Ex Parte Peri et al

Patent Trial and Appeal Board

Mar 31, 2017

11985126 (P.T.A.B. Mar. 31, 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.
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
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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
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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
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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
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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.
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(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
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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.
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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.
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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
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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.
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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
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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
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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.
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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
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