Ex Parte Segler et al

Patent Trial and Appeal Board

Mar 18, 2013

10306808 (P.T.A.B. Mar. 18, 2013)

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.
10/306,808 11/27/2002 INV001Michael Segler 6741P027 8254
45062 7590 03/19/2013
SAP/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
AL HASHEMI, SANA A
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
03/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL SEGLER, PHILIPP HASSLER, and
THORSTEN BENDER1
____________________

Appeal 2010-007069
Application 10/306,808
Technology Center 2100
____________________

Before JASON V. MORGAN, TREVOR M. JEFFERSON, and
LARRY J. HUME, Administrative Patent Judges.

HUME, 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, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is SAP AKTIENGESELLSCHAFT. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention is generally directed to building a geographic
database and, more specifically, using the geographic database as a resource
for obtaining geographic information. Spec. 1:4-6 (“TECHNICAL
FIELD”).
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added):
1. A method comprising:
receiving output geographic information en masse from
a server, the output geographic information corresponding to
input geographic information provided to the server en masse;
building a database that indexes at least some of the
output geographic information to at least some of the input
geographic information;
attempting to locate specific output geographic
information in the database; and
determining the specific output geographic information
by calculating if the specific output geographic information
cannot be located in the database.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
June 2, 2006); Reply Brief (“Reply Br.,” filed Sep. 6, 2006); Examiner’s
Answer (“Ans.,” mailed Apr. 28, 2010); Final Office Action (“FOA,” mailed
Nov. 29, 2005); and the original Specification (“Spec.,” filed
Nov. 27, 2002).
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Claim 3 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added):
3. The method of claim 2, wherein determining
comprises calculating a straight-line distance using the
specific input geographic information if the specific output
geographic information cannot be located in the database.

Claim 7 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added):
7. The method of claim 1, wherein building
comprises indexing the output geographic information in the
database by geographic region.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
DeLorme US 5,948,040 Sep. 7, 1999
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by DeLorme. Ans. 5.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-20, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
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appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ arguments. However, we
highlight and address specific findings and arguments regarding claims 1, 3,
and 7 for emphasis as follows.
1. Rejection of Claims 1, 2, 5, 6, 9-12, 15, 16, 19, and 20
Issue 1
Appellants argue (App. Br. 7-9) that the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by Delorme is in
error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is anticipated by DeLorme, particularly that DeLorme
discloses the steps of, inter alia, “receiving output geographic
information en masse from a server . . . and determining the
specific output geographic information by calculating if the
specific output geographic information cannot be located in the
database,” as recited in claim 1?
Analysis
Appellants contend that:
[T]he Examiner characterizes DeLorme’s retail user
input 205 as the claimed input geographic information (FIG. 2).
However, the retail user’s input pertains to a trip which at most
includes an origin, a destination, and a few points of interest. A
user’s input cannot possibly be characterized as “en masse.”
The term “en masse” means “a relatively large amount of
geographic information . . . (e.g., hundreds or even thousands of
geographic coordinates).
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App. Br. 8 (citing Spec. 19:10-12). We disagree with Appellants, and agree
with the Examiner’s findings that “en masse” as stated by Appellants means
“a relatively large amount of geographical information,” DeLorme discloses
the use of CD-ROM, which carries a relatively large amount of geographical
information, and DeLorme deals with building a geographical database.
Ans. 9.
In addition, and by way of providing a definition of “en masse,” we
note that Appellants’ disclosure states “[r]eferring to Fig. 5, MDMR
software 18 provides geographic information to IGS 14 en masse, meaning
that a relatively large amount of geographic information is provided (e.g.,
hundreds or even thousands of geographic coordinates).” Spec. 19:9-12.
We find that DeLorme discloses:
The electronic maps, TRIPS database, and TRIPS
software are typically stored on a CDROM and the digital
computer incorporates a CDROM drive. The TRIPS software
may include a replace function for updating the electronic maps
and TRIPS database on the CDROM with replacement or
supplemental information from a remote database (e.g., online
database of remote server), global positioning system (GPS)
receiver, PDA or another memory device.
DeLorme col. 10:10-18. Thus, we find that electronic maps stored on a
CDROM reasonably meet Appellants’ relative definition of “en masse”
geographic information, as cited above.
In response to Appellants’ contentions that “the CD-ROM of
DeLorme at most carries information en masse but does not exchange
information with a server en masse” (Reply Br. 5), we further find that
nothing in DeLorme’s disclosure precludes entering a “relatively large
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amount of geographical data” through retail user input 205, nor does
Appellants’ exemplary definition of “en masse” cited above, i.e., “hundreds
or even thousands of geographic coordinates,” require that the claim be
construed so as to preclude use of retail user input 205. Accordingly, we
find the Examiner’s interpretation to be reasonable.
In further support of the Examiner’s position that DeLorme discloses
“receiving output geographic information . . . the output geographic
information corresponding to input geographic information provided to the
server en masse,” we note that DeLorme discloses :
The electronic maps, TRIPS database, and TRIPS
software are typically stored on a CDROM and the digital
computer incorporates a CDROM drive. The TRIPS software
may include a replace function for updating the electronic maps
and TRIPS database on the CDROM with replacement or
supplemental information from a remote database (e.g., online
database of remote server), global positioning system (GPS)
receiver, PDA or another memory device.
DeLorme col. 10:10-18.
Appellants also argue that “DeLorme at least does not disclose any
calculating operation if specific output geographic information cannot be
located in the database.” App. Br. 7. In response, the Examiner finds that:
[The] Examiner interpreted the limitation with broadest
reasonable interpretation since the specification does not
prov[ide] a clear way on how the calculation can be performed
when the output geographic information cannot be found, the
Examiner on the other hand refers to Col. 15, lines 35-46,
wherein DeLorme discloses the use of POI (Point Of Interest)
as a destination if the specific output cannot be located. And
since the claim is not clear on how the system calculates the
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location if the output cannot be found, the calculation will be
based on the closest point of interest.
Ans. 10. Appellants further contend that:
[T]he cited passage does not mention that the POI is used as a
result of failing to locate the specific output geographic
information in the database. Rather, DeLorme discloses the
POI and other travel tips as the preferred output information
provided by the system. Thus, the system outputs POI
regardless whether the specific output geographic information
can be located in the database.
Reply Br. 6. We find that Appellants’ arguments are not persuasive, and we
agree with the Examiner’s findings and related claim construction.
In addition, we note that claim 1 includes a conditional limitation, i.e.,
“determining the specific output geographic information by calculating[,] if
the specific output geographic information cannot be located in the
database” (emphasis added). Conditional steps employed in a method claim
need not be found in the prior art if, under the broadest scenario, the method
need not invoke the steps. See Ex parte Katz, 2011 WL 514314, *4 (BPAI
2011) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004)). Thus, even if we were to find that DeLorme does not explicitly
disclose the above limitation, which we do not, the cited art still anticipates
the conditional “if” limitation in a situation where the specific output
geographic information can be located in the database.
Accordingly, Appellants have not provided sufficient evidence or
arguments to persuade us that the Examiner erred in his characterization of
the cited art and related claim construction. Therefore, we sustain the
Examiner’s anticipation rejection of independent claim 1. As Appellants
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have not provided separate substantive arguments with respect to
independent claim 11 or dependent claims 2, 5, 6, 9, 10, 12, 15, 16, 19, and
20, we similarly sustain the Examiner’s anticipation rejection of these claims
under 35 U.S.C. § 102(b).
2. Rejection of Claims 3, 4, 13, and 14
Issue 2
Appellants argue (App. Br. 9-10; Reply Br. 6-7) that the Examiner’s
rejection of claim 3 under 35 U.S.C. § 102(b) as being anticipated by
DeLorme is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is anticipated by DeLorme, particularly that DeLorme
discloses a method “wherein determining comprises calculating
a straight-line distance using the specific input geographic
information if the specific output geographic information
cannot be located in the database,” as recited in claim 3?
Analysis
Appellants contend
[c]laims 3, 4, 7, 8, 13, 14, 17, and 18 depend from
Claim[s] 1 and 11 and incorporate the limitations thereof.
These claims include additional patentable features . . .
separately argued in the Appeal Brief. . . . [but] the Examiner
did not address Appellant’s argument with respect to these
claims. . . . [such] that the patentability of these claims is
uncontested.
Reply Br. 6-7. We disagree.
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With respect to claim 3, the Examiner found that “DeLorme discloses
a method wherein determining comprises calculating a straight-line distance
using the specific input geographic information if the specific output
geographic information cannot be located in the database.” Ans. 6 (citing
DeLorme Fig. 5 (501, 551, 526, 576)). We agree with the Examiner.
In further support of the Examiner’s position, we find that DeLorme
discloses the use of dead-reckoning techniques, i.e., “[d]ead reckoning
location systems and hybrid location systems may also be used.” DeLorme
col. 10:38-39 and col. 75:48-52. We find that DeLorme’s disclosure of
dead-reckoning data computation is consistent with the Examiner’s finding
regarding calculating a straight-line distance using geographic information
because, as would be known to a person with skill in the art, dead-reckoning
utilizes straight-line distance calculations.
In addition, and for claim construction purposes, we point out that
claim 3 includes the conditional limitation (similar to the discussion
regarding claim 1, supra) of “calculating a straight-line distance using the
specific input geographic information if the specific output geographic
information cannot be located in the database” (emphasis added). As
discussed above, conditional steps employed in a method claim need not be
found in the prior art if, under the broadest scenario, the method need not
invoke the steps.
Claim 4 inherits the same conditional limitation as in claims 1 and 3,
and we also find that DeLorme uses geographic coordinates as input
information for dead-reckoning computations. DeLorme col. 75:6-18.
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Appellants have not provided separate, substantive arguments with respect
to claims 13 and 14 so that these claims stand or fall with claims 3 and 4.
Accordingly, Appellants have not provided sufficient evidence or
arguments to persuade us that the Examiner erred in his characterization of
the cited art and related claim construction. Therefore, we sustain the
Examiner’s anticipation rejection of claims 3, 4, 13, and 14.
3. Rejection of Claims 7, 8, 17, and 18
Issue 3
Appellants argue (App. Br. 10-11; Reply Br. 6-7) that the Examiner’s
rejection of claim 7 under 35 U.S.C. § 102(b) as being anticipated by
DeLorme is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is anticipated by DeLorme, particularly that DeLorme
discloses a method “wherein building comprises indexing the
output geographic information in the database by geographic
region,” as recited in claim 7?
Analysis
Appellants argue that:
A skilled person in the art would understand that an index, in
the context of database, refers to a data structure (e.g., a tree, a
hash table, a linked list) used internally by a database for
sorting and searching data items. The cited figures are the
output displayed to a user [and t]he output does not contain any
indexed data structure internally used by a database.
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App. Br. 11 (citation omitted). The Examiner finds that Delorme discloses a
method “wherein building comprises indexing the output geographic
information in the database by geographic region.” Ans. 6 (citing DeLorme
col. 17:44-53).
In further support of the Examiner’s position, we find that DeLorme
discloses use of “supplemental information selected by the user on locations,
events and topics–organized into a convenient, orderly, compact
arrangement keyed to the geographic and temporal dimensions of the user’s
planned route of travel.” DeLorme col. 16:1-5. We find that the “keying” of
locations along the route of travel reasonably discloses use of a database
index, as recited. In addition, DeLorme discloses that Figure 1B illustrates
an output, including an overview map 135 with a graphical representation
137 of an optimum computed route with ordered text directions 139
indicating a temporal/geographic progression of road names, compass
directions, a list of nearby towns, highway exits, driving times, point-to-
point distance and overall mileage. See DeLorme col. 20:63 – 21:3.
Finally, we find that DeLorme further teaches an indexed database:
The standard TRIPS data structure, as expressed in FIG.
3, furthermore includes means for discrete storage and retrieval
of GEOGRAPHIC DATA such as place names, waypoints
along routes, plus all manner of map or mappable point, vector,
raster or regional data locatable more or less precisely at actual,
estimated or proposed spatial positions on or near the surface of
the earth by geographical coordinates, such as conventional
latitude and longitude (lat/long), UTM, other map grid
references, and/or equivalent means.
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DeLorme col. 32:46-55. We find that at least the above citation discloses
the limitation of claim 7, identified supra.
Appellants have not provided separate, substantive arguments with
respect to claims 8, 17, and 18 so that these claims stand or fall with claim 7.
Accordingly, Appellants have not provided sufficient evidence or
arguments to persuade us that the Examiner erred in his characterization of
the cited art and related claim construction. Therefore, we sustain the
Examiner’s anticipation rejection of claims 7, 8, 17, and 18.
CONCLUSIONS
The Examiner did not err with respect to the rejection of claims 1-20
under 35 U.S.C. § 102(b) as being anticipated by Delorme, and the rejection
is sustained.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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