Ex Parte Seetharam

Patent Trials and Appeals Board

Sep 19, 2017

13564442 - (D) (P.T.A.B. Sep. 19, 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.
13/564,442 08/01/2012 Sriram Seetharam P6468US00 8788
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
09/21/2017 EXAMINER
HILGENDORF, DALE W
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIRAM SEETHARAM
Appeal 2015-007000
Application 13/564,442
Technology Center 3600
Before MICHAEL W. KIM, BRETT C. MARTIN, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the real party in interest as Nokia Corporation.
Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated August 13, 2014
(“Final Act.”), as supplemented by the Advisory Action mailed November
17, 2014 (Adv. Act.).
Appeal 2015-007000
Application 13/564,442
CLAIMED SUBJECT MATTER
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method comprising facilitating a processing of (1) data
and/or (2) information and/or (3) at least one signal, the (1) data
and/or (2) information and/or (3) at least one signal based, at least
in part, on the following:
an input for selecting at least one route associated with at
least one device;
at least one determination of multimedia information
associated with the at least one route; and
a presentation of the multimedia information in place of
mapping information, navigation information, or a combination
thereof associated with the at least one route.
REJECTIONS3
I. Claims 1,3,4, 6—8, 11, 13, 14, and 16—18 stand rejected under
35 U.S.C. § 102(b) as anticipated by Fukuda (US 2008/0228394 Al;
published Sept. 18, 2008).
II. Claims 2, 10, 12, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fukuda and Whitham (US 6,526,351 B2;
issued Feb. 25, 2003).
III. Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fukuda and the Magellan® Maestro™ 3100 User Manual,
© 2007 (hereinafter “Magellan”).
3 The Examiner’s objection to claims 2—10 and 12—20 due to informalities is
a petitionable (rather than appealable) matter. See Final Act. 3^4.
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IV. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fukuda and Naito (US 6,456,930 Bl; issued Sept. 24,
2002).
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner determines that,
according to Appellant’s Specification, any definition of the claim term
“multimedia information” broadly includes at least the following:
By way of example, the multimedia information may include an
arrangement of video, audio, image and/or textual elements or
content to be presented to a user of a device relative to a route.
The multimedia information may convey one or more
advertisements, coupons, incentives, products, venue
descriptions, user interest items or any other information
pertinent to the user, the route or a combination thereof.
Ans. 2 (citing Spec. 126). In view of this disclosure, the Examiner finds
that Fukuda’s “map additional information and/or the advertisement
information is equivalent to the claimed multimedia information.”4 Id. at 3.
The Examiner also finds that Fukuda’s “display screen 24 with the map
screen 42 is equivalent to the claimed presentation of mapping information,”
and that Fukuda discloses that “map additional information and the
4 cf Final Act. 5, 9 (finding Fukuda’s advertisement information
corresponds to the claimed multimedia information.); Adv. Act. 2 (finding
map additional information, such as a business name (i.e., Dog Camera), “is
a textual element presented to the user relative to the route.”).
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advertisement information overlaps the map screen.”5 Ans. 3 (citing
Fukuda, e.g., 1185) (emphasis added); see also id. (citing Fukuda 1 188).
The Examiner explains that because “placement of the business name on the
map screen obscures part of the map features, i.e., whatever would be in the
layer under the business name is not shown,” the business name (i.e., map
additional information) is in place of mapping information, as claimed.
Adv. Act. 2.
Appellant argues that because Fukuda recognizes map additional
information as “[information to be added in locations corresponding to map
information” (Appeal Br. 8 (quoting Fukuda 1160)), Fukuda’s map
additional information is not advertising information, and therefore, not
multimedia information, as claimed. Appeal Br. 8.
As set forth supra, the Specification describes the claim term
“multimedia information” as information that is “an arrangement of video,
audio, image and/or textual elements or content,” which may—but is not
required to—have a specific content (i.e., advertisement). Spec. 126. An
ordinary meaning of the term “multimedia,” which is consistent with the
Specification, is “. . . a wide variety of media such as film video, and music
as well as text and numbers.” MICROSOFT ENCARTA COLLEGE
DICTIONARY 949 (2001). Thus, we construe the claim term “multimedia
5 We do not agree that the Examiner relies on display portion 24 as
“mapping information;” it is clear that the Examiner’s relies on Fukuda’s
Map Information (see Fukuda 157, 158) as mapping information, which
is displayed on map screen 42 of display portion 24, and which the map
additional information overlaps. See Reply Br. 4; Fukuda ]Hf 185, 188.
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information” to mean information arranged to include multiple forms of
media (i.e., video, audio, image, and/or textual element or content).6 Thus,
contrary to Appellant’s arguments, the claim term “multimedia information”
does not mean information having a certain type of content (i.e.,
advertisements). We also do not construe the meaning of the claim term
“multimedia information” as requiring the information to be presented to a
user of a device relative to a route, or to be information associated with a
route.7
Fukuda discloses that “[t]he output format of the map additional
information and advertisement information in the apparatus mounted in a
vehicle is usually ‘display,’ . . . but [may also be] ‘speech sound.’” Id. 1
166; see also Fig. 3 (depicting map additional information and advertisement
information as an arrangement of textual content). Thus, we are not
apprised of error in the Examiner’s determination that Fukuda’s map
additional information and advertisement information separately disclose (or
meet the definition of) multimedia information (i.e., information arranged to
6 In view of our claim construction, we are not persuaded by Appellant’s
argument that examples in the Specification narrow the definition of
“multimedia information” to be “information other than names of the places
of interest, names or roads, etc.” Reply Br. 2—3 (citing Spec. ^fl[ 32, 33).
7 We acknowledge that claim 1 recites an additional limitation that requires
the multimedia information to be associated with at least one route.
Appellant does not dispute that Fukuda’s map additional information or
advertisement information are associated with a route, as required by claim
1.
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include multiple forms of media (i.e., video, audio, image, and/or textual
element or content)), as claimed.
Appellant also argues that Appellant’s Specification and claims define
multimedia information “separately from” mapping and navigation
information, and because Fukuda defines map additional information as
“buildings defined by the business” (i.e., Dog Camera), Fukuda’s map
additional information is mapping and navigation information—not
multimedia information. Appeal Br. 9—10. We disagree. As discussed
supra, multimedia information means that the information may take the form
of multiple types of media, but does not specify the content of the
information. In other words, multimedia information may also be mapping
and navigation information (i.e., information having content relating to
mapping and navigation).
Notwithstanding, the Examiner relies on Fukuda’s “map information”
as the claimed mapping and/or navigational information, which is expressly
defined, in Fukuda, as a separate category of information distinct from map
additional information and advertisement information. See Adv. Act. 2 (map
screen 42); Fukada ^fl[ 157—158 (defining “Map Information” as
“[information relating to maps showing rivers, geographical features and
the like,” wherein “[ijnformation on man-made institutions, such as
buildings. . . is not included.”); id. Tflf 159—160 (defining “Map Additional
Information” as “[ijnformation to be added in locations corresponding to
map information, such as regional information, sightseeing spots, banks,
post offices, gas stations, convenience stores, stations, bus tops and parking
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lots.”); id. 159-160 (defining “Advertisement Information” as
“[information to advertise a certain thing, such as a shop, product or an
institution.”). As set forth supra, the Examiner determines that it is
Fukuda’s map information that is replaced by Fukada’s map additional
information or advertisement information.
With reference to the requirement in claim 1 that the multimedia
information is presented in place of mapping information and/or navigation
information, Appellant argues “Fukuda’s correlated advertisements would
have to replace map screen 42 information, which is not clearly described.”
Appeal Br. 10; Reply Br. 4 (submitting that Fukuda’s Fig. 3 depicts
advertisement information “in a separate window from the map.”). We
agree with Appellant that a preponderance of evidence does not support the
Examiner’s finding that Figure 3 depicts, nor does Fukuda clearly describe,
Fukuda’s advertisement information overlapping map screen 42. Rather,
Fukuda’s Figure 3 depicts display portion 24 with advertisement information
displayed on advertisement screen 52 juxtaposed with map screen 42.
However, a preponderance of the evidence does support the Examiner’s
finding that Fukuda’s map additional information overlaps map screen 42.
See, e.g., Fukuda H 7, 185, 188, Fig. 3.
Appellant does not address the Examiner’s determination that because
Fukuda’s map additional information overlaps map screen 42, Fukuda
discloses presenting multimedia information in place of mapping and/or
navigation information. Appeal Br. 6—10. Rather, Appellant appears to rely
on the argument that Fukuda’s map additional information is not multimedia
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information discussed supra. Appeal Br. 10 (“the Examiner’s argument that
the overlaid multimedia information is the business name, e.g., ‘Dog
Camera’ is addressed above and clearly lacks foundation within the Fukuda
text. As such no replacement occurs in Fukada.”); see also Reply Br. 4
(“What the recitation in Fukada of ‘overlapping’ does relate to is simply the
previously argued ‘map additional information’ which again is not
‘multimedia information’ and is clearly shown in map screen of figure 3 to
simply be a part of map information.”). Notwithstanding, we are in
agreement with the Examiner that overlapping information on a display
screen results in the overlapping information being presented in place of the
information that is overlapped; the overlapped information does not remain
underneath the overlapping information on the display screen.
Moreover, Fukada expressly discloses “examples of switching screens
displayed on the display portion 24,” and specifically, “the manner in which
a map screen and a screen including advertisement information switch to a
detailed screen of the map additional information or advertisement
information.” Fukada 1490 (emphasis added), Figs. 50A—C. In the same
way, Appellant’s Specification discloses that
route based multimedia generator 111 causes the rendering of the
multimedia information in place of navigation information or
mapping information for a selected route. For the purpose of
illustration, the rendering pertains to the coordinated
presentment and/or execution of the multimedia information as
an alternative to a “Map View” or textual and/or audio based
route directions (e.g., “Tum-By-Tum Directions View”).
Rather, the “Map View” is replaced by a “Multimedia
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Information View,” wherein the multimedia information is
presented to the user in connection with a selected travel route.
Spec. 136 (emphasis added). Thus, a preponderance of the evidence
supports a finding that Fukuda discloses a presentation of the multimedia
information (i.e., map additional information or advertisement information
associated with a route) in place of (or “replacing,” as argued by Appellant,
or as an “alternative” as described in the Specification) mapping and/or
navigation information, as claimed.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Fukuda. Because
Appellant chose not to present separate arguments for claims 3, 4, and 6—8,
which depend from independent claim 1, or for independent claim 11 and
claims 13, 14, and 16—18, which depend from independent claim 11, we also
sustain the Examiner’s rejection of claims 3, 4, 6—8, 11, 13, 14, and 16—18
under 35 U.S.C. § 102(b) as anticipated by Fukuda. Appeal Br. 11. To the
extent we relied on findings not relied upon by the Examiner, we designate
our affirmance of claims 1, 2, 3, 6—8, 11, 13, 14, and 16—18 as a new ground
of rejection to give Appellant a full and fair opportunity to respond thereto.
Rejection II
Claims 2 and 12, which depend from independent claims 1 and 11,
require, in relevant part, selecting the route “from among one or more
previously entered routes.” Appeal Br. 20, 23 (Claims App.).
Regarding claims 2 and 12, the Examiner finds, inter alia, that
although Fukuda discloses determining multimedia information associated
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with at least one route, which is a “previously entered destination,” Fukuda
does not explicitly teach that the route is a “previously entered route,” as
recited by claims 2 and 12. Final Act. 11; see, e.g., Fukuda 169, 170.
The Examiner relies on Whitham for teaching “a determination is made [as]
to whether the user has selected one of the selected tours or groups of tours,”
and that “tours or groups of tours are equivalent to the claimed previously
entered routes.” Id. (citing Whitham 10:15—25). The Examiner reasons that
it would have been obvious to combine Fukuda’s information processing
method with Whitham’s selection of interactive multimedia tours “to
provide the user with complete flexibility while planning a tour and while on
the tour.” Id. The Examiner determines that “the flexibility of planning a
tour (Whitham) would be a normal and reasonable addition to the system of
Fukuda.” Ans. 5.
Appellant argues that Whitham fails to remedy the deficiencies of
Fukuda, however, as discussed supra, we do not agree that the Examiner’s
findings are deficient. Appeal Br. 12.
Appellant also argues that the Examiner’s rationale for combining
Fukuda and Whitham “does not reasonably apply as non-analogous art,”
because “the art pertains to different problems and solutions confronting the
inventor.” Appeal Br. 13. Specifically, Appellant argues that “the fields of
endeavor in Fukuda and Whitham do not mirror each other with regards to
the route selection decision making process.” Id. The Examiner responds
that Fukuda and Whitham “are related to guiding a user along a route using a
navigational device.” Ans. 5.
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The analogous-art test requires that the Board show that a reference is
either i n the field of the applicant's endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” prong asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-
27 (Fed. Cir. 2004).
We find that the field of endeavor of Appellant’s invention is devices
for on-demand access to maps and routing information. Spec. 11. We
further find that the fields of endeavor of each of Fukuda and Whitham are
similarly devices for on-demand access to maps and routing information.
See Fukuda, Abstract; Whitham, Abstract. Thus, Fukuda and Whitham are
properly relied on by the Examiner as analogous art.
Appellant further argues that “the primary concept of Fukuda, is
navigation to a particular destination where flexibility of route is not needed,
rather users are only attempting to reach the specified location as soon as
possible without consideration of any particular sights to see,” and therefore,
“the motivation to provide flexibility for a tour is not enough to combine
Fukuda with Whitman.'1'’ Appeal Br. 14. Appellant argues that “guided tours
are not the same as advertising on a navigated route,” and that, in Fukuda,
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“navigation is simply used to attempt to reach a final destination.” Reply Br.
5.
The Examiner’s determination that flexibility in route selection is a
known advantage for navigation systems has sufficient factual
underpinnings. For example, regardless of the ultimate destination, Fukuda
teaches that route selection is important to a user: apparatus 20
communicates with roadside device 30 to supply information to apparatus 20
to facilitate route selection, to make “comfortable and smooth driving”
possible, and “for appropriately distributing] the flow of traffic, thus
improving safety and smoothness in road traffic, and improving the road
environment.” Fukuda 1220. Moreover, “sightseeing” is expressly defined
in Fukuda as an example of map additional information. Fukuda 1160.
Appellant’s contentions lack support, and are, therefore, considered attorney
argument insufficient to overcome the above factual findings. In re
Pearson, 494 F.2d 1399, 1404 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence”) (citation omitted).
Accordingly, we sustain the Examiner’s rejections of claims 2 and 12
under 35 U.S.C. §103(a) as unpatentable over Fukuda and Whitham.
Appellant does not present specific arguments with respect to claims 10 and
20; therefore, we also sustain the Examiner’s rejection of claims 10 and 20
under 35 U.S.C. § 103(a) as unpatentable over Fukuda and Whitham. See
Appeal Br. 11—13. To the extent we relied on findings not relied upon by
the Examiner, for example, in the rejection of independent claims 1 and 11,
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we designate our affirmance of claims 2, 10, 12, and 20 as a new ground of
rejection to give Appellant a full and fair opportunity to respond thereto.
Rejection III
Appellant chose not to present separate arguments for the patentability
of claims 5 and 15, apart from arguing that Magellan “fails to remedy the
deficiencies in Fukuda.” Appeal Br. 15. Because we do not agree that the
Examiner’s findings are deficient with respect to Fukuda, as applied against
claims 1,4, 11, and 14, we also sustain the Examiner’s rejection of claims 5
and 15 under 35 U.S.C. §103(a) as unpatentable over Fukuda and Magellan.
To the extent we relied on findings not relied upon by the Examiner, for
example, in the rejection of independent claims 1 and 11, we designate our
affirmance of claims 2, 10, 12, and 20 as a new ground of rejection to give
Appellant a full and fair opportunity to respond thereto.
Rejection IV
Claims 9 and 19, which depend from independent claims 1 and 11,
require, in relevant part, determining accessibility of the multimedia
information and/or the location-based items8 based on the location
information,9 wherein the presentation of multimedia information and/or
8 The claim term “the location-based items,” recited in claims 9 and 19,
lacks antecedent basis. The Specification discloses that “advertisements,
coupons, incentives, products, venue descriptions, user interest items, etc.,
that comprise the multi-media information are referend to herein as location
based items.” Spec. 127.
9 The claim term “the location information” recited in claims 9 and 19, lacks
antecedent basis.
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location-based items is based on accessibility. Appeal Br. 22, 25 (Claims
App.). The Specification discloses that “the route based multimedia
generator 111 also determines an accessibility of the multimedia information
and/or the location based items for a given route,” wherein “accessibility
pertains to an availability, location or proximity of a given location based
item/POI with respect to a particular travel condition or travel modality (e.g.,
walking, driving.).” Spec. 141 (emphasis added).
The Examiner finds that Fukuda discloses that “advertising
information is based on the location of the vehicle” and that “the advertising
information is displayed.” Final Act. 13 (citing Fukuda, Fig. 3). The
Examiner determines that Fukuda does not “teach the claimed accessibility
(mode of travel) determination,” and relies on Naito for teaching that
“header information includes pieces of information relate to the route [and]
includes the transport means (car, walk).” Id. (citing Naito 12:11—17). The
Examiner reasons that it would have been obvious to combine Fukuda’s
information processing method with Naito’s transportation designation “to
provide the user with real time updated guide information to reflect the
actual situation.” Id. (citing Naito 5:50-55).
Appellant argues that Naito fails to remedy the deficiencies of
Fukuda, however, as discussed supra, we do not agree that the Examiner’s
findings are deficient. Appeal Br. 16.
Appellant also argues that the Examiner’s rationale for combining
Fukuda and Naito “does not reasonably apply as non-analogous art,”
because “the art pertains to different problems and solutions confronting the
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inventor.” Appeal Br. 18. The Examiner determines that Naito is in the
field of endeavor of “guiding a user along a route using a navigation device”
(Ans. 6), and we agree that Naito is in the same field of endeavor as
Appellant’s invention, namely, on-demand access to maps and routing
information, as discussed supra, such that Naito is properly relied on by the
Examiner as analogous art. See Naito, Abstract.
Appellant further submits that “Naito relates to guided tours where a
person walking, riding a bike or driving needs and has very specific and
different views of the world and are able to see different points of interest on
a tour in different ways.” Appeal Br. 17. Appellant argues that although “it
makes sense to include varying forms of travel for [Naito’s] guided
tours, . . . Fukuda is silent as to varying methods of travel because Fukuda
only applies to vehicles and driving.” Id. Appellant contends that “there is
no real need in Fukuda to provide accessibility options,” and that ‘Fukuda
already provides ‘real-time updated information’ to the driver of a vehicle.”
Id. at 17—18; see also Reply Br. 5—6.
The Examiner responds that Fukuda is not so limited, but discloses
that the vehicle may be “a bicycle, a bus, an electric car,” etc. Ans. 6
(quoting Fukuda 1180). We agree and determine that the Examiner’s
rationale has adequate factual underpinnings.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 19
under 35 U.S.C. § 103(a) as unpatentable over Fukuda and Naito. To the
extent we relied on findings not relied upon by the Examiner, for example,
in the rejection of independent claims 1 and 11, we designate our affirmance
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of claims 9 and 19 as a new ground of rejection to give Appellant a full and
fair opportunity to respond thereto.
DECISION10
We affirm the Examiner’s rejection of claims 1—20 and designate our
affirmance as a NEW GROUND OF REJECTION.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(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 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
10 No inference should be drawn from the failure of the Board to make a
new ground of rejection of any claims. As the Board’s function is primarily
one of review, we leave it to the Examiner to determine the patentability of
the claims subject to this appeal.
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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)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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