Ex Parte Yoshikoshi

Patent Trial and Appeal Board

Feb 12, 2016

12456104 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/456,104 06/11/2009
7590 02/12/2016
Marnmatsu & Associates
Suite B
26471 Rancho Parkway South
Lake Forest, CA 92630
FIRST NAMED INVENTOR
Tetsutaro Y oshikoshi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ALPINE.137AUS 7255
EXAMINER
NGUYEN, PHUONG H
ART UNIT PAPER NUMBER
2142
MAILDATE DELIVERY MODE
02/12/2016 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 TETSUT ARO YOSHIKOSHI
Appeal2014-003086
Application 12/456, 104
Technology Center 2100
Before ST. JOHN COURTENAY III, TERRENCE W. MCMILLIN
and MELISSA A. RAAP ALA, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal is directed to "evaluating a character
[and] symbol drawing that is hand-written by the user to determine a
category of the icons intended by the user; [and] determining an applicable
Appeal2014-003086
Application 12/456, 104
area on the map image for applying an icon display operation based on the
character [and] symbol drawing." (Abstract).
Representative Claim
1. A method for displaying icons representing a type of
places of interest for a navigation system, comprising the
following steps of:
checking whether a map image is displayed on a monitor
screen of a navigation system;
detecting an activity of hand-writing a character & symbol
drawing by a user on the map image shown on the monitor
screen;
[L 1] determining a category of the icons intended by the
user with respect the map image based on the character &
symbol drawing specified by the user;
[L2] determining an applicable area on the map image for
applying an icon display operation based on the character &
symbol drawing specified by the user;
checking a prescribed data table based on the category of
the icons and the applicable area selected by the character &
symbol drawing by the user in the foregoing steps; and
changing the manner of displaying the icons on the map
image with respect to the category and applicable area
determined by the character & symbol drawing.
(Emphasis added regarding the contested limitations, labeled as L 1 and L2).
Rejections
A. Claims 1, 3, 6-8, 10, 11, 13, 16-18, and 20 are rejected under 35
U.S.C. § 102(e) as being anticipated by Popp (US 8,212,784 B2;
issued July 3, 2012).
B. Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Popp and
Jaeger (US 2002/0141643 Al; published October 3, 2002).
2
Appeal2014-003086
Application 12/456, 104
C. Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Popp and
Wako (US 6,983,203 Bl; issued June 3, 2006).
D. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Popp,
Wako and Simmons (US 7,259,752 Bl; issued August 21, 2007).
E. Claims 9 and 19 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Popp and
Yoon et al. (US 2009/0097414 Al; published April 16, 2009).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). We address rejections B-E of claims 2, 4, 5, 9,
12, 14, 15 and 19, infra.
Contentions
Regarding the anticipation rejection of claim 1, Appellant contests
limitations LI and L2. (App. Br. 7-8). Appellant particularly contends, inter
alia:
In contrast [to the Popp reference], the character & symbol
drawing of the present invention specifies both a category of icon
and an applicable area. As shown in Figs. 2A-2D, the character
& symbol drawing "G" and its size on the map signifies "gas
station icons" and "an applicable area" (applicable area 45) that
the user intends to apply for the icon selection. Namely, the
present system determines both the meaning of the character &
symbol drawing and the size of the character & symbol drawing.
Fig. 2D shows that only gas station icons defined by the character
& symbol drawing "G" in the area defined by the size of the
character & symbol drawing "G" while other icons are
3
Appeal2014-003086
Application 12/456, 104
eliminated as a result of the user's input of the character &
symbol drawing. Figs. 4A and 4B show other examples of the
character & symbol drawings that signify icon categories. Each
of the character & symbol drawings signifies intended icon
category, such as fast food, parking, etc. If the user wants to show
only parking icons, the user may draw "P" on the map, which
signifies parking icons. At the same time, the size/location of the
character & symbol drawing "P" determines the applicable area.
Since both the intended icon category and applicable area can be
determined by hand-writing only one character & symbol
drawing on the map, the process to determine the icon category
as well as the applicable area need not be performed by an
additional and separate user input.
As noted above, the manually drawn boundary gesture
input 78 disclosed by the cited Popp reference does not determine
a category of the intended icons based on the character & symbol
drawing specified by the user. An additional and separate input
by the user would be necessary to instruct which icon category is
intended. Thus, the essential features recited in independent
Claim 1 are not disclosed by the cited Popp reference.
(App. Br. 7-8).
The Examiner disagrees. The Examiner finds the contested
limitations are disclosed by the Popp reference, under the broadest
reasonable interpretation of the claim language:
First, it is noted that the claim language is somewhat broad/vague
as to what is "a category" of the icons. Popp reference teaches a
broad term of determining a category of icons by choosing
Hawaiian Islands as a category to display photographs icons by
manually drawn boundary gesture input 78 on map 50 (see
column 5, line 32-column 6, line 35, Fig. 2). In addition, Popp
reference further teaches "an applicable area" on the map image
for applying an icon display operation based on the character &
symbol drawing specified by the user" (column 5, lines 19-51,
Fig. 2). For example, by drawing a boundary gesture input 78 on
map 50 also determining an applicable area (i.e., geographic
boundary 54) where the applicable area 54 is used to retrieve
collection of images that were taken in Hawaiian Islands (see
4
Appeal2014-003086
Application 12/456, 104
column 5, lines 45-50). Therefore, the examiner concludes that
Popp reference teaches the same manually drawing a boundary
gesture input 78 on map 50 is used to determine both the category
of the intended icons (photographs taking in Hawaii Islands) and
the application area (i.e., geographic boundary 54).
(Ans. 3--4).
ISSUE
Issue: Under § 102, did the Examiner err by finding the cited Popp
reference expressly or inherently discloses the contested limitations of:
[L 1] determining a category of the icons intended by the user with
respect the map image based on the character & symbol drawing specified
by the user;
[L2] determining an applicable area on the map image for applying
an icon display operation based on the character & symbol drawing
specified by the user;
within the meaning of representative claim 1? (Emphasis added).
ANALYSIS
Rejection A of Claim 1 under§ 102
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. (Ans. 3-5.) However, we
highlight and address specific findings and arguments for emphasis in our
analysis below.
At the outset, regarding limitation L2 ("determining an applicable area
... "),we observe Appellant acknowledges in the Reply Brief (3): "it is
apparent that 'Hawaiian Islands' of the cited Popp reference corresponds to
5
Appeal2014-003086
Application 12/456, 104
the applicable area of the present invention." However, Appellant urges:
"Choosing Hawaiian Island does not, by itself, specify which icon category
is desired." (Id.). Appellant further contends: "in the cited Popp reference,
the boundary is used solely to select a geographic area of the map image."
(Reply Br. 4).
However, Appellant (App. Br. 6-9; Reply Br. 2--4) does not directly
address the Examiner's specific findings (Ans. 3, citing Popp, col. 5, Fig. 2),
which rely on the "user [who] may wish to access the photographs take[ n]
during a trip to Hawaiian Islands by drawing a manually drawn boundary
gesture input 78 encircling the Hawaiian Islands on the map 50," as
describing contested limitation LI: "determining a category of the icons
intended by the user with respect the map image based on the character &
symbol drawing specified by the user;" (Claim 1, emphasis added).
Thus, the Examiner reads the claimed "category of the icons" on the
photographs 66 "tak[en] during a trip to the Hawaiian Islands" col. 5, 11. 21-
22), as depicted within touch-sensitive display surface 14 in the lower half of
Figure 2 of Popp. We observe Popp expressly describes: "media 66
associated with a selected geographic area 56 based on the gesture input 52."
(Col. 6, 11. 23-24; Fig. 2). As described in Popp (col. 5, 11. 45-51 ):
The identified geographic boundary 54 is then passed to a
media filter module 30 of the controller 16. The media filter
module 30 filters the media data 62 in data store 18 for images
based on the metadata 68 stored in data store 18 to identify a
collection of images that were taken 5 years ago in the
Hawaiian Islands at sea level.
Further regarding the contested L 1 "category of the icons" (claim 1 ),
Appellant urges that the broadest reasonable interpretation of the cited claim
6
Appeal2014-003086
Application 12/456, 104
language must be consistent with the Specification, and offers several
examples of icon categories described in the Specification. (Reply Br. 3--4 ).
However, it is noted that the examples upon which Appellant relies
(id.) are not recited in the claim, nor has Appellant argued a definition or
disclaimer supported in the original Specification that would impose specific
requirements or limitations regarding what an icon category must be. 1 We
decline Appellant's invitation to read limitations from the Specification into
the claims. 2
Similarly, Appellant does not provide a definition in the claim or in
the Specification that would preclude the Examiner's broader reading of "the
character & symbol drawing specified by the user" (claim 1) on the
description in Popp at "column 2, lines 48-59, Fig. 2, recogniz[ing] gesture
input 52 such as a manually-drawn boundary gesture input 78." (Ans. 3).
Regarding the Examiner's broader reading, because "applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee." In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
1 See Reply Br. 4: "As shown in Figs. 2A-2D, the character & symbol
drawing 'G' and its size on the map signifies 'gas station icons' and 'an
applicable area' (applicable area 45) that the user intends to apply for the
icon selection."
2 "[A ]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments . . . . [ C] laims may embrace 'different subject matter
than is illustrated in the specific embodiments in the specification."'
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane)
(citations omitted). A basic canon of claim construction is that one may not
read a limitation into a claim from the written description. Renishaw plc v.
Marposs Societa'per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)
7
Appeal2014-003086
Application 12/456, 104
Here, the contested claim language refers to "a category of the icons"
and "the character & symbol drawing specified by the user" which are not
defined in claim 1, nor in the Specification. Therefore, on this record, and
by a preponderance of the evidence, we are not persuaded the Examiner's
broader reading of contested limitations L 1 and L2 on the corresponding
features found in Popp is overly broad or unreasonable. (Popp, col. 5, Fig.
2).
Accordingly, we sustain the Examiner's anticipation rejection of
representative claim 1. Independent apparatus claim 11 is not separately
argued and recites functional limitations commensurate to contested
limitations L 1 and L2 of claim 1. Therefore, the remaining claims rejected
under anticipation rejection A fall with representative claim 1. See
"Grouping of Claims" supra.
Rejections B - E under§§ 103
Regarding the remaining claims rejected under § 103, Appellant urges
these claims are patentable by virtue of their respective dependencies from
independent claims 1 and 11. (App. Br. 9-10). However, we find no
deficiencies regarding rejection A of independent claims 1 and 11, for the
reasons discussed above. Therefore, we sustain the Examiner's rejections
B-E of the remaining claims on appeal for the same reasons discussed above
regarding claims 1 and 11. (See Grounds of Rejection, supra).
8
Appeal2014-003086
Application 12/456, 104
DECISION
We affirm the Examiner's rejections of claims 1-20.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
Klh
9