Ex Parte Leah et al

Patent Trial and Appeal BoardMar 11, 2016

12981020 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/981,020 12/29/2010 77242 7590 03/15/2016 IBM Raleigh S/W Group c/o Patent Law of Virginia, PLLC PO Box 9319 Richmond, VA 23227 FIRST NAMED INVENTOR Robert Charles Leah 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. RSW920100148US1 (IBM 5764 19) EXAMINER FAULK, DEVONA E ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 03/15/2016 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): brian@patentlawva.com brianjteague@gmail.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT CHARLES LEAH, DAVID MALLENBY, JOHN KURT MULLER, and PETER CHI-SHING YIM Appeal2014-004320 1 Application 12/981,0202 Technology Center 2600 Before LARRY J. HUME, CARLL. SILVERMAN, and NORMAN H. BEAMER, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 8-21. Appellants have previously canceled claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 The Decision reversing the Examiner's rejections in Appeal 2014-004303 for related Appl. Ser. No. 13/411,544 was mailed Feb. 23, 2016. 2 According to Appellants, the real party in interest is International Business Machines Corp. App. Br. 2. Appeal2014-004320 Application 12/981,020 STATEMENT OF THE CASE3 The Invention Appellants' disclosed and claimed "invention relates to displaying maps, and more particularly to displaying dynamically updated map projections." Spec. i-f 1. Exemplary Claims Claims 8 and 15, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 8. A system for displaying map projections compnsmg: a processor configured for, in response to one or more desired changes to one or more aspects of a map view, selecting a central meridian for the desired changed map view, and configured for creating a new map projection based on the selected central meridian; and a display for displaying the new map projection, wherein the new map projection has one or more differences in distortion from a prior map projection based on a prior central meridian. 15. A computer program product for displaying map projections, the computer program product comprising a computer readable storage medium having computer readable program code embodied therewith, the computer readable program code comprising: 3 Our decision relies upon Appellants' Appeal Brief ("Br.," filed Sept. 9, 2013); Examiner's Answer ("Ans.," mailed Dec. 16, 2013); Final Office Action ("Final Act.," mailed July 19, 2013); and the original Specification ("Spec.," filed Dec. 29, 2010). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal2014-004320 Application 12/981,020 computer readable program code configured for, in response to one or more desired changes to one or more aspects of a map view, selecting a central meridian for the desired changed map view; and computer readable program code configured for creating a new map projection based on the selected central meridian, wherein the new map projection has one or more differences in distortion from a prior map projection based on a prior central meridian. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Rasmussen US 2006/0206264 Al Sept. 14, 2006 Kato US 2010/0235089 Al Sept. 16, 2010 Rejections on Appeal RI. Claims 15-21 stand rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Ans. 2. R2. Claims 8-10, 12-17, and 19-21 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Kato and Rasmussen. Ans. 3. R3. Claims 11and18 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Kato, Rasmussen, and Asper. Ans. 12. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that 3 Appeal2014-004320 Application I2/98I,020 Appellants could have made but chose not to make in the Briefa, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We agree with particular arguments advanced by Appellants with respect to obviousness Rejections R2 and R3 of claims 8-2 I for the specific reasons discussed, infra. We disagree with Appellants' arguments with respect to non-statutory subject matter Rejection RI of claims I 5-2 I and, with respect to this rejection, we incorporate herein and 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 Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 8 and I 5 for emphases as follows. 1. Â§ IOI Rejection RI of Claims I5-2I Issue 1 Appellants argue (Br. 6) the Examiner's rejection of claim I 5 under 35 U.S.C. Â§ IOI as being directed to non-statutory subject matter is in error. These contentions present us with the following issue: Did the Examiner err in concluding the recited "computer readable storage medium" may be interpreted as reading on a transitory signal? 4 Appeal2014-004320 Application 12/981,020 Analysis Appellants contend: The present application as filed distinguishes between a computer readable signal medium and a computer readable storage medium. Present Application i-f 0033. A computer readable storage medium may be "any tangible medium that can contain, or store a program for use by or in connection with an instruction execution system, apparatus, or device." Id. In contrast, a "computer readable signal medium may include a propagated data signal with computer readable program code embodied therein." Id. Thus, by the definition provided in the specification, a computer readable storage medium, as recited in Claim 15, does not encompass such propagated data as asserted. App. Br. 6. In response, the Examiner finds, "[a] computer readable storage medium may be, for example, but not limited to, an electronic, magnetic, optical; electromagnetic; infrared; or semiconductor system; apparatus; or device, or any suitable combination of the foregoing [0033]." Ans. 2. Under our jurisprudence, the scope of the recited "computer readable storage medium" encompasses transitory media such as signals or carrier waves, where, as here, the Specification does not limit the computer readable storage to non-transitory forms. Accord Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine- readable storage medium ineligible under Â§ 101 since it encompasses transitory media). Here, as pointed out by the Examiner (Ans. 3), the recited "computer readable storage medium" is not claimed as non-transitory, and the disclosure does not expressly and unambiguously limit that medium to solely non-transitory forms via a definition or similar limiting language. 5 Appeal2014-004320 Application 12/981,020 Therefore, the medium encompasses transitory forms and is ineligible under Â§ 101. Therefore, on this record, we are not persuaded of error in the Examiner's rejection of claim 15 under Â§ 101. Accordingly, we sustain the Examiner's non-statutory subject matter rejection of independent claim 15, and claims 16-21 which depend therefrom and fall therewith. 2. Â§ 103 Rejection R2 of Claims 8-10, 12-17, and 19-21 Issue 2 Appellants argue (Br. 6-10) the Examiner's rejection of claims 8 and 15 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Kato and Rasmussen is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes "a processor configured for;" inter alia; "selecting a central meridian for the desired changed map view, and configured for creating a new map projection based on the selected central meridian," as recited in independent claim 8, and as commensurately recited in independent claim 15? Analysis Appellants first point out, "[c]reating a map projection is much more complex and [is] achieved through the use of mapping equations," in contrast to the teachings and suggestions of Kato which are directed to automatically zooming a map display in and out. Br. 8. We agree with Appellants that Kato's teaching of zooming in and out does not teach or 6 Appeal2014-004320 Application 12/981,020 suggest creating a new map projection, as that process would be understood by a person of ordinary skill in the art. Appellants argue the Examiner's reliance upon Rasmussen's teaching of "a system in which a user can place a line on a map display ... [to provide] various functionality" is incorrect, and "there is no indication in Rasmussen that the user-created line is a central meridian." Id. In fact, Rasmussen's method is necessary because there is only one map projection disclosed in Rasmussen. As the map view is moved to a different part of the map projection, the distortion changes because the new map view is a different distance from the central meridian. To compensate for the different distortion, Rasmussen changes the map scale. In contrast, the claimed method of the present application changes the map projection when the map view is changed to minimize the distortion for every map view. The claimed method of the present application minimizes the distortion in every map view (by changing the central meridian and creating a new map projection) to eliminate the need to compensate for the distortion as Rasmussen does. Br. 9-10. We find Appellants' arguments to be persuasive, and disagree with the Examiner's finding that the combination of Kato and Rasmussen teach or suggest the contested limitations of claims 8 and 15. We disagree because we find the cited portions of the prior art do not teach or suggest creating a new map projection in response to selecting a new central meridian, as those terms would be understood by a person of ordinary skill in the mapping arts. Accordingly, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or 7 Appeal2014-004320 Application 12/981,020 suggest the disputed limitations of claims 8 and 15 such that we cannot sustain the Examiner's obviousness rejection of independent claims 8 and 15, and claims 9-14 and 16-21 which variously depend therefrom and stand therewith. 4 CONCLUSIONS (1) The Examiner did not err with respect to non-statutory subject matter Rejection RI of claims 15-21 under 35 U.S.C. Â§ 101, and we sustain the rejection. (2) The Examiner erred with respect to obviousness Rejections R2 and R3 of claims 8-21under35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we do not sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 15-21, and we reverse the Examiner's decision rejecting claims 8-14. AFFIRMED-IN-PART 4 Although Rejection R3 of claims 11 and 18 is not separately argued by Appellants, we find the Asper reference relied upon in this rejection does not make up for the previously identified deficiencies of Kato and Rasmussen, as discussed above in connection with Rejection R2 of independent claims 8 and 15. 8