Ex Parte Seki

Board of Patent Appeals and Interferences

May 18, 2011

11017293 (B.P.A.I. May. 18, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/017,293 12/20/2004 Kazuharu Seki 4300.P0192US 8277
23474 7590 05/18/2011
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
PECHE, JORGE O
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
05/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUHARU SEKI

___________

Appeal 2010-010485
Application 11/017,293
Technology Center 3600
____________

Before ROMULO H. DELMENDO, SCOTT R. BOALICK, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010485
Application 11/017,293

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 6, 7 and 8. Claims 1-5 and 9 have been cancelled and claims 11-13
have been withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.
Appellant’s invention relates to road maps (Spec. 1:4) in which an
upward slope is indicated by one color (e.g., red) while a downward slope is
indicated by another color (e.g., blue) (Spec. 2:27 to 3:2).
Claim 81 stands rejected under U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Deschamps (U.S. Patent No. 3,793,506) and Okude (U.S.
Patent No. 6,157,342).
With respect to dependent claim 8, we are convinced by Appellant’s
argument (Br. 3-4) that this claim complies with 35 U.S.C. § 112, second
paragraph.
The Examiner found that the claim limitation “a slope having a
difference in elevation between two and six meters” conflicts with the claim
limitation “the elevation differences being per 100 meters.” (Ans. 5.) We
do not agree.
In one embodiment, Appellant’s Specification states that “[t]he
cycling course 7 is indicated in different colors for an upward slope having
an upward gradient and a downward slope having a downward gradient as

1 The Examiner has withdrawn the cumulative rejections of claims 6 and 7
under 35 U.S.C. § 103(a) as well as the rejections of claims 8, 10 and 14-17
under 35 U.S.C. § 103(a). (Ans. 3-4.)
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Application 11/017,293

3
viewed in the direction of the course” and “[t]he gradient can be determined
on the basis of a difference in the elevation per 100 m, for example.”
(Spec. 4:18-22.) In other words, the Specification equates the term “slope”
with a “gradient.” One plain meaning of “gradient” is a “change in the value
of a quantity (as temperature, pressure, or concentration) with change in a
given variable and esp. per unit distance in a specified direction.” Webster’s
Ninth New Collegiate Dictionary 530 (1990). Thus, in the context of the
Specification, the claim limitation “a slope having a difference in elevation
between two and six meters” refers to a change in the value of a quantity
(e.g., elevation), while the claim limitation “the elevation differences being
per 100 meters” refers to the change in elevation per unit distance.
Therefore, we do not agree with the Examiner that the claim
limitations “a slope having a difference in elevation between two and six
meters” and “the elevation differences being per 100 meters” fail to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
Accordingly, we reverse the rejection of dependent claim 8 under 35
U.S.C. § 112, second paragraph.
With respect to independent claim 6, we are not are convinced by
Appellant’s arguments (Br. 4-7) that the combination of Deschamps and
Okude would not have rendered obvious to a person of ordinary skill in the
art the claimed subject matter as a whole including the limitation “a
predetermined course from one or more starting points to one or more
destinations.”
The Examiner acknowledged that Deschamps does not teach the
limitation of “a predetermined course from one or more starting points to
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one or more destinations” and cited Okude for the disclosure of marks 161
and 162 to indicate positions of a vehicle on the map illustrated in
Figures 16 and 17. (Ans. 6, 9; figs. 16, 17.) The Examiner concluded that
this claim feature would have been obvious. (Ans. 6, 9.) We agree with the
Examiner.
Deschamps describes a map in which relief is displayed using contour
lines. (Col. 1, ll. 41-42.) As illustrated in Figure 1, a map indicating a
direction of travel F includes contour lines A, B, C and D. (Col. 1, ll. 50-
54.) The map also includes a locus L of points a1, a2, b1, b2, c1, c2, d1 and
d2 tangent to the contour lines A, B, C and D that are parallel to the
direction of travel F. (Col. 1, ll. 52-54.) The locus L marks a boundary
between regions X having an upward slope and regions Y having a
downward slope (col. 1, ll. 52-56), distinguished by black and white color,
respectively (col. 1, 57-59).
Okude describes “a navigation device for displaying a current position
of a vehicle by being superposed on a map which is stereoscopically
displayed.” (Col. 1, 8-10.) Figure 16 illustrates a three-dimensional map
indicating a current position of a vehicle on a road. (Col. 4, ll. 32-34.) The
position of the vehicle is indicated using marks 161 and 162 (col. 14, ll. 48-
53, 61-62) having the shape of an automobile (col. 14, ll. 48-50). Figure 16
also illustrates that the road includes a starting point (i.e., near mark 161)
and a destination (i.e., near mark 162).
The combination of Deschamps and Okude is nothing more than
incorporating Okude’s known map for indicating the position of a vehicle on
a road including the starting point and the destination with the known
contour map of Deschamps to obtain predictable results. See KSR Int’l Co.
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Application 11/017,293

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v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Thus, we agree with the
Examiner (Ans. 6, 9) that modifying Deschamps to include Okude’s map
with the starting point and the destination would have been obvious.
First, Appellant argues that “Deschamps . . . does not disclose the
direction of travel along a predetermined course from one or more starting
points to one or more destinations.” (Br. 4.) However, as discussed
previously, the Examiner relied on the collective teachings of the prior art
references by citing to Okude rather than Deschamps for the disclosure of
this claim feature. (Ans. 6, 8-9.)
Second, Appellant argues that “Deschamps does not disclose that the
upward slopes along the direction of travel are indicated by a different color
than the downward slopes” (Br. 5) because “Deschamps discloses that only
the contours have colors” (Br. 6). However, we are not convinced by
Appellant’s arguments that Deschamps does not teach this claim feature.
Although Appellant is apparently attempting to distinguish over Deschamps
by arguing that claim 6 requires different color slopes along the direction of
travel of a predetermined course, this feature is not claimed. The claim
language “a predetermined course . . . is specifically indicated and upward
slopes along the direction of travel are indicated by a different color than
downward slopes along the direction of travel” is broad enough to
encompass the map of Deschamps including the direction of travel F and the
locus L that marks a boundary between regions X having an upward slope
and regions Y having a downward slope which are distinguished by different
colors (i.e., black and white color).
Third, Appellant argues that “[t]he Okude reference merely discloses
that position correcting means . . . [is] based on an altitude of at least one of
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a start point and an end point of a section of the road.” (Br. 6.) However, as
discussed previously, Figure 16 of Okude illustrates that the road includes a
starting point (i.e., near mark 161) and a destination (i.e., near mark 162).
Fourth, Appellant argues that “the combination [of Deschamps and
Okude] still does not teach that the direction of travel along a predetermined
course contains from one or more starting points to one or more
destinations. . . .” (Br. 6.) However, the claim language “one or more
starting points” and “one or more destinations” is broad enough to
encompass one starting point and one destination.
Last, Appellant argues that “Okude also does not disclose that the
upward slopes along the direction of travel are indicated by a different color
than the downward slopes” because “Okude merely discloses . . . that the
color of the background changes with a change in the altitude.” (Br. 6.)
However, as discussed previously, the Examiner cited to Deschamps rather
than Okude for the disclosure of this claim feature. (Ans. 5-6, 8-9.)
Thus, we agree with the Examiner that the combination of Deschamps
and Okude would have rendered obvious “a predetermined course from one
or more starting points to one or more destinations.”
Accordingly, we affirm the rejection of independent claim 6 under 35
U.S.C. § 103(a). Claim 7 depends from claim 6 and, because Appellant has
not presented any further arguments with respect to this claim, we affirm the
rejection of this claim under 35 U.S.C. § 103(a) for the reasons discussed
with respect to claim 6.
DECISION
The decision to reject claim 8 under 35 U.S.C. § 112, second
paragraph is reversed.
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The decision to reject claims 6 and 7 under 35 U.S.C. § 103(a) 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).

AFFIRMED-IN-PART

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