Ex Parte Twig et al

Patent Trial and Appeal BoardMar 1, 2016

12715266 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121715,266 03/01/2010 Ilan Twig 35690 7590 03/03/2016 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C P.O. BOX 398 AUSTIN, TX 78767-0398 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. 6257-33204 8412 EXAMINER CHEN,TEY ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): patent_docketing@intprop.com ptomhkkg@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ILAN TWIG and AMIT ARAD Appeal2014-004916 Application 12/715,266 Technology Center 2100 Before NATHAN A. ENGELS, NORMAN H. BEAMER, and SCOTT B. HOWARD, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 8-30. 1 Claims 1-7 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b ). We affirm. 1 In the Appeal Brief, Appellants identify Whitemaps (US) Foundation LLC as the real party in interest. (App. Br. 3.) Appeal2014-004916 Application 12/715,266 THE INVENTION Appellants' invention is directed to downloading map data from a database of map data layers. (Abstract.) Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A method comprising: storing, at a server computer, a plurality of layers corresponding to a map of a geographic area, wherein each of the plurality of layers includes a different type of map detail; receiving, from a remote computer over a network, a request for map data corresponding to the map; and in response to said request, transmitting, to the remote computer over the network, a first one of the plurality of layers, wherein the first one of the plurality of layers includes a first type of map detail, wherein the first one of the plurality of layers is in a format that is usable by the remote computer to render, without receipt of additional map data, both a portion of the map and a zoomed version of the portion of the map, and wherein the zoomed version of the portion of the map includes, for the first one of the plurality of layers, additional map details of the first type relative to the portion of the map. REJECTIONS The Examiner rejected claims 8-30 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 7,702,652 B2 (issued Apr. 20, 2010). (Non-Final Act. 3- 5.) Appellants have filed a terminal disclaimer, and therefore, the Appeal directed to this rejection is moot. (Reply Br. 3.) The Examiner rejected claims 8-30 under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA, the applicant, regards as the 2 Appeal2014-004916 Application 12/715,266 invention. (Non-Final Act. 5-7.) However, this rejection is withdrawn. (Ans. 2.) The Examiner rejected claims 8-30 under 35 U.S.C. Â§ 102(b) as being anticipated by Roy (US 5,966,135; issued Oct. 12, 1999). (Non-Final Act. 7-14.) ISSUE ON APPEAL Appellants' arguments in the Appeal Brief present the following issue: Whether Roy anticipates claim 8. 2 (App. Br. 11-14.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' arguments: we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Non-Final Act. 7- 14) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 2-7), and we concur with the conclusions reached by the Examiner. We emphasize the following. Appellants argue: Roy does not teach or suggest "additional map details of the first type" and "without receipt of additional map data" recited by claim 8 As discussed above, Roy has two distinct types of zooming capability which allow a user to "either view an area 2 Rather than reiterate the arguments of Appellants and positions of the Examiner, we refer to the Appeal Brief (filed Oct. 18, 2013), Reply Brief (filed Feb. 27, 2014), Non-Final Office Action (mailed Apr. 9, 2013), and the Examiner's Answer (mailed Jan. 28, 2014) for the respective details. 3 Appeal2014-004916 Application 12/715,266 with greater resolution or obtain additional information about the area." Id. at 13:13-15 (emphasis added). Each of the two types has its unique data requirement. While the second type of zooming would render "a new map picture with the [requested] additional data" thereby requiring downloading "this additional map data," the first type would render a map with "the requested resolution ... with data that has already been downloaded." Id. at 3:54-60, 13:15-20. (App. Br. 14.) We agree that the "second type" of zooming capability in Roy referred to by Appellants does not fall within the scope of the claims at issue, but Appellants are wrong about the first type, when they assert "[l]ikewise, Roy's first type of zooming capability (the 'greater resolution' type) does not meet all elements of claim 8." (App. Br. 15.) As Appellants themselves describe the "first type": Under Roy, the first type of zooming capability is limited to providing "the resolution requested" by "enabl[ing] a user to zoom to a particular width and scale" of a previously downloaded map. Id. at 12:7-8, 13:19-20. As explained by Roy, under this first type of zooming capability, "because the map picture is generated with vector-based data that has already been downloaded, the present invention is able to immediately generate a new map picture with the resolution requested." Id. at 13:17-20 (emphasis added). (Id.) We are not persuaded that the Examiner errs in finding this first type of zooming falls within the scope of the claims as reasonably broadly interpreted. (Ans. 3.) We note the first type of zooming capability disclosed in Roy is the same zooming capability that Appellants cite in Appellants' Specification as an example of the claimed subject matter. (Spec. i-f 45; App. Br. 5.) Appellants argue "this [first] type of zooming does not involve the 'receipt of additional map data' recited by claim 8." (App. Br. 15.) 4 Appeal2014-004916 Application 12/715,266 However, claim 8 specifically requires that additional map data not be received when a zoomed version with "additional map details" is rendered, just as disclosed in Roy. (Non-Final Act. 8-9; Roy, col. 1, 11. 50-57, col. 2, 11. 15-17, 48-52, col. 7, 11. 59---63, col 12, 11. 7-9, col. 13, 11. 13-24.) Appellants further point out that Roy is cited and distinguished in the Specification, but this is to no avail, because the description of Roy in the Specification is directed to the irrelevant "second type" of zooming capability. (Spec. i-fi-f 14, 44; App. Br. 17-18.) In addition, Appellants make the blanket assertion: The Office Action cites at least seven separate text portions and multiple components across three figures of Roy in support of the anticipation rejection. See Office Action at 7-9. Consistent with the above analysis of Roy, none of these cited portions teaches or suggests all elements at issue of claim 8. (App. Br. 16.) This conclusory argument is unpersuasive for the reasons discussed above, and Appellants have not demonstrated that the Examiner's findings of anticipation are in error. Accordingly, we sustain the anticipation rejection of independent claim 8. Appellants apply their arguments for claim 8 to independent claims 13, 15, 16, 25, and 28, and therefore, we also sustain the rejection of those claims. (App. Br. 18.) CONCLUSION For the reasons discussed above, we sustain the anticipation rejection of independent claims 8, 13, 15, 16, 25, and 28. We also sustain the rejection of claims 9-12, 14, 17-24, 26, 27, 29, and 30, which are not argued separately with particularity. (App. Br. 18.) 5 Appeal2014-004916 Application 12/715,266 We decline to decide the appeal as to the nonstatutory obviousness- type double patenting rejection of claims 8-30, given that, as discussed above, Appellants have waived the Appeal and rendered it moot by filing a terminal disclaimer. DECISION The Examiner's rejection of claims 8-30 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6