Ex Parte Williams

Board of Patent Appeals and Interferences

Mar 28, 2011

12268336 (B.P.A.I. Mar. 28, 2011)

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.
12/268,336 11/10/2008 Hilary Lyndsay Williams 8802.002.REDV02_P6250USR3 8012
77970 7590 03/28/2011
Apple Inc.
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
NGUYEN, KEVIN M
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
03/28/2011 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 HILARY LYNDSAY WILLIAMS
_____________

Appeal 2011-004197
Application 12/268,336
Reissue of Patent 6,956,564
Technology Center 2600
______________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR. and BRADLEY
W. BAUMEISTER Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004197
Application 12/268,336

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 37 through 43 and 45 through 49.
We affirm.
INVENTION
The invention is directed to a portable computer with a display, phone
and GPS receiver. The computer displays a map and the current location of
the phone.1 See column, 2 lines 34-37 and column 12 lines 4-29 of Patent
6,956,564. Claim 37 is representative of the invention and reproduced
below:
37. A handheld cellular telephone comprising:
a casing sized and shaped to be held in one hand; said casing housing:
a cellular transceiver;
a GPS receiver that outputs the telephone location;
a touch screen that acts as an input to the cellular telephone;
a processor that accepts the telephone location from the GPS receiver;
and,
a display that displays both a map and the telephone position of the
hand held telephone on the map.

1 Appellant cites to portions of the patent from which this reissue is based to
show support for the claimed feature of displaying the phone location on the
map. The cited portions of the patent describe providing audio feedback of
the position of the stylus (on the computer) and that the display can display
maps. Brief 3. However; Appellant has not identified any portion of the
original patent which displays the position of the phone on the map or that
the position is identified as a point on the map as depicted in Appendix B,
(photos 1-3). While we recognize that newly added Figure 20 does present
this information, Appellant has identified no evidence to show that this was
part of the original patent.

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Application 12/268,336

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REFERENCES
Tran US 6,157,935 Dec. 5, 2000
Rekimoto US 6,567,068 B2 May 20, 2003

REJECTION AT ISSUE
The Examiner has rejected claim 37 through 43 and 45 through 49
under 35 U.S.C. § 103(a) as being unpatentable over Tran in view of
Rekimoto. Answer 4-6.2

ISSUES
Appellant argues on pages 6 through 9 of the Brief3 that the
Examiner’s rejection 35 U.S.C. § 103(a) is in error. Appellant’s contentions
directed to independent claims 37 and 39 present us with the issues:
a) Did the Examiner err in finding that the combination of the
references teaches the GPS receiver is in the casing of the housing as
claimed?
b) Did the Examiner err in finding that the combination of the
references teaches displaying the telephone position of the hand held
telephone and the map as claimed?
Appellant’s arguments directed to dependent claims 38 and 39 present
us with additional issues, which we address in the analysis discussed below.

2 Throughout this decision we refer to the Examiner’s Answer dated
November 2, 2010.
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Application 12/268,336

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ANALYSIS
First issue:
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of the references teaches the GPS receiver is
in the casing of the housing as claimed. Appellant asserts that Tran teaches
the GPS is a separate unit which is pluggable into the device and not in the
casing of the housing. Brief 6. Further, Appellant asserts that Rekimoto
teaches that the GPS is on a PCMCIA type card which plugs into a card
interface and not in the casing of the housing. Brief 6. In response the
Examiner, citing column 2, lines 53-65, finds that Tran teaches the GPS can
be a snap-on extension or a built-in. Answer 6. Based upon this finding the
Examiner considers Tran’s teaching of the built-in GPS receiver to meet the
claimed GPS being within the housing. Answer 6-7. We concur with the
Examiner’s finding as it is supported by ample evidence.
Second issue:
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of the references teaches displaying the
telephone position of the hand held telephone and the map as claimed.
Appellant argues that Rekimoto, which the Examiner relies upon to teach
displaying the position of the telephone and the map, teaches displaying the
destination and the map but not the phone position and the map as claimed.
Brief 7, Reply Brief 2-6. Appellant further states the “[t]he entire thrust of
Renkimoto’s disclosure is to display the destination from various

3 Throughout this decision we refer to the Brief dated September 20, 2010
and the Reply Brief dated December 23, 2010.
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Application 12/268,336

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perspectives, i.e. to view the destination as a 3-dimensional image e.g. ‘a
birds eye view’ image.” Brief 7.
We disagree with the Appellant’s conclusions. Initially, we note as
discussed above in footnote 2, Appellant’s Specification provides negligible
guidance as to how we should interpret the display of phone position on the
map as claimed. Given this lack of guidance, we find no basis to limit the
claim construction so as to only encompass a plot of a point on the map as
shown by Appellant in Appendix B of the Brief. We instead construe the
claim broadly such that any indication of the phone’s position relative to the
map will meet the claim. That is, the claim language can be interpreted as
meaning that the display displays a map, and it also displays on the map the
phone position, regardless of whether the phone’s position is within, or
exterior to, the boundary of the displayed map.
The Examiner provides a comprehensive response to this argument on
pages 7 through 9 of the Answer finding that Rekimoto teaches the GPS card
is used to detect current position and that the map displayed includes the
current position. We concur with these findings by the Examiner and adopt
them as our own. We additionally note that column 6 lines 66 through
column 7 line 8 and column 7 lines 26 through 30 of Rekimoto specifically
teaches using the GPS and the maps together to determine current position
and display the maps of current position. Further, Figures 15 and 16 of
Rekimoto depict the process of constructing the bird’s eye view and that the
current position (i.e. the position of the phone as determined by GPS) is used
as the point of view position. Col. 7, ll. 29; col. 9, ll. 4-6; col. 9, l. 65-col. 7,
l. 5. Thus, there is ample evidence to support the Examiner’s finding that a
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device of the combined teachings displays both a map and the position of the
phone on the map.
As Appellant’s arguments only presented these two issues with
respect to the Examiner’s rejection of independent claims 37 and 39, along
with dependent claims 40 through 43, 45 through 48, we sustain the
Examiner’s rejection of these claims.

Claim 38
Appellant argues that the claim 38 limitation, directed to the change in
position of the phone being determined by the GPS receiver, is not taught by
Rekimoto. Brief 9. Appellant bases this argument on the assertion that
Rekimoto teaches that the GPS is disconnected after the map is initially
downloaded. Brief 9. Thus, Appellant concludes that the combination of
Tran and Rekimoto does not teach all of the limitations of the claim.
The Examiner responds by finding that Tran teaches this feature.
Answer 9. Appellant has not addressed this finding by the Examiner. Thus,
we sustain the Examiner’s rejection of claim 38 because regardless of
whether Rekimoto teaches using the GPS unit to detect movement of the
phone, the Examiner has found that Tran teaches the feature.

Claim 39
Appellant argues that the claim 39 limitations, directed to the map
being rotated to align with the direction of travel, is not taught by the
references. Brief 10. Appellant base this argument on the assertion that
Rekimoto does not teach displaying location of the phone and teaches that
the GPS unit is disconnected after the map is initially downloaded. Brief 9.
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Thus, Appellant concludes that the combination of Tran and Rekimoto does
not teach all of the limitations of the claim.
We disagree with Appellant’s conclusion. Initially, both the
Examiner and Appellant agree that Rekimoto teaches the map can be
rotated. Brief 10, Answer 5. As discussed above with respect to claim 38
the Examiner has found that the GPS unit is used to detect movement of the
phone. Further as discussed supra with respect to claim 37, we find that
Rekimoto does teach displaying the position of the phone on the map via a
birds eye view from the current position. Given these findings, it is apparent
to us that the bird’s eye view will change with the change in position of the
phone, thus rotate with the direction of travel. Accordingly, we sustain the
Examiner’s rejection of claim 39.

ORDER
The decision of the Examiner to reject claims 37 through 43 and 45
through 49 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

ELD