Ex Parte 6397143 et al

Patent Trial and Appeal Board

Jun 9, 2017

90020088 (P.T.A.B. Jun. 9, 2017)

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.
90/020,088 08/12/2015 6397143 PMT0001-RE 1930
67050 7590 06/09/2017
KASHA LAW LLC
14532 Dufief Mill Road
North Potomac, MD 20878
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/09/2017 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 Peschke Map Technologies LLC.,
Patent Owner and Appellant
____________

Appeal 2017-004196
Reexamination Control 90/020,088
Patent 6,397,143 B11
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
RICHARD E. RICE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “’143 Patent”) issued to
George Peschke on May 28, 2002 from Application 09/697,470 filed on
October 26, 2000.
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Peschke Map Technologies LLC., the owner of the ’143 Patent,
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims
20–37 (Appeal Brief filed September 27, 2016, hereinafter “App. Br.,” at 1;
Final Office Action mailed April 7, 2016).2 We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Thomas C. Saitta (Request for Ex Parte
Reexamination of U.S. Patent No. 6,397,143, filed August 13, 2015,
“Request”). Appellant indicates in the Appeal Brief that there are no related
proceedings. (App. Br. 1.) However, we observe from the briefing that the
’143 Patent was also subject to inter partes review, IPR2013–00400, which
was instituted on November 8, 2013, and was terminated on April 9, 2014,
as a result of a Joint Motion to Terminate. (See “Termination of
Proceeding,” IPR2013–00400, Paper No. 36; Ans. 3; App. Br. 5.) We also
understand that the ’143 Patent has been the subject of various patent
infringement actions, which are identified at pages 2–3 of the Request.
The ’143 Patent states that the invention relates to “methods for
navigating through computer based map systems.” (Col. 1, ll. 5–10.)

2 Originally issued claims 1–19 were cancelled during this reexamination
proceeding. (App. Br. 1.) Claims 20–37 were added during prosecution.
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Claim 20 on appeal is illustrative and reads as follows (underlining
omitted):
20. A method of presenting and providing navigation
through a series of maps, comprising:
(a) providing, to an Internet browser, at least one
interactive, first level map image depicting plural store layouts
as hyperlinked outlined areas within the at least one interactive,
first level map image, wherein each of the hyperlinked outlined
areas is a representation of a physical shape corresponding to an
actual store;
(b) providing description pages corresponding to each of
said plural store layouts comprising information related to said
corresponding actual stores;
(c) providing first links from each of said hyperlinked
outlined areas of said plural store layouts to each of said
corresponding description pages whereby activation of each of
said first links causes a respective one of said description pages
for a given one of said plural store layouts to be displayed; and
(d) providing second links from each of said hyperlinked
outlined areas to labels associated with said plural store layouts,
whereby activation of a given one of said second links causes a
given one of said labels for the given one of said plural store
layouts to be displayed in the Internet browser.

(Claims App’x, App. Br. i–ii.)

The Examiner rejected claims 20–37 as follows (Examiner’s Answer
mailed October 31, 2016, hereinafter “Ans.,” 3–11):3

3 In the Answer, the Examiner withdrew a number of rejections pertaining to
claims 20–37, including the rejections pertaining to claims 28 and 37 under
35 U.S.C. §§ 102 and 103. (Ans. 11–12.) In addition, the Examiner
objected to the drawings. (Ans. 21–22.) However, as noted by the
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I. Claims 20, 24–27, 29 and 33–36 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Ng, Vincent et al, “Touring Hong
Kong via the WWW,” Computer Networks and ISDN Systems,
Vol. 30, Issues 20–21, November 12, 1998, Elsevier Science
B.V., pages 1991–2000 (“HKMap”) (Ans. 3–5);
II. Claims 20–22, 24–27, 29–31 and 33–36 under pre-AIA 35
U.S.C. § 103(a) as obvious over HKMap in view of U.S. Patent
No. 6,091,417 to Lefkowitz (“Lefkowitz”) and U.S. Patent No.
6,587,835 to Treyz et al. (“Treyz”) (Ans. 5–7);
III. Claims 23 and 32 under pre-AIA 35 U.S.C. § 103(a) as obvious
over HKMap in view of Lefkowitz and Treyz and in further
view of U.S. Patent No. 6,563,514 to Samar (“Samar”) and U.S.
Patent No. 6,078,935 to Nielsen (“Nielsen”) (Ans. 7–8);
IV. Claims 20–37 under pre-AIA 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement
(Ans. 8–10); and
V. Claims 20–37 under pre-AIA 35 U.S.C. § 112, first paragraph,
for failing to comply with the enablement requirement (Ans.
10–11).

Examiner, this objection is not an appealable issue, and as a result, we will
not discuss further the objection in this opinion.
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Claim Interpretation
PRINCIPLES OF LAW
Unlike a district court in patent litigation,4 “the PTO must give claims
their broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” ICON
Health, 496 F.3d at 1379.

“Description Page”
The Examiner adopted the interpretation set forth for the term
“description page” recited in claim 20 from the Decision to Institute in
IPR2013–00400 to mean “a display of information on a computer screen
about a location depicted on a map.” (Ans. 3, citing IPR2013-00400 Paper
19, 11–12.)
Appellant contends that the Examiner’s interpretation of ‘“description
page’ is incorrect and that the Examiner’s interpretation should be modified
to the following: ‘a display of information, distinct from a label, on a
computer screen about the location depicted on a map.’” (App. Br. 5–7,
emphasis in original.) According to Appellant, the Examiner’s interpretation

4 See, e.g., In re Swanson, 540 F.3d 1368, 1377–78 (Fed. Cir. 2008)
(explaining that, relative to district court litigation, reexamination is
conducted under different standards including standard of proof, absence of
a presumption of validity, and claim construction).
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would result in no difference between a “description page” and a “label,”
rendering the claim term “label” superfluous. (App. Br. 6.) Appellant
argues that the Specification of the ’143 Patent clearly differentiates between
a “description page” and a “label” such that under the general presumption
that different terms in the claims have different meanings, the difference
should be accounted for in the claim interpretation of the term. (App. Br. 6–
7.)
The ’143 Patent refers to a “Store”5 that is linked to a “detailed
description page” for that Store. (Col. 2, ll. 11–12.) The ’143 Patent
discloses that “detailed information” about a Store includes “a description of
the business; address; phone number(s); FAX number; hours of operation,
link or web address of the Stores own web page or site; hiring information if
positions are available, etc.” (Col. 6, ll. 57–60.) Thus, the Examiner’s
interpretation is consistent with the ’143 Patent and as such we interpret a
“description page” as “a display of information on a computer screen about a
location depicted on a map.”

“Label”
As disclosed in the ’143 Patent, “[e]ach Store is identified by a label
representing either the Store’s name or type of good or service provided.”
(Col. 6, ll. 29–30.) The ’143 Patent further discloses that “[a]lternatively,
symbolic icons . . . may be used to indicate the type of good or service,” and
“[t]hese icons may be in addition to the label . . . or may replace the text

5 The term “Store” is defined by the ’143 Patent as “any entity which will be
presented by the system as a single business establishment.” (Col. 4, ll. 53–
54.)
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label.” (Col. 6, ll. 31–33.) Accordingly, we interpret the term “label” as
recited in claim 20 to be consistent with this disclosure as “a word, phrase,
or symbol representing a location depicted on a map, e.g., a store’s name or
type of good or service provided.”

Prior Art Rejections
Anticipation – HKMap
The Examiner found that HKMap discloses “graphic symbols (icons)
on the first level map which are representations of physical shapes
corresponding to actual points of interest, e.g., hotels, cinemas and train
stations (each presented by the system as a single business establishment,
i.e., ‘store’).” (Ans. 4.) The Examiner found that HKMap discloses
hyperlinked first links where a user may double-click a layout of a building
that results in information regarding the building to be displayed in a sub-
window. (Ans. 4, citing HKMap, Figs. 3–6, p. 1996–1997, Secs. 3.3 and
3.4.) The Examiner found that HKMap discloses second links, where a user
can click a mouse button when the cursor is positioned over “a graphic
symbol (icon) representing a building” and the name of the building will be
shown in a pop-up label/display. (Ans. 4, citing HKMap, p. 1996–1997,
Sec. 3.3.)
Appellant argues that HKMap does not disclose a hyperlinked
outlined area with two links as recited in independent claims 20 and 29.
(App. Br. 7, 11–12.) Appellant contends that the only way to retrieve
detailed information in HKMap is to move the mouse over a “hotspot icon,”
which is not the “plural store layouts as hyperlinked outlined area” recited in
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claim 20 or the “icon” included in the store layout recited in claim 29,
because the “hotspot icons” are overlaid on the building layout and not a
store layout. (App. Br. 8–12.) In this regard, Appellant argues that in
describing Figure 6, HKMap does not use the term “layout,” and that
detailed information is displayed by clicking the hotspot icon, not the
building layout. (App. Br. 8.)
Thus, the issue with respect to this rejection is:
Did the Examiner err in finding that HKMap discloses “plural store
layouts as hyperlinked outlined areas” as recited in claim 20 or “plural store
layouts” including an icon, where a first link is provided from the “icon” as
recited in claim 29?

FINDINGS OF FACT (“FF”)
1. HKMap discloses a map system including a first group of
thematic layers of spatial data, which is “related to locations,
such as buildings, hotels, and train stations.” (HKMap p. 1996,
Sec. 3.2.)
2. HKMap discloses that “a user can press the mouse button on
top of a building and its corresponding name will be popped up.
Similarly, when the mouse moves near a tourist hotspot
(marked as H for hotels, C for cinemas, or M for underground
train stations), the detail information will appear in the second
sub-window on the right hand side.” (P. 1996–1997, Sec. 3.3.)
3. HKMap discloses that for hotspots that have their own World
Wide Web sites, the URLs are saved in the database, and when
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a user selects a hotspot with a corresponding URL, the user can
select the URL and double-click it, and a new browser will then
appear on the screen with the new URL. (P. 1997, Sec. 3.4.)
4. Figure 6 of HKMap is reproduced below:

Figure 6 depicts an embodiment of HKMap showing the
operation of moving a cursor near a “hotspot” marked as
“H” for hotel, which results in detailed information about
that location appearing in a second sub-window of a
display. (HKMap p. 1996–1997.)

ANALYSIS
We agree with the Examiner that HKMap discloses a “description
page” and a “label” as those terms have been interpreted above. That is,
HKMap discloses that detailed information about depicted locations such as
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hotels or cinemas can be displayed by positioning a mouse near a “hotspot,”
and the display of such information is within the definition of a “description
page.” (FF 1–4.) HKMap discloses that by pressing a mouse button on top
of a building its name will pop up, and the name is within the definition of a
“label.” (FF 2.) Thus, HKMap discloses a “description page” and a “label”
even under Appellant’s proposed definition of “description page” discussed
supra.
However, we agree with Appellant that the Examiner erred in finding
that HKMap discloses “plural store layouts” as “outlined hyperlinked areas”
or an “icon” as a hyperlink in “plural store layouts” as recited in claims 20
and 29. HKMap discloses “hotspots” that display detailed information when
a mouse moves near it. (FF 2, 4.) As shown in Figure 6, and as found by
the Examiner, the “hotspots” are shown as overlying the structures depicted
on the map. (Ans. 15; FF 4.) As pointed out by Appellant, HKMap is silent
as to whether the structures depicted are “plural store layouts” and whether
the “hotspots” are physically located within a store layout depicted in the
Figure. (App, Br. 8.) As a result, the Examiner’s findings that HKMap
discloses the plural store layouts in the manner recited in claims 20 and 29
are not supported by HKMap.
Accordingly, we reverse the Examiner’s decision to reject the claims
as anticipated by HKMap.

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Obviousness Rejections
HKMap in view of Lefkowitz and Treyz
ISSUE
The Examiner found, inter alia, that “HKMap fails to teach a first
level map having graphic symbols (icons) which are representations of
plural store layouts within a common building.” (Ans. 5, emphasis in
original.) The Examiner found that Lefkowitz, however, discloses a method
of navigating through a series of maps, which includes depicting plural store
layouts within a mall, providing description pages corresponding to each of
the store layouts containing information related to the store, and providing a
hyperlink to each of the store layouts that causes the description page to be
displayed. (Ans. 5–6; citing Lefkowitz, Figs. 1 and 2, col. 1, l. 54 – col. 2, l.
3, col. 2, l. 61 – col. 3, ll. 1–22.) The Examiner also found that Treyz
discloses a method of navigating a map including depicting a plurality of
store layouts in a mall, wherein at least one of the store layouts is labeled
with a symbolic icon in the form of a logo, where the logo is hyperlinked to
a description page that contains information about the store. (Ans. 6, citing
Treyz, Figs. 44, 45, col. 37, ll. 5–20.)
The Examiner concluded:
From these teachings of Lefkowitz and Treyz et al., it
would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify HKMap by
providing the first level map with graphic symbols (icons)
which are representations of plural store layouts within a
common building, e.g., a shopping mall, because this enables
the interactive display system/method of HKMap to be used to
assist mall shoppers in finding the location of stores within the
mall and in finding detailed information about the stores.
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(Ans. 6.)
Appellant contends that “[t]he Examiner cites Lefkowitz and Treyz
only to allegedly cure the deficiencies of HKMap with respect to Claims 21–
22 and 30–31. FOA, pp. 6–7.” (App. Br. 12.) According to Appellant, the
Lefkowitz or Treyz are not cited to cure the deficiencies of HKMap
identified with respect to Claims 20 and 29. (Id.) Appellant then relies on
the deficiencies of HKMap addressed above as the reasons for why the
rejection of HKMap with Lefkowitz or Treyz is deficient. (Id.)
Accordingly, the issue with respect to this rejection is whether
Lefkowitz and Treyz cure the deficiencies identified with respect to HKMap,
specifically, whether Lefkowitz and Treyz render obvious the limitations of
hyperlinked outlined areas or icons associated with a store layout as recited
in claims 20 and 29.

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FURTHER FINDINGS OF FACT (“FF”)
5. Figure 2 of Lefkowitz is reproduced below:

Figure 2 is a schematic view of a graphical image 1 of a
shopping mall according to an embodiment of Lefkowitz
depicting multiple sub-regions 2 representing stores in the
shopping mall, information area 4, central area 5, restroom 13,
food court 15, and newsstand 26. (Col. 1, ll. 54–65, col. 2, l.
51, col. 3, ll. 4–6, col. 3, l. 46 – col. 4, l. 7.)
6. Lefkowitz discloses that the sub-regions 2 representing stores
are hypertext linked to web page retail sites. (Col. 3, ll. 1–22.)
7. Figure 45 of Treyz is reproduced below:
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Figure 45 depicts a map information screen with multiple
stores in a mall containing information about a user’s location
514 and a selectable logo 516 associated with a particular store
and a zoom out button 518. (Col. 6, ll. 23–25, col. 37, ll. 11–
21.)
8. Treyz discloses that selecting a store logo displays information
about the store including store hours, the location of the store,
and information in special offers. (Col. 37, ll. 5–10, see Figs.
40 and 44.)

ANALYSIS
We do not agree with Appellant that Lefkowitz and Treyz fail to cure
the deficiencies of HKMap discussed above. As outlined above, the
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Examiner found that HKMap fails to disclose plural store layouts within a
common building, and as further discussed above, we reversed the
Examiner’s rejection based on the failure of HKMap to disclose plural store
layouts hyperlinked in the manner recited in the claims. Importantly, in the
obviousness rejection the Examiner has rejected independent claims 20 and
29 predicated on this rationale of identifying a similar deficiency in HKMap.
(Ans. 5.)
Lefkowitz and Treyz provide express teachings as to the claimed
hyperlinked store layouts, Lefkowitz providing disclosures of plural store
layouts with outlined hyperlinked areas, and Treyz providing the concept of
plural store layouts having hyperlinked icons located within the store layout.
(FF 5–8; Ans. 6.)
As outlined above, the Examiner provided reasoning as to why one of
ordinary skill in the art would have combined the teachings of Leftkowitz
and Treyz with HKMap to arrive at the present claims (Ans. 6), which
Appellant has not challenged.
Accordingly, we affirm the Examiner’s rejection of claims 20–22, 24–
27, 29–31 and 33–36 under pre-AIA 35 U.S.C. § 103(a) as obvious over
HKMap in view of Lefkowitz and Treyz.

Claims 23 and 32 HKMap, Lefkowitz, Treyz, Samar, and Nielsen.
Appellant does not provide separate arguments with respect to the
rejection of claims 23 and 32 beyond those made for claims 20 and 29.
(App. Br. 12–13.) Accordingly, we affirm this rejection for similar reasons
as discussed above.
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Rejections under 35 U.S.C. § 112 (pre-AIA)
Written Description
ISSUES
The Examiner found that the disclosure of the ’143 Patent fails to
provide written description support for claims 20–37. In particular, the
Examiner found that the ’143 Patent does not provide support for labels
associated with plural store layouts where activation of a second link causes
a label to be displayed in an Internet browser with plural store layouts.
(Ans. 8–9.) The Examiner further explained that the ’143 Patent only
broadly states that the name and/or description of the shopping center will be
provided whereas the claims recite that a label will be displayed in the
Internet browser with the plural store layouts. (Ans. 9.)
Regarding claims 23 and 32, the Examiner found that the ’143 Patent
does not provide written description support for the recitation “activation of
said second link occurs upon a cursor hovering over” the hyperlinked
outlined area or icon. (Ans. 9.)
For claims 28 and 37, the Examiner found that the ’143 Patent fails to
provide that the zoomed-in view can be generated “upon activation of the
first link.” (Ans. 10.)
Appellant argues that the ’143 Patent clearly describes labels
associated with store layouts. (App. Br. 14–15, citing ’143 Patent, col. 6, ll.
29–30, Fig. 5, col. 4, ll. 2–11, and 38–46.)
Regarding claims 23 and 32, Appellant contends that the drawings
show labels associated with plural store layouts displayed in an Internet
browser in Figures 3 and 5 of the ’143 Patent. (App. Br. 19–20.)
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Regarding claims 28 and 37, Appellant contends that the ’143 Patent
discloses activation of a “lower level screen” by clicking on an icon, and that
one of ordinary skill in the art would have understood that “lower level
screen” refers to a zoomed-in-view. (App. Br. 22.) Appellant further
contends that the ’143 Patent discloses that outlines of buildings of a
shopping center that are hyperlinked to a “more detailed screen,” which one
of ordinary skill in the art would readily understand is a zoomed-in view of a
shopping center. (App. Br. 22–23.)
Accordingly, the issues related to written description are:
Did the Examiner err in finding that claims 20 and 29 lack written
description support for a label associated with a store layout to be displayed
upon activating a second link or that claims 23 and 32 lack written
description report for activation of the second link by hovering a cursor over
an outlined area or icon?
Did the Examiner err in finding that claims 28 and 37 lack written
description support for activating a first link to produce a zoomed-in view of
a first level map image shown in an Internet browser?

PRINCIPLES OF LAW
As explained in Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
F.3d 1559, 1566 (Fed. Cir. 1997),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that “the
inventor invented the claimed invention.” Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
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USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.”). Thus, an
applicant complies with the written description requirement “by
describing the invention, with all its claimed limitations, not
that which makes it obvious,” and by using “such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention.” Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.

In other words, the disclosure must convey with reasonable clarity to
those skilled in the art that the inventor was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Compliance with the written description requirement is a question of fact.
Id. at 1562–63.
The written description “need not include information
that is already known and available to the experienced public.”
Space Sys./Loral, Inc. v. Lockheed Martin Corp., 405 F.3d 985,
987 (Fed.Cir.2005); see Enzo Biochem, Inc. v. Gen–Probe Inc.,
323 F.3d 956, 970 (Fed.Cir.2002) (“[The written] description is
the quid pro quo of the patent system; the public must receive
meaningful disclosure in exchange for being excluded from
practicing the invention for a limited period of time.”).

Zoltek Corp. v. U.S., 815 F.2d 1302, 1308 (Fed. Cir. 2016)

ANALYSIS
Claims 20, 23, 27, 29, 32, and 36
We agree with Appellant that the ’143 Patent provides sufficient
written description support for a label associated with a store layout to be
displayed upon activating a second link, including “hovering” over a store
layout.
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The ’143 Patent discloses: “Alternatively, the names and/or
description of the Shopping Center will be provided when the user ‘hovers’
the cursor or clicks a different mouse button.” (Col. 6, ll. 9–12.) As
discussed above, a label may be a store’s name. The ’143 Patent discloses
also that hovering can be used “to trigger a response such as displaying
additional information.” (Col. 3, ll. 20–25.)
In view of the above disclosure, we do not subscribe to the
Examiner’s position that written description support is lacking because the
drawings do not illustrate specifically the second link and label relationship
claimed, and the disclosure of the ’143 Patent does not provide a specific
description of the manner in which labels associated with plural store layouts
are generated/displayed. (Ans. 9.) Written description support is not limited
to what is shown in the drawings, but also takes into account the descriptive
text of the patent. Lockwood, 107 F.3d at 1572.
In this regard, we find it immaterial that the ’143 Patent uses the term
“alternatively” when describing that the names of the stores may be provided
by hovering or clicking a different mouse button. (See Ans. 16–17; App. Br.
16–17.) The ’143 Patent’s disclosure that labels may be provided in this
manner is sufficient to inform one of ordinary skill in the art that the Patent
Owner was in possession of this embodiment.
Regarding the Examiner’s position that for computer-implemented
inventions, the specification must describe each component and their
function, as well provide a description of the software in the form of a
specific algorithm to perform the claimed functions (Ans. 9–10), as further
discussed infra we are in agreement with Appellant that the ’143 Patent
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defines the terms “link, hyperlink,” “hovering” and layouts, and explains
how the activation is performed. (App. Br. 19–20; ’143 Patent, col. 3, ll.
20–39, col. 5, ll. 26–35, Fig. 3.)
Although the Examiner cites to the MPEP for support for this
position, as pointed out by Appellant, the inquiry under 35 U.S.C. § 112,
first paragraph, for written description support of a computer-related
inventions according to the MPEP § 2161.01 is: “if one of ordinary skill in
the art would know how to program the disclosed computer to perform the
necessary steps described in the specification to achieve the claimed
function and the inventor was in possession of that knowledge, the written
description requirement would be satisfied.” (App. Br. 21.) See also Zoltek
Corp., 815 F.2d at 1308. Here, the techniques for hyperlinking, hovering,
and displaying hyperlinked information are not identified as being the point
of invention, and as argued further by Appellant, the Examiner has not
alleged that one of ordinary skill in the art would not have known how to
program the computer to perform the necessary steps. (App. Br. 21–22.)
Indeed, the ’143 Patent relies on “any of several well known
techniques for providing a logical connection from an element within a
document (or screen) which refers to a target document or location within a
document, where activating the link causes the target to be displayed.” (Col.
3, ll. 33–39.) The prior art applied by the Examiner against the claims,
moreover, provides additional evidence that such techniques are well known.
(See, e.g., Samar, col. 4, ll. 39–45; Nielson, col. 1, l. 59 – col. 2, l. 6; col. 3,
ll. 4–22 and 42–52.)
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As a result, we do not share the Examiner’s view that by stating in the
’143 Patent that the names of the shopping center will be “provided,”
column 6, lines 10–11, one of ordinary skill in the art would not understand
the Patent Owner to be in possession of the embodiment where the names
are displayed in the Internet browser. (See ’143 Patent, col. 3, ll. 20–32.)

Claims 28 and 37
Claims 28 and 37 present a much closer question. Claim 28 recites
that “upon activation of the given one of said first links, a zoomed-in view of
the first level map image is shown in the Internet browser” (underlining
omitted). Claim 37 recites similar language. Regarding “zoomed-in,” as
pointed out by the Examiner, the ’143 Patent relates the “zoom in” function
to the size of the area displayed and the resolution thereof. (Ans. 10, citing
’143 Patent, col. 1, ll. 65–67, col. 2, ll. 35–36, and col. 4, ll. 3–6.)
Initially, Appellants rely on disclosure in the ’143 patent describing
clicking on a “Neighborhood of interest” to bring up a “lower level screen,”
that represents a zoomed-in view of the neighborhood. (App. Br. 22 (citing
’143 patent, col. 5, ll. 43-47)). However, the claims require a zooming in
upon activation of a store outline, and not a neighborhood. Appellant
alternatively relies on the disclosure of the ’143 Patent with respect to
outlines of buildings 118 or stores 120 providing a “more detailed screen”
within information about a shopping center as support for the zoomed-in
view provided by activating the first link. (App. Br. 22-23 (citing ’143
Patent, col. 5, ll. 62–66, col. 6, ll. 22–23, Fig. 5.)) However, such a
disclosure relates to accessing the “description page” as it relates to the
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“plural store layouts” recited in the claims, and is not related to a zoomed in
view of the store upon activating a store outline hyperlink.
The ’143 Patent also discloses that detailed information about a
specific store can be in “any format, including graphical (such as a Store
map showing the location of departments or goods within the Store) which
presents information about the Store.” (Col. 6, ll. 60–63.) It is our view that
one of ordinary skill in the art would have understood this disclosure in the
context of the ’143 Patent as describing a step of activating a first link from
a particular hyperlinked outlined store to provide a description page that is a
zoomed-in view of the particular store. As a result, we are of the view that
the ’143 Patent provides written description support for claims 28 and 37.
Accordingly, we reverse the Examiner’s rejection of claims 20–37 as
lacking written description support.

Enablement
The Examiner determined that the ’143 Patent does not enable a
person skilled in the art to make and use the invention commensurate in
scope with the claims, because the drawings fail to disclose that labels
associated with plural store layouts are displayed in the Internet browser
with the plural store layouts when activation of a second link occurs upon a
cursor hovering over the hyperlinked area or icon, referencing the rejection
of the claims for lack of written description. (Ans. 10–11.) The Examiner
further determined that the disclosure of the ’143 Patent does not provide a
description of the manner in which the labels are generated or displayed.
(Ans. 11.) The Examiner stated that the public has not been informed of the
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structure or function of the components in the claims, but rather the claims
encompass any and every possible method of generating labels as recited in
the claims. (Ans. 11.)
Appellant contends that the Examiner’s position is incorrect because
none of the claims require that the labels be generated, only that the labels be
displayed. (App. Br. 23.) Appellant argues also that the Examiner has not
alleged that undue experimentation would be required to practice the full
scope of the claims. (App. Br. 23.)
“To satisfy the enablement requirement of § 112, ¶ 1, a patent
application must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the application
was filed without undue experimentation.” In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted).
The Examiner’s reasoning is similar to the reasoning set forth in the
written description rejection. As such, we are not persuaded that undue
experimentation would be required in order to practice the methods recited
in the claims. Specifically, for similar reasons as discussed above, one of
ordinary skill in the art would have possessed the requisite knowledge to
generate and display labels as a result of hovering a cursor over a
hyperlinked area or icon in light of the disclosure of the ’143 Patent as
discussed above, and as further evidenced by the prior art of record. (See
HKMap, Sec. 3.3; Samar, col. 4, ll. 39–45; Nielson, col. 1, l. 59 – col. 2, l. 6;
col. 3, ll. 4–22 and 42–52.)
Accordingly, we reverse the Examiner’s rejection of claims 20–37 as
lacking enablement.
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CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner’s factual findings and conclusions that:
Lefkowitz and Treyz cure the deficiencies identified with respect to
HKMap, specifically, whether Lefkowitz and Treyz render obvious the
limitations of hyperlinked outlined areas or icons associated with a store
layout as recited in claims 20 and 29.

However, the Examiner erred in:
finding that HKMap discloses “plural store layouts as hyperlinked
outlined areas” as recited in claim 20 or “plural store layouts” including an
icon, where a first link is provided from the icon as recited in claim 29;
finding that claims 20 and 29 lack written description support for a
label associated with a store layout to be displayed upon activating a second
link or that claims 23 and 32 lack written description report for activation of
the second link by hovering a cursor over an outlined area or icon;
finding that claims 28 and 37 lack written description support for
activating a first link to produce a zoomed-in view of a first level map image
shown in an Internet browser; and
determining that claims 20–37 lack enablement.

DECISION
We affirm the Examiner’s decision to reject claims 20–27 and 29–36
under pre-AIA 35 U.S.C. § 103(a).
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However, we reverse:
the Examiner’s decision to reject claims 20, 24–27, 29 and 33–36
under pre-AIA 35 U.S.C. § 102(b) as anticipated by HK Map;
the Examiner’s decision to reject claims 20-37 under pre-AIA 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement; and
the Examiner’s decision to reject claims 20-37 under pre-AIA 35
U.S.C. § 112, first paragraph, for failing to comply with the enablement
requirement.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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