Conversant Wireless Licensing S.a r.l.

Patent Trials and Appeals Board

Apr 1, 2021

2020000055 (P.T.A.B. Apr. 1, 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.
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.
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Application 15/785,645

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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.
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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
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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
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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).
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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
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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.”
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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.
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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
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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