Ex Parte Cummings

Patent Trial and Appeal Board

Nov 14, 2017

12116760 (P.T.A.B. Nov. 14, 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.
12/116,760 05/07/2008 Ian Cummings IAN-10305/29 (PATENT) 7681
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
11/15/2017 EXAMINER
HOLWERDA, STEPHEN
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
11/15/2017 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 IAN CUMMINGS
Appeal 2016-007154
Application 12/116,760
Technology Center 3600
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007154
Application 12/116,760
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1—5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a method for reducing data transmission in
wireless client-server navigation systems. Spec. 12. Sole independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of rerouting in a navigation system,
comprising:
providing guidance to a user along an
original route to a destination;
determining if a departure from the route
has occurred and, if it has, notifying the user;
inputting an instruction from the user in
response to the notification, the instruction
including the following options:
canceling the route,
generating a new route to the destination
incorporating the departure, and
suspending guidance until the user has
returned to the original route; and
if the option of suspending guidance until
the user his [sic] returned to his original route is
selected, automatically resuming guidance once
the user has returned to the original the [sic]
route without inputting any further instructions
from the user.
REFERENCES
Lefebvre
Odinak
Fast
US 5,243,528
US 2003/0083806 A1
US 2006/0111836 A1
Sept. 7, 1993
May 1,2003
May 25, 2006
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REJECTIONS
Claims 1—5 stand rejected under 35 U.S.C. § 112 first paragraph as
failing to comply with the written-description requirement. Final Act. 2.
Claims 1—4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lefebvre and Fast. Id. at 11.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Lefebvre, Fast, and Odinak. Id. at 14.
ANALYSIS
Claims 1—5—Failing to Comply with Written-Description Requirement
The Examiner contends that the Specification does not expressly
disclose “automatically resuming guidance once the user has returned to the
original the [sic] route without inputting any further instructions from the
user,” which claim 1 recites, and claims 2—4 require by dependency from
claim 1. Final Act. 3; Ans. 3. The Examiner further contends that the
Specification does not implicitly disclose this limitation. According to the
Examiner:
“[Cjeasing to provide guidance until the user has returned to the
route” would be consistent with an embodiment involving
muting guidance in response to an off-course event and
permitting the user to selectively unmute guidance along the
stored route when the user intends to return to the route.
Final Act. 3. The Examiner considered a declaration of Robert Vogt (“Vogt
Decl.”), submitted by Appellant to support its argument that the
Specification adequately supports the claims, but found it unpersuasive. Id.
at 3—10. Among other reasons, the Examiner notes that, given the
Declarant’s “high degree of skill in the relevant field,” Declarant’s
interpretation of the Specification “is not necessarily the same as the
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Application 12/116,760
interpretation of the hypothetical ‘person of ordinary skill in the art.’” Id. at
4. The Examiner also asserts that the Declaration “does not establish a basis
for the opinion that ‘until’ implies that resuming necessarily occurs
‘automatically’ as claimed or ‘without inputting any further instructions’ as
claimed.” Id. at 7.
Appellant responds that “the Specification as filed does adequately
describe ‘automatically resuming guidance’ as per the claim language at
issue.” App. Br. 4. Appellant relies on the Vogt Declaration to support this
contention, noting that, according to Mr. Vogt, the Specification permits a
user to choose one of three rerouting options, including “not canceling the
route but ceasing to provide guidance until the user has returned to the
route.” Id. (citing Spec. 7); see Vogt Decl. 1 6. Appellant further states that:
In the opinion of Mr. Vogt, Appellant’s use of the word
“until” makes it clear to him that guidance is suspended until the
user has returned to the route, at which time guidance is again
provided. To Mr. Vogt, as one of skill in the art, the only
reasonable interpretation of the above description is that if and
when the user returns to the route, guidance automatically starts
up[] again where it left off. “[t]he Specification as filed makes it
clear that this automatic resumption of guidance requires no
further input from the user.”
Id. (citing Vogt Decl. 1 5); see Vogt Decl. 1 6.
The limitation requiring “automatically resuming guidance . . .
without inputting any further instructions from the user” is a negative
limitation, in that it excludes the resumption of guidance that is initiated by
user input. “Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.” Inphi
Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).
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In Inphi, the Federal Circuit held that a Specification may describe a “reason
to exclude” a particular limitation when it positively recites the limitation as
one of a number of alternatives. Id. at 1356 (citing In re Johnson, 558 F.2d
1008, 1019 (CCPA 1977). But Inphi does not support the notion that failure
to describe the limitation at all can constitute sufficient “reason to exclude”
that limitation. Indeed, the Manual of Patent Examining Procedure
(“MPEP”) explains that “[t]he mere absence of a positive recitation [in the
specification] [of a limitation] is not basis for an exclusion [of that
limitation].” MPEP § 2173.05(i). The MPEP further requires that “[a]ny
claim containing a negative limitation which does not have basis in the
original disclosure should be rejected under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112 first paragraph.” Id. Under certain circumstances, the
description requirement of 35 U.S.C. § 112, first paragraph, may operate to
defeat the patentability of a narrow but not a broader claim. In re Smith, 458
F.2d 1389 (CCPA 1972)).
Here, the Specification neither positively states that user guidance is
not required in order for the navigation system to resume providing
guidance, nor describes as alternatives the need for user input, or the absence
thereof, before guidance is resumed. Instead, the Specification is silent as to
whether user input may be required to restart guidance. Accordingly, the
Specification does not describe a “reason to exclude” user input as a
requirement to resume guidance.
We have also considered the Vogt Declaration, and found it
unpersuasive. There is nothing in the Vogt Declaration that suggests that the
claim language at issue has any special meaning to one of ordinary skill in
the art, so Mr. Vogt’s expertise is neither necessary nor useful in
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determining whether the language is adequately supported. Cf. PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1355 (Fed. Cir. 2007)
(finding that cell biologist’s expertise not useful in interpreting marketing
materials and materials directed to investors). Further, as the Examiner
noted, Mr. Vogt does not explain why his reading of the claim language is
“the only reasonable interpretation.” See Final Act. 8; see also Ans. 6—7.
For the above reasons, we sustain the Examiner’s rejection of claims
1—5 as failing to comply with the written-description requirement of
35U.S.C. § 112(a).
Claims 1—4—Unpatentable over Lefebvre and Fast
The Examiner finds that Lefebvre teaches all of claim 1 ’s limitations,
including determining whether a departure from an original route has
occurred and providing the user with the option to suspend guidance until
the user returns to the original route. Final Act. 11. The Examiner
acknowledges, however, that Lefebvre does not expressly disclose that in the
suspend-guidance option, guidance is automatically resumed “without
inputting any further instructions from the user” when the user returns to the
original route. Id. at 12. The Examiner asserts that in Lefebvre’s system,
when the vehicle is off route and the user selects the suspend-guidance
option, the system no longer tracks the vehicle and therefore cannot
automatically resume guidance when the vehicle is back on track, thus
requiring the user to input a “resume” command to restart guidance. Id. The
Examiner also asserts that Lefebvre’s system does automatically resume
guidance when the vehicle is back on the original route if the user does not
choose any of the off-route options, because vehicle tracking has not been
canceled at that point. Id. Thus, the Examiner contends that Lefebvre only
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requires user input (the “resume” command) “because the ‘suspend mode in
Lefebvre is linked with canceling of vehicle tracking.” Id.
The Examiner further finds that, like Lefebvre, Fast teaches a
navigation system that gives the user several options, including an option
that suspends guidance, when the vehicle deviates from an original route.
Id. at 12—13. The Examiner asserts that in Fast’s “suspend” mode, “Fast
does not require recalculation of vehicle position following a command to
resume guidance in that vehicle position relative to the original path
[continues to be] performed.” Id. at 13. Thus, according to the Examiner,
[F]rom these teachings of Lefebvre and Fast one of ordinary skill
in the art at the time of the invention was made would have found
it obvious to apply the “suspend” mode as per Fast to the system
of Lefebvre since doing so would enhance the system of
Lefebvre by eliminating lag associated with recalculating vehicle
position and eliminating the basis for [Lefebvre’s] resume
command in response to a determination that the vehicle is back
on route.
Id. The Examiner further contends that applying Fast’s suspend mode, in
which vehicle tracking is continued during suspension of guidance, to
Lefebvre’s suspend mode, would “eliminate the need for a resume
command” because “the resume command is only necessary in Lefebvre
because the ‘suspend’ mode in Lefebvre is linked with cancelation of vehicle
tracking.” Id.
Appellant disputes that Lefebvre and Fast, alone or in combination,
disclose the step that “if the option of suspending guidance ... is selected,
automatically resuming guidance once the user has returned to the original
. . . route without inputting any further instructions from the user.” App.
Br. 4. Appellant asserts that “in contrast to Appellant’s method, the
navigation of Lefebvre intentionally will not resume guidance following a
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‘SUSPEND’ command” because Lefebvre “does not want” automatic
resumption when the suspend option is selected. Id. at 6. Appellant also
denies that Fast teaches the claimed automatic resumption of guidance in
any mode.
We are not persuaded that claims 1—5 are unpatentable over Lefebvre
and Fast, and do not sustain this rejection. Specifically, we are not
persuaded that Lefebvre and Fast, individually or in combination, teach
resuming guidance without user input while in the suspend mode when the
user returns to the original route. Although both Lefebvre and Fast teach
providing a user the option of suspending guidance when the user deviates
from the original route, neither reference teaches automatically resuming
guidance, without further user input, when the user returns to the original
route, as the claims recite. Instead, Lefebvre’s system requires the user to
input a “resume” command to restart guidance (Lefebvre, 10:32—37), and
Fast’s system requires the user to select a “continue guidance button” to do
so (Fast 131).
The Examiner contends, however, that Lefebvre’s system would
resume guidance without user input when the suspend option is selected, as
it does when no option is selected, if modified such that vehicle tracking
continues in the suspend mode, as Fast teaches. We disagree. First, the
Examiner does not provide evidence or persuasive argument that Lefebvre’s
system would resume guidance without user input if the system continued to
track the vehicle’s position in the suspend mode. It is at least as likely that
the suspend mode is intentionally designed to give the user the option of
resuming guidance—or not—in this mode when the user returns to the
original route. The user may have intentionally deviated from the original
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route and may not want guidance from the system when returning to the
original route. See Lefebvre, 10:32—34 (teaching that the option of
suspending route guidance “allows the vehicle operator to avoid being
continuously reminded that he is off course when he already knows that”).
Second, the Examiner’s position is premised on Lefebvre’s system resuming
guidance without user input when the user returns to the original route if no
recovery option is selected. But Lefebvre’s system does not “resume”
guidance when the user returns to the original route and before a recovery
option is selected because it never stops providing guidance under those
circumstances. Instead, Lefebvre’s system continues to monitor the
vehicle’s position, and to display that position relative to the original route,
when no option is selected. Lefebvre, 9:13—21.
Lor the above reasons, we do not sustain the Examiner’s rejection of
claims 1—5 as unpatentable over Lefebvre and Last.
Claim 5—Unpatentable over Lefebvre, Fast, and Odinak
Claim 5 depends from claim 1. App. Br. 9. This rejection relies on
the erroneous finding that claim 1 is unpatentable over Lefebvre and Last.
Linal Act. 14—15. Odinak is not relied upon to cure the deficiency.
Accordingly, for the reasons discussed above, we do not sustain the
Examiner’s rejection of claim 5 as unpatentable over Lefebvre, Last, and
Odinak.
DECISION
Lor the above reasons, we affirm the Examiner’s rejection of claims
1—5 for failing to comply with the written-description requirement of
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35 U.S.C. § 112(a). We reverse the Examiner’s rejection of claims 1—4 as
unpatentable over Lefebvre and Fast, and of claim 5 as unpatentable over
Lefebvre, Fast, and Odinak.
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).
AFFIRMED1
1 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.” 37 C.F.R. §
41.50(a)(1)
10