2021000313 (P.T.A.B. Dec. 22, 2021)

TOMTOM NAVIGATION B.V.

Patent Trials and Appeals BoardDec 22, 2021

2021000313 (P.T.A.B. Dec. 22, 2021)

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. 15/028,440 04/11/2016 Simone Francine Tertoolen 1082/US 7913 75090 7590 12/22/2021 TOMTOM INTERNATIONAL B.V. IP Creation De Ruyterkade 154 AMSTERDAM, 1011 AC NETHERLANDS EXAMINER WILTEY, NICHOLAS K ART UNIT PAPER NUMBER OPQA NOTIFICATION DATE DELIVERY MODE 12/22/2021 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): patents@tomtom.com tony@parklegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIMONE FRANCINE TERTOOLEN, and CORNELIS KLAAS VAN DOK ____________ Appeal 2021-000313 Application 15/028,440 Technology Center 3600 ____________ Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 1–9, 11–13, 15, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as TomTom Navigation B.V. Appeal Br. 1. Appeal 2021-000313 Application 15/028,440 2 CLAIMED SUBJECT MATTER The Appellant’s invention “relates to methods and systems for generating and displaying navigation instructions to user, preferably in respect of calculated route to a destination.” Spec. 1. Claims 1 and 15 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal and is reproduced below (with added bracketed notations for reference): 1. A device for generating navigation instructions for display on a display device of a portable navigation device, the device comprising one or more processors arranged to: [(a)] access a repository storing digital map data pertaining to a navigable network along which the navigation device can travel; [(b)] generate, for display on the display device, a three- dimensional perspective view of a model representative of the map data as though from a camera positioned at an elevation and pitch angle behind a current position of the navigation device, that is updated to follow the current position of the navigation device as the navigation device travels along a planned route through the navigable network; and [(c)] display, on the display device, in response to detecting that the current position of the navigation device is closer than a predetermined distance to a decision point in the planned route, a fast forward preview of the upcoming decision point, the displaying comprising: [(c1)] displaying a view from the camera while advancing the position of the camera along the planned route at a speed faster than the rate of travel of the current position of the navigation device, thereby providing, on the display device, a continuous three-dimensional perspective view of road features as the camera approaches the decision point along the planned route; and Appeal 2021-000313 Application 15/028,440 3 [(c2)] stopping the camera at a selected location prior to the decision point so that the camera provides a preview of the decision point before the navigation device arrives at the selected location, the preview of the decision point comprising a three-dimensional perspective view of a layout of the decision point based on a view of the decision point that is observable from the selected location prior to the decision point. Appeal Br. 16 (Claims App.). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Krull et al. (“Krull”) US 6,889,138 B1 May 3, 2005 Kim US 2009/0063046 A1 Mar. 5, 2009 Miyata US 2010/0250113 A1 Sept. 30, 2010 Waeller et al. (“Waeller”) US 2011/0106446 A1 May 5, 2011 Hiromi et al. (“Hiromi”) JP 2008122150 May 29, 2008 REJECTIONS Claims 1, 2, 4–6, 8, 9, 11, 15, and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Miyata. Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Miyata and further in view of Krull. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Miyata and further in view of Hiromi. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Miyata and further in view of Waeller. Appeal 2021-000313 Application 15/028,440 4 OPINION New Ground of Rejection – 35 U.S.C. § 112(b) Pursuant to 37 C.F.R. § 41.50(b), claims 1–9, 11–13, 15, and 16 are hereby rejected under 35 U.S.C. § 112(b) as being indefinite because the scope and meaning of the limitations of the claims cannot be determined. The text of 35 U.S.C. § 112(b) requires “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the [Appellant] regards as the invention.” “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear — as opposed to ambiguous, vague, indefinite — terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (alterations in original). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Independent claim 1 recites a “device for generating navigation instructions for display on a display device of a portable navigation device, the device comprising one or more processors arranged to:” access data, generate a three-dimensional view of a model, and display data. Appeal Br. 16 (Claims App.). Limitation (b) of generating a view recites that the view is representative of data “as though from a camera positioned at an elevation and pitch angle behind a current position of the navigation device.” Id. Limitation (c) recites the processor arranged to display preview data, “the displaying comprising: [(c1)] displaying a view from the camera”; and (c2) “stopping the camera.” Id. However, there is no camera recited as part of the structure of claim 1. One of ordinary skill in the art would not Appeal 2021-000313 Application 15/028,440 5 understand what view is displayed or how the processor is arranged to display a view from a camera when no camera is claimed. Further, one of ordinary skill in the art would not understand how the processor arranged to display preview data would stop a camera. And we do not see any further elaboration or discussion in the Specification as to how this may be done. Therefore, one of ordinary skill in the art would not understand without considerable speculation the scope and meaning of claim 1 and thus its dependent claims 2–9 and 11–13. Independent claim 15 recites a method comprising accessing data, generating a view “as though from a camera,” and displaying a preview, the displaying comprising a view from the camera and stopping the camera. Appeal Br. 18–19 (Claims. App). We note that the claim does not recite any structure for performing these steps. As with claim 1, one of ordinary skill in the art would not understand what view is displayed nor would one understand how the displaying of a preview would stop a camera. Therefore, one of ordinary skill in the art would not understand without considerable speculation the scope and meaning of claim 15 and thus its dependent claim 16. 35 U.S.C. § 103 The Appellant argues that the Examiner’s rejection of independent claims 1 and 15 is in error because the prior art does not teach the fast forward preview as recited in the claims. Because we determine, as discussed above, that this subject matter of claims 1–9, 11–13, 15, and 16 is indefinite, we are unable to determine the propriety of the Examiner’s rejections under this ground of the claims. The review of the rejections of these claims as obvious under 35 U.S.C. § 103 would require considerable Appeal 2021-000313 Application 15/028,440 6 speculation as to the scope and meaning of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, reverse pro forma the Examiner’s rejections under 35 U.S.C. § 103 of claims 1–9, 11–13, 15, and 16. We emphasize that reversal of the rejections under 35 U.S.C. § 103 is not a reversal based upon the merits of the rejections. CONCLUSION The Examiner’s decision to reject claims 1–9, 11–13, 15, and 16 under 35 U.S.C. § 103 is reversed, pro forma. We enter a NEW GROUND OF REJECTION of claims 1–9, 11–13, 15, and 16 under 35 U.S.C. § 112(b) as being indefinite. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 4–6, 8, 9, 11, 15, 16 103 Kim, Miyata 1, 2, 4–6, 8, 9, 11, 15, 16 3 103 Kim, Miyata, Krull 3 7 103 Kim, Miyata, Hiromi 7 12, 13 103 Kim, Miyata, Waeller 12, 13 1–9, 11–13, 15, 16 112(b) Indefiniteness 1–9, 11–13, 15, 16 Overall Outcome 1–9, 11–13, 15, 16 1–9, 11–13, 15, 16 Appeal 2021-000313 Application 15/028,440 7 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019, June 2020). 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) (2019). REVERSED; 37 C.F.R. § 41.50(b)