Conversant Wireless Licensing S.a r.l.Download PDFPatent Trials and Appeals BoardApr 1, 20212020000055 (P.T.A.B. Apr. 1, 2021) Copy Citation 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. 15/785,645 10/17/2017 Mathieu Kennedy Martyn 67692-US-CON3 1076 100809 7590 04/01/2021 Conversant Wireless Licensing Ltd. 5830 Granite Parkway #100-247 Suite 247 Plano, TX 75024 EXAMINER VU, THANH T ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 04/01/2021 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): ipadmin-core@conversant-wireless.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MATHIEU KENNEDY MARTYN ____________________ Appeal 2020-000055 Application 15/785,645 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and JAMES B. ARPIN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–30, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 This Appeal and related Appeal No. 2020-002557 (U.S. Patent Application No. 15/830,202) are continuations of now abandoned U.S. Patent Application No. 13/860,143, filed on April 10, 2013. These Appeals are directed to the same underlying invention and issues and are decided concurrently. 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Conversant Wireless Licensing S.A.R.L. Appeal Br. 1. Appeal 2020-000055 Application 15/785,645 2 CLAIMED SUBJECT MATTER Claims 1, 3, and 4 are illustrative (emphasis, formatting, and bracketed material added): 1. A mobile telephone comprising a display screen, the mobile telephone being adapted to: [A.] display a plurality of items on the screen, each item corresponding to an application, the plurality of items arranged in a main view from which, responsive to a user input of a first type selecting any of the plurality of items in the main view, the application corresponding to the selected item is opened; and [B.] responsive to a user input of a second type selecting a first item of the plurality of items in the main view, the first item corresponding to a first application: [i.] display on the screen an application summary for the first application, the application summary comprising[:] [a.] a list of at least one function that can be initiated within the first application, [(i).] the list excluding at least one other function that can be initiated within the first application; and [ii.] responsive to a user input selecting a function in the displayed application summary, [a.] open the first application and [b.] initiate the selected function within the first application. 3. The mobile telephone of claim 1, [C.] wherein the user input of the second type selecting the first item comprises a press and hold relating to the first item. Appeal 2020-000055 Application 15/785,645 3 4. The mobile telephone of claim 3, [D.] wherein the user input of the first type selecting an item comprises use of a select function of the mobile telephone relating to the item; and [E.] wherein the user input of the second type selecting the first item comprises a press and hold of the select function of the mobile telephone relating to the first item. RELATED APPEALS & TRIALS Appeal number 2020-002557; U.S. Application S.N. 15/830,202. U.S. Patents 8,434,020 and 8,713,476; IPR2015-01898, IPR2015- 01899, IPR2015-01984, and IPR2015-01985, aff’d sub nom. LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x. 917 (Fed. Cir. 2019). REJECTION The Examiner rejects claim 1–30 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2–3 (Final Office Action, mailed June 11, 2018, “Final Act.”). As to the § 112(a) written description rejection, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not separately argue claims 2, 5–10, 12, 15–20, 22, 25, 27, and 30. To the extent that Appellant discusses claims 3, 4, 11, 13, 14, 21, 23, 24, 26, 28, and 29, Appellant is merely repeating the arguments directed to claim 1. Appeal Br. 15–25. Such a repeated (or referenced) argument is not an argument for “separate patentability.” Thus, Appellant does not present separate arguments for claims 3, 4, 11, 13, 14, 21, 23, 24, 26, 28, and 29. Except for Appeal 2020-000055 Application 15/785,645 4 our ultimate decision, we do not discuss the merits of the § 112(a) rejection of claims 2–30 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A. Broadest Reasonable Interpretation (BRI) During examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990); In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002) (“[T]he PTO must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification.”); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach.”). Each of the claim terms at issue includes the word “type”.” The Specification does not provide explicit definitions for the claim terms at issue. Therefore, the claim terms are given their broadest reasonable interpretation consistent with the Specification. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (Claims under examination before the PTO are given their broadest reasonable Appeal 2020-000055 Application 15/785,645 5 interpretation consistent with the specification).3 The following is a dictionary4 definition for the word “type”: Type: noun. 1) a number of things or persons sharing a particular characteristic, or set of characteristics, that causes them to be regarded as a group, more or less precisely defined or designated; class; category: a criminal of the most vicious type. 2) a thing or person regarded as a member of a class or category; kind; sort (usually followed by of): This is some type of mushroom. B. § 112(a) B.1. Claim 1 recites in-part (1) “responsive to a user input of a first type selecting” item X corresponding to an application, then open the corresponding application; and (2) “responsive to a user input of a second type selecting” item X corresponding to an application, display a list of functions for that application, then selecting a listed function, and then (a) open the corresponding application and (b) initiate the selected function. 3 Although the Specification provides exemplary embodiments, the claims are not expressly limited by those embodiments. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). 4 https://www.dictionary.com (accessed 03-15-2021); The Random House Dictionary of the English Language (2nd Ed. Unabridged; 1987). Appeal 2020-000055 Application 15/785,645 6 B.2. As to claim 1, the Examiner finds: The Specification fails to provide the written description requirement for[:] a user input of a first type selecting any of the plurality of items in the main view, the application corresponding to the selected item is opened and a user input of a second type selecting a first item of the plurality of items in the main view, the first item corresponding to a first application: display on the screen an application summary for the first application. Final Act. 3 (formatting added). B.3. Appellant argues, “the user inputs of the first and second type, as recited in claim 1, are sufficiently disclosed . . . in the specification of this application so that one skilled in the art would recognize from the specification that the inventor had possession of the invention embodied in claim 1 as of the effective filing date.” Appeal Br. 15. Particularly, Appellant argues: The skilled reader would understand from [paragraph 18] of the specification that each of the described user actions causing the display of the application summary is a somewhat out-of-the- ordinary user input as compared with a typical and conventional user input selecting an item in the user interface. For example, the user input of resting a highlight on the name of an application in the App Launcher for a 1.2 second timeout, responsive to which the App Snapshot drops down as described above, differs from the user input that opens the application from the App Launcher: . . . the user may take conventional navigation steps, such as scrolling, to move the highlight and using Appeal 2020-000055 Application 15/785,645 7 the available select function to navigate to the required highlighted application. [Spec. 17.] Similarly, performing a “press and hold” of a select function when an application name is highlighted in the App Launcher will access the App Snapshot as described above, [Spec. 18] while using the select function in its conventional manner in the App Launcher (e.g., by simply “hitting” a select button, or in other words, a press without a hold) will launch the corresponding highlighted application. [Spec. 17.] In other words, the specification describes that one type of user input applied to a selected item in the main view of the App Launcher opens the corresponding application, while a different type of user input applied to that same selected item in the main view of the App Launcher causes display of an application summary for that application. Appeal Br. 13 (formatting and emphasis added). Because the specification expressly describes numerous examples of user inputs for invoking the application summary, as opposed to launching the application itself, from a displayed item in the Application Launcher, [Spec. 18] indeed each of which being a somewhat out-of-the ordinary type of user input (e.g., a “press and hold” of a select function), Appellant submits that the skilled reader would understand that a different type of input (e.g., a conventional press of the select function without holding) for launching the highlighted application from the App Launcher is necessarily comprehended by the specification. Appeal Br. 14–15 (emphasis added). B.4. Appellant’s argument is unpersuasive. From our review of the Specification, the word “type” is not used when describing the user inputs,5 5 The only use we find of the word “type” is in paragraph 27, when referring to a “data types.” Appeal 2020-000055 Application 15/785,645 8 and we do not find where Appellant provides an explicit definition for the word “type.” Therefore, in view of the ordinary and customary meaning of the word “type,” as evidenced by the dictionary definition provided above, and the use of the word in the claims and the Specification, we determine that the broadest reasonable definition of “type” is “a class or category; kind; sort (usually followed by of).” See supra Section A and note 5; Spec. ¶ 27. Appellant contends above that press without hold of a select button is a different type of input than press and hold of a select button. We disagree with Appellant. Appellant’s use of the word “type” requires that the first and second user inputs are more than simply different. Rather, the first and second user inputs must be of different classes, categories, kinds, or sorts of user inputs. Merely being two different timing variations of how a button is pressed is not two different types of inputs. There is adequate written description support for a first user input and a different second user input, i.e., different user inputs. However, contrary to Appellant’s argument, we are not persuaded there is adequate support for a user input of a first type and a user input of a second type, i.e., the two user inputs are not of different types. Therefore, based on this record, we determine the Examiner properly demonstrates that claim 1 lacks written description support for a user input of a first type and a user input of a second type. Appeal 2020-000055 Application 15/785,645 9 C. § 112(b) Because the Examiner shows that the pending claims are unpatentable, we do not further reject Appellant’s claims 1–30 under 35 U.S.C. § 112(b), as indefinite because the claims may be inconsistent with the subject matter which the Appellant regards as the invention. C.1. 112(b) Case Law I. FOCUS FOR EXAMINATION A rejection based on the failure to satisfy this requirement is appropriate only where an inventor has stated, somewhere other than in the application as filed, that the invention is something different from what is defined by the claims. In other words, the invention set forth in the claims must be presumed, in the absence of evidence to the contrary, to be that which the inventor or a joint inventor regards as the invention. In re Moore, 439 F.2d 1232[] (CCPA 1971). See also In re Zahn, 617 F.2d 261[] (CCPA 1980). II. EVIDENCE TO THE CONTRARY Evidence that shows that a claim does not correspond in scope with that which an inventor regards as an inventor’s invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant (see e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372[] (Fed. Cir. 2000) and In re Prater, 415 F.2d 1393[] (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 476 F.2d 998[] (CCPA 1973)). Manual of Patent Examining Procedure 2172 (MPEP § 2172). C.2. Additional Issue During further prosecution of these claims, Appellant and the Examiner should consider the following issue arising from the briefing in this appeal. Appellant’s arguments discussed above suggest that Appellant Appeal 2020-000055 Application 15/785,645 10 considers the invention to require different inputs while the claims recite the invention as requiring different input types. Therefore, the claims may not “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention,” as required by 35 U.S.C. § 112(b). CONCLUSION The Examiner does not err in rejecting claims 1–30 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The Examiner’s rejection of claims 1–30 under 35 U.S.C. § 112(a) is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–30 112(a) Written Description 1–30 Overall Outcome 1–30 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation