Ex Parte Stoschek et al

Patent Trial and Appeal Board

Jun 6, 2013

11395705 (P.T.A.B. Jun. 6, 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.
11/395,705 03/31/2006 Arne Stoschek 11150/94 1931
26646 7590 06/06/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
ALGAHAIM, HELAL A
ART UNIT PAPER NUMBER
3665
MAIL DATE DELIVERY MODE
06/06/2013 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 ARNE STOSCHEK, BRIAN NG,
PHILIPPE ALESSANDRINI, and DANIEL ROSARIO
____________________

Appeal 2011-004093
Application 11/395,705
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004093
Application 11/395,705

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 5-9, and 21-36.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a navigation system for a motor
vehicle, which displays a suggested route on a man-machine interface on the
machine to an operator of the motor vehicle (Spec., p. 1, ll. 4-6). Claims 1
and 9 are independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A navigation system for a motor vehicle,
comprising:
an off-board navigation system spatially
separated from the motor vehicle adapted to
calculate a suggested route for the motor vehicle;
a wireless communication connection
between the off-board navigation system and the
motor vehicle adapted to transmit the suggested
route to the motor vehicle; and
a man-machine interface arranged in the
motor vehicle adapted to output the suggested
route to an operator of the motor vehicle;
wherein the man-machine interface is
arranged to display the suggested route in a form
integrated into at least one of (a) a satellite image
and (b) a 3-D graphical representation, the off-
board navigation system arranged to transmit the

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed March
31, 2006), Appeal Brief (“App. Br.,” filed August 24, 2010), and Reply
Brief (“Reply Br.,” filed December 10, 2010), as well as the Examiner’s
Answer (“Ans.,” mailed October 13, 2010).

Appeal 2011-004093
Application 11/395,705

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suggested route to the motor vehicle in the form
integrated into the at least one of (a) the satellite
image and (b) the 3-D graphical representation.

THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1-3, 5-9, and 21-34 under 35 U.S.C. § 103(a) as unpatentable
over Upparapalli (US 2002/0177948 A1, pub. Nov. 28, 2002) in view of
either Rasmussen (US 2005/0270311 Al, pub. Dec. 8, 2005) or Ong (US
6,285,317 B1, iss. Sep. 4, 2001); and
Claims 35 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Upparapalli in view of either Rasmussen or Ong, and further in view of Lau
(US 6,996,469 B2, iss. Feb. 7, 2006).

ANALYSIS
Independent claim 1 is rejected as obvious over combinations of
Upparapalli and either Rasmussen or Ong. Appellants argue the rejections
are in error because neither Rasmussen nor Ong teaches the following
limitations of claim 1:
the man-machine interface is arranged to
display the suggested route in a form integrated
into at least one of (a) a satellite image and (b) a 3-
D graphical representation, the off-board
navigation system arranged to transmit the
suggested route to the motor vehicle in the form
integrated into the at least one of (a) the satellite
image and (b) the 3-D graphical representation
(App. Br. 4-6, Reply Br. 2-4). Specifically, Appellants argue that neither of
these references teaches actually integrating a suggested route with either a
Appeal 2011-004093
Application 11/395,705

4
satellite image or 3-D representation, as claimed (id.). We find, however,
that contrary to Appellants’ arguments, the Examiner is not required to
establish that either Rasmussen or Org actually teaches integrating the
suggested route with a satellite image or 3-D representation. While features
of an apparatus may be recited either structurally or functionally, claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citations omitted). In this case, the Examiner has identified
portions of Upparapalli that teach the claimed structure of a man-machine
interface and an off-board navigation system (Ans. 3-5). Further, Appellants
have not presented any evidence that the man-machine interface and off-
board navigation system of Upparapalli are not capable of performing the
function of displaying and transmitting the suggested route integrated with
either a satellite image or 3-D representation, as required by the claim.
Thus, we sustain the rejection of independent claim 1 under 35 U.S.C. §
103(a) as unpatentable over Upparapalli in view of Rasmussen, and we
sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Upparapalli in view of Ong.
With respect to independent claim 9, Appellants argue claim 9 is
allowable “for at least the same reasons provided above in support of the
patentability of claim 1” (App. Br. 6). Thus, we sustain the rejection of
independent claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Upparapalli in view of Rasmussen, as well as the rejection of independent
claim 9 under 35 U.S.C. § 103(a) as unpatentable over Upparapalli in view
of Ong.
Appeal 2011-004093
Application 11/395,705

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Appellants do not submit separate arguments for any of the remaining
claims. Thus, we also sustain the rejections of the dependent claims.

DECISION
The Examiner’s rejection of claims 1-3, 5-9, and 21-36 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). See 37 C.F.R. §
1.136(a)(1)(iv).
AFFIRMED

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