Ex Parte Igarashi

Board of Patent Appeals and Interferences

Feb 23, 2010

10172998 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAORU IGARASHI
____________

Appeal 2009-000761
Application 10/172,998
Technology Center 2400
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Decided: February 24, 2010
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Before LEE E. BARRETT, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-28, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Representative Claim
1. An information distributing device comprising:
a memory for storing a predetermined moving path of a user,
the predetermined moving path being determined by the user;
a distribution information entry unit for receiving distribution
information from a remote source, the distribution information
including position information;
a determination unit for determining whether there is a
predetermined relationship between the predetermined moving path
stored in said memory and the position information included in the
distribution information; and
a transmitting unit responsive to said determination unit
determining that there is the predetermined relationship between the
predetermined moving path and the position information, for
transmitting the distribution information to the user.

Prior Art
Joerg US 6,480,785 B1 Nov. 12, 2002
Yokota US 6,687,613 B2 Feb. 3, 2004
Elsey US 6,801,763 B2 Oct. 5, 2004

Examiner’s Rejections
Claims 1, 2, 4-10, 12-15, and 16-24 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Yokota.
Claims 3, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yokota and Elsey.
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Claims 25-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yokota and Joerg.1

ISSUE
Has Appellant shown that the Examiner erred in finding that Yokota
discloses determining whether there is a predetermined relationship between
the predetermined moving path and the position information included in the
distribution information?

FINDINGS OF FACT
1. Yokota discloses a display method and apparatus of a
navigation system for displaying information necessary for guiding a driver
of a vehicle. The navigation system is designed to enable a user (such as
driver or passenger) to quickly find and select the destination in a new area
based on the names or places used in his/her home area. The navigation
system includes a search method for searching a point of interest based on a
list of preferred names specially created or based on a list of registered
points used in his/her home area. Abstract.
2. In one embodiment, the driver selects his/her favorite chain
restaurant name such as “In-N-Out Burger” on a display screen in step 104.
Upon selecting the name, the navigation system displays information on all

1 The Examiner’s Answer does not repeat a 35 U.S.C. § 112, second
paragraph rejection from the Final Rejection. We conclude that the § 112
rejection has been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (Bd.
App. 1957) (rejection not referred to in the examiner’s answer is assumed to
have been withdrawn).

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of the places having the name “In-N-Out Burger,” i.e, business chains,
within the predetermined distance from the current vehicle position in step
105. Examples of information in the list include address, distance and
direction as shown in the screen 66 of figure 5C. Typically, the business
chains are listed in the order of distance from the current vehicle position.
At step 106, the driver selects one of the business chains, i.e., the nearest
“In-N-Out Burger,” which results in the “Confirm Destination” screen 68 of
figure 5D at step 107. If the information in the screen 68 matches the
destination that the driver wants to go, he/she selects “OK to Proceed.”
Then, at step 108, the navigation system calculates appropriate routes to
guide the driver to the selected destination and changes the display to a route
guidance screen such as shown in FIG. 1B, which ends the process of
entering the destination. Figs. 5A-5D and 6; col. 8, ll. 16-36.
3. In another embodiment, a “Find Similar Place” screen 74 shows
methods of finding similar places including “Same Name Sorted by
Distance.” By selecting the “Same Name Sorted by Distance” in screen 74,
the navigation system displays a “Select Destination” menu screen 76 shown
in FIG. 7C which lists the places having the same name as “In-N-Out
Burger” within a predetermined distance from the current vehicle position.
The list of “In-N-Out Burger” is arranged in the order of distance from the
vehicle and each entry includes information on the address, distance and
direction. By selecting one of the entries in the list, the navigation system
displays a “Confirm Destination” screen 78 which shows full information of
the selected “In-N-Out Burger.” When the driver selects “OK to Proceed,”
the navigation system calculates appropriate routes to get to the selected “In-
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N-Out Burger” and changes the display to a route guidance screen such as
shown in FIG. 1B. Figs. 7A-7D and 8; col. 9, ll. 6-36.

PRINCIPLES OF LAW
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Appellant argues that Yokota does not disclose or suggest points of
interest that are identified after the start and destination points are entered by
a user. App. Br. 25. Appellant also argues that it is unclear how Yokota
might disclose or suggest a transmitting unit responsive to said
determination unit determining that there is a predetermined relationship
between the moving path and the position information for transmitting the
distribution information to the user. App. Br. 28.
The Examiner finds that columns 7 through 9 of Yokota describe the
claimed “determination unit for determining whether there is a
predetermined relationship between the predetermined moving path stored in
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said memory and the position information included in the distribution
information,” as recited in claim 1. Ans. 3-4. The Examiner finds that these
columns of Yokota describe determining a relationship between the location
of a user and a point of interest like a restaurant. Ans. 16-17.
Yokota discloses a navigation system that allows a user to select a
point of interest such as a restaurant. The navigation system then calculates
a route from the user to the restaurant. FF 1-3. The location of the
restaurant is the destination point of the route. In other words, the position
of the point of interest, or “distribution information,” is the destination point
of the “moving path.” Yokota thus does not determine whether there is a
relationship between the moving path and the position information included
in the distribution information, because this position information is the end
point (i.e., part of) of the moving path.
Therefore, the Examiner has not shown that the system of Yokota
includes the “determination unit” function as recited in claim 1. Each of the
other independent claims on appeal (claims 9 and 14) recites the same or
similar limitations as those for which the rejection of claim 1 is deficient.
The § 103(a) rejections applied against the dependent claims do not remedy
the deficiencies in the rejection applied against the independent claims.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding that Yokota
discloses determining whether there is a predetermined relationship between
the predetermined moving path and the position information included in the
distribution information.

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DECISION
The rejection of claims 1, 2, 4-10, 12-15, and 16-24 under 35 U.S.C.
§ 102(e) as being anticipated by Yokota is reversed.
The rejection of claims 3, 11, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Yokota and Elsey is reversed.
The rejection of claims 25-28 under 35 U.S.C. § 103(a) as being
unpatentable over Yokota and Joerg is reversed.

REVERSED

msc

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