Ex Parte Kim et al

Patent Trial and Appeal Board

Feb 21, 2017

13519688 (P.T.A.B. Feb. 21, 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.
13/519,688 08/15/2012 Heungwon Kim 108497.00191 6469
23373 7590 02/23/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
WEEKS, MARTIN A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEUNGWON KIM, SEUNGWAN WOO,
WONKEUN LEE, and HAEIL LEE
Appeal 2015-004713
Application 13/519,688
Technology Center 3600
Before EDWARD A. BROWN, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Heungwon Kim et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, 4, 6, 7, 12—14, 16, 17,
20-23, and 25—36, which are all the pending claims.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants submit the real party in interest is Intellectual Discovery Co.,
Ltd. Appeal Br. 2.
Appeal 2015-004713
Application 13/519,688
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A vehicle navigation apparatus for a vehicle
comprising: a storage unit;
a communication unit configured to receive image data
from a vehicle black box mounted in the vehicle; and
a controller configured to map the received image data to
route guidance information and store the received image data at
the storage unit,
wherein the route guidance information comprises a
plurality of sub-route guidance information each of which
corresponds to a respective division of the route guidance
information,
wherein the image data are captured by the vehicle black
box while the vehicle is driven along the route [according to]
guidance information and divided into a plurality of captured
image data each of which has a predetermined recoding time
interval or a predetermined file size, and
wherein the controller maps the received image data to
route guidance information in such a way that one or more
captured image data of the plurality of captured image data
correspond to one or more sub-route guidance information of the
plurality of sub-route guidance information.2
REJECTIONS3
1) Claims 1, 2, 4, 6, 7, 12—14, 16, 20—23, 25, 26, 31—33, and 35 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Famham
2 Claims 1 and 20, as set forth in the Claims Appendix, were submitted in an
Amendment after Final Rejection submitted April 28, 2014. The Examiner
did not enter this Amendment. Advisory Act. 1.
3 In the Answer, the Examiner withdraws a rejection of claims 1 and 20 as
indefinite under 35 U.S.C. § 112, second paragraph based on “an after-final
amendment.” Ans. 3; see Final Act. 5—6; but see Advisory Act. 1 (noting
that the proposed amendment “will not be entered”).
2
Appeal 2015-004713
Application 13/519,688
(US 2008/0018497 Al, published Jan. 24, 2008) and Lee (US
2008/0033634 Al, published Feb. 7, 2008).4
2) Claims 17 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Famham, Lee, and Lemelson (US 5,983,161,
issued Nov. 9, 1999).
3) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Famham, Lee, and Hirose (US 2008/0275636 Al, published Nov.
6, 2008).
4) Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Famham, Lee, Hirose, and Morimoto (US 6,018,697, issued Jan.
25, 2000).5
5) Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Famham, Lee, Hirose, Morimoto, and Clayton (US 2006/0195366
Al, published Aug. 31, 2006).
6) Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Famham, Lee, Hirose, Morimoto, and Bentele (US 2008/0097665
Al, published Apr. 24, 2008).
7) Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Famham, Lee, and Brenner (US 2010/0289922 Al, published Nov.
18,2010).
4 The Final Action lists claim 24 as subject to this rejection. Final Act. 6.
However, claim 24 is cancelled. Appeal Br. 18 (Claims App.).
5 The Examiner failed to include Lee in the initial statement of each of
rejections 4—7. Final Act. 16—19. However, the substantive portion of each
of rejections 4—7 refers to “the combination of Famham and Lee.” Id. We,
thus, include Lee in our statement of the rejections.
3
Appeal 2015-004713
Application 13/519,688
DISCUSSION
Rejection 1
The Examiner finds that Farnham discloses the subject matter of
independent claims 1 and 20, except for the limitations “wherein the route
guidance information comprises a plurality of sub-route guidance
information” and “wherein the controller maps the received image data to
route guidance information in such a way that one or more captured image
data . . . correspond to one or more sub-route guidance information.” Final
Act. 6—7, 10-11. The Examiner finds that Lee discloses route guidance
information comprising a plurality of sub-route guidance information and a
controller that maps received image data to route guidance information in
such a way that it corresponds to sub-route guidance information. Id. at 7,
11 (citing Lee 147). The Examiner concludes it would have been obvious
to modify Farnham’s navigation apparatus with Lee’s route guidance
information and controller because the claimed invention “is merely a
combination of old elements, and in the combination each element would
merely have performed the same function as it did separately” with
predictable results. Id. at 8, 11.
The Examiner clarifies the final rejection of claim 1 in an Advisory
Action. Advisory Act. 2 (mailed May 16, 2014). The Examiner explains
that “[in] FIG. 1, Lee discloses a processor (controller) that maps data for
route guidance information. Under a broadest reasonable interpretation, the
data shown in FIG. 3 may be construed as image data.” Id.
Appellants contend Lee does not disclose the recited “route guidance
information comprises a plurality of sub-route guidance information” or the
recited controller that maps the received image data to correspond to one or
4
Appeal 2015-004713
Application 13/519,688
more sub-route guidance information. Appeal Br. 9. Appellants also
contend that the combined teachings of Famham and Lee does not result in
the recited controller. Id. at 11. In support of these contentions, Appellants
argue that Famham “discloses taking pictures associated with
geographical/positional coordinates on a race course,” Lee discloses “a
navigation system in which sub-routes are stored for providing directions to
a destination,” and the combination of Famham and Lee “would result in a
system that takes pictures associated with geographical/positional
coordinates according to the teaching of Famham while following the
directions of the navigation system according to Lee.” Id. at 10—11. For the
following reasons, we do not sustain the rejections of claims 1 and 20.
Famham relates to “an integrated data logging unit for logging data
related to the position of a motor vehicle on a race track.” Famham 12.
Famham discloses unit 10 comprising a data acquisition means 12 including
a “Global Positioning System (GPS) receiver module ... for calculating the
Universal Transverse Mercator (UTM) coordinates of the unit 10.” Id. 121,
Fig. 1. Famham’s data acquisition means 12 also comprises “an integral
image capture device 24 for capturing video images, or the like as the
vehicle is driven or ridden around a race circuit.” Id. 119.
Lee discloses “a single or multi-route map matching apparatus in a
system which provides a navigation service via a mobile communication
terminal.” Lee, Abstract. Lee discloses:
Upon completion of the route search, the information center extracts
partial routes generated as end gateways respectively from the present
location and the destination and stores the extracted partial routes.
This allows the multiple routes to be so devised that upper and lower
sub-routes are stored with both ends functioning as the end gateways.
5
Appeal 2015-004713
Application 13/519,688
Id. 147; see also Fig. 3.
We disagree with Appellants that Lee does not disclose the recited
“route guidance information comprises a plurality of sub-route guidance
information” based on paragraph 47 of Lee. However, the Examiner’s
finding that Lee teaches the recited “controller maps the received image data
to route guidance information in such a way that one or more captured image
data . . . corresponds to one or more sub-route guidance information” (Final
Act. 7) is not supported by the disclosure in Lee. Although we appreciate
the Examiner’s clarification of the rejection in the Advisory Action, for the
following reasons we do not agree that Lee’s Figure 3 discloses the recited
“image data.”
Claim 1 recites that “the image data are captured by the vehicle black
box.” The Specification explains that “the vehicle black box 200 may
photograph an image” while the vehicle is being driven. Spec. 140.
Appellants’ Figure 6 illustrates that the vehicle navigation apparatus
searches for a route at step S411, transmits route guidance information to the
vehicle black box at step S412, and the vehicle black box transmits the
received route guidance information with image data mapped thereto back to
the vehicle navigation apparatus at step S414 for display at step S416. The
Specification explains that Figure 9 illustrates a display with image data
from the vehicle black box and a separate guide route. Id. 1103, Fig. 9.
Appellants’ Figure 9(a) illustrates the vehicle black box image data on the
right of the display and guide route information on the left of the display. Id.
Lee’s Figure 3 illustrates only guide route information. Lee, Fig. 3, 48—
49. Therefore, Lee’s Figure 3 does not support a finding that Lee discloses
6
Appeal 2015-004713
Application 13/519,688
the recited controller because Lee does not disclose image data captured by a
vehicle black box.
To the extent that the Examiner relies on the modification of Famham
with Lee for rendering obvious the recited controller, the rejection lacks
rational underpinnings. Famham discloses a black box for capturing images
and uses a GPS receiver module to calculate coordinates of unit 10 while a
vehicle is driven on a race circuit. The Examiner has not directed us to any
disclosure in Famham of the use of route guidance information, and has not
provided an adequate reason why it would have been obvious to modify
Famham to include route guidance information for driving on a racing
circuit. The Examiner’s rationale for the combination of Famham and Lee,
i.e., it is merely a combination of old elements performing the same
functions with predictable results, is not support by rational underpinnings.
We agree with Appellants that the subject matter of claims 1 and 20 is not
suggested by the Examiner’s proposed modification of Famham with Lee.
We, thus, do not sustain the rejection of claims 1 and 20. Claims 2, 4,
6, 7, 12—14, and 16 all depend from claim 1. Appeal Br. 14—17 (Claims
App.). We do not sustain the rejection of claims 2, 4, 6, 7, 12—14, and 16 for
the same reasons as discussed for claim 1. Claims 21—23, 25, 26, 31—33, and
35 all depend from claim 20. Id. at 18—20. We do not sustain the rejection
of claims 21—23, 25, 26, 31—33, and 35 for the same reasons as discussed for
claim 20.
Rejections 2—7
The Examiner rejects dependent claims 17, 27—30, 34, and 36 based
on various combinations of Famham and Lee with additions from Lemelson,
Hirose, Morimoto, Clayton, Bentele, and/or Brenner. Final Act. 14—19.
7
Appeal 2015-004713
Application 13/519,688
Claim 17 depends from claim 1 and claims 27—30, 34, and 36 depend from
claim 20. Appeal Br. 17—20 (Claims App.). The Examiner does not rely on
Lemelson, Hirose, Morimoto, Clayton, Bentele, or Brenner to cure the
deficiencies in the rejections of claims 1 and 20 discussed above. Final Act.
14—19. Therefore, we do not sustain the rejections of claims 17, 27—30, 34,
and 36 for the same reasons as discussed for claims 1 and 20.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 6, 7, 12—14, 16, 17,
20—23, and 25—36 is reversed.
REVERSED
8