By Cheryl Beise, J.D.
The Patent Trial and Appeal Board properly rejected three related patent applications directed to an information system incorporating Global Positioning System (GPS) data and claiming priority to a 1993 application, the federal district court in Alexandria, Virginia, has determined. All claims in each application were unpatentable as indefinite, lacking enablement, and/or lacking adequate written description (Taylor v. Matal, August 10, 2017, Brinkema, L.).
Inventor William Taylor contested the PTAB’s denial of three related patent applications—U.S. Application Serial Nos. 10/425,553 (the ’553 Application); 11/391,501 (the ’501 Application); and 11/807,860 (the ’860 Application). The applications pertained to Taylor’s "GPS Explorer" invention, an information system incorporating Global Positioning System data. The applications shared the same specification, were continuations of the same parent application (No. 08/553,383), and claimed a priority date of May 18, 1993. After the examiner determined that the ’553 Application impermissibly contained multiple inventions, Taylor struck certain claims and filed two divisional applications: the ’501 and ’860 Applications. Each application corresponded to one version of the GPS Explorer—audio, visual, and virtual reality presentation of information to the user. The patent examiner rejected all claims of each application, based on lack of written description or indefiniteness, under 35 U.S.C. ¶112 and/or obviousness under ¶103. The PTAB affirmed rejection of all claims of each application under ¶112. Taylor, appearing pro se, filed three appeals in the federal district court in Alexandria. The court consolidated the cases.
The ’553 Application. The ’553 Application, titled "GPS Explorer," describes a portable presentation device that presents "a video picture of the real world" to the user, based on the user's sensed position overlaid with computer generated representations regarding nearby places of potential interest. After 12 rounds of amendments, the examiner rejected all 27 claims as obvious, as indefinite, and as lacking adequate written description. The PTAB affirmed the examiner's ¶112 rejections of the claims and did not reach the rejection based on obviousness.
The Board found that the specification did not sufficiently disclose to a person skilled in the art how a video picture of the real world and computer-generated representation of an entry retrieved from a database, both of which were based on the user's sensed position, as well as advertising information and route guidance, was "generated and presented to the user simultaneously/at the same time." Also insufficiently disclosed were the operation of "an audio-only mode" and an "eyes-free mode." In addition, the specification failed to explain how the device would select advertising based on the user's position.
The court agreed with the Board’s reasoning and dismissed Taylor’s arguments on appeal because they were based on a later state of knowledge rather than knowledge of a person of skill in the art in 1993, the time of the invention. The most salient evidence in the record was Taylor’s own admission in his deposition that he had not built the GPS Explorer in 1993 and, as late as 2002, his prototypes did not include many of the functions described in the specification, the court noted. Taylor could not cure insufficient disclosure with modern day screen shots (showing, for example, the overlay of graphical objects), new explanations about how his device would work, or other unsupported arguments. The court affirmed the Board’s indefiniteness finding.
The examiner and the Board found that the independent claims’ recitation of providing route guidance from the sensed position to "a location associated with input user selection" was unclear. Agreeing with this and other individual findings by the PTAB (such as the meaning of "eyes-free mode"), the court concluded that, taken together, both independent claims, read in light of the specification, failed to inform, with reasonable certainty, those skilled in the art about the scope of the invention.
The ’501 Application. The invention claimed in the '501 Application was similar to the ’553 Application, but differed by, among other things, claiming an audio output for presenting information to the user. After eight rounds of amendment, the examiner rejected all 35 claims. The PTAB affirmed the rejection based on obviousness and added lack of written description and enablement as additional grounds for rejection.
Regarding written description, the PTAB found that the specification "provide[d] insufficient disclosure to allow one skilled in the art to recognize that the inventor invented selectively storing received data based on sensed position, and accessing and searching selectively stored data based on the sensed position and the received data retrieval criteria, as called for by claims 1 and 35." The court agreed that the specification did not disclose an invention that selectively stored data based on location as taught in the real time embodiment, and then retrieved data based on that location criteria. The court also found that the USPTO properly rejected the '501 Application because the term "data retrieval criteria" was indefinite because its scope was not delineated.
The ’860 Application. The ’860 Application had 72 claims relating to presenting information to the user as a computer-based simulation responsive to the user's angle of view. The claims were rejected for lack of enablement, failing to further limit the subject matter of the claims on which they depended, and obviousness. The PTAB affirmed the rejection based on lack of enablement and added indefiniteness as an additional ground. On appeal, the USTPO added lack of written description as a basis for rejection, but the court declined to address the argument because it was untimely.
The PTAB found that claim 1 and all of its dependent claims were non-enabled based on two terms that were insufficiently disclosed in the specification: "orientation determining component" and "user's view angle of azimuth." The court agreed that, based on the specification, persons skilled in the art would not have understood what those terms meant independently or in relation to each other. The PTAB also found that the specification "fails to describe or enable one skilled in the art to present a simulation of retrieved data based on a selected mode," producing uncertainty about "whether simulation occurs as a mode of operation and "whether and how simulation can be based on another mode of operation selected by the user." In light of the indeterminacies regarding "orientation determining component" and "user's view angle of azimuth," as well as "mode" and "mode of operation," the court found that the specification would not have enabled one skilled in the art to practice the invention without undue experimentation.
In addition, because "orientation" and ''view angle of azimuth," as well as their relation to each other, were unclear, and because one skilled in the art would not understand what was claimed in the context of the invention, the PTAB’s rejection of all claims based on indefiniteness was warranted.
Because all three applications were both indefinite and lacked written description, the court granted the USPTO’s motions for summary judgment and denied Taylor’s motions.
The case is No. 1:15-cv-01607-LMB-JFA.
Attorneys: William Michael Frederick Taylor (The Deer Tower) for William Michael Frederick Taylor. Antonia Konkoly, U.S. Attorney's Office, for Joseph Matal.
MainStory: TopStory Patent VirginiaNews
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