passage of Goldberg to
disclose that “[i]n response to user-selection of the size of the button, the
size adjuster (202) adjusts the properties of the text for display within the
button.” Ans. 17. However, the Examiner has misinterpreted this passage
because, as suggested by Appellant, Goldberg’s disclosure of a user-
selectable button does not mean that the user selects the size of the button.
Rather, this passage indicates that the button size is fixed and the size
adjuster 202 adjusts the text to fit within the fixed size of the button or else a
default size, such as the entire surface of the display, if the size of the button
is not given. Further, that Goldberg’s computer 102 may be connected to a
peripheral output device in the form of a printer (col. 5, ll. 37-41) does not
alter Goldberg’s disclosure that information to be displayed is adjusted
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based on the available size of the display and not on the basis of any user
selection. Thus, we are persuaded by Appellant’s arguments that Goldberg’s
disclosure does not satisfy the claim language that the “at least one print tool
includes a plurality of selectable print options corresponding to different
formats for printing as least a subset of the driving directions.”
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 12, and 17, and claims 2-5, 11, 13, and 18 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over DeLorme and
Goldberg.

Dependent claim 8 and 9, dependent claim 10, dependent
claim 14, dependent claims 20 and 21, and dependent claim 22
Although Appellant argues each of claims 8, 10, 14, 20, and 22 under
a separate heading (App. Br. 13-16), we note that the Examiner’s rejection,
of dependent claims 8 and 9, dependent claim 10, dependent claim 14,
dependent claims 20 and 21, and dependent claim 22, all rely on the
erroneous finding Goldberg discloses that “at least one print tool includes a
plurality of selectable print options corresponding to different formats for
printing at least a subset of the driving directions.” See Ans. 6-7, 9-10, 11-
13. For the reasons discussed supra, Goldberg fails to disclose this claim
limitation. Accordingly, we do not sustain the Examiner’s rejections of
dependent claim 8 and claim 9 (dependent thereon), dependent claim 10,
dependent claim 14, dependent claim 20 and claim 21 (dependent thereon),
and dependent claim 22 under 35 U.S.C. § 103(a) as unpatentable over
DeLorme and Goldberg.

Appeal 2011-004204
Application 11/612,687

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Rejection II – Obviousness based on
DeLorme, Goldberg, and American Map
Although Appellant argues claims 6 and 19, claim 15, and claims 16,
23, and 24 under separate headings, we note that the Examiner’s rejection of
claims 6 and 19, claim 15, and claims 16, 23, and 24 all rely on the
erroneous finding that Goldberg discloses that “at least one print tool
includes a plurality of selectable print options corresponding to different
formats for printing at least a subset of the driving directions.” See Ans. 13-
15, 25-28. The Examiner does not make any findings that American Map
cures the deficiency of the combination of DeLorme and Goldberg. See id.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner’s rejection of claims 6 and 19, claim 15, and claims 16, 23, and 24
under 35 U.S.C. § 103(a) as unpatentable over DeLorme, Goldberg, and
American Map.

DECISION
We reverse the Examiner’s decision to reject claims 1-6 and 8-24.

REVERSED

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