`
`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.
`
`90/013,239
`
`
`
`
` FILING DATE
`
`05/14/2014
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`7593812
`
`GRCP.022015
`
`1705
`
`KLEIN, O'NEILL. & SINGH, LLP aee
`PAIR
`Ip
`TL.
`KLE
`18200 VON KARMAN AVENUE
`TARAE, CATHERINE MICHELLE
`SUITE 725
`IRVINE, CA 92612
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`01/29/2015
`
`DELIVERY MODE
`
`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)
`
`

`

` UNITED STATES PATENTAND TRADEMARK OFFICE
`
`Corarnissioner for Patents
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA 22313-1440
`wunUSPTO.gow
`
`DO NOT USEIN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Erise IP, P.A.
`
`5600 GreenwoodPlaza Blvd.
`
`Suite 200
`
`GreenwoodVillage, CO 80111
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013,239.
`
`PATENT NO. 7593812.
`
`ART UNIT 3992.
`
`Enclosedis a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timeforfiling 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)
`
`

`

`10. [] Other: cc: Requester (if third party
`
`* See the attached detailed Office action for a list of the certified copies not received.
`9. [] Since the proceeding appearsto be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11, 453 0.G. 213.
`
`U.S. Patent and Trademark Office
`
`requester)
`
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20150116
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/013,239
`
`Examiner
`MICHELLE TARAE
`
`Patent Under Reexamination
`7593812
`
`Art Unit
`
`3992
`
`AIA (First Inventor to
`File) Status
`No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`aX Responsive to the communication(s)filed on 12/9/2014 .
`LIA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`b.] This action is made FINAL.
`
`c.[_] A statement under 37 CFR 1.530 has not beenreceived from the patent owner.
`
`month(s) from the mailing date ofthis letter.
`A shortened statutory period for response to this action is set to expire
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (80) days, a response within the statutory minimum ofthirty (30) days
`will be considered timely.
`
`Part]
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1.
`
`Cc Notice of References Cited by Examiner, PTO-892.
`[_]
`Information Disclosure Statement, PTO/SB/08.
`
`CT]
`3.
`4.0
`
`Interview Summary, PTO-474.
`.
`
`SUMMARYOF ACTION
`
`Claims 70-17 and 20 are subject to reexamination.
`
`Claims 1-9,78 and 19 are not subject to reexamination.
`
`Claims ___ have been canceled in the present reexamination proceeding.
`
`Claims ____ are patentable and/or confirmed.
`
`Claims 10-17 and 20 are rejected.
`
`Claims ____s are objectedto.
`
`The drawings, filed on
`are acceptable.
`The proposed drawing correction, filed on
`
`has been (7a) CT approved (7b) Cc disapproved.
`
`Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`a) CAI b) [J Some* c)[ None
`1 (1 been received.
`
`of the certified copies have
`
`2 [J not been received.
`3 LC] been filed in Application No.
`4 TC been filed in reexamination Control No.
`5 CL] been received by the International Bureau in PCT application No.
`
`XI
`
`XI
`
`O O x O O O O
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`This is a second Non-Final ex parte reexamination of claims 10-17 and 20 of
`
`U.S. Pat. No. 7,593,812 to Obradovich etal. (“812”) in response to Patent Owner’s
`
`argumentsfiled December 9, 2014 (“PO 12/9/14 Arguments”) in responseto the first
`
`Non-Final action mailed September 24, 2014.
`
`No claims have been amended. Claims 10-17 and 20 are pending and rejected
`
`below.
`
`Response to Arguments
`
`PO 12/9/14 Arguments have beenfully considered and are found persuasive.
`
`In
`
`the Remarks, PO argues that Human Factors doesnotanticipate claims 10-17 and 20
`
`because Human Factors does not show a single embodimentof a navigation apparatus
`
`with all of the subject matter of claim 10 or the dependentclaims 11-17 or 20, nor does
`
`it show the components and descriptions that would be required to build such a
`
`navigation apparatus. Rather, Human Factors is merely a collection of multiple, distinct
`
`guidelines. (pages 6-12 of Remarks). PO also cites Net MoneyiN, in which the Federal
`
`Circuit held that the district court was “wrong to combine parts of separate protocols
`
`shownin the [prior art] reference in concluding that [the claim] was anticipated."
`
`NetMoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). (pages 6-7 of
`
`Remarks).
`
`Furthermore, MPEP 2131 says, in part, for a prior art referenceto anticipate a
`
`claim, “[t]he elements must be arranged as required by the claim.” Accordingly,
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 3
`
`Examiner agrees with PO that Human Factors does not teachall of the limitations of
`
`claims 10-17 and 20 arranged in the same way as required bythe claims.
`
`As such, the 35 U.S.C. 102 (b) rejection of claims 10-17 and 20 over Human
`
`Factors is withdrawn and a new rejection of the claims is presented below.
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections underthis section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one yearprior to the date of application
`for patent in the United States.
`
`Claims 10 and 12-17 are rejected underpre-AlA 35 U.S.C. 102(b) as being
`
`anticipated by “Sony SkyMap™ User Guide: SkyMap™ Pro and SkyMap™Traveler,”
`
`printed June 1998 (“SkyMap”).
`
`The article, “Etak SkyMap Navigation Products to Carry Sony Brand Name,”
`
`Business Wire, July 27, 1998 servesas further evidence to show when the SkyMap
`
`User Guide was madeavailable to the public.
`
`As per claim 10, SkyMap discloses a navigation system (pp. 4 and 9, the
`
`navigation system includes a notebook computerwith the SkyMapapplication installed
`
`and CD-ROMS), comprising:
`
`storage for storing records associated with different points of interest (pp. 4-5,
`
`and 29-32, a Points of Interest (POI) directory may be queried and a PO! toolbar may
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 4
`
`be used to access POls. POls are stored with street maps and street maps are stored
`
`on CD-ROMs and/or the computer harddisk.);
`
`a device for receiving user preference data (pp. 32 and 63, the notebook
`
`computer with the installed Skymap application is the device that receives user
`
`preference data:
`
`Rinsing Paiars of Interest
`
`HOPE
`
` Step §. Chea
`
`IM AGRTANTS
`Salk
`Rag 4, i
`
`Seen
`
`Step 3.
`
`Step 3. 2Optienal} Smtr a mpeantityfe
`shee Mirekainit Minerof
`Matchoar
`
`Stags & WGpdhanath opens
`farmer hi tie Rens fake.
`
` Step T. Rees t0
`els AY Setavied Maps Avmioke fall Histasiad stored fie} ee
`pit on tie Bena.
`yest Maps
`Steph Ctieksc );
`
`a processor configured to suggest a plurality of points of interest based on the
`
`user preference data (pp. 29-33, the notebook computerprocessoris configured to
`
`suggest POls based on the category selected by the user:
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 5
`
`Step #.
`
`{Optionsls Select your choice from thea Net
`‘
`oeS
`a
`and eliet <
`2
`:
`
`
`
`
`
`
`
`
`Step 10, COpdonal) Select your chote
`list andclick “ayPn
`8
`
`a display elementfor presenting thereon the plurality of points of interest, a user
`
`being allowed to select one of the plurality of points of interest (pp. 29-33, POI icons are
`
`displayed on the userinterface. The user can right-click on the POI icon for more
`
`detailed information about the POI:
`
`ACCESSING POY INFomanioN
`
`
`
`a mechanism for retrieving a record associated with a user selected point of
`
`interest, the record containing at least connection data (p. 30, As shownin the previous
`
`limitation, POI information includes a telephone number(i.¢., connection data).); and
`
`an interface for allowing a user entry to cause a lookup of the connection datain
`
`the record to establish a communications connection with the selected point of interest
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 6
`
`using the connection data (pp. 30 and 47, A user can look up the telephone numberof a
`
`POI in order to call the POI. When a modem is connected to a SkyMap-enabledlaptop,
`
`a user can select to establish a phone call with an entry in the Address Book, e.g., with
`
`a suggested POI added to the Address Book:
`
`PHONE DNALER
`
`EPSP
`
`Examiner notesthat the part of the limitation that reads, “fo establish a
`
`communications connection with the selected point of interest using the connection
`
`data,” is mere intended useas establishing a communications connection with the POI
`
`is neverpositively recited. A recitation of the intended use of the claimed invention
`
`must result in a structural difference between the claimed invention and the prior art in
`
`order to patentably distinguish the claimed invention from the prior art.
`
`If the prior art
`
`structure is capable of performing the intended use, then it meets the claim.).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 7
`
`As per claim 12, SkyMap discloses the system of claim 10, wherein the plurality
`
`of points of interest include goodsor service providers (p. 29, POls include goods or
`
`service providers:
`
`POINTS GF INTEREST
`
`
`
` Dardghag Hots
`Bemrice Basks
` Barks &#
`
`
`
`Shappiag |
`
`Tourist dntiacaiogns fstysnscar
`MS; HraeMatiotas, Maen anal Pismreiy dis
`WHS
`
`¢ heome
`forvetie
`tee are’
`mh
`&i
`Ave Sepetees Csas carton
`TOCA SERS, Sd fesady ARES
`
`Aie Se. Badd Crscunarect
`
`As perclaim 13, SkyMap discloses the system of claim 12, wherein the goodsor
`
`service providers include a restaurant (/d. at 29).
`
`As per claim 14, SkyMapdiscloses the system of claim 10, wherein the user
`
`entry includes a user selection of an option provided by the system (/d. at 30, 33 and
`
`47, The user can select a POI provided by the system and then select further options
`
`related to the POI such as selecting the POI as a waypoint, adding the POI to the user’s
`
`address book and calling the POI from the address book.).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 8
`
`As per claim 15, SkyMap discloses the system of claim 14, wherein the option is
`
`presented on the display element (/d. at 30 and 47, see screenshots of display elements
`
`in claim 10).
`
`As per claim 16, SkyMap discloses the system of claim 10, wherein the
`
`connection data includes a telephone number (/d. at 30).
`
`As per claim 17, SkyMap discloses the system of claim 16, wherein the
`
`communications connection includes a telephonic connection (/d. at 47).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 9
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinaryskill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`Claims 11 and 20 are rejected underpre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over SkyMap and “Human Factors Design Guidelines for Advanced
`
`Traveler Information Systems (ATIS) and Commercial Vehicle Operations (CVO),” U.S.
`
`Departmentof Transportation, Federal Highway Administration Publication No. FHWA-
`
`RD-98-057, Campbell et al., September 1998 (“Human Factors’).
`
`As per claim 11, SkyMap discloses the system of claim 10, wherein the
`
`processor is further configured to plan a route to a desired destination (p. 34, A route
`
`can be planned betweenuser-identified travel points.).
`
`While SkyMapdiscloses searching for POls within a certain distance (p. 32),
`
`SkyMap doesnot expressly disclose the plurality of points of interest are suggested
`
`based on locations thereof in relation to the planned route. Human Factors discloses
`
`this at 5-14, “Point of interest information refers to information presented to the driver
`
`that identifies scenic routes, historical sites, national parks, and recreational areas
`
`within a predetermined radius surrounding the route. Having this information will allow
`
`drivers to choose whether or not they wish to adjust their route and travel plans to
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`include a specific point of interest.”
`
`Satianatic Basmapix of PecseatiagPant oflatieset Latent
`
`Taka
`ERS RS np,
`
`Page 10
`
`
`
`DSS an deus or gyeaiot deMatty EG SRaw Re NN IS eeABe
`Rodeds ay fetesSagSate AAR? Sead ARNEGOMER,
`BSR ETTe RAS
`) .
`
`At the time of the invention, it would have been obvious to a person of ordinary
`
`skill in the art to have the navigation system suggest POls basedontheir locations in
`
`relation to the planned route as doing so providesdrivers with the flexibility to choose
`
`whetheror not they wish to adjust their route and travel plans to include a specific point
`
`of interest (Human Factors, 5-14).
`
`As per claim 20, SkyMap does not expressly disclose the system of claim 10,
`
`wherein the interface includes an audio input. Human Factors disclosesthis at 9-8,
`
`“Drivers should have some methodfor entering this type of information (e.g., phone, key
`
`pad, touch screen, voice input, etc.”).
`
`At the time of the invention, it would have been obvious to a person of ordinary
`
`skill in the art to have the navigation system include audio input as doing so provides
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 11
`
`users with an additional meansof interacting with the navigation system, thereby
`
`enhancing the user-friendliness of the system’s interface.
`
`Conclusion
`
`In order to ensurefull consideration of any amendments, affidavits or
`
`declarations, or other documents as evidenceof patentability, such documents must be
`
`submitted in responseto this Office action. Submissions after the next Office action,
`
`whichis intendedto be a final action, will be governed by the requirements of 37 CFR
`
`1.116, after final rejection and 37 CFR 41.33 after appeal, which will be strictly enforced.
`
`Extension of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings becausethe provisions of 37 CFR 1.136 apply only to “an applicant” and
`
`not to parties in a reexaminations proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37 CFR
`
`1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in
`
`37 CFR 1.550(c).
`
`Amendment in Reexamination Proceedings
`
`Patent owneris notified that any proposed amendmentto the specification and/or
`
`claimsin this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`formally presented pursuant to 37 CFR §1.52(a) and (b), and must contain any fees
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 12
`
`required by 37 CFR § 1.20(c). See MPEP §2250(IV) for examples to assist in the
`
`preparation of proper proposed amendmentsin reexamination proceedings.
`
`Service of Papers
`
`After thefiling of a request for reexamination by a third party requester, any
`
`documentfiled by either the patent owneror the third party requester must be served on
`
`the other party (or parities where two or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See
`
`37 CFR 1.550.
`
`Notification of Concurrent Proceedings
`
`The patent owneris reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of anylitigation activity, or other prior or concurrent
`
`proceeding, involving U.S. Pat. No. 7,593,812 throughout the courseofthis
`
`reexamination proceeding. The third party requester is also reminded of the ability to
`
`similarly apprise the Office of any such activity or proceedings throughoutthe course of
`
`this reexamination proceeding. See MPEP §§ 2207, 2282, and 2286.
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 13
`
`Future Correspondence
`
`If attempts to reach Examiner Michelle Tarae by telephone at 571-272-6727 are
`
`unsuccessful, the examiner’s supervisor, Woo Choi can be reached on 571-272-4179.
`
`All correspondencerelating to this ex parte reexamination proceeding should be
`
`directed:
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner of Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By Hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web mayalternatively submit such correspondencevia
`the electronic filing system EFS-Web, at
`
`hitos://efs usoto. aov/efile/mvportal/efs-reaistered
`
`EFS-Weboffers the benefit of quick submission to the particular area of the
`Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
`scanned”(i.e., electronically uploaded) directly into the officialfile for the reexamination
`proceeding, whichoffers parties the opportunity to review the contentof their
`submissions after the "soft scanning" process is complete.
`
`Anyinquiry concerning this communication should be directed to the Central
`
`Reexamination Unit at (671) 272-7705.
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 14
`
`Signed:
`
`/C. Michelle Tarae/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/JEFFREY CARLSON/
`Primary Examiner, Art Unit 3992
`
`/WooH. Choi/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`