Ex Parte LI et al

Patent Trial and Appeal Board

Feb 10, 2016

12730181 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121730,181 03/23/2010
111332 7590 02/12/2016
Intellectual Property Investment Law Group
3150 De La Cruz Blvd.
Suite 206
Santa Clara, CA 95054
FIRST NAMED INVENTOR
HanhongLi
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.
59-065 8620
EXAMINER
LANG, MICHAEL DEAN
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
efs@ipinvestlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANHONG LI and HONGWEI FENG
Appeal2013-008020
Application 12/730, 181
Technology Center 3600
Before NEALE. ABRAMS, JILL D. HILL,
and ERIC C. JESCHKE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hanhong Li and Hongwei Feng (Appellants) seek our review under 35
U.S.C. § 134 from the Examiner's decision rejecting claims 1-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2013-008020
Application 12/730, 181
THE INVENTION
The claimed invention is directed to a method of operation of a
navigation system and a navigation system.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of operation of a navigation system comprising:
generating a first point of interest;
identifying a current location for locating a device; and
calculating a dynamic rank for the first point of interest, the
dynamic rank represents a relevant match listing of the first point
of interest based on a proximity of the current location to the first
point of interest and an encounter validity based on the arrival
time at the first point of interest.
THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Bansal
Stallman
Upstill 1
US 2010/0250118 Al
US 2010/0305848 Al
US 8,239,130 Bl
THE REJECTIONS
Sept. 30, 2010
Dec. 2, 2010
Aug. 7,2012
Claims 1, 3, 5, 6, 10, 11, 13, 15, 16 and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bansal and Upstill.
Claims 2, 4, 7-9, 12, 14 and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bansal, Upstill and Stallman.
1 "Upstill" is frequently misspelled as "Upsill" throughout the record by both
the Examiner and Appellants.
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Appeal2013-008020
Application 12/730, 181
OPfNION
Claims 1, 3, 5, 6, 10, 11, 13, 15, 16 and 20
Obviousness - Bansal and Upstill
As set forth on pages 2 and 3 of the Final Action, the Examiner finds
that all of the subject matter recited in independent claims 1, 6 and 11, and
dependent claims 10, 16 and 20, is found in Bansal, except that "Bansal fails
to explicitly disclose calculating a static rank for the first point of interest
based on time-invariant factors and calculating a total rank based on the
static rank and the dynamic rank for displaying the first point of interest on
the device." However, it is the Examiner's view that these features are
disclosed in Upstill, and that it would have been obvious to "modify the
navigation system of Bansal in view of Upstill in order to present the user
with PO I's [Points Of Interest] that are the most relevant to the user's needs
or interests." Final Act. 3. In particular, referring to Bansal's paragraphs 60
and 61, the Examiner finds that Bansal teaches Appellants' claimed step of
calculating a dynamic rank for the first point of interest, the
dynamic rank represents a relevant match listing of the first point
of interest based on a proximity of the current location to the first
point of interest and an encounter validity based on the arrival
time at the first point of interest.
Id. at 2 (emphasis added).
Appellants disagree with the Examiner's conclusion on this issue,
asserting that Bansal "teaches ranking based on time of arrival at an address
or a geographic position." App. Br. 13 (emphasis added). In response, the
Examiner expresses the teachings regarding this step attributed to Bansal's
paragraphs 61 and 62 in the following manner:
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Appeal2013-008020
Application 12/730, 181
Bansal discloses calculating a dynamic rank for the first point
of interest. .. based on a proximity of the current location ... and
... based on the arrival time ... , i.e. the portable navigation
device receives a percentage probability that the point of
interest will be open and for business at the estimated time of
arrival and then the portable navigation device ranks the points
of interests based on the received probability percentage values.
Ans. 3--4 (emphasis added).
We agree with Appellants, for the Examiner has erred in expressing
the teachings that can be attributed to Bansal regarding this step. In
paragraph 59, Bansal states that the process begins when the portable
navigation system receives user input for point of interest criteria,
whereupon it generates a list of candidate points of interest that meet these
criteria. See Fig. 6, steps 602 and 604. Then, as explained in paragraph 60,
the portable navigation device determines whether it can receive real time
point of interest data via the network on a particular point of interest; if not,
the system ranks the list of such candidate points of interest based upon their
proximity to the portable navigation system, and displays the rankings for
use by a user. See Fig. 6, steps 608 and 622. Alternatively, however, as set
forth in paragraph 61, if the portable navigation system is able to receive real
time point of interest data via a network, it calculates an estimated time of
arrival to that point of interest, and a generates a percentage probability that
the selected point of interest is accessible to customers for commercial
transactions at the estimated time of arrival. According to paragraph 62, this
process is repeated for each point of interest for which data can be obtained,
and the points of interest are then displayed on the basis of their percentage
probability values, for use by the user. See Fig. 6, steps 610-622.
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Appeal2013-008020
Application 12/730, 181
Thus, Bansal teaches that there are two alternative methods in which
ratings for points of interest can be generated. Under the first method,
ratings are based upon only the proximity of each point of interest to the
portable navigation system. Under the second method, ratings are based
upon only estimated time of arrival at the point of interest and the
availability of the desired service at that time. However, Appellants' claims
require calculating a dynamic rank based upon proximity and arrival time,
which is not taught by Bansal.
As far as Upstill is concerned, the Examiner contends that, in column
8, lines 13-26, Upstill discloses "calculating a total rank based on combining
the static rank and the dynamic rank" and, in column 9, lines 57----67, "a
dynamic ranking of points of interest similar to that of Bansal, i.e. grouping
the points of interest based on the distance between the portable navigation
device and point of interest." Ans. 4. The Examiner then concludes
Id.
that it would have been obvious for one of ordinary skill in the
art at the time of the invention to substitute Bansal' s method of
dynamic ranking in place of Upstill'[s] method of dynamic
ranking, e.g. grouping points of interests based on the distance
from the portable device and further use Upstill' s method of
generating a combined score based on the determined scores
associated with the respective points of interests.
We are not persuaded by the presentation made by the Examiner that
the combined teachings of Bansal and Upstill render obvious the step of
"calculating a dynamic rank ... "that appears in all three independent
claims. It is our view that the Examiner has failed to adequately explain
how the cited passages in Upstill support the conclusions attributed to them
by the Examiner, that is, how they convey to one of ordinary skill in the art
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Appeal2013-008020
Application 12/730, 181
that Upstill teaches that there be a calculation of a dynamic rank for a first
point of interest based upon a proximity of the current location of the
navigation system to the first point of interest and an encounter validity
based on the arrival time at the point of interest. Nor is it apparent how the
Examiner proposes to modify the Bansal system by the teachings of Up still.
In this regard, it would appear that modifying the Bansal system to calculate
a ranking of points of interest based upon proximity and arrival time would
result in a profound change of operation, rendering the Bansal invention
inoperable for the purpose intended, and thus would be a disincentive for
one of ordinary skill in the art to do so.
A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have established the claimed subject
matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048,
1051(CCPA1976). Rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
For the reasons set forth above, the positions expressed and the
conclusions reached by the Examiner constitute conclusory statements
unsupported by articulated reasoning with some rational underpinnings.
Therefore, a prima facie case of obviousness has not been established with
regard to independent claims 1, 6 and 11 and, it follows, dependent claims 3,
5, 10, 13, 15, 16 and 20, and this rejection is not sustained.
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Appeal2013-008020
Application 12/730, 181
Claims 2, 4, 7-9, 14 and 17-19
Obviousness - Bansal, Upstill and Stallman
Consideration of the teachings of Stallman, which was cited for
disclosing the use of keywords in calculating the dynamic rank of points of
interest, fail to overcome the deficiency in the combination of Bansal and
Upstill, and therefore this rejection also is not sustained.
DECISION
Both rejections are reversed.
REVERSED
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