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`Interview Agenda for Ser. No. 90/013,239
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`Human Factors Article Cannot Anticipate Claims Under 35 USC §102
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`The Human Factors Article is not a disclosure of any particular navigation apparatus, and is
`similarly not a disclosure of any particular navigation system. Rather,it is an article that
`purports to be “design guidelines” that are “intended to be used by anyone responsible for the
`conceptualization, development, design, testing, or evaluation of Advanced Traveler
`Information Systems (ATIS) and Commercial Vehicle Operations (CVO) devices.” The Human
`Factors Article merely discloses high-level concepts of basic routing and navigation capabilities
`“identified through interviews and a review ofthe literature.” (Human Factors, Forward).
`
`Per MPEP 2131, for a prior art reference to anticipate a claim, “The elements must be arranged
`as required by the claim”. MPEP 2131 also states, “’ . “The identical invention must be shownin
`as complete detail as is contained in the ... claim.’” (quoting Richardson v. Suzuki Motor Co., 868
`F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989)).
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`Further, With regard to anticipation under 35 U.S.C. §102, the Federal Circuit has stated:
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`unless a reference discloses within the four corners of the documentnotonlyall
`of the limitations claimed but also all of the limitations arranged or combined in
`the same wayas recited in the claim, it cannot be said to prove prior invention of
`the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
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`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Federal Cir. 2008)(emphasis
`added).
`In Net MoneyIN, the Court held that there was no anticipation because neither
`of two embodimentsin the single prior art reference contained all the claimed “links”
`combined in the same way as in the claim, even though the two embodiments,if
`combined, disclosed all of the claimed “links”.
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`There are many admissions throughout the Human Factors reference which establish that the
`drawings and descriptions of maps, routes, and devices in the Human Factors reference are
`merely simulations or “mock-ups” of non-existent devices. Similarly, each guideline is separate,
`and there is no “embodiment” combining guidelines.
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`The individual guidelines presented in Human Factors do not shows“all of the limitations
`arranged or combined in the same wayas recited in the claim”, and thus cannot be considered
`to anticipate any of the Claims of the ‘812 patent.
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`Guideline at 5-14 — 5-15
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`Although this guideline uses the words “point of interest”, the disclosed “point of interest”is
`incompatible with the “points of interest” recited in Claim 10.
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`1
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`The guideline at 5-14 identifies “points of interest” as “scenic routes, historical sites, national
`parks, and recreational areas”. However, Claim 10 requires, inter alia, “a record associated
`with a user selected point of interest, the record containing at least connection data” and also
`an interface “to establish a communications connection with the selected point of interest
`using the connection data.” The recited “points of interest” are incompatible with the “points
`of interest” shownin guideline 5-14, for which there is no communication connection. Thus,
`for at least this reason this guideline cannot anticipate Claim 10.
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`Guideline at 6-2 — 6-3
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`This guideline also misses limitations of Claim 10, including the limitation “an interface for
`allowing a user entry to cause a lookup of the connection data in the record to establish a
`communications connection with the selected point of interest using the connection data.”
`Thus, for at least this reason this guideline cannot anticipate Claim 10.
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`Guideline at 6-4 — 6-5
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`This guideline also fails to teach the recited “communications connection”.
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`Further, this guideline teaches an ability for the driver to conduct a search. Adjacent the
`graphic on page 6-4it states it will “Allow the drivers to select preferences which reflect their
`current information needs.” However, page 6-4 uses the word “preferences”to actually refer
`to a “search criteria”. This use of “preferences”is inconsistent with the specification.
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`Per MPEP §2111, claims must be “given their broadest reasonable interpretation consistent
`with the specification.” (emphasis added).
`In the specification, “preferences” are part of a user
`profile and are not simply a temporary search criteria typed in to indicate a user’s “current
`information needs.” Rather, “preferences” actually refers to real preferences that have been
`identified by the user. For example,col. 4, Il. 66-67 refers to “user preferences such as
`preferred types of restaurants, shops, entertainments, etc.” Figure 3 (below) showsa set up
`screen in which a user selects preferences. Once entered intothe system, the preferences
`remain in place during use. While the claims aren’t limited to specific embodiments,it is
`inconsistent with the specification to refer to “preferences” as only “reflect[ing] their current
`information needs” such as the user-generated search criteria shownin this guideline.
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`For at least these reasonsthis guideline cannot anticipate Claim 10.
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`Guideline at 6-6 — 6-7
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`This guideline fails to teach at least the recited “processor configured to suggesta plurality of
`points of interest based on the user preference data”, among other limitations.
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`Also, however, althoughthis guideline teaches some kind of communication with a destination,
`it gives no hint as to how such communication comes about, and thus doesn’t teach the recited
`structure. Also, page 6-7 states, “Some people may prefer direct communication with the
`destination”. Thus, this guideline teaches that its device does NOT engagein such direct
`communication, which direct communication would include the telephone number connection
`data and connection recited in Claims 16 and 17.
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`Summary
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`In summary, the guidelines do not teachall of the recited limitations. More certainly, no single
`guideline shows “all of the limitations arranged or combined in the same wayas recited in the
`claim”, which is required for a rejection under §102.
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`

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`Serial No.: 90/013,239
`Reexamination of U.S. Patent No.: 7,593,812
`Attorney Docket No.: 1334-016.902
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