Apple Inc.

Patent Trials and Appeals Board

Jan 4, 2022

2022000804 (P.T.A.B. Jan. 4, 2022)

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. 16/181,205 11/05/2018 Jeremiah D. Shaw P20003USC1/063266-7584- US 2726 61725 7590 01/04/2022 Morgan, Lewis & Bockius LLP (PA)(Apple) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER LEE, JUSTIN S ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 01/04/2022 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEREMIAH D. SHAW, CHANAKA G. KARUNAMUNI, STEPHEN O. LEMAY, MARTIN O. PEDRICK, MARCEL VAN OS, and IMRAN CHAUDHRI Appeal 2022-000804 Application 16/181,205 Technology Center 2100 Before JOSEPH L. DIXON, LARRY J. HUME, and JAMES W. DEJMEK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 5-13, 15-18, 20, and 21. Claims 3, 4, 14, 19, and 22 are objected to by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2020). Appellant identifies the real party in interest as Apple Inc. Appeal Br. 3. Appeal 2022-000804 Application 16/181,205 2 CLAIMED SUBJECT MATTER The claims are directed to device, method, and graphical user interface for sharing content from a respective application. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: at an electronic device with a display and one or more input devices: displaying, on the display, an application user interface for a first application that includes sharing affordance that is associated with sharing respective content from the first application; while displaying the application user interface for the first application on the display, detecting, via the one or more input devices, a first input that corresponds to selection of the sharing affordance; in response to detecting the first input, displaying, on the display, a sharing interface that includes: a first predefined region including one or more user affordances corresponding to one or more users that satisfy proximity criteria to the electronic device; and a second predefined region separate from the first predefined region, the second predefined region including a plurality of protocol affordances corresponding to a plurality of other applications on the electronic device that are distinct from the first application, wherein the plurality of other applications are available for sharing the respective content from the first application. Appeal 2022-000804 Application 16/181,205 3 REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Forutanpour et al. US 2011/0083111 A1 Apr. 7, 2011 Pereira et al. US 2011/0117898 A1 May 19, 2011 Hong et al. US 2013/0054826 A1 Feb. 28, 2013 Nosou et al. US 2013/0219342 A1 Aug. 22, 2013 Repka US 8,634,861 B2 Jan. 21, 2014 D’Ambrosio US 2014/0030980 A1 Jan. 30, 2014 REJECTIONS Claims 1, 2, 7-12, 16, 17, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Pereira in view of Nosou and further in view of Forutanpour. Claims 13 and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Pereira in view of Nosou in view of Forutanpour and further in view of Repka. Claims 5, 15, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Pereira in view of Nosou in view of Forutanpour, and further in view of Hong. Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pereira in view of Nosou in view of Forutanpour, and further in view of D’Ambrosio. Appeal 2022-000804 Application 16/181,205 4 OPINION 35 U.S.C. § 103 Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In reviewing the record here, we are not persuaded that the Examiner’s rejection is based on improper hindsight because Appellant does not point to any evidence of record that shows combining the teachings of the cited references in the manner suggested by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We Appeal 2022-000804 Application 16/181,205 5 have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We note claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims are to be given their broadest reasonable interpretations[,] . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). “It is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citations omitted). We find that the Examiner has addressed all the issues involved in this appeal, particularly in light of the fact that Appellant has failed to specifically identify errors in the Examiner’s rejection. Accordingly, we adopt the Examiner’s factual findings, reasoning, and conclusions as our own. See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994). With respect to independent claims 1, 11, and 16, Appellant does not set forth separate arguments for patentability. Appeal Br. 5. As a result, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv) and group independent claims and select independent claim 1 as the representative claim for the group and will address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made Appeal 2022-000804 Application 16/181,205 6 but did not make in the Brief are deemed to be waived/forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). With regard to independent claim 1, we agree with the Examiner and find Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. Appellant argues that Pereira, in view of Nosou, in further view of Forutanpour, does not teach or suggest a sharing interface that includes both “a first predefined region including one or more user affordances corresponding to one or more users that satisfy proximity criteria to the electronic device” and “a second predefined region . . . including a plurality of protocol affordances corresponding to a plurality of other applications” as required by claim 1. Appeal Br. 11-12 (emphasis omitted). Appellant further argues that “[a] first reference that teaches only one of the two predefined regions of the sharing interface of claim 1, and a second reference that teaches only the other of the two predefined regions of the sharing interface, cannot be combined, absent hindsight,” and “the cited references cannot be logically combined to arrive at the claimed invention.” Appeal Br. 13. We disagree with Appellant and find that the primary Pereira reference discloses plural areas and functionality in the areas, but lacks the two predefined regions, but the Examiner has relied upon the Nosou reference to teach or suggest the two predefined regions in Figure 6A, but the Nosou reference does not specifically disclose the use of proximity, which the Examiner has relied upon the teachings of the Forutanpour reference for this feature. The Examiner has explained what specific teachings are relied upon for the specific references and how the skilled Appeal 2022-000804 Application 16/181,205 7 artisan would have appreciated the combination of teachings. Ans. 4-6. As a result, we find Appellant’s general argument to be unpersuasive. Appellant also argues that the Examiner cannot simply read out the limitations of claim 1 in order to render Nosou more applicable to the pending claims. Appeal Br. 14. Appellant argues that there is no logical basis to combine the Nosou and Forutanpour references. Appeal Br. 14. Appellant argues that the list of users in Nosou and the “radar map image” in Forutanpour reflect fundamentally different methods of operation. Appeal Br. 14. Appellant further argues that neither Nosou nor Forutanpour teaches a display of a sharing interface that includes both predefined regions recited in claim 1, and there is no logical basis to combine Nosou and Forutanpour. Appeal Br. 14-15; Reply Br. 5-6. Appellant argues that the Final Office Action does not explain how the two methods of operation of the Nosou and Forutanpour are compatible. Appeal Br. 16. Appellant contends that the Final Office Action does not establish how the teaching in Forutanpour, that the radar map can include a “nearby computing device [that] is not included in the contact database,” can be applied to Nosou, which teaches “indicating a list of contact objects, based on the list of contact objects[, of which contact information 22 is registered,] acquired by the acquiring module 31” without fundamentally altering the method of operation in Nosou. Appeal Br. 16; see generally Reply Br. 5-6. Appellant also contends that applying the teachings of the Forutanpour reference to the Nosou reference would be counterintuitive, as it does not result in any improvement to the teachings of Nosou. Appeal Appeal 2022-000804 Application 16/181,205 8 Br. 16; see generally Reply Br. 6-7. Appellant contends that because the ability for the displayed applications in the Nosou reference to communicate with other users is not affected by proximity, it would be counterintuitive to apply Forutanpour to limit the set of displayed users in the Nosou user interface (e.g., first screen 41 in Nosou Figures 4B and 6B), as suggested by the Final Office Action. Appeal Br. 16. Appellant also contends that there is no teaching or suggestion in the Nosou reference that limiting the list of contacts to those in close proximity would be beneficial, and limiting the list of contacts to those in close proximity would actually reduce the functionality of Nosou without any discernable, counterbalancing benefit. Appeal Br. 17; Reply Br. 5 - 6. Appellant contends that applying the teachings of Forutanpour to Nosou would be unproductive because it would unduly limit the applications in Nosou and e-mail is not a protocol that depends on, or derives benefit from, proximity to the recipient. Appeal Br. 17; see generally Reply Br. 6- 7. Appellant further argues that the other applications shown in Nosou (SNS, telephone, SMS, and videophone, in Nosou Figures 4A, 6B, and 6C) are similarly unaffected by proximity to the recipient. Appeal Br. 17. We disagree with Appellant because Appellant is arguing the references individually, and we further note that the Pereira reference discloses the use of Bluetooth as one of communication modalities in in paragraphs 13, 21, 27. Moreover, the Examiner does not rely upon the teachings of the Nosou reference for the proximity communication modality, but the Examiner relies upon the Nosou reference for the graphical user interface and two predefined regions. Although the Pereira reference Appeal 2022-000804 Application 16/181,205 9 discloses the use of two regions they are not “predefined” regions on the screen at the same time. We further note that the Forutanpour reference expressly states that it is not limited to RF communications at paragraphs 83, 85 and that it other modes of communication, such as Bluetooth may be used (which is not shown in the figures; see ¶¶ 4, 66, 72, 79, 81, 83, 87, 127, 128, 150). Appellant also argues that neither Nosou nor Forutanpour teach or suggest displaying a user “with a markup” as suggested by the Advisory Action. It is submitted that the benefit highlighted by the Advisory Action is instead a product of hindsight reasoning, to justify the combination of Nosou and Forutanpour. Appeal Br. 17. “We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). [A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical- . . . there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Appeal 2022-000804 Application 16/181,205 10 Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). “[T]he Board need only establish motivation to combine by a preponderance of the evidence to make its prima facie case.” In re Kahn, 441 F. 3d 977, 989 (Fed. Cir. 2006). We disagree with Appellant and find that Appellant is arguing the individual references rather than the combination as applied by the Examiner and where the Nosou and Forutanpour references in combination with the Pereira reference that discloses multiple modalities of communication including Bluetooth, the skilled artisan would recognize that that each may be separately selected and implemented with the graphical user interface. We further note that Figures 17A-19B of the Nosou reference teach or suggest a darker border (highlighting) around pictures that are selected or of significance in the communication modality. Nosou ¶¶ 154-165. In reviewing the record here, we are not persuaded that the Examiner’s rejection is based on improper hindsight because Appellant does not point to any evidence of record that shows combining the teachings of the three cited references in the manner suggested by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at 418). In response to Appellant’s argument that the Examiner relies on improper hindsight reconstruction, the Examiner clarifies the findings relied upon for the teachings of the claimed invention and provides rational underpinnings for the combination of the teachings from the two prior art references. Ans. 13-14. Appeal 2022-000804 Application 16/181,205 11 Appellant generally argues that the Examiner’s proposal to combine the teachings of the Nosou and Forutanpour references is counterintuitive, and the Examiner provides no logical basis to combine the two references and can only be the result of improper hindsight. Reply Br. 6-7. We further note the Examiner has relied upon the broadest reasonable interpretation of the language of independent claim 1. We note that the language of independent claim 1 merely recites “one or more user affordances corresponding to one or more users” and merely a single user affordance corresponding to a single user is a sufficient to meet the language of independent claim 1. As a result, we find Appellant’s general argument to be unpersuasive of error in the Examiner’s factual findings or ultimate conclusion of obviousness. In the Reply Brief, Appellant presents similar arguments as presented in the Appeal Brief, and Appellant contends that the Examiner has not rebutted Appellant’s arguments. Reply Br. 3-7. Appellant contends that the Nosou and Forutanpour references have fundamentally different methods of operation. Reply Br. 5. We disagree with Appellant and find that the Nosou and Forutanpour references merely disclose the use of two different graphical user interfaces for file sharing, which are not fundamentally different methods of operation. With respect to the piecemeal analysis and arguing the references individually, Appellant contends that Appellant’s approach does not attack the references individually, but rather points out that the combination of references does not teach at least both of the claimed predefined regions of claim 1. Reply Br. 3. Appellant further argues that the Examiner has not rebutted Appellant’s arguments regarding the Advisory Action. Reply Br. 4. Appeal 2022-000804 Application 16/181,205 12 Appellant also argues that the Examiner broadens the claim language because the predefined regions do not includes “one or more user affordances corresponding to one or more users that satisfy proximity criteria to the electronic device.” Although we agree with Appellant that the Examiner stated that the combination of Pereira with Nosou does not teach the use of use of the proximity criteria, we find that the combination of Pereira with Nosou would teach or suggest the use of the proximity criteria, as discussed above, but the Pereira reference does not illustrate the use of Bluetooth technology in detail in the figures. As a result, the Examiner relies upon the teachings of the Forutanpour reference to provide further details of the use of proximity and Bluetooth communications. Appellant argues that claim 1 specifically defines that the first predefined region includes “one or more user affordances corresponding to one or more users that satisfy proximity criteria to the electronic device.” Reply Br. 5. We agree with the Examiner regarding the express language of the claim, and we find that the Examiner has not inappropriately broadened the claim language. We find the Examiner has explained the line of reasoning and the reliance upon the prior art teachings that teach or suggest the claimed invention in the manner that the Examiner applied the references in the grounds of the rejection. Appellant does not respond to the line of reasoning as applied by Examiner. Viewing the totality of the prior art teachings, we agree with the Examiner that the combination of the Pereira-Nosou-Forutanpour references teaches or fairly suggests the claimed invention of “two predefined regions Appeal 2022-000804 Application 16/181,205 13 includes one or more user affordances corresponding to one or more users that satisfy proximity criteria to the electronic device.” We disagree with Appellant and find that Appellant’s arguments address the claimed invention in a piecemeal or individual manner rather than the combination of teachings as explained and applied by the Examiner in the grounds of the rejection. Furthermore, Appellant’s arguments amount to a piecemeal attack on the Forutanpour and Nosou references, despite the Examiner relying on the combined teachings of these references with the Pereira reference. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). The Pereira reference is relied upon by the Examiner to teach a majority of the claimed functionalities for file sharing (selection of content and the selection of recipients for content), but the graphical user interface in the Pereira reference does not have two predefined regions on the display at the same time. (We additionally note that the Pereira reference does disclose the use of a Bluetooth system in paragraphs 13, 21, 27 as one of the communication options, but it is not shown the figures.) As a result, the Pereira reference teaches or suggests the claimed functionalities for file sharing (without the specific detailed discussion of the use of proximity/Bluetooth as applied by the Examiner), but the Pereira reference specifically discloses the use of other modalities of communication for sharing respective content. Moreover, the Examiner’s rejection is based upon the Pereira reference as the primary reference and modifying this reference with the additional teachings and suggestions of the Forutanpour Appeal 2022-000804 Application 16/181,205 14 and Nosou references as applied by the Examiner in the grounds of rejection. Appellant’s arguments attack the secondary references proffering that the specific teachings cannot be combined together because the Nosou reference is not concerned with proximity. Rather, we note that the Pereira reference specifically discloses an interest in many types of modalities of communication including the use of Bluetooth. Consequently, we agree with the Examiner that skilled artisans would have been motivated to implement the specific teachings of proximity as disclosed in the Forutanpour reference and would have been further motivated to implement the predefined screen regions of the Nosou reference with regards the modalities of communication and the recipients as disclosed by the Nosou reference. We further agree with the Examiner that Appellant is arguing the references individually, and Appellant’s arguments do not show error in the Examiner’s underlying factual findings or the Examiner’s ultimate conclusion of obviousness of based upon the prior art teachings as applied by the Examiner in the grounds of rejection in the Final Office Action and as further explained in the Examiner’s Answer. Additionally, we note that the Examiner’s proffered modification of the Pereira reference modifies the two non-static or non-predefined regions on the screen for file sharing to use of the two predefined regions as disclosed by the Nosou reference. Because the Pereira reference discloses the use of Bluetooth as a communication modality, but Figure 3 of the Pereira reference does not expressly include Bluetooth as one of the communication modalities, the Examiner relied upon the Forutanpour reference to further detail the use of Bluetooth communication. Appellant Appeal 2022-000804 Application 16/181,205 15 attempts to distinguish the display interface of the Forutanpour reference, but the Examiner did not rely upon the Forutanpour reference for the display interface. Consequently, Appellant’s arguments are not commensurate with the rejection as applied by the Examiner, and the Appellant is attempting to argue a bodily incorporation of each of the references rather than in the rejection as applied by the Examiner. As a result, Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1 and independent claims 11 and 16 not separately argued and dependent claims 2, 5-10, 12, 13, 15, 17, 18, 20, and 21. CONCLUSION We sustain the Examiner’s obviousness rejections of claims 1, 2, 5- 13, 15-18, 20, and 21. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7-12, 16, 17, 21 103 Pereira, Nosou, Forutanpour 1, 2, 7-12, 16, 17, 21 13, 18 103 Pereira, Nosou, Forutanpour, Repka 13, 18 5, 15, 20 103 Pereira, Nosou, Forutanpour, Hong 5, 15, 20 6 103 Pereira, Nosou, Forutanpour, D’Ambrosio 6 Overall Outcome 1, 2, 5-13, 15-18, 20, 21 Appeal 2022-000804 Application 16/181,205 16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED