Ex Parte Matsuoka

Patent Trial and Appeal Board

Oct 27, 2014

11520596 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROMICHI MATSUOKA
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Appeal 2012-008172
Application 11/520,596
Technology Center 3600
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Before JOHN C. KERINS, JILL D. HILL, and MICHAEL L. WOODS,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hiromichi Matsuoka (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 2, 4–8, and 10–25. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

THE INVENTION
Appellant’s invention is directed to an application control system for
use in a navigation system of a vehicle. Independent claim 25 is illustrative:
25. An application control system for use in a navigation
system of a vehicle comprising:

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a current region detector that detects a current region where the
vehicle is operating;

an application storage that stores in a retrievable manner, a
plurality of map data handling software applications, each of
the plurality of map data handling software applications being
associated with a map data format from among a plurality of
map data formats, each of a plurality of preset regions being
associated with a map data format from among the plurality of
map data formats; and

a control unit, wherein

the control unit determines if the current region is one of the
plurality of preset regions, and when it is determined that the
current region is one of the plurality of preset regions, the
control unit determines a map data format associated with the
current region, and further determines a map data handling
software application associated with the map data format
associated with the current region;

the control unit further determines whether the map data
handling software application associated with the map data
format associated with the current region is currently being
executed by the control unit;

when the control unit determines that the map data handling
software application associated with the map data format
associated with the current region is currently being executed
by the control unit, the control unit continues to execute the
map data handling software application associated with the map
data format associated with the current region;

when the control unit determines that the map data handling
software application associated with the map data format
associated with the current region is not currently being
executed by the control unit, the control unit determines
whether the map data handling software application associated
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with the map data format associated with the current region is
stored in the application storage; and

when the control unit determines that the map data handling
software application associated with the map data format
associated with the current region is stored in the application
storage, the control unit retrieves and executes the map data
handling software application associated with the map data
format associated with the current region.

THE REJECTIONS
The Examiner has rejected:
(i) claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement; and
(ii) claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
ANALYSIS
Claims 2, 4–8, and 10–25--§ 112, first paragraph--Written Description
The Examiner, citing to independent claim 25 as being representative
of it and independent claim 7, finds that there is no written descriptive
support for several limitations found in claim 25. Specifically, the Examiner
maintains that there is no written descriptive support for the following
limitations found in claim 25:
(a) the control unit determines if the current region is one of the
plurality of preset regions;

(b) when it is determined that the current region is one of the
plurality of preset regions;

(c) the control unit determines a map data format associated
with the current region;

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(d) when the control unit determines that the map data handling
software application associated with the map data format
associated with the current region is not currently being
executed by the control unit, the control unit determines
whether the map data handling software application associated
with the map data format associated with the current region is
stored in the application storage; and

(e) when the control unit determines that the map data handling
software application associated with the map data format
associated with the current region is stored in the application
storage, the control unit retrieves and executes the map data
handling software application associated with the map data
format associated with the current region.

We are of the opinion that Appellant’s application as filed evidences
that Appellant was in possession of the above aspects of the system set forth
in claim 25, as well as similar aspects of the system and method set forth in
independent claims 7, 13, and 14.
Although it is somewhat unclear, with respect to limitations (a)–(c)
above, whether the Examiner bases the rejection on the appearance of the
term “plurality,” or “preset,” or both, the discussion at page 7, lines 17–23,
and illustration in corresponding Figure 4, as well as Figure 2, evidence
possession of those limitations. There is clearly contemplation of a plurality
of regions (“each of a plurality of regions”), and the term “preset” would be
understood by persons of ordinary skill in the art as referring to those
regions for which application software resides in the claimed application
storage.1 The determinations in limitations (a) and (b) are seen to have

1 We note that the Examiner did not take issue with the recitation of the
application storage as storing “a plurality of map data handling software
applications, each of the plurality of map data handling software applications
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written descriptive support at steps S2 and P2 in the flowcharts of Figures 2
and 4, respectively, with a “YES” result being the determination that the
current region is one of the plurality of preset regions.
The limitation directed to determining a map data format associated
with the current region is, as Appellant maintains, “[i]mplicit in [the] process
of switching software (or continuing to use software currently being
executed) . . . is first determining the map data format that is associated with
the current region.” Appeal Br. 19 (emphasis omitted). The entire premise
of Appellant’s invention, as well as what is described relative to the prior art
and the drawbacks of the prior art2, is a recognition that different regions
may (and do) employ different map data formats, and thus require different
types or forms of application software “to accommodate the different map
data formats,” in order to “suitably handle the map data of a region.” Spec.,
p. 7, ll. 20–22; see also, Spec., p. 1, ll. 14–19. In other words, persons of
ordinary skill in the art would understand that the map data format
associated with a region must be determined before it can be determined
what application software is to be retrieved (Figure 2, step S4), or what is
the suitable application software for the current region (Figure 4, step P4).

being associated with a map data format from among a plurality of map data
formats, each of a plurality of preset regions being associated with a map
data format from among the plurality of map data formats.” Appeal Br.,
Claims Appendix, claim 25.
2 The prior art approach, according to Appellant, was to provide a different
product for each region in which a map data format was different from
another region, whereas Appellant’s invention appears to be directed to
storing a plurality of map data handling software applications in a single
product or device, such that the product or device would be operable in a
plurality of regions. Spec., p. 2, ll. 4–12, ll. 24–25.
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That Appellant presents an “edited version” of Figure 3 including a
column identifying “Map Data Format,” is not, as the Examiner asserts,
“proof that appellant absolutely has no possession of the claimed subject
matter.” Answer 11. Instead, Appellant merely makes an attempt to
illustrate explicitly that which is implicit in the disclosure, as discussed
above.
The Examiner’s issues with respect to a perceived lack of written
descriptive support directed to limitations (d) and (e) above appear to have
as their genesis the alleged lack of disclosure of limitations (a)–(c). In any
event, these limitations are seen as finding adequate disclosure in steps S5–
S8 in Figure 2, as well as in steps P4–P8 in Figure 4.
In sum, Appellant’s application as filed is seen as evidencing that
Appellant was in possession of the invention set forth in claim 25 on appeal.
As the Examiner makes no separate findings regarding independent claims
7, 13, and 14, as well as all claims depending from the independent claims,
the same can be said as to all claims currently on appeal.
Accordingly, the rejection of claims 2, 4–8, and 10–25 under 35
U.S.C. § 112, first paragraph, as failing to meet the written description
requirement, is not sustained.
Claims 2, 4–8, and 10–25--§ 112, first paragraph--Enablement
Appellant argues that the rejection of the claims as not being enabled
by the Specification is little more than an extension of the rejection of the
claims as lacking written descriptive support, in that the Examiner has failed
to address, let alone establish, that the invention set forth in the claims would
require undue experimentation on behalf of persons of ordinary skill in the
art to be able to make and use the invention. Appeal Br. 25–27.
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The Examiner’s position relative to an alleged lack of enablement
does indeed, in large part, identify limitations and assert that such limitations
are not mentioned or supported in the Specification. Answer 6–7. In
particular, the Examiner takes the position that
there is no disclosure of retrieving and executing
the [application] software. The application only
mentions determining the application software to
be retrieved based on a current position. It fails to
mention or provide support for executing the
retrieved map data handling software application.
The map data handling software is non-existent.
Answer 7.
Elsewhere, the Examiner restates this position, asserting that, although
the Specification describes determining what application software is to be
retrieved according to a current position of a vehicle, it “fails to mention
executing the retrieved software application.” Answer 13. The Examiner
also reiterates that the limitations referencing “map data handling software”
are “non[]existent and are not supported in the specification.” Id.
Although the reasons advanced by the Examiner can be said to
address the Wands3 factor directed to “the amount of direction provided by
the inventor,” the analysis fails to support a conclusion that undue
experimentation would be required in order to make and use the claimed
invention. The Examiner has not established that undue experimentation on
the part of a person of ordinary skill in the art would be required in order to
be able to produce a system in which a software application that has been
retrieved is executed as well. Further, the Examiner’s position relative to the
alleged lack of disclosure of “map data handling software” is not supported

3 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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by a preponderance of the evidence, given the disclosure in the Specification
that the control process illustrated in Figure 4 “switches the application
software that suitably handles the map data of a region where the vehicle is
currently traveling.” Spec., p. 7, ll. 19–21 (emphasis added).
Accordingly, the rejection of claims 2, 4–8, and 10–25 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement, is not sustained.

DECISION
The rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 2, 4–8, and 10–25 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement is reversed.

REVERSED

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