11850057 (P.T.A.B. Jan. 9, 2015)

Ex Parte Vasa

Patent Trial and Appeal BoardJan 9, 2015

11850057 (P.T.A.B. Jan. 9, 2015)

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. 11/850,057 09/05/2007 Yojak Harshad Vasa 9314-185 / PU07 0300US1 6833 54414 7590 01/12/2015 MYERS BIGEL SIBLEY & SAJOVEC, P.A. P.O. BOX 37428 RALEIGH, NC 27627 EXAMINER DANIEL JR, WILLIE J ART UNIT PAPER NUMBER 2462 MAIL DATE DELIVERY MODE 01/12/2015 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 YOJAK HARSHAD VASA ____________________ Appeal 2012-008730 Application 11/850,057 Technology Center 2600 ____________________ Before CARLA M. KRIVAK, HUNG H. BUI, and DANIEL N. FISHMAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 2–9, 17, 19, and 21–23.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.3 1 The Real Party in Interest is Sony Ericsson Mobile Communications AB. 2 Claims 1, 10–16, 18, 20, and 24 have been cancelled and are not on appeal. 3 Our decision refers to Appellant’s Appeal Brief filed October 6, 2011 (“App. Br.”); Reply Brief filed on May 7, 2012 (“Reply Br.”); Examiner’s Answer mailed March 19, 2012 (“Ans.”); and original Specification filed September 5, 2007 (“Spec.”). Appeal 2012-008730 Application 11/850,057 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to mobile terminals and operating methods that share location based information of mobile terminals. Abstract. According to Appellant, a mobile terminal wirelessly transmits a request to provide geographic position information over an ad-hoc, short-range wireless link (e.g., Bluetooth or WiFi), in response to a user request at the mobile terminal to perform an application at the mobile terminal that uses the geographic position information. The application is then performed at the mobile terminal in response to receiving the geographic position information over the ad-hoc, short-range wireless link. The application may include a “Remember Vehicle Location” and/or “Find Return Bus Stop Location” application. Id. Representative Claims Claims 2, 3, 8, and 17 are the independent claims on appeal. Representative claims 2 and 17 are reproduced below: 2. A method of operating a mobile terminal comprising: wirelessly transmitting a request to provide geographic position information from the mobile terminal over an ad-hoc, short-range wireless link in response to a user request at the mobile terminal to perform an application at the mobile terminal that uses the geographic position information; and performing the application at the mobile terminal in response to receiving the geographic position information over the ad-hoc, short-range wireless link; wherein wirelessly transmitting a request further comprises wirelessly transmitting an indication of performance capabilities of the mobile terminal from the mobile terminal over the ad-hoc, short-range wireless link in response to the Appeal 2012-008730 Application 11/850,057 3 user request at the mobile terminal to perform the application at the mobile terminal that uses the geographic position information; and wherein performing the application comprises performing the application at the mobile terminal in response to receiving the geographic position information over the ad-hoc, short-range wireless link in a format that is consistent with the performance capabilities of the mobile terminal. 17. A method of operating a mobile terminal comprising: storing geographic position information for a user's vehicle at the mobile terminal in response to a user request at the mobile terminal to remember a location of the user’s vehicle; and displaying a map at the mobile terminal that includes street level information and that indicates thereon the location of the user’s vehicle and a current location of the mobile terminal. App. Br. 15, 17 (Claims Appendix) (disputed limitations in italics). Evidence Considered Burgener US 5,736,940 Apr. 7, 1998 Ayed US 6,405,125 B1 June 11, 2002 Maruyama US 6,748,317 B2 June 8, 2004 McCall US 7,847,709 B2 Dec. 7, 2010 Examiner’s Rejections (1) Claims 17 and 19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ayed. Ans. 5. (2) Claims 2–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ayed, Maruyama, and McCall. Ans. 6–14. (3) Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ayed, Maruyama, and Burgener. Ans. 14–17. Appeal 2012-008730 Application 11/850,057 4 (4) Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ayed and Burgener. Ans. 17–19. Issues on Appeal Based on Appellant’s arguments, the dispositive issues on appeal are: (1) whether Ayed discloses “displaying a map at the mobile terminal that includes street level information and that indicates thereon the location of the user’s vehicle and a current location of the mobile terminal” as recited in Appellant’s claims 17 and 19; and (2) whether the combination of Ayed, Maruyama, and McCall teaches or suggests as part of transmitting a request to provide geographic information from a mobile terminal, “transmitting an indication of performance capabilities of the mobile terminal” and as part of performing an application at the mobile terminal, whether the geographic position information is “in a format that is consistent with the performance capabilities of the mobile terminal” as recited in Appellant’s claims 2–3. App. Br. 5–10; Reply Br. 4–5. ANALYSIS § 102(b) Rejection of Claims 17 and 19 based on Ayed The Examiner finds Ayed discloses a method of operating a mobile terminal including: inter alia: “displaying a map at the mobile terminal (12) that includes street level information and that indicates thereon the location of the user’s vehicle and a current location of the mobile terminal.” Ans. 5 (citing Ayed 3:21–23, 4:38–47, 6:60, Figs. 1A–1B). Appellant argues the cited portion (item 30 of Figs. 1A–1B) of Ayed only refers to “information center 30” and such “information center 30 is Appeal 2012-008730 Application 11/850,057 5 preferably a liquid crystal display (‘LCD’) capable of displaying a digital pointer and alphanumeric readout of distance” as shown in Figs. 1A–1B. App. Br. 6 (citing Ayed 4:38–47) (emphasis omitted). Appellant further argues the portable locator device 12, shown in Figs. 1A–1B, only provides a visual display of direction information in the context of: (1) a text message indicating where a vehicle is parked, for example, a parking lot address and GPS coordinates, level, section, or (2) a digital pointer indicating direction to the vehicle location. Id. at 7 (citing Ayed 4:15–21); Reply Br. 4. The portable locator device 12, shown in Figs. 1A–1B, is reproduced below: Figs. 1A–1B of Ayed show a portable locator device 12 for displaying: (1) a text message, or (2) a digital pointer. We agree with Appellant. The information center 30 (i.e., display unit) is not a map as characterized by the Examiner. Ans. 20 (citing item 30 as Appellant’s claimed “map”). Likewise, neither Ayed’s (1) textual message nor (2) digital pointer, as shown in Figs. 1A–1B of Ayed constitutes “a map . . . that includes street level information and that indicates thereon the location of the user’s vehicle and a current location of the mobile terminal” as recited in Appellant’s claims 17 and 19. Because Ayed fails to disclose “displaying a map at the mobile terminal that includes street level information and that indicates thereon the Appeal 2012-008730 Application 11/850,057 6 location of the user’s vehicle and a current location of the mobile terminal,” we do not sustain the Examiner’s anticipation rejection of claims 17 and 19. § 103(a) Rejection of Claims 2–7 based on Ayed, Maruyama, and McCall Independent claims 2 and 3 do not recite “a map” that includes “street level information” and “the location of the user’s vehicle and a current location of the mobile terminal” as recited in Appellant’s claim 17. Rather, claim 2 recites “geographic position information” and further requires as part of transmitting a request providing geographic information from a mobile terminal, “transmitting an indication of performance capabilities of the mobile terminal” and as part of performing an application at the mobile terminal, the geographic position information is “in a format that is consistent with the performance capabilities of the mobile terminal.” Alternatively, claim 3 requires transmitting an indication the device is Internet enabled, and requires that application accesses the Internet in response to an Internet address. See Appellant’s independent claims 2–3. With respect to independent claim 2, the Examiner finds Ayed discloses a method of operating a mobile terminal including all the limitations except for (1) an ad-hoc, short-range wireless link and (2) “transmitting an indication of performance capabilities of the mobile terminal” performed in response to receipt of geographic position information “in a format that is consistent with the performance capabilities of the mobile terminal.” Ans. 6–7 (citing Ayed 3:43–47, 53–57, 4:27–31, 5:25–50, 6:11–17, and Figs. 1A–2B). The Examiner then relies on Maruyama for disclosing the use of a short-range wireless link, and McCall for disclosing the performance Appeal 2012-008730 Application 11/850,057 7 capabilities feature. Id. at 7 (citing Maruyama 1:20–22, 2:36–38, 5:12–21, 66; and McCall 14:48–57). Based on these factual findings, the Examiner concludes it would have been obvious to combine the teachings of Ayed, Maruyama, and McCall to provide a system with navigation to be displayed. Id. at 7–8. Appellant does not dispute the Examiner’s rationale for making the combination. Rather, Appellant disputes the Examiner’s characterization of McCall. App. Br. 8–9. For example, Appellant argues: (1) McCall can be disqualified as prior art4 upon submission of a 37 C.F.R. § 1.131 affidavit, and (2) even if McCall is prior art, the cited portion of McCall only describes processing based on the type of return-to-vehicle (RTV) information that has been requested by the user, which says nothing about wirelessly transmitting an indication of performance capabilities of the mobile terminal and performing an application at the mobile terminal in a format is consistent with the performance capabilities of the mobile terminal, as recited in claim 2. Id. We are not persuaded by Appellant’s arguments. First, in the absence of a 37 C.F.R. § 1.131 affidavit, McCall is prior art against Appellant’s claimed invention. Second, as described by Appellant’s own Specification, the term “an indication of performance capabilities of the mobile terminal” simply refers to either (1) color display capabilities or (2) display resolution. Spec. ¶ 47. Likewise, the term “a format that is consistent with performance capabilities of the mobile terminal” refers to map or position information 4 The filing date of McCall is August 28, 2007, which is eight (8) days prior to the September 5, 2007 filing date of Appellant. As such, McCall can be disqualified as prior art upon submission of an adequate 37 C.F.R. § 1.131 affidavit. Appeal 2012-008730 Application 11/850,057 8 transmitted in the manner consistent with the resolution capabilities of the display of the mobile terminal. Id. ¶ 48. In view of Appellant’s own disclosure, these limitations are either inherent in every mobile terminal, including those of Ayed, Maruyama, and McCall, or expressly disclosed in the context of “location quality information” or “RTV information” requested by the user of McCall, as correctly found by the Examiner. Ans. 7 (citing McCall 14:48–57). With respect to independent claim 3, the Examiner further relies on Maruyama for disclosing the use of a short-range wireless link and accessing the Internet in response to an Internet address, and relies on McCall for disclosing the performance capabilities, Internet enabled feature. Id. at 10– 11 (citing Maruyama 1:20–22, 2:36–38, 5:12–21, 66; and McCall 14:48– 57). Appellant acknowledges Maruyama discloses a mobile terminal equipped with map and navigation features, via the Internet, and McCall describes an Internet-capable device. App. Br. 9–10. Nevertheless, Appellant argues the mere mention of Internet capability fails to disclose or suggest the disputed limitation “wirelessly transmitting an indication that the mobile terminal is Internet enabled from the mobile terminal” as recited in independent claim 3. Id. at 10; Reply Br. 5. We disagree. For example, a mobile terminal, including that of Maruyama, is Internet enabled, as evidenced in 1:22, 47, 3:48, 9:22, and Fig. 9 of Maruyama. Accordingly, we adopt as our own the Examiner’s findings and explanations provided on pages 25–28 of the Examiner’s Answer. For the reasons set forth above, Appellant has not persuaded us of any error in the Examiner’s rejection of independent claims 2–3. Accordingly, Appeal 2012-008730 Application 11/850,057 9 we sustain the Examiner’s rejection of claims 2–3 and its dependent claims 4–7, which were not separately argued. §103(a) Rejection of Claims 8 and 9 based on Ayed, Maruyama, and Burgener Independent claim 8 is similar to independent claim 2, except an application performed at a mobile terminal identifies a return bus stop for a user, and that application also includes “displaying a map that indicates a location of the return bus stop at the mobile terminal.” See Appellant’s independent claim 8. The Examiner further relies on Burgener for providing users with location and updated arrival time estimate of a next vehicle arriving at vehicle stops such as “bus stops.” Ans. 16 (citing Burgener 2:66–3:1, 4:57– 60, Fig. 1 and Abstract). Appellant argues: (1) a return bus stop is not the same location as an arrived-at bus stop as described by Burgener and, as such, (2) the combination of Ayed, Maruyama, and Burgener fails to disclose “return bus stops” much less “transmitting a request to provide geographic position information over an ad-hoc, short-range wireless link in response to a user request at the mobile terminal to perform an application at the mobile terminal that identifies a return bus stop” and “displaying a map that indicates a location of the return bus stop at the mobile terminal,” as recited in claim 8. App. Br. 13; Reply Br. 6. We do not find Appellant’s arguments persuasive. At the outset, we note claim 8 does not differentiate between “a return bus stop” and “an arrived-at bus stop” as alleged by Appellant. As such, the term “return bus Appeal 2012-008730 Application 11/850,057 10 stop” can be broadly interpreted to encompass any bus stop as disclosed by Burgener. Moreover, obviousness under 35 U.S.C. § 103 is not a rigid and inflexible concept. In an obviousness analysis, it is not necessary to find precise teachings directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. We find an artisan would be able to incorporate the teachings of Burgener to perform an application at a mobile terminal that identifies “a return bus stop” and then display a map that indicates a location of the return bus stop at the mobile terminal in the manner recited in claim 8. For the reasons set forth above, Appellant has not persuaded us of any error in the Examiner’s rejection of claims 8 and 9. Accordingly, we sustain the Examiner’s obviousness rejection of claims 8 and 9. § 103(a) Rejection of Claims 21–23 based on Ayed and Burgener Independent claim 21 recites a method of operating a mobile terminal comprising: “storing geographic position information for a location of a return bus stop for a user of the mobile terminal in response to obtaining location information for an arrived-at bus stop.” Appellant reiterates the same arguments presented against claims 8 and 9. App. Br. 13. For the same reasons discussed relative to claims 8 and 9, we also sustain the Examiner’s obviousness rejection of claims 21–23. Appeal 2012-008730 Application 11/850,057 11 CONCLUSION On the record before us, we conclude the rejection of claims 17 and 19 under 35 U.S.C. § 102(b) should be withdrawn.5 However, we conclude the Examiner has not erred in rejecting: (1) claims 2–7 under 35 U.S.C. § 103(a) as being unpatentable over Ayed, Maruyama, and McCall; (2) claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Ayed, Maruyama, and Burgener; and (3) claims 21–23 under 35 U.S.C. § 103(a) as being unpatentable over Ayed and Burgener. DECISION As such, we REVERSE the Examiner’s final rejection of claims 17 and 19 under 35 U.S.C. § 102(b), but AFFIRM the Examiner’s final rejection of claims 2–9 and 21–23 under 35 U.S.C. § 103(a). 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 bar 5 In the event of further prosecution, we suggest the Examiner consider rejecting Appellant’s claims 17 and 19 under 35 U.S.C. § 103(a) based on either Ayed or Maruyama. For example, Ayed already discloses (1) textual message and/or (2) digital pointer, as shown in Figs. 1A–1B of Ayed. Providing a map at the mobile terminal that includes street level information and that indicates thereon the location of the user’s vehicle and a current location of the mobile terminal would have been within the level of those skilled in the art and, therefore, obvious to those skilled in the art, as evidenced in Maruyama.