Ex Parte Denaro

Patent Trials and Appeals Board

Jun 7, 2019

15191162 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/191,162 06/23/2016
101535 7590 06/11/2019
Lempia Summerfield Katz LLC/HERE
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
Robert Denaro
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.
10171-12034D
(NC58199US)
EXAMINER
LE,HUNGD
5940
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
06/11/2019 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):
docket-us@lsk-iplaw.com
pair_lsk@firsttofile.com
hereipr@here.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DENARO 1
Appeal2018-008271
Application 15/191, 162
Technology Center 2100
Before ERIC S. FRAHM, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 4--13, and 15-30 (App. Br. 4; Final
Act. 2-10). Claims 2, 3, and 14 have been indicated as containing allowable
subject matter (see Final Act. 10). We have jurisdiction under 35 U.S.C.
§ 6(b).
1 According to Appellant, Here Global B.V. is the real party in interest (App.
Br. 2).
Appeal2018-008271
Application 15/191, 162
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
Disclosed Invention and Exemplary Claim
The disclosed invention relates to a system and methods that enable
taking a precautionary action in a vehicle, such as providing a warning to a
vehicle driver about a potentially difficult or hazardous driving condition on
the road network (Spec. ,r 2). A database that represents a road network
contains information such as the locations of roads and intersections, road
names, the three-dimensional shape of the roads including curvature, slope
and bank, speed limits along roads, etc. (Spec. ,r 21 ). When a vehicle is at a
location that corresponds to where a precautionary action should be taken,
actual modification of the operation or control of the vehicle, such as
braking, accelerating, or maneuvering the vehicle may occur (Spec. ,r 9).
Independent claim 1 is exemplary of the disclosed invention, and
reads as follows (with key limitations emphasized and bracketed lettering
added):
1. A system comprising:
a positioning system that determines a current location
relative to data representing a geographic region; and
a precautionary action application stored in a non-
transitory computer readable medium coupled with the
positioning system and a database and responsive to the
positioning system and the database, [A] the database being
adapted to contain data representing a geographic region in
which the positioning system is being operated, wherein the
data includes multiple data items, each containing data
representing a different feature of a road network in the
geographic region, [BJ the precautionary action application
being operative to determine whether, when combined, the
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Application 15/191, 162
features represented by at least two of the multiple data items
constitute a hazardous condition, and [CJ upon a determination
that the features represented by the at least two of the multiple
data items when combined constitute a hazardous condition,
providing for taking a precautionary action when the
positioning system determines that the current location is
approaching or at a location of the features represented by the
at least two of the multiple data items.
App. Br. 13 (Claims Appendix).
Independent claims 13 and 25 recite methods having limitations
commensurate with claim 1. All of dependent claims 4--12, 15-24, and 26-
30 recite or incorporate the above-emphasized limitations. Appellant
contends that claims 4--13 and 15-30 are patentable for at the same reasons
as claim 1 (App. Br. 5). Accordingly, we select claim 1 as representative per
37 C.F.R § 4I.37(c)(iv).
Examiner's Rejection
(1) Claims 1, 4--13, 15-18, and 20-30 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kellum et al. (US 2007/0050127 Al;
Mar. 1, 2007) ("Kellum'"') in view of Tanaka (US 6,470,265 Bl; Oct. 22,
2002) ("Tanaka"). Final Act. 4--9.
(2) Claim 19 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kellum and Tanaka and further in view of Toennesen et
al. (US 2007 /0222662 Al; Sept. 27, 2007) ("Toennesen"). Final Act. 9.
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Application 15/191, 162
Principal Issues on Appeal
Based on Appellant's arguments in the Appeal Brief (App. Br. 4--11)
and the Reply Brief (Reply Br. 2-5), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1, 4--13, and 15-30 under 35
U.S.C. § 103(a) because the base combination of Kellum and Tanaka fails to
teach or suggest limitations [AJ, [BJ, and [CJ as recited in representative
independent claim 1?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--9) in light
of Appellant's contentions that the Examiner has erred (App. Br. 4--11;
Reply Br. 2-5), as well as the Examiner's response to Appellant's arguments
(Ans. 4--5). Appellant's contentions have not persuaded us of error in the
Examiner's determination that the claims are unpatentable. With regard to
representative independent claim 1, we adopt as our own ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 4--9), and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 4--5) in response to Appellant's Appeal Brief. We
concur with the findings made by the Examiner as to Kellum and Tanaka,
and we provide the following for emphasis.
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) because,
inter alia, the Examiner found that Kellum (see Kellum ,r,r 5, 16-19, 25, 26)
and Tanaka (see Tanaka 2:1-16 and 10:14--45) teach or suggest limitations
[AJ, [BJ, and [CJ (Final Act. 5). The Examiner relies upon Kellum's
disclosure of "curve length " "curve start " "curve end " and "true curve"
' ' '
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Application 15/191, 162
(see Kellum ,r,r 18, 19) as teaching or suggesting the claimed "multiple data
items" (see Ans. 5). The Examiner further relies on Tanaka's disclosure of
"traffic," "curve," and "slope" (see Tanaka col. 2: 1-17) as teaching or
suggesting the claimed "multiple data items," and for also suggesting "many
factors for issuing a warning" (see Ans. 5).
Appellant argues the cited portions of Kellum and Tanaka do not
teach or suggest evaluating at least two multiple data items representing
features of a road network (see limitation [BJ), that when combined,
constitute a hazardous condition (see limitation [CJ) (App. Br. 5-11; Reply
Br. 2-5). Appellant further argues (see App. Br. 7, 11; Reply Br. 4--5)
(summarizing limitations [AJ, [BJ, and [CJ), that neither Kellum nor Tanaka
discloses or suggests preprocessing the road network feature data to identify
hazardous combinations and augmenting or adapting a database to include
precautionary data indicative thereof. However, we do not agree with
Appellant's contentions.
The Examiner cites to paragraph 5 of Kellum for teaching or
suggesting limitations [AJ, [BJ, and [CJ (Final Act. 5). Kellum describes a
method of assisting a driver to negotiate a roadway, by automatically
identifying the roadway from a map database, advising or warning the driver
if attempting to negotiate the road at too high of a speed, and attempting to
control the vehicle to safely negotiate the roadway (see ,r 5). The advisory,
warning and control behaviors are based on pre-established or determined
conditions (see ,r 5). This portion of Kellum's "Summary of the Invention"
cited by the Examiner (see Kellum ,r 5) is explained in greater detail in
Kellum's "Description of the Preferred Embodiment" (see Kellum ,r,r 15-
44).
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Application 15/191, 162
In this section, specifically at paragraphs 28, 29, and 41, Kellum
explains the details of advising or warning a driver of a vehicle and criteria
for making a decision to deliver warning information to the driver if it is
determined that the vehicle may enter a complex roadway at a speed that
exceeds an estimated negotiable speed. Criteria used for making a decision
that the vehicle may enter a complex roadway at an unsafe speed can be
based on any combination including: vehicle speed, estimated negotiable
speed, vehicle acceleration, brake status, brake pressure, road grade, distance
to curve start ... driver skill, driver preference, or a number of annual
crashes at the location (see Kellum ,r 29).
Kellum's teaching or suggestion of combining criteria stored in a map
database 12, used for making a decision to deliver a warning to a driver (via
display 32) when a vehicle 10 may enter a complex roadway at an unsafe
speed, meets claim limitations [AJ, [BJ, and [CJ (Kellum ,r,r 5, 15, 28, 29 and
41 ). Kellum teaches or suggests a database containing data representing
different features of a road network in a geographic region ( as recited in
limitation [A]) (see Kellum ,r,r 5, 15), determining whether a combination of
features represented by at least two multiple data items constitutes a
hazardous condition (as recited in limitation [BJ) (see Kellam ,r,r 28, 29), and
providing for taking a precautionary action when it is determined that the
system determines that a current location is approaching or at a location of
the features represented by the combination of multiple data items ( as recited
in limitation [CJ) (see Kellum ,r,r 28, 41). Accordingly, Appellant's
contention that the combination of Kellum and Tanaka fails to teach or
suggest the invention of independent claim 1 is not persuasive.
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Application 15/191, 162
In affirming the Examiner's conclusion of obviousness, we rely on
portions of Kellum other than the sections cited by the Examiner in the
appealed rejection (see supra citing Kellum ,r 41 ). In addition, paragraph 29
of Kellum was cited by the Examiner when rejecting dependent claims 12
and 24, but not for independent claims 1, 13, and 25 (Final Act. 7-8). The
Examiner relied upon Kellum for teaching or suggesting multiple data items
representing different features of a road network in a geographic region, and
taking precautionary action when the positioning system determines that the
current location is approaching or at a location of the features represented by
the multiple data items. Kellum teaches a combination of multiple data
items to prompt a warning. To the extent that we are changing the thrust of
the Examiner's rejection by relying on Kellum' s combination of multiple
data items to prompt a warning, we designate this as a new ground of
rejection. See In re Wiechert, 370 F.2d 92 7, 964 (CCPA 1967).
Accordingly, we affirm and designate our affirmance of the rejection of
claim 1, as well as claims 4--13, and 15-30 grouped therewith, under 35
U.S.C. § 103 as a new ground of rejection.
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Application 15/191, 162
CONCLUSION2
The subject matter of claims 1, 4--13, 15-30 would have been obvious
to one of ordinary skill in the art at the time of Appellant's claimed
invention under 35 U.S.C. § 103(a) over the base combination of Kellum
and Tanaka.
DECISION
For the above-described reasons, the Examiner's rejections of claims
1, 4--13, and 15-30 under 35 U.S.C. § 103(a) are affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
2 Upon further examination, the Examiner may want to consider whether
individually, Kellum or Tanaka can be used as 35 U.S.C. § 102(b)
references, anticipating at least independent claims 1, 13, and 25.
Specifically, Kellum describes determining current position (i115),
evaluating at least two multiple data items (i129) in a database 12 collected
prior to determining current position (i1 5), determining if the combination of
items data items constitute a hazardous condition (i1i128, 29) and if so,
provide precautionary action ( display 32) when approaching a location
represented by the multiple data items (i1i128, 41 ). Tanaka describes
determining current position ( 4:24--27 and 10:32-34; altitude, latitude,
longitude), evaluating at least two multiple data items (4:24--27; 10:32-34)
in a database 44 collected prior to determining current position, determining
if the combination of items data items constitute a hazardous condition
(10:28-30) and if so, provide precautionary action (10:34--36) when
approaching a location represented by the multiple data items.
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Application 15/191, 162
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, Appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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.
§ 41.50(±).
AFFIRMED
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