Benjamin Hill

Patent Trials and Appeals BoardJun 11, 2021

2021000332 (P.T.A.B. Jun. 11, 2021)

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. 14/015,218 08/30/2013 Benjamin R. Hill HILL-102 9771 116025 7590 06/11/2021 Robert Klinger, Esq. C/o Culhane Meadows PLLC 2591 Dallas Parkway Suite 300 Frisco, TX 75034 EXAMINER WHITAKER, JONATHAN J ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 06/11/2021 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): eOfficeAction@AppColl.com patentdocket@cm.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BENJAMIN R. HILL ___________ Appeal 2021-000332 Application 14/015,218 Technology Center 3600 ____________ Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and ERIC B. CHEN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CHEN. Opinion Dissenting filed by Administrative Patent Judge BAUMEISTER. CHEN, 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, 3–9, 11–13, 15–22, 24, and 25. (Appeal Br. 3.) Claims 2, 10, 14, and 23 have been cancelled. (Id. at 36, 37, 39, 40.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest is the inventor, Benjamin R. Hill. (Appeal Br. 3.) Appeal 2021-000332 Application 14/015,218 2 CLAIMED SUBJECT MATTER The claimed subject matter is directed to advertising on an Internet capable device, in which advertising content is generated during the time between when a program or web page is requested and when it actually loads. (Abstract.) Claim 1, reproduced below, illustrates the claimed subject matter, with minor formatting and disputed limitations in italics: 1. A method for providing announcements during a set up time of a mobile device, the method comprising: receiving data associated with one or more announcements in the mobile device through a communication network; detecting, using a scheduler component in an announcement application, initiation of a function operable on the mobile device, the scheduler component receiving data from another application and an operating system said another application providing the function, in order to determine when the function is initiating; the function being associated with a set up time of the mobile device; a splash screen for the function not being required; the set up time being selected from a time associated with an unlock function of the mobile device, and a time associated with sleeping/hibernating functions of the mobile device; the set up time not including powering on the mobile device, powering off the mobile device; the set up time being a time period between a time point (a first instant) when a function of the mobile device is initiated and another time point (a second instant) when the initiated function is operational; an application generating said function being different from the announcement application; and upon detection, in the mobile device, of the initiation, providing, using rendering components in the mobile device, an Appeal 2021-000332 Application 14/015,218 3 announcement to a user of the mobile device during the set up time; the announcement being rendered for a predetermined duration, the predetermined duration being at most equal to the set up time; the announcement being rendered for a predetermined duration, the predetermined duration being at most equal to the set up time wherein an interaction with the announcement is not required for resumption of the function; the providing the announcement not being restricted only to a time the splash screen is present; wherein the announcement comprises an audio recording. REFERENCES Name Reference Date Gupta US 2012/0005017 A1 Jan. 05, 2012 Kosashvili US 2012/0054022 A1 Mar. 01, 2012 Ricasata US 2014/0019253 A1 Jan. 16, 2014 Grundfast US 2014/0081765 A1 Mar. 20, 2014 REJECTIONS Claims 1, 3–8, 11–13, 15–22, 24, and 25 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ricasata, Kosashvili, and Grundfast. (Non-Final Act. 3–17.) Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ricasata, Kosashvili, Grundfast, and Gupta. (Id. at 17–19.) OPINION Grundfast as Prior Art In rejecting independent claim 1 under 35 U.S.C. § 103, the Examiner cited to paragraph 26 of Grundfast for teaching the limitation “wherein an interaction with the announcement is not required for resumption of the function.” (Non-Final Act. 8; see also Ans. 8–9.) In particular, the Appeal 2021-000332 Application 14/015,218 4 Examiner cited to “step 160”, as described in paragraph 26 of Grundfast. (Ans. 8–9.) The Examiner concluded that Grundfast is available as prior art because “the Grundfast reference application is a Continuation-In-Part Application of and claims priority to parent U.S. Patent Application Ser. No. 12/828,830, filed July 1, 2010, which claims priority to and the benefit of parent U.S. Provisional Patent Application No. 61/309,690, filed Mar. 2, 2010” (Ans. 14–15) and “cited portions of the 2014 Grundfast reference have priority based on being supported by the provisional application 61/309,690 filed on March 2, 2010 . . . and the 2011 Grundfast publication [Application No. 12/828,830] incorporation by reference of this provisional” (id. at 15). Appellant argues “Fig. 8 and paragraphs 23, 33-36 can only claim priority of the filing date of US patent application No. 14/059,313, which is October 21, 2013 and that date is after the priority date of the Appellant’s application.” (Appeal Br. 32; see also Reply Br. 20.) However, even if Appellant is correct with respect to the priority date for the subject matter of Figure 8 and paragraphs 23 and 33–36 of Grundfast, the Examiner also cited to paragraph 26 of Grundfast. Appellant has not presented any arguments or evidence as to why paragraph 26 of Grundfast should not qualify as prior art. Furthermore, paragraph 26 of Grundfast does possess reasonable support, as discussed below. Effective Filing Dates Appellant’s present application was filed on August 30, 2013. This application claims the benefit of provisional Application No. 61/695,014, filed on August 30, 2012. (Spec. ¶ 1.) Appeal 2021-000332 Application 14/015,218 5 Grundfast, based upon Application No. 14/059,313, was filed on October 21, 2013, which is a continuation-in-part (CIP) of Application No. 12/828,830 (now US 8,566,817 B2), filed July 1, 2010, which claims priority to provisional Application No. 61/309,690, filed on March 2, 2010. Thus, Grundfast was filed after the filing date of the present application. However, the earliest effective filing date of Grundfast is before the filing date of the present application, as well as the filing date of the present application’s underlying provisional application. Written Description Support for Claimed Subject Matter The Federal Circuit has held, “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, [first paragraph].” Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). Moreover, the Federal Circuit has held that such requirement for a provisional application to be in compliance with 35 U.S.C. 112, first paragraph, also applies to published PCT applications. See Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017). With respect to continuation-in-part applications, the Federal Circuit had held the following: Claims containing any matter introduced in the CIP are accorded the filing date of the CIP application. However, matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994). Appeal 2021-000332 Application 14/015,218 6 Grundfast Independent claim 1 of Grundfast recites the following: 1. A method for displaying advertisement content on an internet capable device, comprising the steps of: providing an option to a user to initiate a process on the internet capable device; receiving input from the user to initiate the process on the internet capable device; loading the process on the internet capable device, wherein the loading includes a loading time delay; displaying a quantity of advertisement content on a screen of the internet capable device during the loading time delay; determining that the loading time delay has concluded; and redirecting the user to the process upon completion of the loading time delay. (Claim 1.) Paragraph 26 of Grundfast discloses the following: FIG. 1 illustrates a block diagram of a preferred embodiment of the instant invention 10 for a system and method of advertising for use on internet and/or digital networking capable devices. In this embodiment, a method for receiving multimedia/advertisement on an internet and/or digital networking capable device (“IDNCD”) is shown, wherein a selection and/or flagging of displayed multimedia and/or advertisement by either the system or an individual user is recorded. At step 100 an individual user of the system initiates the process by interacting with an IDNCD. At step 110, the user initiates a process on the IDNCD, wherein the process includes a loading or scheduled time delay. . . . In conjunction with the user initiating the loading process at step 110 and the background being displayed at step 120, a quantity of multimedia/advertisement content is disposed to load on the IDNCD at step 130 during a predetermined time Appeal 2021-000332 Application 14/015,218 7 period for the loading of the application. . . . Conversely, if the user of the IDNCD makes a decision not to select and/or flag any of the multimedia/advertisement content, then the user is ultimately redirected to the completed process which was previously initiated by the user at step 160. (¶ 26 (emphases added).) Thus, because paragraph 26 of Grundfast discloses (i) at step 100, “an individual user of the system initiates the process by interacting with an IDNCD,” Grundfast provides written description support for the limitations “providing an option to a user to initiate a process on the internet capable device” and “receiving input from the user to initiate the process on the internet capable device.” Because Grundfast discloses (ii) at step 110, “the user initiates a process on the IDNCD, wherein the process includes a loading or scheduled time delay,” Grundfast provides written description support for the limitation “loading the process on the internet capable device, wherein the loading includes a loading time delay.” Because Grundfast discloses (iii) at step 130, “a quantity of multimedia/advertisement content is disposed to load on the IDNCD . . . during a predetermined time period for the loading of the application,” Grundfast provides written description support for the limitations “loading the process on the internet capable device, wherein the loading includes a loading time delay” and “determining that the loading time delay has concluded.” Last, because Grundfast discloses (iv) at step 160, “if the user of the IDNCD makes a decision not to select and/or flag any of the multimedia/advertisement content, then the user is ultimately redirected to the completed process,” paragraph 26 of Grundfast provides adequate written description support for the subject matter recited in independent claim 1. Appeal 2021-000332 Application 14/015,218 8 Accordingly, paragraph 26 of Grundfast describes a claimed embodiment and fully supports independent claim 1, in compliance with 35 U.S.C. § 112, first paragraph. Parent Application of Grundfast Page 12, line 5 to page 13, line 21 of Application No. 12/828,830, the parent application of Grundfast, discloses nearly identical language as paragraph 26 of Grundfast. Accordingly, independent claim 1 of Grundfast is fully supported by the parent application of Grundfast, in compliance with 35 U.S.C. § 112, first paragraph. Moreover, because independent claim 1 of Grundfast, a CIP application, is fully supported by the parent application, the subject matter of claim 1 is entitled to the filing date of the parent application. Provisional Application for the Parent Application of Grundfast Application No. 61/309,690, the provisional for the parent application of Grundfast, discloses the following: In the step of providing 4, the device or program responds to the user’s input by taking any necessary actions to fulfill the request. This may include initiating a loading sequence that transfers data from one source to another. For example, on a web or internet capable mobile device, the user may choose or be required to load a program, function, or website that requires a transfer of data to that device from any other digital medium such as a remote server. (¶ 7 (emphasis added).) The next step of loading 5 describes the transfer of data, information, images, or any other digital language to the mobile device or program. This transfer of data occurs in response to the actions requested by the user, device, or program. The requested action may also require the device or program to access information contained on another digital medium with rate of transfer that causes a delay in completing the action. Appeal 2021-000332 Application 14/015,218 9 (¶ 8 (emphasis added).) In the advertising/posting 7 step, a form of audible, visual, and/or digital media or transmittal occupies the loading space. Instead of a simple message such as “loading,” or a blank screen, the mobile device or program will display or transmit information such as advertisements, through any means available to that device or its agents. The information or advertisement will display or transmit during the loading process and is meant to stop transmitting or displaying when the loading process has completed. (¶ 10 (emphasis added).) The mobile devices operating system needs to be modified so that when an end-user launches a program or process with a loading sequence, the program loads in the background while an advertisement from the cache is displayed. The end-user has the option to click on, indicate interest or select the advertisement. When the end-user selects an advertisement, the advertisement is saved on the web or internet capable mobile device and the program initially launched by the end-user is displayed. If the end-user does not select the advertisement after it has been displayed for a preset amount of time, the web or internet capable mobile device displays the program initial launched by the end-user. (¶ 34 (emphasis added).) Thus, because the provisional application discloses, (i) “on a web or internet capable mobile device, the user may choose or be required to load a program, function, or website that requires a transfer of data to that device from any other digital medium such as a remote server” (¶ 7), the provisional application provides written description support for the limitations “providing an option to a user to initiate a process on the internet capable device” and “receiving input from the user to initiate the process on the internet capable device.” Because the provisional application discloses, (ii) “[t]he requested action may also require the device or program to access Appeal 2021-000332 Application 14/015,218 10 information contained on another digital medium with rate of transfer that causes a delay in completing the action” (¶ 8), the provisional application provides written description support for the limitation “loading the process on the internet capable device, wherein the loading includes a loading time delay.” Because the provisional application discloses, (iii) “[t]he . . . advertisement will display or transmit during the loading process and is meant to stop transmitting or displaying when the loading process has completed,” the provisional application provides adequate written description support for the limitations “displaying a quantity of advertisement content on a screen of the internet capable device during the loading time delay,” and “determining that the loading time delay has concluded.” Last, because the provisional application discloses, (iv) “[i]f the end-user does not select the advertisement after it has been displayed for a preset amount of time, the web or internet capable mobile device displays the program initial launched by the end-user,” the provisional application provides adequate written description support for the limitation “redirecting the user to the process upon completion of the loading time delay,” as recited in independent claim 1 of Grundfast, the CIP application. Because the disclosures of parent Application No. 12/828,830 and its underlying provisional Application No. 61/309,690 support independent claim 1 of Grundfast under 35 U.S.C. § 112, first paragraph, the effective filing date of the subject matter of claim 1 is the filing date provisional Application No. 61/309,690, March 2, 2010. As such, paragraph 26 of Grundfast qualifies as prior art under because its effective filing date, March 2, 2010 is before the filing date of the present application, August 30, Appeal 2021-000332 Application 14/015,218 11 2013, and the filing date of its underlying provisional application, August 30, 2012. Thus, we agree with the Examiner’s conclusion that Grundfast qualifies as prior art. § 103 Rejection— Ricasata, Kosashvili, and Grundfast First, we are unpersuaded by Appellant’s arguments (Appeal Br. 19; see also Reply Br. 9) that the combination of Ricasata, Kosashvili, and Grundfast would not have rendered obvious independent claim 1, which includes the limitation “the scheduler component receiving data from another application and an operating system.” The Examiner found that Figure 2 of Kosashvili, which illustrates scheduler 206 and detection module 202 communicating with mobile device 102, corresponds to the limitation “the scheduler component receiving data from said function and an operating system.” (Non-Final Act. 4; see also Ans. 7.) In particular, the Examiner found that detection module 202 and Figure 2 of Kosashvili as “disclosing a client application with scheduler component that receives data from the operating system of a mobile device through the interception of all device activities of new activated actions/functions of the mobile device.” (Ans. 8.) Moreover, the Examiner found that “[d]evice activities of a mobile device are functional due to the operating system of the mobile device” and “[f]or each new activated function, the application selection module chooses the proper information object (i.e. announcement/advertisement) according to input of client application scheduler component for timing the commercial information.” (Id. at 7.) We agree with the Examiner’s findings. Appeal 2021-000332 Application 14/015,218 12 Figure 2 of Kosashvili illustrates a block diagram of client application, including: detection module 202 [that] intercepts all device activities for identifying new activated actions/function of the mobile device such as new phone call, sending a new message (SMS or mails) incoming/outgoing calls, during reading or writing SMS messages, navigating through menu, during editing, adding or searching for a contact, displaying pictures, playing games, running third side applications, etc. (¶ 40.) Moreover, Kosashvili explains that mobile device 102 can be a “cellular phone, PDA or tablet computer.” (¶ 39.) Because detection module 202 intercepts all device activities for mobile device 102, Kosashvili teaches the limitation “the scheduler component receiving data from said function and an operating system.” In particular, because mobile device 102 can be a tablet computer or a cellular phone, one of ordinary skill in the art would recognize such mobile device 102 as having an “operating system” that provides data to the “scheduler component.”2 Appellant argues that “[a] search of Kosashvili indicates that Kosashvili makes no reference to the operating system.” (Appeal Br. 19.) Similarly, Appellant argues that “the statement in paragraph 40 in 2 One technical dictionary defines “operating system” as “[t]he software that controls the allocation and usage of hardware resources such as memory, central processing unit (CPU) time, disk space, and peripheral devices” and “is the foundation software on which applications depend.” MICROSOFT® COMPUTER DICTIONARY 378 (5th ed. 2002). For example, one of ordinary skill in the art would recognize that that claimed “scheduler component” would use the CPU time provided by the operating system of the mobile device. Moreover, in the “Related Art” section, Ricasata explains that smart phones include operating systems. (¶ 5.) Appeal 2021-000332 Application 14/015,218 13 Kosashvili, ‘The detection module 202 intercepts all device activities for identifying new activated actions/function of the mobile device,’ does not teach or suggest detecting, using a scheduler component in an announcement application initiation of a function operable on the mobile device.” (Reply Br. 9.) In particular, Appellant argues that “a program that keeps track of the device drivers would suffice and that program should be doable without communicating with the operating system (programs, such as Kiwi Application Monitor and Bill2’s Process Manager, can detect and follow activated functions without communicating with the operating system),” with an Internet citation.3 (Appeal Br. 19 (emphases omitted).) However, even assuming that such Internet citation is a reliable source of information, Appellant’s arguments are insufficient to rebut the Examiner’s prima facie case of obviousness, because Appellant’s evidence is silent with respect to an operating system, much less “a program that keeps track of the device drivers . . . without communicating with the operating system.” Thus, we agree with the Examiner that the combination of Ricasata, Kosashvili, and Grundfast would have rendered obvious independent claim 1, which includes the limitation “the scheduler component receiving data from said function and an operating system.” Second, we are unpersuaded by Appellant’s arguments (Appeal Br. 23) that the combination of Ricasata, Kosashvili, and Grundfast would not have rendered obvious independent claim 1, which includes the limitation “an application generating said function being different from the announcement application.” 3 https://www.raymond.cc/blog/monitor-processes-that-you-want-with- kiwi-application-monitor/. Appeal 2021-000332 Application 14/015,218 14 The Examiner found that client application of Kosashvili, which is for activating the presentation platform and managing the commercial information objects, corresponds to the limitation “an application generating said function being different from the announcement application.” (Non- Final Act. 4; see also Ans. 5.) We agree with the Examiner’s findings. Figure 1 of Kosashvili illustrates mobile device 102 in communication with central server 104. (¶ 39.) In particular, Kosashvili explains, [t]he mobile device [102] includes a client application for activating the presentation platform and managing the commercial information objects, the application is operatively working in association with a server application which provides campaign management platform enabling the distribution of the commercial information to plurality of mobile device through the wireless network. (Id.) Because Kosashvili explains mobile device 102, having a client application, works with a separate server application, which provides distribution of commercial information, Kosashvili teaches the limitation “an application generating said function being different from the announcement application.” Appellant argues the following: Ricasata does not teach or suggest . . . an application generating said function being different from the announcement application. If a program that performs a function associated with a setup time also uses a splash screen, the program initiates the function and then provides the splash screen. Ricasata teaches providing an announcement once the splash screen is present. (Appeal Br. 23.) However, the Examiner cited to the client application of Kosashvili, rather than Ricasata, for teaching the limitation “an application generating Appeal 2021-000332 Application 14/015,218 15 said function being different from the announcement application.” (Non- Final Act. 4.) Again, the rejection of claim 1 is based on the combination of Ricasata, Kosashvili, and Grundfast, and Appellant cannot show non- obviousness by attacking references individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Thus, we agree with the Examiner that the combination of Ricasata, Kosashvili, and Grundfast would have rendered obvious independent claim 1, which includes the limitation “an application generating said function being different from the announcement application.” Last, we are unpersuaded by Appellant’s arguments (Appeal Br. 25– 27; see also Reply Br. 14) that the combination of Ricasata, Kosashvili, and Grundfast would not have rendered obvious independent claim 1, which includes the limitation “wherein an interaction with the announcement is not required for resumption of the function.” The Examiner found that the internet and/or digital networking capable device (IDNCD) of Grundfast, in which the user does not select an advertisement after being displayed on such device, corresponds to the limitation, “wherein an interaction with the announcement is not required for resumption of the function.” (Non-Final Act. 5; see also Ans. 8–9.) We agree with the Examiner’s findings. Grundfast explains, “[a]dvertisers will be able to display content and/or media on the screen of the device during the time between when a program or web page is requested and when it actually loads.” (¶ 9.) As illustrated in Figure 1 of Grundfast, “[a]t step 110, the user initiates a process on the IDNCD, wherein the process includes a loading or scheduled time delay.” (¶ 26.) Moreover, Grundfast explains that at step 160 “if the Appeal 2021-000332 Application 14/015,218 16 user of the IDNCD makes a decision not to select and/or flag any of the multimedia/advertisement content, then the user is ultimately redirected to the completed process.” (Id.) Because Grundfast explains that if the user does not select the multimedia/advertisement, the user is ultimately returned to the content program or web page, Grundfast teaches the limitation, “wherein an interaction with the announcement is not required for resumption of the function.” Appellant argues that [a]ccording to the ordinary meaning [of ‘decision’ from step 160 of Grundfast] based on the dictionary definitions, if the user of the IDNCD makes a decision not to select and/or flag any of the multimedia/advertisement content, the user must act and an interaction with the announcement is required for resumption of the function. (Appeal Br. 25; see also Reply Br. 14) and thus, “neither Ricasata nor Kosashvil nor Grundfast teach or suggest ‘wherein an interaction with the announcement is not required for resumption of the function’” (Appeal Br. 27). However, Appellant’s arguments are not commensurate in scope with claim 1, because the claim does not exclude all user action. The limitation “wherein an interaction with the announcement is not required for resumption of the function” is broad enough to encompass step 160 of Grundfast, in which the user does not select the multimedia or advertisement content. Thus, we agree with the Examiner that the combination of Ricasata, Kosashvili, and Grundfast would have rendered obvious independent claim 1, which includes the limitation “wherein an interaction with the announcement is not required for resumption of the function.” Appeal 2021-000332 Application 14/015,218 17 Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103. Claims 3–8, 11, and 12 depend from claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 3–8, 11, and 12 under 35 U.S.C. § 103, for the same reasons discussed with respect to independent claim 1. Independent claims 13 and 25 recites limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 13 and 25, as well as dependent claims 15–22 and 24 for the same reasons discussed with respect to claim 1. § 103 Rejection—Ricasata, Kosashvili, Grundfast, and Gupta Although Appellant nominally argues the rejection of dependent claim 9 separately (Appeal Br. 28), the arguments presented do not explain why the limitations of this dependent claim are separately patentable. Instead, Appellant argues that “neither Ricasata nor Kosashvil nor Grundfast teach or suggest ‘wherein an interaction with the announcement is not required for resumption of the function’” and “neither Ricasata nor Kosashvil nor Grundfast teach or suggest a scheduler component receiving data from said function and an operating system.” (Id. (emphasis omitted).) We are not persuaded by these arguments for the reasons discussed with respect to independent claim 1, from which claim 9 depends. Accordingly, we sustain this rejection. CONCLUSION The Examiner’s decision rejecting claims 1, 3–9, 11–13, 15–22, 24, and 25 under 35 U.S.C. § 103 is affirmed. Appeal 2021-000332 Application 14/015,218 18 DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–8, 11– 13, 15–22, 24, 25 103 Ricasata, Kosashvili, Grundfast 1, 3–8, 11– 13, 15–22, 24, 25 9 103 Ricasata, Kosashvili, Grundfast, Gupta 9 Overall Outcome 1, 3–9, 11– 13, 15–22, 24, 25 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). AFFIRMED Appeal 2021-000332 Application 14/015,218 19 BAUMEISTER, Administrative Patent Judge, dissenting. For reasons that are similar to the reasons I set forth in my dissent of related appeal 2020-003857, Appellant persuades me (Appeal Br. 19) that the Examiner has not established a prima facie showing of obviousness. See Ex parte Hill, 2020-003857 (PTAB Apr. 27, 2021) (Baumeister dissenting). That is, the Examiner, at best, provides evidence that Kosashvili receives data from the function application. Non-Final Act. 4 (citing Kosashvili 39, 40; Fig. 2). The Examiner provides insufficient evidence, though, that Kosashvili additionally teaches or reasonably suggests that the scheduler component receives data specifically from an operating system, as claimed. See id. The Examiner relies on Kosashvili’s paragraphs 39 and 40 and Figure 2, as well, for teaching this latter portion of the disputed limitation. Non-Final Act. 4; Ans. 7–8. But these cited portions of Kosashvili do not reasonably teach or suggest that the scheduler component receives data specifically from an operating system. Kosashvili merely discloses, “[t]he detection module 202 intercepts all device activities for identifying new activated actions/function of the mobile device . . . . For each activated function, the module verifies authorization to change the display layout design according to user authorization preferences.” Kosashvili ¶ 40 (emphasis added). To be sure, it might be theoretically possible for Kosashvili’s detection module to receive data from an operating system. But without additional facts, such a conclusion merely constitutes unsupported surmise. And “[a] rejection based on section 103 clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Appeal 2021-000332 Application 14/015,218 20 Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. The Majority appears to interpret the claim language more broadly so as to merely require that a mobile device possess an operating system. See, e.g., Majority Opinion 13, n2 (“Moreover, . . . Ricasata explains that smart phones include operating systems.”). But the claims require more than merely possessing an operating system that allows a scheduler component to receive data from various other computer components. Independent claim 1 specifically requires that the scheduler component receive data from the operating system, itself, as well as from “another application.” Appeal Br. 35. For these reasons, I would reverse the obviousness rejections on appeal.