Ex Parte Wills

Board of Patent Appeals and Interferences

May 31, 2007

10367001 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH WILLS
____________

Appeal 2007-0967
Application 10/367,001
Technology Center 2600
____________

Decided: May 31, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and ALLEN R.
MACDONALD, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims 29, 30, 38 and 39. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a). In a facsimile communication received
on May 16, 2007, Appellant waived the confirmation of attendance at the
Oral Hearing set for May 23, 2007.
Appeal 2007-0967
Application 10/367,001

As best representative of the disclosed and claimed invention,
independent claim 29 is reproduced below:
29. A method for retrieving information, comprising;

sending a request identifying a first site, a second site and a type of
location of interest;

generating a geometric shape that defines an area, the geometric shape
being generated based on a first distance value representing the distance
between the first and second sites, and a second distance value determined
based on the first distance value; and

receiving information associated with the first and second sites and
selected based on the type of location of interest and selected using the
geometric shape.

The following references are relied on by the Examiner:

Bellesfield US 6,282,489 B1 Aug. 28, 2001
(Filed May 28, 1993)
Bouve US 5,682,525 Oct. 28, 1997
(Filed January 11, 1995)

All claims on appeal, claim 29, 30, 38, and 39, stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the Examiner relies upon
Bellesfield in view of Bouve.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.
OPINION
We affirm.
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Application 10/367,001

Our consideration of the issues on appeal focuses on independent
claim 29 as representative of that claim and independent claim 38. No
arguments are presented before us as to the actual features recited in
dependent claims 30 and 39 since Appellant’s positions at page 5 of the
principal Brief on appeal argue for patentability of these dependent claims
based upon the patentability alleged for their parent independent claims.
At the outset, to the extent the Brief and Reply Brief allege that the
Examiner has not set forth in the Final Rejection details of the Examiner’s
reliance upon Bouve, this position is misplaced. The Final Rejection mailed
April 8, 2005, rejected all pending claims at that time, including claims 17
through 30, 32, 33, and 35 through 39 as being obvious within 35 U.S.C. §
103 over the combined teachings of Bellesfield in view of Bouve, the same
rejection of the present claims on appeal. On the one hand, Appellant
alleges at the top of page 3 of the principal Brief on appeal, “that although
the Bouve patent was cited against independent claims 29 and 38 in the Final
Office Action of April 8, 2005, no specific reference to the Bouve patent
was provided”. Appellant wrongly asserts at page 3 of the Reply Brief that
“the Bouve patent, which was not cited in reference to independent claims
29 and 38 in . . . the Final Office Action.” In fact, the Examiner’s Final
Rejection at pages 3 through 5 makes detailed references to Bouve, the
reliance upon which was discussed in details at pages 4 through 6 of the
after Final communication received on July 7, 2005.
Appellant’s arguments in the Brief and Reply Brief focus only on the
generating clause of representative independent claim 29, reproduced earlier.
Not only do the positions set forth by Appellant in the principal and Reply
Brief not argue before us that the references are not properly combinable
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Application 10/367,001

within 35 U.S.C. § 103, the arguments are presented as if two separate
rejections of the claims under 35 U.S.C. § 102 are presented for our
consideration on appeal. The Brief and Reply Brief do not consider the
Examiner’s arguments of combinability or contest them.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1996). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)(quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
As compared with the Final Rejection, the Examiner’s statement of
the rejection at pages 3 through 6 of the Answer is an expanded analysis of
the rejection which has been further buttressed by the responsive arguments
at pages 6 through 8 of the Answer. Since we consider these positions of the
Examiner to be consistent with and follow the reasoning of the above noted
precedent, we sustain the rejection of all claims on appeal under 35 U.S.C.
§ 103.

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Appeal 2007-0967
Application 10/367,001

Although still contesting the Examiner’s views with respect to
Bellesfield in the Reply Brief, with respect to the above-noted generating
clause of representative independent claim 29 on appeal, Appellant would
appear to agree with the Examiner’s views that at least the features of
generating a shape based on a first distance value between two locations was
taught in Bellesfield. As in the principal Brief on appeal, Appellant’s
principal argument is directed to the feature of this clause alleging that the
requirement of this claim that a second distance value be determined based
on the first distance value is not met by Bellesfield alone or in combination
with Bouve.
This identical argument was made as well beginning at page 4 of the
principal Brief on appeal. Appellant’s own consideration there of the
teachings of Bellesfield makes reference to the teachings at columns 10 and
11 of this reference, asserting that the width of the corridor is not related to
the distance between the departure and destination points. We agree with
the views expressed here as to this portion of the reference since it focuses
upon a predetermined distance from a so-called shape point to determine the
location of a place of interest. On the other hand, however, the teaching at
the bottom of column 9, clearly indicates otherwise. At lines 53 through 55
it is stated that “the travel route is preferably displayed with a video line
having a width which is slightly wider than the widest road along the route.”
Once the route and the distance between the departure and destination point
are determined in Bellesfield, the displayed value is highlighted as stated.
This is done to first determine the route or the distance of this route and then
to determine the widest road for this route or distance and in turn to depict
the route in a slightly wider fashion, thus clearly indicating to the artisan that
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Application 10/367,001

the displayed routing is broadly “based upon” the relationship of the
determination of the initial distance. Stated otherwise, since the actual
display width is slightly wider than the widest road along the route, there is a
broadly defined relationship as required by a second distance claimed.
From our studied consideration of Bellesfield alone, the broadly
claimed generation of a geographic shape appears to be met initially by the
determination of the various regions depicted in figure 3, including the
respective latitudes and longitudes of an entire geographic area or region.
This corresponds to the claimed determination of first distances since figure
3 shows the latitudes and longitudes of the upper left and lower right
portions of these regions. Next, the determination of the actual route within
these respective regions is based upon a starting point and ending point,
thus, determining a second claimed distance broadly “based upon” the initial
distance. The determination of the starting and ending points of a given
route selectively has distance values associated with the figure 5 depiction of
the length of various routes or route/road segments which may in turn be
considered to be the first distance claimed. Correspondingly, the
determination of the second claimed distance is broadly “based upon” this
determination since the routine/places/portions of figure 5 indicates a
distance along the length to determine a given place as well as a distance
from a link or road segment such as the depiction of place 3 in figure 5.
Moreover, our detailed consideration of Bouve merely confirms what
the artisan would have appreciated from Bellesfield. Note especially figures
1 through 5, 9, 10, and 12. The claimed geometric shape that defines an area
is clearly shown at various levels and the different portions of figures 3, 4,
and 4A. Country maps represent various regions or areas as do state and city
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Application 10/367,001

maps, each of which are selectable. Each depicts some form of an area of
interest and makes available to the user items of interest in and around the
particular region or vicinity of a selected area as shown in a different manner
in these figures. Figure 2 shows downtown Boston, Mass. and the
geographic vicinity within this downtown region or area. Bouve teaches that
for each identifiable “item of interest” there are correlated geographic
correspondences provided. A given area or region at one of these levels
depicts various distances of the type broadly set forth in claim 1 as a first
distance between points. Figure 2 also shows relative distances, like the
claimed second distance, which is in turn “based on” the first distances
within a given region or locational area/region. The discussion at column 6,
lines 55 through 60 indicates the ability of a user to “locate items of interest
within the geographic vicinity of the user and relative to the user’s current
location. The scope of the geographic vicinity is generally within walking
distance.” Thus, the artisan would well appreciate that the claimed first and
second distance are relatively illustrated and that the second distance is
determined by or based upon or within the first distances illustrated.
In view of the foregoing, the decision of the Examiner rejecting all
claims on appeal under 35 U.S.C. § 103 is affirmed.

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Appeal 2007-0967
Application 10/367,001

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

pgc

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