Ex Parte Rasmussen et al

Patent Trial and Appeal Board

May 16, 2017

13222592 (P.T.A.B. May. 16, 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.
13/222,592 08/31/2011 Jens Eilstrup Rasmussen 31730/3 82-00D3 5711
12716 7590 05/18/2017
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
CAMBY, RICHARD M
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS EILSTRUP RASMUSSEN,
LARS EILSTRUP RASMUSSEN, BRET STEVEN TAYLOR,
JAMES CHRISTOPHER NORRIS, STEPHEN MA,
ANDREW ROBERT KIRMSE, NOEL PHILLIP GORDON,
SETH MICHAEL LAFORGE
Appeal 2015-007804
Application 13/222,592
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jens Eilstrup Rasmussen et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1—24. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007804
Application 13/222,592
CLAIMED SUBJECT MATTER
The claims are directed to mapping systems in a digital environment.
Claims 1 and 13 are independent. Claim 1, reproduced below, is
illustrative:
1. A method of displaying a map on a display page, the
method comprising:
displaying a map image;
displaying at least one directional map control object
overlaid on the map image using an image overlay technique to
display the at least one directional map control within the map
image, thereby increasing an area within the display page
available for the map image; and
changing a manner in which the map image is displayed
in response to receiving a selection of the at least one
directional map control object.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
DeLorme US 6,321,158 B1 Nov. 20,2001
REJECTION ON APPEAL
Claims 1—24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over DeLorme in view of Appellants’ Admitted Prior Art. Spec. 155.
OPINION
Independent claims 1 and 13 both require, inter alia, “displaying at
least one directional map control object overlaid on the map image using an
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Application 13/222,592
image overlay technique to display the at least one directional map control
within the map image.” Appeal Br., Claims App. A-l—A-2
The Examiner finds that DeLorme discloses “control objects 130 and
131, as overlaid on the map as a window.” Final Act. 3 (citing DeLorme,
Fig. IB) (emphasis added). The Examiner notes:
the control object window of Figure IB would obviously have
been dragged to the left area of the map to overlay the map and
occlude part of the map display by one having ordinary skill in
the art at the time the invention was made, in order to place it
over the area where the ocean is and allow the user a view of
other parts of the map.
Id. at 2—3. The Examiner concludes that “[i]t would have been obvious to
one having ordinary skill in the art at the time the invention was made to use
the well known image overlay technique described in paragraph 55 of the
specification, in order to leave the map below visible.” Id. at 3.
Appellants argue that DeLorme’s “buttons are disposed next to a
screen with a map display, without overlaying any portion of the map
display.” Appeal Br. 10. Appellants assert that there are “differences
between these screens (or windows) and the buttons at 130 and 131,” and
that the Examiner provides no evidence buttons 130 and 131 “can be
dragged.” Id. at 13. Appellants contend:
the buttons in DeLorme are in fixed positions and cannot be
“dragged” as evidenced at least by (i) lack of any indication in
the specification of DeLorme that the buttons at 130 and 131 can
be moved individually or in groups, (ii) lack of a title bar, or any
other clickable area of the buttons, that can be used to “drag”
these buttons in Fig. IB of DeLorme, especially in contrast with
the title bars clearly illustrated in the two screens or windows in
Fig. IB, and (iii) the design of a compass rose made up of buttons
at 131, which clearly would be destroyed if one of the buttons
were somehow “dragged.”
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Application 13/222,592
Id. at 14.
The Examiner responds that “one of ordinary skill in the art could use
Windows to drag the control objects 130 and 131 over the map portion of
the screen ... as the ability to drag Windows is so well known that virtually
every user has done it and is capable of doing it.” Ans. 4. The Examiner
notes that Appellants’ disclosure on paragraph 55 of the Specification that
image overlay techniques are known “is clearly evidence that Windows can
be manipulated to overlay control objects on a map.” Id. at 4—5.
Appellants reply that the question is not whether Windows can be
dragged, but “whether the specific elements in the DeLorme reference,
which the Examiner cites in connection with the claims, constitute anything
that can be dragged.” Reply Br. 2. Appellants argue that “Examiner has not
provided any evidence, in DeLorme or extrinsically, to support this
assertion,” whereas Appellants’ “specific, factual arguments” to the contrary
“remain unaddressed.” Id.
Although it is well known that Windows screens are capable of being
dragged, we agree with Appellants that the Examiner has not adequately
established that buttons 130, 131 of DeLorme constitute Windows that are
intended to be, or are capable of being, dragged. DeLorme discloses a map
display and buttons 130, 131 for user options. DeLorme, col. 26,11. 44—50;
Fig. IB. As Appellants note, buttons 130, 131 “are disposed next to a screen
with a map display, without overlaying any portion of the map display.”
Appeal Br. 10; see also DeLorme Fig. IB. Moreover, the map display of
DeLorme includes minimize/maximize controls, as well as a title bar, which
usually indicate Windows functionality, whereas buttons 130, 131 do not.
See Appeal Br. 11 and 13. The Examiner does not point to any disclosure or
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Application 13/222,592
provide any technical reasoning that establishes that buttons 130, 131 of
DeLorme would be, or are capable of being, dragged. See id. at 14. Nor has
the Examiner addressed whether it would have been obvious to provide
buttons 130, 131 of DeLorme with the ability to be dragged. Rather, the
Examiner’s reasoning to drag buttons 130, 131, namely, to “allow the user a
view of other parts of the map,” assumes that DeLorme’s buttons are able to
be dragged. For the reasons discussed above and noted by Appellants, this
assumption is unsupported and, thus, the Examiner’s finding that “the
control object window of Figure IB would obviously have been dragged” is
not supported by a preponderance of the evidence.
Therefore, we reverse the rejection of independent claims 1 and 13,
and the claims depending therefrom.
DECISION
The Examiner’s rejection of claims 1—24 is reversed.
REVERSED
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