Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 1 of 22 PageID #: 33073
`Case 5:19-cv-00036—RWS Document 646-6 Filed 03/08/21 Page 1 of 22 PageID #: 33073
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`EXHIBIT 6
`EXHIBIT 6
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`Case 5:19-cv-00036—RWS Document 646-6 Filed 03/08/21 Page 1 of 22 PageID #: 33073
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`EXHIBIT 6
`EXHIBIT 6
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 2 of 22 PageID #: 33074
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,662
`
`01/27/2021
`
`6748317
`
`2638-19.10
`
`6252
`
`02/12/2021
`7590
`MATTINGLY STANGER & MALUR
`1800 DIAGIONAL ROAD
`SUITE 370
`ALEXANDRIA, VA 22314
`
`EXAMINER
`
`WHITTINGTON. KENNETH
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`02/12/2021
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 3 of 22 PageID #: 33075
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`ERISE IP, P.A.
`7015 COLLEGE BLVD., STE 700
`OVERLAND PARK, KS 66211
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,662.
`
`PATENT UNDER REEXAMINATION 6748317.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 4 of 22 PageID #: 33076
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,662
`
`Examiner
`
`Patent Under Reexamination
`
`6748317
`
`Art Unit
`
`AIA (FITF) Status
`
`KENNETH WHITTINGTON
`
`3992
`
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 01/27/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a) □ PT0-892,
`
`PTO/SB/08,
`
`c)O Other:
`
`1. 0
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`'KENNETH WHITTINGTON/
`Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 5 of 22 PageID #: 33077
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`ORDER GRANTING EX PARTEREEXAMINATION
`
`Page 2
`
`Ex parte reexamination has been requested for Claims 1, 15 and 17 of United
`
`States Patent No. 6,748,317 to Kishiko Maruyama et al., entitled PORTABLE
`
`TERMINAL WITH THE FUNCTION OF WALKING NAVIGATION (hereinafter the "317
`
`5
`
`Patent"). Substantial new questions of patentability (SNQs) affecting claims 1, 15 and
`
`17 of the 317 Patent are raised by the request for ex parte reexamination filed January
`
`27, 2021 (hereinafter the "2021 Request"). Accordingly, reexamination is GRANTED.
`
`This proceeding has been assigned Serial No. 90/014,662.
`
`10
`
`I.
`
`REFERENCES/DOCUMENTS CITED HEREIN
`
`(a)
`
`Japanese Patent Office Open Patent Publication No. 7-280583, released
`
`October 27, 1995, to Suzuki et al. (hereinafter "Suzuki").
`
`(b)
`
`Japanese Patent Office Open Patent Publication No. H10-170301, released June
`
`26, 1998 to Nozaka et al. (hereinafter "Nozaka").
`
`15
`
`(c)
`
`U.S. Patent No. 6,124,826 to Garthwaite et al., issued September 26, 2000
`
`(hereinafter "Garthwaite").
`
`(d)
`
`U.S. Patent No. 5,146,231 to Ghaem et al., issued September 8, 1992
`
`(hereinafter "Ghaem").
`
`(e)
`
`Japanese Patent Application JP06-282796 to Konishi et al., published March 29,
`
`20
`
`1993 (hereinafter "Konishi").
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 6 of 22 PageID #: 33078
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 3
`
`II.
`
`ACKNOWLEDGEMENTS
`
`The references noted above, particularly the Suzuki and Nozaka, have been
`
`asserted in the 2021 Request as providing disclosures and/or teachings relevant to the
`
`claims of the 317 Patent. The 2021 Request and all of its accompanying documents
`
`5
`
`and evidence have been fully considered in the Examiners' determinations and findings
`
`discussed below.
`
`Ill.
`
`RELATED PROCEEDINGS/LITIGATION
`
`After reviewing the 2021 Request, performing a litigation search and reviewing
`
`10
`
`the file history of the 317 Patent, Examiners are aware of the following:
`
`(a)
`
`(b)
`
`(c)
`
`IPR2018-00235 filed November 22, 2017. This proceeding was not instituted.
`
`IPR2020-00407 filed January 13, 2020. This proceeding was not instituted.
`
`Maxell, Ltd. v. Zte Corporation et al., 5:16cv179 (E.D. Texas). This litigation was
`
`dismissed without any final holding of invalidity of the claims of the 317 Patent.
`
`15
`
`(d)
`
`Maxell, Ltd. v. Apple Inc., 5:19cv36 (E.D. Texas). This litigation is currently
`
`pending. Examiners are not aware of the current status of this litigation and
`
`further are not aware of any final holding of invalidity of any claims of the 317
`
`Patent.
`
`(e)
`
`Ex Parte Reexamination proceeding Serial No. 90/014639, filed December 23,
`
`20
`
`2020.
`
`The patent owner is reminded of the continuing responsibility under 37 C.F.R.
`
`§1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, throughout the course of this reexamination proceeding involving the 317
`
`Patent. The third party requester is also reminded of the ability to similarly apprise the
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
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`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 7 of 22 PageID #: 33079
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`Application/Control Number: 90/014,662
`Art Unit: 3992
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`Page 4
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`Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§2207, 2282 and 2286.
`
`IV.
`
`PRIORITY
`
`5
`
`After careful review of the prosecution history of the 317 Patent, Examiners find
`
`that the 317 Patent was filed as U.S. Application No. 10/428,755 on May 5, 2003
`
`(hereinafter the "755 Application"). Examiners further find the 755 Application was
`
`filed as a continuation of U.S. Application No. 10/173,423, filed June 18, 2002
`
`(hereinafter the "423 Application"), now U.S. Patent No. 6,580,999 (hereinafter the
`
`10
`
`"999 Patent"), which was filed as a continuation of U.S. Patent Application No.
`
`09/613,634, filed July 11, 2000 (hereinafter the "634 Application"), now U.S. Patent No.
`
`6,430,498. Examiners finally find these applications/patents claim priority to Japanese
`
`Application No. JP11-197010, filed July 12, 1999.
`
`15
`
`V.
`
`RELEVANT PROSECUTION HISTORY
`
`The 317 Patent, particularly claims 1, 15 and 17, is generally directed to a
`
`portable terminal that is used to help the user thereof to navigate about an area. The
`
`portable terminal is generally a portable telephone, personal handyphone system or a
`
`personal data assistance terminal. See 317 Patent col. 1, lines 10-18. Such portable
`
`20
`
`terminal has a device for getting location information, such as a GPS, wireless antenna,
`
`a PHS or the like, a device for getting directional information such a compass or a gyro
`
`sensor, an input device such as a button keys, a pen, etc., and a display such as a
`
`liquid crystal display. See 317 Patent FIG. 10, reprinted below, location information
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
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`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 8 of 22 PageID #: 33080
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 5
`
`device 77, direction information device 78, input device 73, a display device 72 and a
`
`CPU 71.
`
`317 Patent FIG. 10
`
`5
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`The display device displays certain information based on input from the input device
`
`and data from the location information device and the direction information device. For
`
`example, the display displays positions of said destination and said present place and a
`
`relation of said direction. See claim 1 and FIGS. 3(a)-3(f). Further, the display displays
`
`a direction from said present place to said destination. See claim 1 and FIG. 1.
`
`10
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`Additionally, the display changes according to a change of said direction of said
`
`portable terminal orientation for walking navigation. See claim 1. Furthermore, the
`
`display displays a route and displays a direction of movement by an arrow. See claim
`
`15. Finally, the display displays the route with a bent line. See claim 17.
`
`The following are the Examiners findings of fact related to the prosecution of the
`
`15
`
`755 Application that led to the 317 Patent:
`
`05/05/2003 Patent Owner filed the 755 Application. Therein, Applicant filed a
`
`preliminary amendment presenting prosecuted claims 15-28 for
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 9 of 22 PageID #: 33081
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 6
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`examination. Of importance herein, prosecuted claim 15 was an
`
`independent apparatus claim.
`
`Furthermore, along with the filing of the 755 Application, Patent Owner
`
`filed an Information Disclosure Statement (hereinafter the "May 2003
`
`5
`
`IDS") which cited Garthwaite, Steiner and Ghaem.
`
`09/02/2003 The original examiners issued a non-final Office action (hereinafter the
`
`"2003 NF Action") rejecting all claims under double patenting over the
`
`999 Patent. No art based rejections were made. The original examiner
`
`also indicated consideration of the May 2003 IDS.
`
`10
`
`12/16/2003 Patent Owner filed an amendment and terminal disclaimer in response to
`
`the 2003 NF Action (hereinafter the "2003 Response"). The terminal
`
`disclaimer overcame the double patenting rejection over the 999 Patent.
`
`In the amendment, prosecuted claim 15 was amended as follows:
`
`15.
`
`A portable terminal, comprising:
`a device for getting location information denoting a resent place of
`said portable terminal;
`a device for getting a direction information denoting an orientation
`of said portable terminal;
`an input device for inputting a destination; and
`a display,
`wherein
`a direotion from said present plaoe to said inputted destination is
`displayed aooording to said inputted destination on said display
`said display displays positions of said destination and said present
`place, and a relation of said direction and a direction from said present
`place to said destination, and
`said display changes according to a change of said direction of said
`portable terminal orientation for walking navigation.
`
`In the amendment, Patent Owner also added new prosecuted claims 29-
`
`34. Furthermore, along with the 2003 Response, Patent Owner filed an
`
`15
`
`20
`
`25
`
`30
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`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 10 of 22 PageID #: 33082
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 7
`
`Information Disclosure Statement (hereinafter the "Dec 2003 IDS") which
`
`cited Konishi.
`
`01/28/2004 The original examiners issued a Notice of Allowance of all claims of the
`
`755 Application (hereinafter the "2004 NOA'').
`
`In a statement of reasons
`
`5
`
`for allowance, the original examiner reiterated the general features of
`
`prosecuted claim 15 without identifying any specific claim language that
`
`overcame the prior art. Along with the Notice Examiners also indicated
`
`consideration of the Dec 2003 IDS.
`
`06/08/2004 The 755 Patent issued as the 317 Patent. Original prosecuted claims 15,
`
`10
`
`29 and 31 were renumbers Patent Claims 1, 15 and 17, respectively.
`
`12/23/2020 A first request for ex parte reexamination was filed for Patent Claims 1, 15
`
`and 17. It was assigned Serial No. 90/014639.
`
`01/27/2021
`
`The present 2021 Request for ex parte reexamination was filed for Patent
`
`Claims 1, 15 and 17.
`
`15
`
`VI.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`For a substantial new question of patentability (SNQ) to be present, it is only
`
`necessary that: (A) the prior art patents and/or printed publications raise a substantial
`
`question of patentability regarding at least one claim, i.e., the teaching of the (prior art)
`
`20
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`patents and printed publications is such that a reasonable examiner would consider the
`
`teaching to be important in deciding whether or not the claim is patentable; and (B) the
`
`same question of patentability as to the claim has not been decided by the Office in a
`
`previous examination or pending reexamination of the patent or in a final holding of
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 11 of 22 PageID #: 33083
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 8
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`invalidity by the Federal Courts in a decision on the merits involving the claim. See
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`MPEP §2242. Furthermore, "[i]t must first be demonstrated that a patent or printed
`
`publication that is relied upon in a proposed rejection presents a new, non-cumulative
`
`technological teaching that was not previously considered and discussed on the record
`
`5
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`during the prosecution of the application that resulted in the patent for which
`
`reexamination is requested, and during the prosecution of any other prior proceeding
`
`involving the patent for which reexamination is requested. See MPEP §2216.
`
`Based on the forgoing Examiners' findings of fact related to the prosecution
`
`history of the patent claims requested for reexamination, Examiners make the following
`
`10
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`findings:
`
`EF-1 Examiners find that the original examiner did not provide any art based
`
`rejections on the prosecuted claims.
`
`EF-2 Examiners find that while Patent Owner filed a terminal disclaimer to
`
`overcome the double patenting rejections in the 2003 NF Action, Patent
`
`15
`
`Owner nevertheless substantially amended prosecuted claim 15, now
`
`patent claim 1 .
`
`EF-3 Examiners find that the original examiner did not provide any specific
`
`reasons for allowance of prosecuted claim 15. Rather Examiners find
`
`herein that the original examiner merely restated the general features of
`
`20
`
`the claim.
`
`EF-4 Examiners find that Garthwaite, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`location information, an input device for destination and an output display
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 12 of 22 PageID #: 33084
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`Application/Control Number: 90/014,662
`Art Unit: 3992
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`Page 9
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`which displays the position of the present place within a map. See
`
`Garthwaite FIG. 1, reprinted below, navigation unit 1, input unit 3 and
`
`display unit 5 within portable electronic device 10. See also Garthwaite
`
`col. 3, lines 46-59.
`
`portable
`
`20
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`C ►Jf1'"iH1ur:lcatian
`Unit
`
`.. 1
`
`Na•~r!gation
`Unit
`
`10
`
`4
`
`Output Unit
`',-Nith D~sp!ay
`
`3
`
`Input Unit
`
`5
`
`Garthwaite FIG. 1
`
`EF-5 Examiners find that Ghaem, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`location information, a device for getting directional information and a
`
`10
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`display wherein the display displays an orientation direction of the portable
`
`electronic device and further wherein the display changes according to a
`
`change of the orientation direction of the portable electronic device. See
`
`Ghaem FIG. 2, reprinted below and FIG. 1, GPS sensor 28, directional
`
`sensors 30, 31 and 28 and display 14 within portable electronic device 10.
`
`15
`
`See also Ghaem col. 5, line 57 to col. 6, line 34 wherein the display has a
`
`rotatable pointer 29.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
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`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 13 of 22 PageID #: 33085
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`Application/Control Number: 90/014,662
`Art Unit: 3992
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`Page 10
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`Ghaem FIG. 2
`
`EF-6 Examiners find that Konishi, considered by the original examiner,
`
`discloses a portable electronic device comprising a device for getting
`
`5
`
`location information, a device for getting directional information, input
`
`device and a display wherein the display displays an orientation direction
`
`of the portable electronic device and further wherein the display displays
`
`the present location on a map. See Konishi FIG. 1, reprinted below, GPS
`
`sensor 8, compass 6, input device 1 A and 18, and display 2 which
`
`10
`
`displays maps and present location as shown in FIG. 3.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 14 of 22 PageID #: 33086
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`3
`
`Page 11
`
`I
`
`,v'
`!
`
`4
`
`Konishi FIG. 1
`
`EF-7 Examiners find that in comparison of patent claim 1 to the disclosures of
`
`these references before the original examiner of the 317 Patent, the only
`
`5
`
`features recited in claim 1 not disclosed or taught by the art considered by
`
`the original examiners were related to the display characteristics of the
`
`recited device, namely "wherein said display displays positions of said
`
`destination and said present place, and a relation of said direction and a
`
`direction from said present place to said destination."
`
`10
`
`Based on the above findings, Examiners determine herein that the technological
`
`features that overcame or would overcome the prior art cited during the prosecution of
`
`the 755 Application that became the 317 Patent were those features of amended into
`
`prosecuted claim 15, specifically related to the displaying of the positions of the present
`
`place and the destination and their relation. Accordingly, Examiners conclude that
`
`15
`
`these technological features would be important to an examiner because these features
`
`provided the basis for allowance of the claims and the issuance of the 317 Patent.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 15 of 22 PageID #: 33087
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 12
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`In view of these findings, Examiners conclude that if the 2021 Request presents
`
`a new reference or combination of references that discloses or teaches the
`
`technological features (i.e., the combination of elements specified in the claims) of
`
`[1] "wherein said display displays positions of said destination and said present
`
`5
`
`place, and a relation of said direction and a direction from said present place to said
`
`destination" as recited in patent claim 1 and those patent claims depending therefrom,
`
`then that new reference or combination of references would be important to an
`
`examiner as such teachings would be directed to those technological features for which
`
`the claims were allowed and/or argued to overcome the applied prior art. Thus, the new
`
`10
`
`reference or combination of references disclosing feature [1] would raise a substantial
`
`new questions (SNQs) of patentability for the respective claims.
`
`VII.
`
`SUMMARY OF PROPOSED SNQS OUTLINED IN THE 2021 REQUEST
`
`The 2021 Request proposes one combination of references to raise SNQs for
`
`15
`
`patent claims 1, 15 and 17 of the 317 Patent (See 2021 Request Part VII, pages 21-54).
`
`Issue 1 - The 2021 Request submits that Suzuki in view of Nozaka raises SNQs for
`
`patent claims 1, 15 and 17. See 2021 Request Part VII, pages 21-54. The basis
`
`for the SNQ is that Suzuki in view of Nozaka renders patent claims 1, 15 and 17
`
`20
`
`obvious.
`
`VIII. DISCUSSION OF PROPOSED SNQS
`
`Issue 1
`
`Suzuki and Nozaka raise SNQs for Patent Claims 1, 15 and 17.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
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`PartofPaperNo.20210205
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`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 16 of 22 PageID #: 33088
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`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 13
`
`The 2021 Request submits that Suzuki taken with Nozaka raises SNQs for
`
`patent claims 1, 15 and 17. Examiners agree as follows.
`
`First, Examiners find herein that both Suzuki and Nozaka are patents or patent
`
`publications (See MPEP §2210 and §2244--SNQs must be based on patents and
`
`5
`
`printed publications). Examiners further find that both Suzuki and Nozaka qualify as
`
`prior art patents and printed publications under 35 U.S.C. §102 based on their
`
`publications more than year before the earliest U.S. filing date of the 317 Patent.
`
`Second, Examiners find that nether Suzuki nor Nozaka was cited or considered
`
`during prosecution of the 755 Application that led to the 317 Patent and the previous
`
`10
`
`IPR proceedings. Accordingly, Examiners conclude an SNQ may be based on either of
`
`these references alone or in combination with each other. See MPEP §2216.
`
`Third Examiners find that Suzuki and Nozaka disclose or teach sufficient features
`
`to raise SNQs for patent claims 1, 15 and 17. A discussion of the specifics follows:
`
`Regarding feature [1] of patent claim 1, Examiners find that Suzuki teaches a
`
`15
`
`portable electronic device (See Suzuki FIG. 2, reprinted below. See also 10007
`
`wherein the device is a portable navigation device that "has a weight and size enough to
`
`be able to be place in the palm of the hand) comprising a GPS receiver unit for getting
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 17 of 22 PageID #: 33089
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 14
`
`)\'tl:~ :., ~f-
`
`[ ~:~~:i.]
`L~:1~1~J ::yJ
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`cOOI
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`.1(12
`
`21:l
`
`~Jl,ffl~
`at--' ~:fl~
`
`~~
`~~
`
`L"" ~, ,........,.___,
`
`1".{;;(
`:/).,•.;;'
`l, ......._ _ _,
`
`3iJ
`
`:ltmfN~
`[~-:;;~~:_';"}~,
`j ~~~\'"-~' ~~,<>,
`L:!~~::::,tJ ~IS
`I ~ff-· -"h>ff
`[~:~~~~~~El-it5
`
`Suzuki FIG. 2
`
`location information denoting a present place of the device (See FIG. 2 above, GPS
`
`sensor unit 34), a directional sensor for getting direction information denoting an
`
`5
`
`orientation of said device (See FIG. 2 above, azimuth sensor comprising magnetic
`
`sensor 401 and gyroscope 402), a data input unit for inputting a destination (See FIG. 2
`
`above, data input section 30), and a display (See FIG. 2 above, display 12).
`
`Furthermore, Suzuki teaches with reference regard to feature [1] that the display
`
`displays positions of said destination and said present place, and a relation of
`
`10
`
`said direction (See Suzuki ,I0015 wherein the CPU performs "drawing a map, a
`
`recommended route, an arrow indicating the direction of the route directions and the
`
`destination. Furthermore, see FIG. 6, reprinted below, wherein the present position is
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 18 of 22 PageID #: 33090
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 15
`
`CA)
`
`I)
`
`?""""-.........
`
`[E]
`I(...._ _ __.,. ...
`,,. ...................................................
`
`.
`
`,,. ...............
`
`,,. ................................................ ...
`
`Suzuki FIG. 6
`
`shown by the dot with an arrow showing the direction of the device on the map. Further
`
`note the directional route K is shows the directional route to the destination) and a
`
`5
`
`direction from said present place to said destination (See FIG. 6 above, route K
`
`illustrates the direction from the present positon to the destination and further in view of
`
`10015 and the illustration of FIG. 6, the destination is shown in the map and would be
`
`shown when the present position of the portable device is near enough to the
`
`destination that both are shown in the map image on the display). Furthermore, Suzuki
`
`10
`
`teaches the display changes according to a change of said direction of said device for
`
`walking navigation (See FIG. 6 above and FIGS.5 and 7 and ,r,r0021-0023 wherein the
`
`direction of the portable device is maintained pointing up, i.e., "direction up," while the
`
`map rotates when the device is rotated azimuthally).
`
`Additionally, Examiners find that Nozaka teaches a portable terminal (See
`
`15
`
`Nozaka FIG. 1, reprinted below. See also ,r,r0009 and 0020 wherein the portable
`
`electronic device is usable for navigation and can make a telephone call) comprising a
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 19 of 22 PageID #: 33091
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 16
`
`7
`
`j
`
`?ffefi~ffl
`$.{$~~
`~ffii.
`
`/
`r-~-,
`
`L------------
`
`}
`200
`
`Nozaka FIG. 1
`
`GPS receiver unit for getting location information denoting a present place of the device
`
`(See FIG. 1 above, GPS sensor unit items 3 and 10), a data input unit for inputting a
`
`5
`
`destination (See 10023 and 10049 wherein the user inputs information to designate the
`
`departing position, the target position and the route), and a display (See FIG. 1 above,
`
`display 6). Furthermore, Nozaka teaches with reference regard to feature [1] that the
`
`display displays positions of said destination and said present place, and a
`
`relation of said direction (See Nozaka FIG. 8, reprinted below, which is a display for
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 20 of 22 PageID #: 33092
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 17
`
`Nozaka FIG. 8
`
`the portable terminal illustrating a map with the present place as a black round dot and
`
`a destination as an open dot and their relationship and directions from the present place
`
`5
`
`and the destination is shown) and a direction from said present place to said
`
`destination (See FIG. 8 above which illustrates the direction a user should take from
`
`the present place to the destination).
`
`Furthermore, Examiners agree with and incorporate the 2021 Request at pages
`
`21-54 thereof regarding the disclosure and teachings of Suzuki and Nozaka as further
`
`10
`
`support of the Examiners specific findings above.
`
`Examiners thus find that Suzuki and Nozaka provide technological teachings
`
`(feature [1]) that a reasonable examiner would consider important in determining the
`
`patentability of patent claim 1. Examiners further find the teachings of Suzuki and
`
`Nozaka as discussed herein are not cumulative to any written discussion on the record
`
`15
`
`of the teachings of the prior art, were not previously considered nor addressed in this
`
`manner during a prior examination, and the same questions were not the subject of a
`
`final holding of invalidity in the Federal Courts. Accordingly, Examiners conclude herein
`
`Suzuki and Nozaka raise an SNQ for patent claim 1.
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 21 of 22 PageID #: 33093
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 18
`
`In regard to patent claims 15 and 17, such claims are dependent on patent claim
`
`1. Furthermore, dependent claims are construed to include all of the limitations of the
`
`independent claims. Thus, Examiners conclude Suzuki and Nozaka raises SNQs for
`
`patent claims 15 and 17 in the same manner as for patent claim 1.
`
`5
`
`IX.
`
`SCOPE OF REEXAMINATION
`
`On the basis of the findings above, Examiners agree that Issue 1 raises SNQs
`
`for patent claims 1, 15 and 17 Patent as proposed in the 2021 Request. Accordingly,
`
`patent claims 1, 15 and 17 of the 317 Patent will be reexamined as requested in this
`
`10
`
`reexamination proceeding.
`
`X.
`
`CONCLUDING REMARKS
`
`Reexamination of patent claims 1, 15, and 17 is ordered.
`
`Extensions of time under 37 C.F.R. §1.136(a) will not be permitted in these
`
`15
`
`proceedings because the provisions of 37 C.F.R. §1.136 apply only to "an applicant"
`
`and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. §305 requires
`
`that reexamination proceedings "will be conducted with special dispatch" (37 C.F.R.
`
`§1.550(a)). Extension of time in reexamination proceedings are provided for in 37
`
`C.F.R. §1.550(c). After the filing of a request for reexamination by a third party
`
`20
`
`requester, any document filed by either the patent owner of the third party requester
`
`must be served on the other party (or parties where two or more third-party-requester
`
`proceedings are merged) in the reexamination proceeding in the manner provided in 37
`
`C.F.R. §1.248. See 37 C.F.R. §1.550(f).
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
`
`Case 5:19-cv-00036-RWS Document 646-6 Filed 03/08/21 Page 22 of 22 PageID #: 33094
`
`Application/Control Number: 90/014,662
`Art Unit: 3992
`
`Page 19
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that
`
`correspondence (except for a request for reexamination and a corrected or replacement
`
`request for reexamination) will be considered timely filed if (a) it is transmitted via the
`
`Office's electronic filing system in accordance with 37 C.F.R. §1.6(a)(4), and (b)
`
`5
`
`includes a certificate of transmission for each piece of correspondence stating the date
`
`of transmission, which is prior to the expiration of the set period of time in the Office
`
`action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should
`
`10
`
`be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/KENNETH WHITTINGTON/
`Primary Examiner, Art Unit 3992
`
`15
`
`20
`
`25
`
`30
`
`Conferees:
`
`/C.M.T./
`Primary Examiner, Art Unit 3992
`
`/ANDREW J. FISCHER/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`Ex Parte Reexanination - Order Granting Ex Parte Reexamnation
`
`PartofPaperNo.20210205
`
`
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