Eric Schmidt et al.

Patent Trials and Appeals Board

Jun 2, 2020

2020000291 (P.T.A.B. Jun. 2, 2020)

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.
12/902,406 10/12/2010 Eric Randell Schmidt 22562-379 / 2010-040 2016
96411 7590 06/02/2020
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC RANDELL SCHMIDT and JEFFREY EDWARD
PIERFELICE
____________

Appeal 2020-000291
Application 12/902,406
Technology Center 3600
____________

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–6, 8–19, 21, and 22, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Toyota
Motor Engineering & Manufacturing North America, Inc. Appeal Br. 1.
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STATEMENT OF CASE
Introduction
Appellant’s Specification describes a method and system for
“determining a destination location from a communication.” See Spec. ¶ 3.
Exemplary claim 1 under appeal reads as follows:
1. A method for determining a destination location
from a communication, comprising steps of:
receiving electronic communications data from a mobile
communications device, at a computing device of a vehicle;
parsing the electronic communications data to identify a
first term of interest related to the destination location in the
electronic communications data;
parsing the electronic communications data to identify a
second term of interest, the second term of interest identifying
personal user information of a user of the vehicle;
identifying the destination location, from the first term of
interest and the second term of interest;
providing a first user option in an interface that provides
the electronic communications data to identify a third term of
interest in the electronic communications data, wherein the
third term of interest further identifies the destination location;
providing a second user option in the interface that, upon
user selection, removes a selected one of the terms of interest
from identifying the destination location;
in response to selection of the first user option or the
second user option, updating the identified destination location;
determining routing data of a vehicle from a current
location of the vehicle to the destination location; and
providing the routing data to a user of the vehicle.
Appeal Br. 12 (Claims Appendix).
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The Examiner’s Rejections
Claims 1–6, 8–13, 21, and 22 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ohki (US 2008/0036586 Al;
pub. Feb. 14, 2008), Basir (US 2009/0164110 Al; pub. June 25, 2009),
Gayama (US 2002/0156830 Al; Oct. 24, 2002), Nelson (US 2011/0106892
Al; May 5, 2011), and Roberts (US 2010/0153855 Al; June 17, 2010). Final
Act. 2–14.
Claims 14–19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ohki, Basir, Nelson, and Roberts. Final Act. 14–18.

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are persuaded that the Examiner reversibly erred
in rejecting claims 1–6, 8–19, 21, and 22 over the cited prior art references.
In rejecting claim 1, the Examiner finds Ohki discloses all the recited
method steps of the claim including receiving electronic communications
data, determining routing data of a vehicle, providing the routing data to a
user of the vehicle, transmitting a message from the navigation system to a
remote service, and identifying the destination location. Final Act. 9–11
(citing Ohki ¶¶ 37, 42, 43, 119, 120). The Examiner further relies on
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Gayama as disclosing “identifying personal user information of a user of the
vehicle” and “parsing an electronic transcript to determine a non-address
term,” on Nelson as disclosing parsing messages and allowing the user to
identify specific keywords [terms of interest] to identify calendar events that
meets the claimed “parsing the electronic communications data to identify a
first term of interest related to the destination location,” and on Roberts as
disclosing modifying terms of a calendar event that meets the recited
“providing a second user option in the interface that, removes a selected one
of the terms of interest from identifying the destination location,” and on
Basir as disclosing “parsing an electronic transcript to identify a first non-
address term of interest related to the destination location in the electronic
transcript.” Final Act. 11–13 (citing Gayama ¶¶ 68, 83; Nelson ¶ 42;
Roberts ¶ 34; Basir ¶ 119). The Examiner finds it would have been obvious
to one of ordinary skill in the art to modify Ohki as suggested by the cited
prior art to provide a more user friendly experience, to add suggestions of a
destination to a user, to identify the relevant terms, and to allow the user to
select or remove terms of interest. Id.
Appellant contends the Examiner’s rejection is in error because the
combination of the references does not teach or suggest “‘providing a
second user option in the interface that, upon user selection, removes a
selected one of the terms of interest from identifying the destination
location . . . [and] in response to selection of the first user option or the
second user option, updating the identified destination location’ as recited
in claim 1.” Appeal Br. 5. Appellant asserts the disclosures of Basir (using
a trigger command to identify a term to be parsed), Gayama (determining
compatibility of the information based on frequencies and waveforms of the
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voice data), and Nelson (detecting calendar events from an email message)
do not provide the deficiency of Ohki with respect to the disputed limitation.
According to Appellant, Roberts provides user selections as “the ‘portions
without keywords button’ to remove sections of a conversation from being
displayed if a particular keyword is not present,” which “causes the system
of Roberts to remove from display (not remove from the conversation,
remove just from display) those portions of communication that do not
include a specified keyword.” Appeal Br. 7–8. Appellant contrasts these
teachings from Roberts with the recited limitations of claim 1 as “[i]n claim
1, the selected word would still be displayed in the message; whereas in
Roberts, the identified keyword is never present in those portions of the
message.” Appeal Br. 8.2
In response, the Examiner explains Roberts provides the user “the
option to remove keywords that are not of interest and this provides a
manual operation to add/remove any terms that are not deemed to be
relevant,” which “allows a manual selection of keywords or terms the user
determines to be relevant.” Ans. 4 (citing Roberts ¶ 34). The Examiner
further finds
The claim limitation merely states “providing a second user
option in the interface that, upon user selection, removes a
selected one of the terms of interest from identifying the
destination location ... [and] in response to selection of the first
user option or the second user option, updating the identified
destination location.” The claim only states that the user is
given an option to remove one of the terms from identifying the
destination location. It doesn't state that the word has to be
present in the current message. As shown above Figure 4

2 We do not address Appellant’s other contentions because this contention is
dispositive of the issue on appeal.
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allows the user to add/remove terms of interest. This can be
done anytime even while the user is reviewing a current
message.
Ans. 5.
Based on a review of the applied prior art references, and specifically
Roberts, we are persuaded by Appellant’s contentions that the Examiner has
not explained how a second user option is provided in the user interface for
removing one of the terms of interest, as required by Appellant’s claim 1.
Although Roberts discusses selecting portions of the email without
keywords button 424 to be hidden or compressed, the content of the message
does not change. Roberts ¶¶ 34, 58; see also Reply Br. 4–5. In other words,
it is not clear how the teaching of hiding a portion of the email message of
Roberts, in combination with the other prior art references, meets the above-
mentioned disputed claim limitation because the Examiner has not identified
any elements in the combination of these references that results in
“providing a second user option in the interface that, upon user selection,
removes a selected one of the terms of interest from identifying the
destination location . . . [and] in response to selection of the first user
option or the second user option, updating the identified destination
location.”
Therefore, Appellant’s arguments have persuaded us of error in the
Examiner’s position with respect to the rejections of independent claim 1,
and independent claim 8 which recites similar limitations. The Examiner
has not identified any teachings in the other applied prior art that would
make up for the above-mentioned deficiency. We, therefore, do not sustain
the rejections of independent claims 1 and 8, as well as claims 2–6, 9–19,
21, 22 dependent therefrom.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–
13, 21, 22
103 Ohki, Basir, Gayama,
Nelson, Roberts
1–6, 8–13,
21, 22
14–19 103 Ohki, Basir, Nelson,
Roberts
14–19
Overall
Outcome
1–6, 8–19,
21, 22

REVERSED