Ex Parte Van Os et al

Patent Trial and Appeal Board

Mar 1, 2017

13745023 (P.T.A.B. Mar. 1, 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.
13/745,023 01/18/2013 Marcel MWA Van Os P6281USD1
(119-0374USD1)
1070
61947 7590 03/03/2017
Ar>r>le - Rlank Rome.
EXAMINER
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
D AGOSTA, STEPHEN M
HOUSTON, TX 77002 ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
03/03/2017 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):
mbrininger @ blankrome. com
hou stonpatents @ blankrome .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL MWA VAN OS, SCOTT HERZ,
and MIKE MATAS
Appeal 2016-006364
Application 13/745,0231
Technology Center 2600
Before JEFFREY S. SMITH, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-4, 11—14, 17—19, 21, 22, 24, and 25. We have jurisdiction over the
rejected claims under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
Technology
The application relates to “a modified message to signal the presence
of geographic location data associated with the message.” Spec. Abstract.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3.
Appeal 2016-006364
Application 13/745,023
Illustrative Claim
Claim 2 is illustrative and reproduced below with the limitations at
issue emphasized:
2. A method comprising:
receiving a message from a first device;
processing the message to determine if the message is
associated with geographic location data corresponding to a
geographic location of the first device; and
when the message is determined to be associated with the
geographic location data:2
presenting, in a chat area, at least part of the
message with a graphical element indicating that the
message is associated with the geographic location data of
the first device,
obtaining input to the graphical element, and
presenting, in response to the obtained input, a map
display with the geographic location of the first device
identified by a first graphical placemark.
Rejections
Claims 2, 3, 11—14, 17—19, 21, 22, 24, and 25 stand rejected under 35
U.S.C. § 103(a) as obvious over the combination of Altman et al. (US
8,571,580 B2; Oct. 29, 2013), Vuong et al. (US 2007/0288859 Al; Dec. 13,
2 In the event of further prosecution, the Examiner may wish to consider
whether the “when” limitation results in conditional method steps that need
not be performed in the prior art. See Ex parte Schulhauser, Appeal No.
2013-007847, 2016 WL 6277792, at *3^1 (PTAB Apr. 28, 2016);
Cybersettle, Inc. v. Nat 7 Arbitration Forum, Inc., 243 F. App’x 603, 607
(Fed. Cir. 2007) (unpublished) (“If the condition for performing a contingent
step is not satisfied, the performance recited by the step need not be carried
out in order for the claimed method to be performed.”).
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Appeal 2016-006364
Application 13/745,023
2007), and either Mozayeny et al. (US 2002/035493 Al; Mar. 21, 2002) or
Oh et al. (US 2008/0171555 Al; July 17, 2008). Final Act. 3.
Claims 4, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Altman, Vuong, either Muzayeny or Oh,
and Holmes et al. (US 7,823,073 B2; Oct. 26, 2010). Final Act. 8.3
ISSUE
Did the Examiner err in finding the combination of Altman, Vuong,
and either Mozayeny or Oh teaches or suggests “presenting, in response to
the obtained input, a map display,” as recited in claims 2, 11, and 13?
ANALYSIS
Independent claims 2, 11, and 13 recite “presenting ... a graphical
element indicating that the message is associated with the geographic
location data of the first device”; “obtaining input to the graphical element”;
and “presenting, in response to the obtained input, a map display.”
The Specification describes an example of these limitations. After a
user’s device receives a text message and geographic location data from the
sender’s device, “a user interface can be presented asking the user whether
they wish to accept the data.” Spec. 1 87. Given this user interface, the user
provides “user input,” such as clicking a button to confirm the user wishes to
accept the data. See id. This user input “can initiate . . . automatically
generating a map display showing the location of the [sender’s] device.” Id.
The Examiner finds the claims are “so broadly written” that they
apply to a very different example in which “a user receives a message from
another, then cuts/pastes information from that received message into
3 Claims 20 and 23 were objected to as dependent on a rejected claim but
allowable if rewritten in independent form. Final Act. 9.
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Application 13/745,023
another, new message.” Ans. 3. Specifically, “Altman clearly teaches (Fig.
2a) a message/display showing a MAP LOCATION for Sasha and that she is
‘OUT WITH FRIENDS’. A person receiving this message could extract the
map image and add new text/input and pass along to other friends,” using
the cut & paste techniques in Vuong, Mozayeny, or Oh. Final Act. 5—7.
We agree with the Examiner that the claims are written in such a way
that they do not specify who or what must perform each step in the method,
and many of the limitations (e.g., “presenting ... at least part of the
message” and “presenting ... a map display”) do not necessarily exclude
cutting and pasting text or maps from the original message. See Ans. 3.
However, we agree with Appellants that the Examiner has not shown how
“any map is presented ‘in response to the obtained input’ to the graphical
element.” App. Br. 9 (emphasis added). In the Examiner’s examples, an
original message is sent with a map, then the recipient cuts and pastes the
map into a new message (thereby creating what the Examiner calls “a
graphical element indicating that the message is associated with the
geographic location data of the first device”), then the recipient types
additional text into the same new message that now contains the map
(thereby “obtaining input to the graphical element”). See Ans. 5—7. Because
of this order, the map is displayed before the user’s typed input is ever
received, which means the map is not displayed “in response to the obtained
input.” The typed text cannot be added before the map is pasted because
then there would not yet be “a graphical element indicating that the message
is associated with the geographic location data.” Thus, the Examiner’s
examples teach “presenting ... a map display,” but they do not teach
“presenting, in response to the obtained input, a map display.”
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Application 13/745,023
Accordingly, we do not sustain the Examiner’s rejection of claims 2,
11, and 13, or their dependent claims 3, 4, 12, 14, 17—19, 21, 22, 24, and 25.
REJECTION UNDER 37 C.F.R. § 41.50(b)
In a new ground of rejection using our authority under 37 C.F.R.
§ 41.50(b), we reject independent claim 2 under 35 U.S.C. § 103(a) as
obvious over Altman, Vuong, and either Mozayeny or Oh. Except as
discussed below, we adopt the Examiner’s findings and conclusions for
claim 2.
As discussed above, the Examiner relies on an example of user A
receiving from user B an email with a map, then user A sending a new
message to user C that attaches the map as an attachment. Ans. 6—8. For
example, Oh teaches how to send a text message with a map of the sender’s
current location to an email address. Oh || 25—26. Similarly, Mozayeny
teaches “the maps and directions may be e-mailed.” Mozayeny till.
Mozayeny also teaches “the maps and directions may be . . . electronically
forwarded” to others. Id. More specifically, Vuong teaches how to attach a
file to an email. Vuong || 6, 40-41, Fig. 5.
An attachment in an email is represented by a graphical icon. See,
e.g., Vuong Fig. 5 (element 508); Ans. 6. Thus, when user C receives and
views the email, this presents in a chat area (i.e., within the email
application, see Spec. Tflf 71—72) at least part of the message with a graphical
element (i.e., the icon for the attached map) indicating that the message is
associated with the geographic location data of the first device (i.e., the map
indicating user B’s location). When user C selects the icon for the attached
map, such as by double clicking it, this “obtain[s] input to the graphical
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Application 13/745,023
element.” The attached map is then presented in response to the user
selecting the attachment. This teaches or suggests all limitations in claim 2.
Thus, we reject claim 2 as obvious in a new ground of rejection.
Although we have rejected claim 2 under 37 C.F.R. § 41.50(b), we
have not reviewed the remaining claims to the extent necessary to determine
whether these claims are unpatentable under 35 U.S.C. § 103(a). We leave it
to the Examiner to determine the appropriateness of any further rejections
based thereon.4
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 2—4, 11—14, 17—19, 21, 22, 24, and 25.
In a new ground of rejection, we reject claim 2 under 35 U.S.C.
§ 103(a). We leave it to the Examiner to determine the appropriateness of
applying this new ground of rejection to other claims.
4 In the event of further prosecution, the Examiner may also wish to
consider other scenarios which may anticipate or render obvious the claims.
For example, claim 2 may be anticipated by Oh disclosing a user sending an
instant message that contains a hyperlink to a map website for the user’s
current location, and the recipient clicking that link, which presents a map in
response to the link being clicked. See Oh | 3 (“[A] user can identify his or
her location and share it with other users by pasting a hypertext link from a
mapping website, such as MapQuest.com, into a regular text message.”).
Similarly, claim 2 may be deemed obvious in view of forwarding a
party invitation with the host’s current address, adding new text saying “I
included a map below,” then adding a new map “in response to” the newly
added text.
Alternately, Altman may teach an application with messaging
capabilities that includes a friend list displaying location distance and an
away message, then the user providing input (e.g., selecting a friend) to
display a map showing the user’s friends’ current location “in response to”
the user input. See Altman Fig. 5B, Fig. 2A, 6:38—7:3, 8:34—9:3.
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TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[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 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.
REVERSED:
37 C.F.R, $ 41.50(b)
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