Ex Parte Luoma et al

Patent Trials and Appeals Board

Aug 29, 2018

12147554 - (D) (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/147,554 06/27/2008
139885 7590 08/31/2018
HERE Global/ Alston & Bird
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Kristian Luoma
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.
064359/345184 7138
EXAMINER
FIGUEROA, JAIME
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTIAN LUOMA, MIKKO BLOMQVIST, JUKKA
ALAKONTIOLA, and MARCEL DUEE
Appeal2016-000880
Application 12/147,554 1
Technology Center 3600
Before JASON J. CHUNG, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
INVENTION
The invention is directed to sharing information regarding the location
of a device. Spec. ,r 1. Claim 1 is illustrative of the invention and is
reproduced below with emphasis highlighting the disputed limitation:
1. A method comprising:
accessing a name associated with a first point of interest
and a first geographic cell associated with the first point of
1 According to Appellants, Nokia Corp. is the real party in interest. App.
Br. 2.
Appeal2016-000880
Application 12/147,554
interest, the first geographic cell including first geographic cell
boundaries;
receiving location information, the location information
describing a location of a device;
determining, via a processor, whether the location
described by the location information is within the first
geographic cell boundaries;
associating the device with the first point of interest in
response to the location described by the location information
being within the first geographic cell boundaries, wherein
associating the device with the first point of interest includes
associating the device with the first point of interest in response
to receiving a user selection of the first point of interest from a
selection display interface; and
causing the name of the first point of interest to be shared
in response to the location described by the location information
being within the first geographic cell boundaries.
REJECTIONS AT ISSUE2,3
Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, for
lacking antecedent basis. Final Act. 3.
Claims 1, 4, 5, 7, 10, 11, 13, 16, 17, 19, and 20 stand rejected under
35 U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C.
2 In the event of further prosecution, the Examiner should consider the
limitation "wherein associating the device with the first point of interest
includes associating the device with the first point of interest in response to
receiving a user selection of the first point of interest from a selection
display interface" recited in claim 1 ( and similarly recited in claims 7, 13,
and 19) in light of35 U.S.C. § 112, first paragraph, for lacking written-
description support.
3 In the event of further prosecution, the Examiner should consider the
limitation "wherein associating" recited in claim 1 ( and similarly recited in
claims 7, 13, and 19) in light of 35 U.S.C. § 112, second paragraph, for
lacking antecedent basis.
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Appeal2016-000880
Application 12/147,554
§ I03(a) as being unpatentable over Martin et al. (CA 2615202 Al;
published Dec. 18, 2007). Final Act. 7-12.
Claims 2, 8, and 14 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Martin and Caspi et al. (US
2005/0079873 Al; published Apr. 14, 2005). Final Act. 12-13.
Claims 3, 9, and 15 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Martin and Frank et al. (US
2007/0264974 Al; published Nov. 15, 2007). Final Act. 13-14.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Martin and Vellanki et al. (US
2008/0019317 Al; published Jan. 24, 2008). Final Act. 14--17.
ANALYSIS
Rejection of Claim 1 under 35 U.S.C. § 112, second paragraph
The Examiner concludes claim 1 lacks antecedent basis for the
limitation "via the processor." Final Act. 3 ( emphasis in original).
Appellants amended claim 1 on December 23, 2013 to recite "via a
processor."
Accordingly, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph.
Rejection of Claims 1-20 under 35 U.S.C. §§ 102(a)/103(a)
Independent claim 1 recites "causing the name of the first point of
interest to be shared in response to the location described by the location
information being within the first geographic cell boundaries" ( emphasis
added). Independent claims 7, 13, and 19 recite similar features.
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Application 12/147,554
The Examiner rejects claims 1, 4, 5, 7, 10, 11, 13, 16, 17, 19, and 20
under both 35 U.S.C. § 102(a) and 35 U.S.C. § 103(a). Final Act. 7-12. For
purposes of this analysis, we address the rejection under 35 U.S.C. § 103(a)
infra. The Examiner finds Martin teaches User A can share a custom zone
with one or more secondary users, which the Examiner maps to the
limitation "causing the name of the first point of interest to be shared in
response to the location described by the location information being within
the first geographic cell boundaries" recited in claim 1 (and similarly recited
in claims 7, 13, and 19). Final Act. 8 (citing Martin ,r,r 58, 61). Also, the
Examiner finds Martin determines if a user's device is near a zone. Ans. 19
(citing Martin, Fig. 4, ,r 58)
Appellants argue the cited paragraphs of Martin illustrate a method for
sharing a first user's custom zones with a second user, but Martin fails to
teach this sharing of a user's custom zones with another user requires the
user/device location being within the custom zone. App. Br. 17-18; Reply
Br. 7-8. Furthermore, Appellants argue Martin teaches that the user may
share any of the one or more custom zones the user has created at any time
rather than as a result of a device location being within a first geographic
cell boundary. App. Br. 15-18 (citing Martin ,r,r 61-72). We agree with
Appellants.
The cited portions of Martin disclose User A can share a custom zone
with one or more secondary users. Final Act. 8 ( citing Martin ,r,r 5 8, 61 ). In
addition, the cited portions disclose determining if a user's device is near a
zone. Ans. 19 (citing Martin, Fig. 4). We find there is no requirement of a
causal connection between Martin's paragraph 58 and Martin's Figure 4
because Martin's Figure 4 is not required as a condition precedent to
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Application 12/147,554
Martin's paragraph 58. Martin ,r,r 58, 61-72, Fig. 4. Rather, Martin
discloses User A may share custom zones with User B at any time regardless
of a device location being within a first geographic cell boundary. Id.
Stated differently, Martin is silent as to whether User A sharing a custom
zone with one or more secondary users can occur before, after, or
simultaneously with Martin's determining if a user's device is near a zone.
Id. Even if Martin's embodiment of determining if a user's device is near a
zone occurs before Martin's embodiment of User A sharing a custom zone
with one or more secondary users, it is unclear if Martin's embodiment of
determining if a user's device is near a zone causes Martin's embodiment of
User A sharing a custom zone with one or more secondary users. Id.
Consequently, the cited portions of Martin fail to teach a nexus (i.e.,
the "in response to" claim 1 limitation) between: (1) a condition precedent
of the location described by the location information being within the first
geographic cell boundaries; and (2) a subsequent result of causing the name
of the first point of interest to be shared. We, therefore, agree with
Appellants that the cited portions of Martin fail to teach "causing the name
of the first point of interest to be shared in response to the location described
by the location information being within the first geographic cell
boundaries" ( emphasis added) as recited in claim 1 ( and similarly recited in
claims 7, 13, and 19).
Therefore, the Examiner's rejection under 35 U.S.C. § 103(a) is
deficient. Moreover, the Examiner's rejection under 35 U.S.C. § 102(a) is
deficient for similar reasons. Accordingly, we do not sustain the Examiner's
rejections of: (1) independent claims 1, 7, 13, and 19; and (2) dependent
claims 2---6, 8-12, 14--18, and 20 under 35 U.S.C. §§ 102(a) and 103(a).
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Application 12/147,554
DECISION
We reverse the Examiner's decision rejecting claim 1 under 35 U.S.C.
§ 112, second paragraph.
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. §§ 102(a) and 103(a).
REVERSED
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