`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`10/486,377
`
`02/10/2004
`
`Eiji Takahashi
`
`W&A—101US
`
`7925
`
`EXAMINER
`RATNERPRESTIA —
`06’1““ —
`7590
`52473
`PO. BOX 980
`COPPOLA, JACOB c
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`3621
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`06/ 1 6/2014
`
`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):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 10/486,377 TAKAHASHI, EIJI
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JACOB C. COPPOLA [SENS 3621
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 19 March 2014.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 31 32 37 38 and 40 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`
`7)|Z| Claim(s) 31 32 37 38 and 40 is/are rejected.
`
`8)|:I Claim(s)_ is/are objected to.
`* If any)claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`
`
`()
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`are subject to restriction and/or election requirement.
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`h/index.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140610
`
`

`

`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 2 - 20140610
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`DETAILED ACTION
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`Acknowledgements
`
`1.
`
`This Office Action is in reply to Applicant’s response filed 19 March 2014 (“2014
`
`March Response”).
`
`2.
`
`3.
`
`Claims 31, 32, 37, 38, and 40 are currently pending and have been examined.
`
`This Office Action is given Paper No. 20140610. This Paper No. is for reference
`
`purposes only.
`
`Specification
`
`4.
`
`The specification is objected to as failing to provide proper antecedent basis for
`
`the claimed subject matter. See 37 CFR 1.75(d)(1), MPEP §608.01(o), and MPEP
`
`§2181 IV and its discussion of C.F.R. §1.75. Correction of the following is required:
`
`a.
`
`In claim 31, the phrase “situation information acquisition part that acquires
`
`position information identifying a current position of the electronic information terminal;”
`
`b.
`
`In claim 31, the phrase “condition acquisition part that acquires condition
`
`information of a service identifying a relationship between a content of the service and a
`
`position at which the service can be utilized
`
`and if the determining part determines
`
`that the service cannot be utilized by the electronic information terminal at the current
`
`position, then the condition acquisition part acquires the position different from the
`
`current position at which the service can be utilized by the electronic information
`
`terminal;”
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 3 - 20140610
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`c.
`
`In claim 31, the phrase “determining part that determines if a service can
`
`be utilized by the electronic information terminal based on the position information, the
`
`condition information and the stored information
`
`wherein the stored information
`
`indicates at least one of: whether the display is capable of color display; and whether
`
`the electronic information terminal has audio output means;” and
`
`d.
`
`In claim 31, the phrase “service information acquisition part that acquires
`
`service information for executing the service when the determining part determines the
`
`service is executed.”
`
`5.
`
`First, the Examiner notes that the USPTO’s Board of Patent Appeal and
`
`lnterferences (“Board”) has recently recognized the lack of antecedent basis of claim
`
`terms in the original specification as a “significant problem.” See 73 Fed. Reg. 32944
`
`(June 10, 2008) (noting that “[o]ne significant problem faced by the Board under Rule
`
`41 .37(c)(1)(v) occurs when the language of a claim does not have direct antecedent
`
`language in the specification”).
`
`6.
`
`Second, the Examiner notes that patent examiners have no authority to waive
`
`the provisions of a rule. See In re Goodman, 3 USPQ2d 1866, 1871 (ComrPats 1987)
`
`noting the examiners have no authority to waive 37 C.F.R. §1.111(b).
`
`7.
`
`Third, MPEP § 2181 IV. expressly states:
`
`Even if the disclosure implicitly sets forth the structure, materials, or acts
`corresponding to a means- (or step-) plus-function claim element in
`compliance with 35 U.S.C. 112, first and second paragraphs, the USPTO
`may still reguire the applicant to amend the specification pursuant to 37
`CFR 1.75(d) and MPEP § 608.01 (0) to explicitly state, with reference to
`the terms and phrases of the claim element, what structure, materials, or
`acts perform the function recited in the claim element. [Emphasis added.]
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`

`

`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 4 - 20140610
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`8.
`
`Because the lack of antecedent basis is currently recognized by the USPTO as a
`
`significant problem, because the Examiner has no authority to waive the provisions of a
`
`rule, and because the USPTO can require an applicant to amend the specification to
`
`expressly recite the corresponding structure for performing the claimed function, the
`
`Examiner concludes that, in accordance with 37 C.F.R. § 1.75(d), an amendment of the
`
`specification (or other appropriate correction of the above noted objections to the
`
`specification) is required.
`
`Claim Rejections — 35 us. C. § 1 12, Second Paragraph
`
`9.
`
`The following is a quotation of the second paragraph of 35 U.S.C. § 112:
`
`The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.
`
`10.
`
`Claims 31, 32, 37, 38, and 40 are rejected under 35 U.S.C. § 112, second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which Applicant regards as the invention.
`
`Regarding Claims 31, 32, 37, 38, and 40
`
`11.
`
`For the Non-Structural Phrases discussed below (see § Claim Interpretation), the
`
`corresponding structure cannot be determined.
`
`12.
`
`Particularly, claims 31, 32, 37, 38, and 40 recite the limitations “[x] part that
`
`It is self-evident that these claim limitations do not use the phrase “means for” or “step
`
`for.” However, the claim limitations use a non-structural term, e.g. “determining part
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`

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`Art Unit: 3621
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`Page 5 - 20140610
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`that,” which is a term that is simply a substitute for “means for.” Therefore, the
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`Examiner will apply §112, 116 to the claim limitations that use the non-structural term
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`associated with functional language. See MPEP § 2181 I.
`
`13.
`
`In light of the above, and in light of the Invocation Analysis — 35 U.S.C. §112, 16
`
`applied below in the § “Claim Interpretation,” the following claim phrases are limitations
`
`that invoke 35 U.S.C. §112, 116:
`
`e.
`
`In claim 31, the phrase “situation information acquisition part that acquires
`
`position information identifying a current position of the electronic information terminal;”
`
`f.
`
`In claim 31, the phrase “condition acquisition part that acquires condition
`
`information of a service identifying a relationship between a content of the service and a
`
`position at which the service can be utilized
`
`and if the determining part determines
`
`that the service cannot be utilized by the electronic information terminal at the current
`
`position, then the condition acquisition part acquires the position different from the
`
`current position at which the service can be utilized by the electronic information
`
`terminal;”
`
`g.
`
`In claim 31, the phrase “determining part that determines if a service can
`
`be utilized by the electronic information terminal based on the position information, the
`
`condition information and the stored information
`
`wherein the stored information
`
`indicates at least one of: whether the display is capable of color display; and whether
`
`the electronic information terminal has audio output means;” and
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 6 - 20140610
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`h.
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`In claim 31, the phrase “service information acquisition part that acquires
`
`service information for executing the service when the determining part determines the
`
`service is executed.”
`
`14.
`
`For each claimed phrase that invokes 35 U.S.C. §112, 116, the written description
`
`fails to clearly link or associate the disclosed structure to the claimed function such that
`
`one of ordinary skill in the art would recognize what structure performs the claimed
`
`function.
`
`15.
`
`For each claimed phrase that invokes 35 U.S.C. §112, 16, Applicant is required
`
`to either:
`
`(a) Amend the claim so that the claim limitation will no longer be a non-structural
`
`term plus function limitation under 35 U.S.C. §112, 116; or
`
`(b) Amend the written description of the specification such that it clearly links or
`
`associates the corresponding structure to the claimed function without introducing any
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`new matter. See 35 U.S.C. 132(a).
`
`16.
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`For more information, see 37 C.F.R. § 1.75(d); MPEP §608.01(o); and MPEP
`
`§2181.
`
`17.
`
`Additionally, claim 31 recites the phrase “the utilizable service determined
`
`selected by said determining part.” This phrase lacks antecedent basis and renders
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`claim 31 indefinite, since one of ordinary skill would not understand what the phrase is
`
`referring to.
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 7 - 20140610
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`18.
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`Additionally, claim 31 recites “acquires service information for executing the
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`service when the determining part determines the service is executed.” Claim 31 is
`
`indefinite because one would not understand what is meant by the above phrase.
`
`If the
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`service is already determined to be “executed” (i.e., claim reads “when the determining
`
`part determines the service is executed”), then acquiring “service information for
`
`executing the service” causes confusion as to the meaning of the phrase “determines
`
`the service is executed.”
`
`Regarding Claim 40
`
`19.
`
`Claim 40 recites and if the determining part determines that the service
`
`cannot be utilized by the electronic information terminal at the current position, then the
`
`condition acquisition part acquires the position different from the current position at
`
`which the service can be utilized by the electronic information terminal.”
`
`20.
`
`The phrase “the determining part” and the phrase “the condition acquisition part”
`
`lack antecedent basis. Claim 40 is indefinite because one cannot determine to what the
`
`phrase “the determining part” and the phrase “the condition acquisition part” are
`
`referring.
`
`Claim Rejections — 35 us. C. § 112, First Paragraph
`
`21.
`
`The following is a quotation of the first paragraph of 35 U.S.C. § 112:
`
`(a) The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms
`as to enable any person skilled in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 8 - 20140610
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`22.
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`Claim 40 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply
`
`with the written description requirement.
`
`23.
`
`The claims contain subject matter which was not described in the specification in
`
`such a way as to reasonably convey to one skilled in the relevant art that the inventors,
`
`at the time the application was filed, had possession of the claimed invention.
`
`24.
`
`The first paragraph of 35 U.S.C. § 112 contains a written description requirement
`
`that is separate and distinct from the enablement requirement. Ariad Pharms., Inc. v. Eli
`
`Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). The purpose of the written
`
`description requirement is to “ensure that the scope of the right to exclude, as set forth
`
`in the claims, does not overreach the scope of the inventor’s contribution to the field of
`
`art as described in the patent specification.” Id. at 1353-54 (citation omitted). This
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`requirement “ensures that the public receives a meaningful disclosure in exchange for
`
`being excluded from practicing an invention for a period of time.” Id.
`
`25.
`
`To satisfy the written description requirement, the specification must describe the
`
`claimed invention in sufficient detail that one skilled in the art can reasonably conclude
`
`that the inventor had possession of the claimed subject matter as of the filing date. Vas-
`
`Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the
`
`specification must describe the claimed invention in a manner understandable to a
`
`person of ordinary skill in the art and show that the inventor actually invented the
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 9 - 20140610
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`claimed invention. ld.; Ariad, 598 F.3d at 1351. The written description requirement
`
`does not demand any particular form of disclosure; however, “a description that merely
`
`renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352
`
`(citations omitted). The written description requirement of 35 U.S.C. § 112, first
`
`paragraph, applies to all claims including original claims that are part of the disclosure
`
`as filed. Id. at 1349. Original claim language does not necessarily satisfy the written
`
`description requirement for the claimed subject matter. Id.
`
`Regarding Claim 40
`
`26.
`
`Claim 40 is directed to a computer implemented method including, among other
`
`limitations, “determining if a service can be utilized by the electronic information terminal
`
`based on the position information, the condition information and the stored information
`
`wherein the stored information is information relating to at least one of: whether the
`
`displaying is performed by a color display; and whether the electronic information
`
`terminal has audio output means.” As an initial matter, the Examiner notes that claim 40
`
`is not an originally-filed claim. The Examiner also finds that none of originally-filed
`
`claims 1-30 recite the above limitation, and therefore original claims 1-30 do not provide
`
`the necessary written description support for pending claim 40. Accord Ariad, 598 F.3d
`
`at 1349 (indicating original claim language does not necessarily satisfy the written
`
`description requirement for the claimed subject matter).
`
`27.
`
`Applicant’s specification does not describe how to determine if a service can be
`
`utilized by the electronic information terminal based on the position information, the
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`

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`Application Number: 10/486,377
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`Page 10 - 20140610
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`Art Unit: 3621
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`condition information and the stored information, wherein the stored information is
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`information relating to at least one of: whether the displaying is performed by a color
`
`display; and whether the electronic information terminal has audio output means.
`
`Because of the phrase “based on,” the claimed position information, condition
`
`information and stored information appear to be three inputs for an algorithm that
`
`outputs the selection when executed by a computer, however the specification only
`
`identifies a generic computer (e.g., fig. 3) and does not disclose an algorithm for
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`“determining if a service can be utilized by the electronic information terminal based on
`
`the position information, the condition information and the stored information
`
`wherein
`
`the stored information is information relating to at least one of: whether the displaying is
`
`performed by a color display; and whether the electronic information terminal has audio
`
`output means.” Beyond general statements of the function to be performed, which, at
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`most, may render the claimed function obvious, the inventor has not shown how to
`
`perform the recited “determining if a service can be utilized.” This disclosure is not
`
`sufficient because a description that merely renders the invention obvious does not
`
`satisfy the written description requirement. Ariad, 598 F.3d at 1352.
`
`28.
`
`Because Applicant’s disclosure, as originally filed, does not convey to an
`
`ordinarily skilled artisan that Applicant had possession of the claimed invention, the
`
`Examiner concludes that claim 40 does not have sufficient written description support to
`
`satisfy 35 U.S.C. § 112, first paragraph.
`
`29.
`
`If claims 31, 32, 37, and 38 were not construed under § 112, sixth paragraph,
`
`and therefore were not indefinite under § 112, second paragraph, the Examiner would
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`Page 11 - 20140610
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`Art Unit: 3621
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`also reject claims 31, 32, 37, and 38 as failing to satisfy the written description
`
`requirement § 112, first paragraph, because claim contains similar limitations to claim
`
`40 and claims 32, 37, and 38 depend from claim 31.
`
`Claim Rejections - 35 USC §102
`
`30.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. §102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(e) the invention was described in (1) an application for patent, published under section
`122(b), by another filed in the United States before the invention by the applicant for
`patent or (2) a patent granted on an application for patent by another filed in the United
`States before the invention by the applicant for patent, except that an international
`application filed under the treaty defined in section 351 (a) shall have the effects for
`purposes of this subsection of an application filed in the United States only if the
`international application designated the United States and was published under Article
`21(2) of such treaty in the English language.
`
`31.
`
`Claims 31, 32, 37, and 38 are rejected under 35 U.S.C. §102(e) as being
`
`anticipated by Horita et al. (U.S. 6,759,970 B1) (“Horita”).
`
`Regarding Claims 31
`
`32.
`
`Horita discloses:
`
`i.
`
`An electronic information terminal (“contents receiving station 3180”)
`
`comprising: at least one memory (“vehicle type information table 3150” and the
`
`“share[d] ‘storage units of the components of fig. 3 (see also 0. 14, I. 57-62), which
`
`directly translate to the components of fig. 31), an input-output device (the “input unit”
`
`and “output unit” of the “receiving equipment 326” (c . 14, I. 57-62) are common to the
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`Art Unit: 3621
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`“transmitting equipment 3126”; alternative/y, transmitting equipment 3126 is itself an
`
`input/output device) and a central processing unit (CPU) (components of fig. 31 share
`
`an information processing unit in the manner similar to the components of fig. 3, see c.
`
`15, |. 6-13; see also “information processing unit” of the “receiving equipment 326” (c .
`
`14, I. 57-62) also common to the “transmitting equipment 3126”), said at least one
`
`memory storing computer-readable instructions (see fig. 31 for configuration), said at
`
`least one memory storing information specific to at least one of the electronic
`
`information terminal and a user of the electronic information terminal, execution of the
`
`instructions by the CPU configuring the electronic information terminal to include:
`
`j.
`
`a situation information acquisition part (“intended-vehicle location
`
`information retrieval equipment 3144”) that acquires position information identifying a
`
`current position of the electronic information terminal;
`
`k.
`
`a condition acquisition part (“destination/route/distance/vehicle type
`
`information retrieval equipment 3130”) that acquires condition information of a service
`
`identifying a relationship between a content of the service and a position at which the
`
`service can be utilized;
`
`l.
`
`a determining part (“comparator equipment 3146”) that determines if a
`
`service can be utilized by the electronic information terminal based on the position
`
`information, the condition information and the stored information, and if the determining
`
`part determines that the service cannot be utilized by the electronic information terminal
`
`at the current position, then the condition acquisition part acquires the position different
`
`

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`Page 13 - 20140610
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`Art Unit: 3621
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`from the current position at which the service can be utilized by the electronic
`
`information terminal;
`
`m.
`
`a service information acquisition part (“information selecting equipment
`
`3138”) that acquires service information for executing the service when the determining
`
`part determines the service is executed; and
`
`n.
`
`a display (“display equipment 3152”) that displays the utilizable service
`
`determined selected by said determining part;
`
`0.
`
`wherein the stored information indicates at least one of: whether the
`
`display is capable of color display; and whether the electronic information terminal has
`
`audio output means.
`
`Regarding Claims 32, 37, and 38
`
`33.
`
`Horita discloses the limitations of claim 31, as shown above, and further
`
`discloses the limitations of:
`
`p.
`
`Claim 32: The information terminal according to claim 31, wherein the
`
`store information is information relating to the user of the information terminal (see fig.
`
`31 with associated text);
`
`q.
`
`Claim 37: The information terminal according to claim 31, wherein said at
`
`least one memory contains instructions stored on computer readable media for
`
`performing steps of selecting a service in said determining part (see c. 15, l. 1+); and
`
`r.
`
`Claim 38: The information terminal according to claim 31, wherein said
`
`display comprises a visual display screen (see at least fig. 31 with associated text).
`
`

`

`Application Number: 10/486,377
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`Art Unit: 3621
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`Claim Rejections — 35 us. C. § 103
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`34.
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`The following is a quotation of 35 U.S.C. §103(a) which forms the basis for all
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`obviousness rejections set forth in this Office Action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or
`described as set forth in section 102 of this title, 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 ordinary
`skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
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`35.
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`Claim 40, as understood by the Examiner, is rejected under 35 U.S.C. §103(a) as
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`being unpatentable over Horita et al. (US. 6,759,970 B1) (“Horita”), in view of Ficco
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`(U.S. 2005/0166224 A1).
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`Regarding Claim 40
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`36.
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`Horita discloses a computer implemented method carried out by instructions
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`stored in a computer-readable storage medium in an electronic information terminal
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`(“contents receiving station 3180”) for providing services according to situations, the
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`electronic information terminal including at least one memory storing information
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`specific to at least one of the electronic information terminal and a user of the electronic
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`information terminal (“vehicle type information table 3150” and the “share[d] ‘storage
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`units of the components of fig. 3 (see also 0. 14, |. 57-62), which directly translate to
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`the components of fig. 31), said method comprising:
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`s.
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`acquiring position information identifying a current position of the
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`electronic information terminal (49:59-63);
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`t.
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`acquiring condition information of a service identifying a relationship
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`between a content of the service and a position at which the service can be utilized
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`(49:23-58);
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`u.
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`determining if a service can be utilized by the electronic information
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`terminal based on the position information, the condition information and the stored
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`information (50:49 through 52:65);
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`v.
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`displaying the determined utilizable service (50:49 through 52:65);
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`37.
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`Horita does not directly disclose if the determining part determines that the
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`service cannot be utilized by the electronic information terminal at the current position,
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`then the condition acquisition part acquires the position different from the current
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`position at which the service can be utilized by the electronic information terminal.
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`38.
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`However, the above limitation is an alternative to determining that the service can
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`be utilized. Because Horita discloses determining that the service can be utilized,
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`Horita need not disclose the above alternative limitation for anticipation.
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`39.
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`Additionally, Horita does not directly disclose wherein the stored information is
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`information relating to at least one of: whether the displaying is performed by a color
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`display; and whether the electronic information terminal has audio output means.
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`40.
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`Ficco teaches determining if a service can be utilized by an electronic information
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`terminal based on stored information, wherein the stored information is information
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`relating to at least one of: whether the displaying is performed by a color display; and
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`whether the electronic information terminal has audio output means ([0031]-[0033]
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`[0040p
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`41.
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`Therefore, it would have been obvious to one of ordinary skill in the art, at the
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`time the invention was made, to modify Horita to store the information taught by Ficco
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`and to determine whether the service can be utilized based on such information, also
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`taught by Ficco. One would have been motivated to do so in order to adapt a service to
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`a format preferred by the user or a format compatible with the user’s device.
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`Claim Interpretation
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`42.
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`Unless expressly noted otherwise by the Examiner, the Examiner maintains his
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`position on claim interpretation as noted in Paragraph No. 10, Paper No. 20100210.
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`43.
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`The Examiner withdraws his position on claim interpretation as noted in
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`Paragraph No. 11, Paper No. 20100210.
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`lnvocation Analysis — 35 U.S.C. §112, 16
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`44.
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`In this section, the Examiner will apply the three-prong analysis, as found in
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`MPEP §2181 l., to an exemplary claim limitation discussed in § Claim Rejections - 35
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`USC §112, Second Paragraph.
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`Non-Structural Phrase #1
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`45.
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`Based upon a review of the claims, specification, and prosecution history, the
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`Examiner concludes that the phrase “determining part that determines if a service can
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`be utilized by the electronic information terminal based on the position information, the
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`condition information and the stored information
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`wherein the stored information
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`indicates at least one of: whether the display is capable of color display; and whether
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`the electronic information terminal has audio output means” as recited in claim 31 (“NSP
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`#1” or “Non-Structural Phrase #1”) invokes 35 U.S.C. §112,1i6. To support this
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`position, the Examiner notes the following:
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`Prong (A)
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`w.
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`First, although NSP #1 does not recite “means for,” the Examiner finds
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`that the claimed “determining part that” is a non-structural term. See MPEP § 2181 l.
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`x.
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`In other words, the Examiner finds that based upon the facts of this
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`particular application, “determining part that” is a substitute for “means for.” To support
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`the Examiner’s position that “determining part that” is a substitute for “means for,” the
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`Examiner has carefully reviewed the original specification and finds that the
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`specification does n_ot provide a description sufficient to inform one of ordinary skill in
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`this art that “determining part that” denotes a particular structure. Furthermore, based
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`upon all evidence now of record, the Examiner finds that the prior art provides
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`insufficient evidence that “determining part that” has an art-recognized structure to
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`perform the claimed function.
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`y.
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`Second, and in accordance with MPEP § 2181 l. and based upon the
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`claim language itself, the Examiner finds that the phrase “determining part that” (1) is
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`not preceded by a structural modifier and (2) does not contain another structural
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`modifier that further describes the non-structural term.
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`2.
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`Therefore in accordance with MPEP §2181 l. the Examiner concludes that
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`“determining part that determines if a service can be utilized by the electronic
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`information terminal based on the position information, the condition information and the
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`stored information
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`wherein the stored information indicates at least one of: whether
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`the display is capable of color display; and whether the electronic information terminal
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`has audio output means” meets invocation Prong (A) as set forth in MPEP §2181. l.
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`Prong (B)
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`aa.
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`In accordance with MPEP §2181 |., the Examiner concludes that NSP #1
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`meets Invocation Prong (B) because the phrase recites the function of “determines if a
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`service can be utilized by the electronic information terminal based on the position
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`information, the condition information and the stored information
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`wherein the stored
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`information indicates at least one of: whether the display is capable of color display; and
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`whether the electronic information terminal has audio output means.” Because nothing
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`in the written description suggests otherwise, this function will have its ordinary and
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`plain meaning.
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`Prong (C2
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`bb.
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`In accordance with MPEP §2181 |., NSP #1 meets Invocation Prong (C)
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`because the claim does not recite sufficient structure for performing the entire function
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`Application Number: 10/486,377
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`Page 19 - 20140