Ex Parte Santori et al

Patent Trial and Appeal Board

Jun 19, 2017

14189037 (P.T.A.B. Jun. 19, 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.
14/189,037 02/25/2014 Nello Joseph Santori 83395473 7117
28395 7590 06/21/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER NOLAN, PETER D
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NELLO JOSEPH SANTORI, HEATH WILLIAMS, JEFFREY
MONTICELLO, NICHOLAS THORNE, KEVIN F. MILITELLO,
WILLIAM LAWRENCE, and KEVIN MARX
Appeal 2016-003399
Application 14/189,037
Technology Center 3600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003399
Application 14/189,037
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 6, and 8. App. Br. 1. Claims 2—5, 7, and 9-20 have been
cancelled. App. Br., Claims Appendix 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Representative Claim
Representative claim 1, under appeal, reads as follows (emphases and
bracketing added):
1. A system comprising:
a processor configured to:
[A.] access a map, including a pre-designated
destination having a plurality of clues associated
therewith, at least a second clue having a geographic
boundary, around the predesignated destination,
associated therewith;
[B.] provide a first clue associated with the
destination-,
[C.] determine if a user location falls within the
geographic boundary; and
[D.] provide the second clue once the user location
falls within the geographic boundary.
Rejections on Appeal
1. The Examiner rejected claim 1 under 35 U.S.C. § 102(a)(1)
as being anticipated by Lehtiniemi et al. (US 2009/0171559 Al; July 2,
2009).
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Application 14/189,037
2. The Examiner rejected dependent claims 6 and 8 under
35 U.S.C. § 103 as being unpatentable over Lehtiniemi in various
combinations with other references.1
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a)(1) because:
[E]xplicit instructions to a destination are hardly a clue, they
leave no room for interpretation and require no intuition or
evaluation to determine their meaning. Further, even if the
directions are understood to represent “clues” since the
destination is unknown, the actual identification of the
destination is certainly not a clue. (I.e., one would never say
that a clue associated with an answer is the answer, this literally
isn’t a clue). The Examiner points to paragraph [0074]’s
revelation of the actual destination as the second clue, and
while Lehtiniemi does teach revealing the destination once a
user is proximate, as noted, this is not providing a clue.
App. Br. 5 (emphasis added).
The Examiner cites paragraph [0050] for the proposition that
Applicant makes no distinction between clue and destination,
and that clue and destination are equivalents. . . . [E]ven if the
Examiner’s contention [is correct] that destination and clue are
equivalents under the specification, Applicant never states that
guidance to a destination and clue are equivalent, so the
Lehtiniemi reference still fails to anticipate Applicant’s claims,
even using the contentions set forth by the Examiner.
Reply Br. 2 (emphasis added).
1 Separate patentability is not argued for claims 6 and 8. Thus, therejections
of these claims turn on our decision as to claim 1. Except for our ultimate
decision, these claims are not further addressed herein.
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Application 14/189,037
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 102(a)(1) because:
[I]f the specification language is going to be used to interpret
the claims, Applicant points out that, at best, the specification
states that the first clue could be a destination. The Examiner is
not free to ignore the word “first” if going to the specification
for interpretation, but is required to consider the specification as
a whole. The specification also provides
In other cases, the process may provide the user
with a clue to the location, such as a riddle, or a
nearby monument, or other suitable information.
The user can process the clue and begin travel to
the destination. If the user has not reached the
destination, the process may determine if another
clue is needed 511. Based on the user’s current
location, speed, traffic, etc., and the destination,
the process may wait some suitable period of time
before providing a second clue.
Here, the specification clearly distinguishes between “clue” and
“destination.” Further, there is literally nothing that states that
the second or subsequent clue could be the destination. In fact,
the specification also provides
If another clue is needed, the process may
determine if any clues remain 509. If no clues
remain, the process may alert the user 513. The
user may be given the option to have the clues
solved, if desired 515. This will result in the
presentation of a solution to the user, if selected
517.
Since “solving” a destination is a meaningless concept, it is
clear from this teaching that at an absolute minimum, one of the
clues, as claimed, is not a destination.
Reply Br. 2—3.
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Application 14/189,037
3. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 102(a)(1) because:
If the Examiner wishes to go to the specification for the
meaning of a word in the claims, instead of taking the plain
meaning of the word, then the Examiner must consider the
entire specification, not simply the portion that appears to
correspond with the applied analysis. While Applicant does not
agree, for the sake of argument, the best the specification could
be said to teach is that the first clue is a destination.
Reply Br. 3 (emphasis added).
Issue on Appeal
Did the Examiner err in rejecting claim 1 as anticipated because
Lehtiniemi fails to describe clues, as claimed?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions.
As to Appellants’ above contention 1, we disagree. Appellants argue
“explicit instructions to a destination” and “the actual identification of the
destination” are not clues. App. Br. 5. We disagree. First, we agree with
the Examiner that Appellants’ paragraph 50 of the Specification (“this may
merely be the location of the next destination in the rally”) treats a
destination as a clue.2 Second, we do not find where Appellants’
Specification places any particular definition on the term “clue.” Therefore,
we turn to a dictionary to determine the meaning of the term. We conclude
2 Appellants’ paragraph 41 also states “the clues can simply be a name of a
next location to guide a user through the route.” Spec. 141.
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Application 14/189,037
the most appropriate definition of the term “clue” is “anything that serves to
guide or direct in the solution of a problem, mystery, etc.”3 Contrary to
Appellants’ assertions, we conclude the term “clue” is inclusive of “actual
identification of the destination” and inclusive of “guidance to a
destination,” particularly in light of the Specification. In other words, the
recited claim limitations do not preclude the second clue from encompassing
the “answer” of the pre-designated destination. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (“[T]he PTO [should] avoid the temptation to
limit broad claim terms solely on the basis of specification passages.”); In re
Zletz, 893 F.2d319, 321 (Fed. Cir. 1989) (“[DJuring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.”).
As to Appellants’ above contention 2, we disagree. Except as to
numerical requirements, we conclude the numerical labels “first” and
“second” do not serve to restrict the definition of the term “clue.”
Appellants’ attempt to read into the claim the limitations from the
Specification is unpersuasive.
As to Appellants’ above contention 3, we find it unpersuasive for the
reasons set forth above regarding contentions 1 and 2.
3 clue. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://www.dictionary.com/browse/clue (accessed: May 31, 2017).
An alternative definition is equally as broad: “something that helps to
solve a problem or unravel a mystery.” Dictionary.com. Collins English
Dictionary - Complete & Unabridged 10th Edition. HarperCollins
Publishers, http://www.dictionary.com/browse/clue (accessed: May 31,
2017).
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Application 14/189,037
CONCLUSIONS
(1) The Examiner has not erred in rejecting claim 1 as being
anticipated under 35 U.S.C. § 102(a)(1).
(2) The Examiner has not erred in rejecting claims 6 and 8 as being
unpatentable under 35 U.S.C. § 103.
(3) Claims 1, 6, and 8 are not patentable.
DECISION
The Examiner’s rejections under 35 U.S.C. §§ 102 and 103 of claims
1, 6, and 8 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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