Ex Parte Loera et al

Patent Trial and Appeal BoardAug 12, 2013

11695261 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte OSCAR LOERA, JR, MICHAEL GENE SURBER, CRAIG EDWARD CROSS and MARC BRIAN RUSKIN ________________ Appeal 2011-008441 Application 11/695,261 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, RICHARD E. RICE and CARL M. DeFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008441 Application 11/695,261 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-14. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to navigation systems and more particularly to a navigation system having an improved interface for choosing points of interest.” Spec. para. [0001]. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A navigation system comprising: a user interface; a POI database containing points of interest, each record in the POI database having an associated POI name and geographic location; a chain database, each of a plurality of records in the chain database having an associated chain name, each of the plurality of records in the chain database associated with an associated subset of records in the POI database, and wherein said chain database is pre-loaded in the navigation system. REFERENCES RELIED ON BY THE EXAMINER Yokota US 6,687,613 B2 Feb. 3, 2004 Silva US 2008/0154488 A1 Jun. 26, 2008 THE REJECTIONS ON APPEAL 1. Claims 1, 2, 4, 5 and 8-11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yokota. Ans. 4. 2. Claims 3, 6, 7 and 12-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yokota and Silva. Ans. 5. Appeal 2011-008441 Application 11/695,261 3 NEW GROUND OF REJECTION The claims on appeal are all directed to either a chain database (independent claim 1 and dependent claims 2-7) or a collection of chain names (independent claim 8 and dependent claims 9-14) being “pre-loaded” in the navigation system. This limitation was added via an Amendment dated October 15, 2009. Appellants’ Specification does not employ the term “pre-loaded,” which is ordinarily and customarily understood as having a time element associated therewith and that loading occurs prior to that point in time.1 There is thus no guidance as to what time is being referenced such that the indicated data is “pre-loaded” in or into the navigation system as claimed. Appellants’ Specification provides an indication as to where such data is to be stored (i.e., in storage 34) and also that such data can be a “subset” of another database (i.e., a points of interest database 37) or be its own separate database. Spec. para. [0012], see also [0016]. Appellants’ Specification also describes Figure 1A as being a schematic illustration of this database and also describes the type of records it may contain. Spec. para. [0014]. However, we are unable to ascertain from Appellants’ Specification a reference point in time before which the data is to be loaded. This leaves open whether the claims are to be interpreted such that the data is to be loaded, for example, prior to initial sale, prior to initial use, or prior to any further subsequent use. Without such guidance, it becomes a matter of speculation as to whether a device that is “pre-loaded” as claimed can be distinguished from a device which may initially be manufactured in an un- 1 See http://dictionary.reference.com/browse/pre-loaded?s=t&path=/ accessed Jul. 31, 2013. Appeal 2011-008441 Application 11/695,261 4 loaded state but which later becomes loaded and then subsequently used (see e.g., Yokota and Br. 4). Our reviewing court has provided clear guidance that before a decision based on 35 U.S.C. § 103(a) can be made, “it is essential to know what the claims do in fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). In Steele, the court stated that their “analysis of the claims indicates that considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims were made by the examiner and the board” and that “we do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions.” Steele, 305 F.2d at 862. The court continued stating that their study of the lengthy record of the Patent Office prosecution provides ample support for our conclusion that substantial confusion exists in the record at all levels of the prosecution as to the proper interpretation to be given to the appealed claims. We believe that this confusion arose and has continued because the claims do not particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112 Steele, 305 F.2d at 863. A precedential Board decision also provides guidance to the effect that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring an applicant to more precisely define the metes and bounds of the invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). These holdings would appear to be applicable in the present matter. Accordingly, we pro forma reverse the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1 and 8, and by extension dependent claims 2, 4, 5 and 9- Appeal 2011-008441 Application 11/695,261 5 11, as being obvious over Yokota because this rejection necessarily is based upon speculative assumptions as to the meaning of the claims. See Steele. We also enter a New Ground of Rejection of independent claims 1 and 8, and by extension dependent claims 2, 4, 5 and 9-11, under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. This pro forma reversal should not be construed as an indication that the claimed subject matter would not have been obvious in view of the prior art cited against the claims. We have not addressed this issue for it would require the very speculation that formed the basis of our rejection under § 112, second paragraph. Regarding dependent claims 3, 6, 7 and 12-14, these claims were rejected as being obvious over Yokota and Silva. In making this rejection, the Examiner likewise relied on a speculative assumption as to the meaning of the claims, and for similar reasons, we likewise pro forma reverse the Examiner’s rejection of claims 3, 6, 7 and 12-14 as being obvious over Yokota and Silva. Further, as these claims depend directly or indirectly upon either independent claim 1 or 8 (supra), we likewise enter a New Ground of Rejection of claims 3, 6, 7 and 12-14 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. DECISION We pro forma reverse the Examiner’s rejections of claims 1-14. We enter a New Ground of Rejection of claims 1-14 under 35 U.S.C. Appeal 2011-008441 Application 11/695,261 6 § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: (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 proceeding 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. . . . REVERSED; 37 C.F.R. § 41.50(b) JRG