Ex Parte Peri et alDownload PDFPatent Trial and Appeal BoardMar 31, 201711985126 (P.T.A.B. Mar. 31, 2017) Copy Citation 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. 11/985,126 11/14/2007 Omer Shmuel Peri ITL.3160US (P64047) 8280 47795 7590 04/04/2017 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER CHEN, SHELLEY ART UNIT PAPER NUMBER 3663 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): tphpto@tphm.com Inteldocs_docketing @ cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OMER SHMUEL PERI, NOAM SAGI, and TALI ZVI Appeal 2014-000141 Application 11/985,126 Technology Center 3600 Before JENNIFER D. BAHR, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3—8, 10-14, 16—20, and 22—30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants inform us that the real party in interest is Telmap, Ltd., which a subsidiary of Intel Corporation. Appeal 2014-000141 Application 11/985,126 CLAIMED SUBJECT MATTER The claims are directed to a method for preparing a route map with alternative routes. Claims 1, 14, and 20 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method for preparing a route map, comprising the steps receiving at a server an input communicating an origin and a destination; in said server, establishing a prescribed route that extends from said origin to said destination and having junctions therein; selecting possible deviations where a traveler is likely to deviate from said prescribed route, each of said possible deviations respectively associated with at least one of said junctions, wherein the selected possible deviations are based on previously collected records of actual deviations executed at said junctions; for the selected possible deviations, establishing respective alternative routes to said destination, said alternative routes respectively extending from said junction of the deviation with the prescribed route to said destination; generating map data including said prescribed route and said alternative routes; and thereafter transmitting said map data from said server to a client device for rendering at least a portion of said map data on said client device. The prior art relied upon by the Examiner in rejecting the claims on of: REFERENCES appeal is: Dotan Glaza Sasaki US 2006/0025923 A1 Feb. 2, 2006 US 2006/0265125 A1 Nov. 23, 2006 US 2007/0294024 A1 Dec. 20, 2007 2 Appeal 2014-000141 Application 11/985,126 REJECTIONS 1. Claims 1, 3, 4, 6—8, 10-14, 16, 17, 19, 20, 22, 23, and 25—30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dotan and Glaza. 2. Claims 5, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dotan, Glaza, and Sasaki. 3. Claims 1, 3, 4, 6—8, 10-14, 16, 17, 19, 20, 22, 23, and 25—30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Glaza and Dotan. 4. Claims 5, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Glaza, Dotan, and Sasaki. OPINION Appellants argue the first and third rejections (of claims 1, 3, 6—8, 10— 14, 16, 19, 20, 22, and 25—30 as unpatentable over Dotan in view of Glaza or, alternatively, vice versa) as a group. Appeal Br. 7—12. We select claim 1 as representative, and claims 3, 6—8, 10-14, 16, 19, 20, 22, and 25—30 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants make additional arguments for claims 4, 17, and 23, which we consider separately, and they make separate arguments for claims 5, 18, and 24, which we also consider separately. Appeal Br. 12—14. Claims 1, 3, 6—8, 10—14, 16 19, 20, 22 and 25—30 The Examiner finds that Dotan teaches all of the features of claim 1 except that it does not disclose “that the selected possible deviations are based on previously collected records of actual deviations executed at said junction.'’'’ Final Act. 4. The Examiner finds that Glaza discloses a method 3 Appeal 2014-000141 Application 11/985,126 for preparing a route map including the selected possible deviations based on previously collected records of actual deviations executed at said junction. Final Act. 4 (citing Glaza H 56, 59—60). The Examiner then concludes that it would have been obvious to modify Dotan so that the selected possible deviations are based on previously collected records of actual deviations executed at said junction as taught by Glaza in order to improve accuracy of deviation predictions, with predictable results. Final Act. 4—5. Appellants focus on two limitations in claim 1: selecting] possible deviations . . . wherein the selected possible deviations are based on previously collected records of actual deviations executed at said junctions; and for the selected possible deviations, establishing respective alternative routes to said destination. Appeal Br. 7. Appellants make two arguments for reversing Rejections 1 and 3 of claim 1: (1) not all limitations of the pending claims are disclosed in the cited art and (2) the two references relied on teach away from each other. Id. (1) Not All Limitations Taught by Cited Art Appellants agree that Glaza collects records of actual deviations and places them in a collective database. Appeal Br. 10. Appellants then argue “this collective database is used for transmitting map information to a client device after the user has made the wrong turn, in connection with step 250 of Fig. 2 [of Glaza].” Id. Appellants take this argument one step farther by concluding “Glaza does not disclose selecting possible deviations for establishing respective alternative routes, as recited in claim 1, and nothing in Glaza discloses using the collective database to download possible 4 Appeal 2014-000141 Application 11/985,126 deviations the driver might take, but only to correct deviations that a driver has already taken.” Appeal Br. 10—11. We are not persuaded of error by this argument. The Examiner correctly notes that the rejection of claim 1 relied on the teachings of Glaza only for the collective database, and not for its data processing or the timing of its data processing. Ans. 4. The Examiner points out “Glaza is only relied upon to teach that selected possible deviations are based on previously collected records of actual deviations executed at said junction.” Id. The argument of Appellants is focused on when Glaza transmits alternative routes, and does not address the combination of references proposed by the Examiner. For this reason the Appellants’ argument is not persuasive. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Appellants next argue that Glaza corrects a single prescribed route rather than providing alternate routes ab initio. Appeal Br. 11. Appellants assert that the claimed records, i.e. “previously collected records of actual deviations executed at said junctions” (Appeal Br. 15. (Claims App)), are “unambiguously linked to establishing alternative routes” (Appeal Br. 11) and “Glaza does not teach using these records for establishing alternative routes.” Id. The Examiner makes a three part answer. First, the Examiner finds that Glaza in fact discloses a corridor of alternative routes transmitted with the map information, citing figure 2: step 250, and paragraph 61. Ans. 9. Glaza describes a deficiency in prior art navigation systems in that they transmit data representing a road network spanning a fixed width corridor 5 Appeal 2014-000141 Application 11/985,126 around a determined route. Glaza 14. Glaza improves on this by using collective probable off-route conditions to determine the amount of data transmitted. Id. 15—6. From the data transmitted, the on-vehicle device is able to select a corrected route. Ans. 9 (citing Glaza Fig. 2: step 250, Tflf 27, 62, and claim 10.) In light of these findings we are not persuaded that Glaza does not teach using the collective off-route records for establishing alternative routes. Importantly, the Examiner further finds that Glaza is not required to teach using the collective off-route records to establish alternative routes since the rejection of claim 1 relies on Dotan for this teaching, citing Dotan abstract, figures 1, 3—7, paragraphs 12, 73, 94, and 104. Ans. 9. Dotan discloses that its “server 28 may calculate alternate routes to the destination, to be followed in case vehicle 22 deviates from the original route, and may download these alternate routes to the client device 24 along with the map data.”2 Dotan | 73. Therefore, criticizing the rejection based on Glaza for an alleged failure to disclose downloading alternative routes does not address the rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Finally, the Examiner notes that by definition a corrected route is an alternative route to the original uncorrected route. Ans. 9. Because we agree with the Examiner’s findings that Dotan and Glaza together teach all the limitations of claim 1, Appellants first argument does not apprise us of error. 2 Appellants’ Reply Brief states that Appellants are using the same vocabulary with the same word meanings as Dotan. Reply Br. 6. 6 Appeal 2014-000141 Application 11/985,126 (2) Cited References Teach Away from Each Other Appellants’ second principal argument is that Glaza teaches away from Dotan so that the teachings of these two references would not be combinable by one of ordinary skill in the art. Appeal Br. 12. They base this argument on the proposition that Glaza does not transmit alternative route map data until the user goes off-route. Id. Even if this were correct, it is insufficient to establish that Glaza teaches away from Dotan. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). In rejecting claim 1, the Examiner has taken from Glaza only the collective database, not the data processing sequence of Glaza. Final Act. 4. We have been directed to nothing in Glaza or Dotan that leads away from the combination as proposed by the Examiner, and the fact that Glaza’s sequence of processing and transmitting data is not imported into the Dotan system is of no consequence, because failing to do so is just giving up one benefit (from Glaza) in exchange for another predictable benefit (from Dotan). See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and 7 Appeal 2014-000141 Application 11/985,126 disadvantages, and this does not necessarily obviate motivation to combine”). Appellants ’Reply Brief Appellants’ Reply Brief addresses Rejections 1 and 3, making a new argument, namely, “the present application differs from [Dotan and Glaza] in that claim 1 requires the alternative routes to be transmitted from a server to the client, not generated locally as in Dotan and Glaza.” Reply Br. 4. In the Final Action the Examiner finds that in Dotan, after map data is generated, the process “thereafter transmit[s] said map data from said server to a client device (abstract, fig[.] 1, fig[.] 5:98, fig[.] 8, etc.).” Final Act. 4. Thus, Appellants were on notice of the Examiner’s position, their new argument is not responsive to an argument raised in the Examiner’s Answer, and Appellants have not shown good cause for the Board to consider it. Accordingly, the Appellants’ argument will not be considered for the purposes of the present appeal. See 37 CFR § 41.41(b)(2).3 Appellants further contend that the corrected route of Dotan and Glaza is not transmitted from a server to a client device. Reply Br. 4. Again, this is a new argument. In the Final Action the Examiner finds that Dotan “generate[s] map data including said prescribed route and said alternative routes (abstract, figs[.] 1, 3—7, P 12, 73, 94, 104, etc.); [and] thereafter transmit[s] said map data from said server to a client device (abstract, fig[.] 1, fig[.] 5: 98, fig[.] 8, etc.).” Final Act. 4. Appellants argue that neither Dotan nor Glaza generates corrected routes before transmitting the 3 Even were we to consider this argument, we would not find it persuasive in as much as Dotan transmits alternative routes from a server to a client, as we found above. See Dotan 173. 8 Appeal 2014-000141 Application 11/985,126 prescribed route to the client device. Reply Br. 4—6. This again is a new argument, in as much as there was no discussion in the Appeal Brief about Dotan not transmitting map data in the sequence required by claim 1. As explained above, pursuant to 37 CFR § 41.41(b)(2), we do not consider issues raised for the first time in a Reply Brief. Next, in their Reply Brief, Appellants argue that a corridor map is simply a “road network” (Glaza 14), and its roads are not alternative routes. Reply Br. 6. As discussed above, the Examiner’s Answer makes clear that Glaza was not relied on for transmission of alternative routes, and further that Dotan clearly teaches transmitting alternative routes from a map server together with the original route. See Dotan 173. Therefore, we are not persuaded as asserted by Appellants that “the ‘corridor map’ of Dotan and Glaza is not a ‘corridor of alternative routes’ and does not inherently include the claimed ‘alternative routes.’” Reply Br. 7 (quoting Ans. 8,11. 9—10, 15). Finally, Appellants argue in their Reply Brief that Dotan discloses transmitting alternative routes from the server, but those routes differ from the alternative routes claimed. Reply Br. 7. In the Final Action the Examiner finds that Glaza prepares a route map that includes selected possible deviations based on “previously collected records of actual deviations executed at said junction.” Final Act. 4—5 (quoting Appeal Br. 15 (Claims App.)). The Examiner concludes that it would have been obvious to modify Dotan so that the selected possible deviations are based on Glaza’s collected data. Id. Thus, in the Final Action the Examiner does not rely on Glaza’s corridor maps, and Appellants’ argument that combining Glaza with Dotan would result in using Glaza’s records to generate Glaza’s corridors does not address the rejection and accordingly is not persuasive. 9 Appeal 2014-000141 Application 11/985,126 For the foregoing reasons, we do not find persuasive the Appellants’ arguments for reversing Rejections 1 and 3 of claim 1. Accordingly, we sustain Rejections 1 and 3 of claim 1 and claims 3, 6—8, 10-14, 16, 19, 20, 22, and 25—30, which fall with claim 1. Claims 4, 17, and 23. Appellants argue these claims together. Appeal Br. 12—13. We select claim 4 as representative, and claims 17 and 23 stand or fall therewith. Dependent claim 4 further includes “said step of establishing alternative routes is performed by choosing said deviations according to a sort order. Appeal Br. 15 (Claims App.). The Examiner finds that Dotan teaches this step. Final Act. 5; Ans. 12. The Examiner points to Dotan, paragraphs 106—107 and 117, for this teaching. Ans. 12. These paragraphs in Dotan address how wide to make a corridor around a selected route in order that likely deviations from that route will be encompassed within the corridor. As illustrated in Dotan, figure 5, the width determination is a prerequisite to computing the alternative routes, item 96 in figure 5. The routes computed at 96 are alternative routes. Dotan 1104. Dotan describes the process of determining the corridor width as “scan[ning] each link along route 40 that it has determined in order to determine where the junctions along the route are located, at a junction location step 100.” Id. 1107. Thus, Dotan describes proceeding in a sort order, namely, from one link to the next along the route 40 that it has selected, and this is sufficient to meet the claim limitation “according to a sort order.” Appellants argue that Dotan downloads roads, not deviations, and therefore Dotan’s disclosure does not meet the requirement of “choosing said deviations according to a sort order.” Appeal Br. 13. Dotan teaches 10 Appeal 2014-000141 Application 11/985,126 that likely deviations occur only at junctions. Dotan | 106. The Examiner answers Appellants’ contention by pointing out that the examination of deviations/junctions outlined in Dotan figure 6 is performed within the method outlined in Dotan figure 5, and the figure 5 process examines roads/links in a sort order. Ans. 12. Therefore, Dotan necessarily establishes alternate routes by a process in which deviations are chosen according to a sort order. Id. Appellants reply that in Dotan roads are downloaded according to their type and that junctions cannot be evaluated in this sequence because junctions may intersect different types of roads. Reply Br. 10—11. Appellants then contend that the Examiner’s interpretation must be wrong because it would lead to repeated and redundant downloading of junction information. This contention is not explained, and we do not find it persuasive. Appellants make additional arguments, specifically, that in Dotan the scanning of junctions is done only to determine the width of the corridor and also that the roads downloaded in a corridor map are not alternative routes. Reply 10-11. These arguments do not convince us that the Examiner’s construction of claim 4 or understanding of Dotan are in error. Claim 4 merely calls for “establishing alternative routes ... by choosing . . . deviations [where a traveler is likely to deviate from said prescribed route] according to a sort order.” Dotan practices this step by scanning each link along the route to determine where junctions along the route are located. Dotan 1107. Accordingly, we are not persuaded of Examiner error in the rejections of claim 4. Therefore, we sustain Rejections 1 and 3 of claim 5, and claims 17 and 23, which fall therewith. 11 Appeal 2014-000141 Application 11/985,126 Claims 5, 18, and 24. Appellants argue these claims together. Appeal Br. 13—14. We select claim 5 as representative, and claims 18 and 24 stand or fall therewith. Claim 5 recites: wherein said sort order comprises remoteness of said deviations from said destination, wherein a first chosen one of said deviations is a most remote deviation from said destination, and said step of establishing alternative routes further comprises a search beginning at said destination and terminating at a point of departure. Appeal Br. 15 (Claims App.). The Examiner adds Sasaki to the combination of Dotan and Glaza, finding that Sasaki discloses a method for preparing a route map in which deviations from the prescribed route are sorted on the basis of distance from the destination, selecting the most distant deviation first, and further that “said step of establishing alternative routes further comprises a search beginning at said destination and terminating at a point of departure.” Final Act. 7—8, 12—13. The Examiner finds that it would have been obvious to modify Glaza as taught by Sasaki in order to ensure that each deviation calculation is complete prior to the vehicle reaching the deviation, with predictable results. Final Act. 13. After paraphrasing the claim limitation at issue, Appellants argue that the Examiner does not address the sequence in which the step of “establishing alternative routes” searches beginning at the destination and terminating at the point of departure. Appeal Br. 14. For this reason, Appellants contend that claims 5, 18, and 24 should be allowed. Id. We do not find this argument persuasive because the Examiner explicitly finds “Sasaki discloses . . . said step of establishing alternative 12 Appeal 2014-000141 Application 11/985,126 routes further comprises a search beginning at said destination and terminating at a point of departure.” Final Act. 7—8. He repeated this finding in connection with Rejection 4. Final Act. 13. The Examiner answers that “establishing alternative routes” by performing “a search beginning at said destination and terminating at a point of departure” (Appeal Br. 15 (Claims App.)) is well known in the art. In addition, the Examiner finds that “this order is one of a finite number of orders in which the roads are junctions on a route can be searched. It would have been an obvious matter of design choice to perform a search or function beginning at said destination and terminating at a point of departure, as well known in the art.” Ans. 13. The Examiner’s Answer also comments that there appears to be no particular advantage to doing the search backwards or forwards. Id. Appellant’s Reply Brief asserts that the direction of search provides significant advantages by enabling reuse of calculated route segments leading to a destination when calculating best routes from other destinations, citing Specification paragraph 81. Reply Br. 12. The reuse of data is alleged to be “important for the performance of the algorithm.” Id. We are not persuaded by Appellants’ arguments relating to the order of alternative route searching. In their Appeal Brief, Appellants argue only that the Examiner had made no finding specific to this search order. Appeal Br. 13—14. No mention was made of any advantage to the claimed alternative route search order. In their Reply Brief, Appellants do not deny that the search order is well known, or that the Examiner erred in finding that Sasaki discloses the claimed alternative search order. Indeed, the Specification suggests a number of alternative search orders, with 13 Appeal 2014-000141 Application 11/985,126 advantages and disadvantages to each. See Spec. Tflf 96—99. In addition the Specification states that “in general the A* algorithm [used to plot alternative routes] may be applied by calculating nodes in either direction i.e., from initial node to goal node or vice versa, or it may be bi-directional, i.e., starting at both ends in meeting in the middle.” Spec. 181. Thus we agree with the Examiner that the selection of a search order for alternative routes would yield not more than “predictable results.” Final Act. 8, 13. The fact that a modification of the prior art may produce beneficial results is not conclusive on the question of obviousness, but rather, if such results are expected, they are evidence of obviousness. Ex parte Novak, 16 USPQ2d 2041, 2043 (BPAI 1989), affd, 899 F.2d 1228 (Fed. Cir. 1990) (unpublished table decision). Here, the Examiner finds the claimed search order for alternative routes was well known, the algorithms for calculating the routes were well known, and the results of combining the cited references were predictable. For the foregoing reasons we do not find persuasive the Appellants’ arguments for reversing Rejections 2 and 4 of claim 5. Accordingly, we sustain Rejections 2 and 4 of claim 5 and claims 18 and 24, which fall with claim 5. DECISION The Examiner’s decision rejecting claims 1, 3—8, 10-14, 16—20, and 22—30 is affirmed. 14 Appeal 2014-000141 Application 11/985,126 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation