David Fleischman et al.

Patent Trials and Appeals BoardNov 10, 2020

2020001676 (P.T.A.B. Nov. 10, 2020)

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. 11/850,020 09/04/2007 David Fleischman P5812US1/77770000136101 6712 150004 7590 11/10/2020 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER CHOWDHURY, RAYEEZ R ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 11/10/2020 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): dentons_PAIR@firsttofile.com patent.docket@dentons.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID FLEISCHMAN, PATRICK COFFMAN, GREGORY N. CHRISTIE, PAUL MARCOS, BRIAN CASSIDY, MALLORY JACKSON PAINE, and HENRI LAMIRAUX ____________ Appeal 2020-001676 Application 11/850,020 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and CARL L. SILVERMAN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–3, 7, and 17–28.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 An oral hearing was held for this appeal on October 26, 2020. 2 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 as Apple Inc. Appeal Br. 4. 3 Claims 4–6, 8, 9, 11–14, 16, and 38 have been canceled, claims 10, 15, and 30–37 have been indicated as allowable, and claim 29 has been objected to as being dependent upon a rejected base claim, but would be allowable if Appeal 2020-001676 Application 11/850,020 2 We AFFIRM. STATEMENT OF THE CASE Introduction Appellant’s disclosure is directed to “systems, apparatus, computer program products, and computer readable media” for “coupling a device to an agent; receiving at the device one or more parameters, where the one or more parameters are determined by the agent from one or more signals; and configuring a user interface of the device based on the received parameters.” Spec. ¶ 3. Claim 1 is illustrative of the invention and reads as follows: 1. A method, comprising: coupling a wireless mobile device to a local computer that includes a software agent running on the computer, wherein coupling the wireless mobile device to the local computer includes connecting the wireless mobile device to the local computer via a direct wireless communication link between the wireless mobile device and the local computer; mirroring one or more parameters between the wireless mobile device and the software agent, the one or more parameters being sent via the direct wireless communication link and associated with a locale of the local computer and the one or more parameters governing the operation of the local computer; and configuring one or more specific operating system settings of the wireless mobile device based on the mirrored one or more parameters associated with the locale of the local computer, including configuring a user interface of the wireless rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Final Act. 2. Appeal 2020-001676 Application 11/850,020 3 mobile device to display information corresponding to the locale of the local computer. Appeal Br. 32 (Claims App’x.). References and Rejections The prior art relied upon by the Examiner is: Name Reference Date Okazawa US 2002/0095508 Al July 18, 2002 Farris US 2003/0120936 Al June 26, 2003 Andrew US 2003/0158917 Al Aug. 21, 2003 Thomas US 2004/0010569 Al Jan. 15, 2004 Akram US 2004/0063464 Al Apr. 1, 2004 Yue US 2004/0203354 Al Oct. 14, 2004 Saito US 2005/0097229 Al May 5, 2005 Carle US 2005/0210525 Al Sept. 22, 2005 Cho US 2008/0007768 Al Jan. 10, 2008 Claims 1–3, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Akram, Cho, Andrew, Saito, and Yue. Final Act. 4–7. Claims 7, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Akram, Cho, Andrew, Saito, Okazawa, Carle, and Yue. Final Act. 7–12. Claims 17–21 and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Akram, Cho, Andrew, Saito, Okazawa, Carle, Ferris, and Yue. Final Act. 12–16. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Akram, Cho, Andrew, Saito, Okazawa, Carle, Ferris, Yue, and Thomas. Final Act. 16–17. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Akram, Cho, Andrew, Saito, Yue, and Thomas. Final Act. 17–18. Appeal 2020-001676 Application 11/850,020 4 ANALYSIS Claim 1 In rejecting claim 1, the Examiner finds Akram discloses (1) “coupling a wireless mobile device to a local computer” and (2) “mirroring one or more parameters between the wireless mobile device and the software agent.” Final Act. 4 (citing Akram ¶ 4). The Examiner further relies on Cho as disclosing one or more parameters governing the operation of the local computer” and “configuring one or more specific operating system settings of the wireless mobile device based on the mirrored one or more parameters.” Final Act. 4–5 (citing Cho ¶¶ 6–8). Additionally, the Examiner relies on Andrew as disclosing “wherein coupling the wireless mobile device to the local computer includes connecting the wireless mobile device to the local computer via wireless communication link” and the mirrored one or more parameter “being sent via the [direct] wireless communication link” and “configuring a user interface of the wireless mobile device to display information corresponding to the locale.” Final Act. 5–6 (citing Andrew ¶¶ 35, 36, 67; Figs. 3, 4). For the remaining limitations of claim 1, the Examiner finds Saito discloses the recited “the one or more parameters being associated with a locale of the local computer,” and Yue discloses the “direct wireless communication link between the wireless mobile device and the local computer.” Final Act. 6–7 (citing Saito ¶ 22; Yue ¶¶ 4, 9; Fig. 1). According to the Examiner, one of ordinary skill in the art would have combined Akram with Cho “because doing so would sav[e] user’s time by allowing the cloning the setting of a specified device and copying the cloned data to multiple computers Simultaneously” whereas adding Andrew “would Appeal 2020-001676 Application 11/850,020 5 result in automatically changing the default language, currency symbols, or other country dependent software settings of the mobile (Para [0067]).” Final Act. 5–6. The Examiner also finds adding Saito “would result in precisely identifying the language of the operating system corresponding to location” and adding Yue “allows a user to enable communications between the Bluetooth devices without traveling back and forth between physically separated Bluetooth devices.” Final Act. 6–7. Appellant contends that the claim features of “connecting the wireless mobile device to the local computer via a direct wireless communication link,” that were found as missing in the combination of Akram, Cho, and Saito, are not taught or suggested by Andrew and Yue. Appeal Br. 15–16. Appellant specifically argues that Figure 3 of Andrew, as acknowledged by the Examiner, shows “no direct wireless communication link between telephonic device 300 and computer systems 323A–323C and 332,” which requires telephonic device 300 “to establish communication with corporate intranet infrastructure 320 and Internet infrastructure 330 via wireless access module 322 and 332, respectively.” Appeal Br. 17 (citing Andrew ¶ 35). Appellant further argues that adding Yue’s Bluetooth protocol to the above arrangement in Andrew would still result in an indirect communication, e.g., through an infrastructure system as depicted below: Appeal 2020-001676 Application 11/850,020 6 Appellant’s annotated Figure 3 of Andrew. Appeal Br. 18. Appellant asserts that such modification “requires the use of an indirect (e.g., through an infrastructure) wireless connection for connecting to a computer system 323A–323C or 333 and combining Yue with Andrew will not remove the requirement for Andrew’s Corporate Intranet Infrastructure 320 or Internet Infrastructure 330.” Appeal Br. 18–19; see also Reply Br. 4–6. Additionally, Appellant argues that “there is no teaching in Yue nor Andrew that describes or suggest [sic], ‘one or more parameters being sent via the direct wireless communication link and associated with a locale of the local computer.” Appeal Br. 20; Reply Br. 6– 7. Appeal 2020-001676 Application 11/850,020 7 The Examiner responds by explaining: Andrew reference discloses “Telephonic device 300 may use wireless communication techniques to attempt to establish communication with corporate intranet infrastructure 320 via wireless access module 322. Likewise, telephonic device 300 may use wireless communication techniques to attempt to establish communication with Internet infrastructure 330 via wireless access modules 332(Para [0034]).” YUN [sic] reference discloses Bluetooth is a short range such as 10–100 meters and devices are connected via Bluetooth connection, shows on fig 1 para [0004][0009]. Since claim does not mentioned or limit to any range of the “wireless communication rage”, device can also be connected via Bluetooth wireless connection as long as mobile device within the range. Ans. 3. We agree with the Examiner that Andrew’s telephonic device 300 may use Bluetooth protocol of Yue as one of the wireless communication techniques to connect to computer systems 323A–323C, which are part of corporate intranet infrastructure 320, via wireless access module 322. Contrary to Appellant’s contentions (see Appeal Br. 18–19), the broadest reasonable interpretation of the recited “coupling the wireless mobile device to the local computer” through “a direct wireless communication link” does not preclude a direct link with the wireless access module 322 which functions as an interface for external wireless connection to computer systems 323A–323C. See also Ans. 3–4. Andrew discloses “[t]elephonic device 300 may use wireless communication techniques to attempt to establish communication with corporate intranet infrastructure 320 via wireless access module 322” or “establish communication with Internet infrastructure 330 via wireless access modules 332.” Andrew ¶ 35. After establishing wireless connection, “telephonic device 300 may communicate Appeal 2020-001676 Application 11/850,020 8 with the computer systems included in corporate intranet infrastructure 320” or “with the computer systems included in Internet infrastructure 330.” Andrew ¶ 37. That is, direct wireless connection to computer systems 323A–323C would still include connection through the wireless access module that functions as the wireless interface to the local computers. We are unpersuaded by Appellant’s argument that Andrew’s teaching is limited to indirect wireless communication between telephonic device 300 and the computer devices within the corporate intranet infrastructure. In other words, we are unpersuaded of the Examiner error because “adding the Bluetooth protocol to Andrew’s disclosure will not result in a system where the remote device (e.g., telephonic device 300) can directly wirelessly connect to computer systems 323A–323C or 333,” as argued by Appellant. See Appeal Br. 18. As explained above, modifying Andrew with Bluetooth protocol of Yue would result in making a direct connection through the same coupling of telephonic device 300 to the local computer systems within the corporate intranet infrastructure via the wireless communication through the wireless access module. Moreover, we observe that the rejection relies on Akram and Cho as disclosing the recited mirroring one or more parameters between the mobile device and the software agent, which includes the recited sending one or more parameters, such as the location information, once the direct wireless communication is established. See Final Act. 5–7; Ans. 4 (citing Andrew ¶ 67). Appellant further contends that the combination of Andrew with Yue would not have been obvious. Appeal Br. 20; Reply Br. 7–8. Specifically, Appellant argues that the wireless protocol in Andrew works without any modification by Yue and “would result in a system wherein Andrew’s Appeal 2020-001676 Application 11/850,020 9 mobile device would have to be near that Corporate Intranet Infrastructure 320 or Internet Infrastructure 330 to work using the short range (e.g., Bluetooth) communication, thus rendering the benefits of Andrew’s mobile device moot.” Appeal Br. 21. According to Appellant, “the modification proposed by the Examiner ‘amount[s] to extra work and greater expense for no apparent reason.’” Id. We are unpersuaded. As discussed above, Appellant is arguing the references individually whereas the rejection is based on the combination of the cited references where all of the features of the secondary reference need not be bodily incorporated into the primary reference (see Keller, supra, at 642 F.2d 425) and the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). We agree with the Examiner that the combination of references teaches an additional way of connecting the mobile device directly with the computer systems within the corporate intranet infrastructure, especially when the claimed method is not limited to any particular range. See Ans. 4. In other words, this is a combination of familiar elements according to known methods with predicable results. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Additionally, the Supreme Court made clear that when considering obviousness, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Appeal 2020-001676 Application 11/850,020 10 Furthermore, the skilled artisan is “a person of ordinary creativity, not an automaton,” and this is a case in which the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 421. We therefore find the Examiner provided a sufficiently reasonable motivation for one of ordinary skill in the art to combine Andrew and Yue based on the above discussed improvements to Akram’s system as modified by Cho and Saito. Next, Appellant argues the Examiner’s proposed combination is conclusory and based on hindsight because “[t]he Examiner has dissected the claim into individual elements in order to disregard the claimed relationships among them.” Appeal Br. 22. Appellant asserts that the Examiner has “used the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art.” Id. Additionally, Appellant argues that Akram, Cho, and Saito have not been cited as disclosing the missing elements in Andrew and Yue. Id. In response, the Examiner explains that using the Bluetooth protocol of Yue was based on the stated motivation of selecting a known material or method for its intended use, and therefore obvious. See Ans. 5. We agree and note again that Appellant’s contentions focus on the references separately and ignore the fact that the proposed rejection is based on the combination of the wireless connection of Andrew with the added benefit of a direct link similar to the Bluetooth protocol of Yue. Each reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“[T]he test for obviousness is what the combined teachings of the references would have Appeal 2020-001676 Application 11/850,020 11 suggested to those of ordinary skill in the art.”). Based on the proposed combination, the resulting structure would allow the mobile device establish a connection through a Bluetooth protocol in addition to, or instead of, the disclosed wireless connection. In fact, it is not necessary that the features of one cited reference be directly insertable into the other reference. See In re Keller, 642 F.2d at 425; In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Additionally, we are unpersuaded that the Examiner has used improper hindsight. Reliance on multiple references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). In addition, any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. However, so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner has relied on references that disclose wireless connection between a mobile device and local computers where the connection encompasses using Bluetooth protocol, which is a subset of a wireless communication link. We also find that it is reasonable to rely on other references for compensating for the particular factors identified in those references, as set forth in the claims at issue. Claim 7 The Examiner rejected claim 7 based on a similar combination of the prior art that was applied to claim 1 and further added Okazawa as Appeal 2020-001676 Application 11/850,020 12 disclosing the one or more parameters are determined by the software agent based on certain setting and on Carle as disclosing the recited “settings associated with an account of a user of the wireless mobile device, the account stored at the local computer.” See Final Act. 11 (citing Okazawa ¶ 130; Carle ¶¶ 3, 14, 22). Appellant contends Carle does not teach “settings associated with an account of a user of the wireless mobile device, the account stored at the local computer” and in fact, “teaches away from storing settings on local devices” because: Carle describes storing account information at “an account server” (Carle at paragraph [0022]), rather than at a local computer, as required in claim 7. More specifically, Carle describe that traditionally, “client devices store user settings, preferences, and account information.” Additionally, paragraph [0002] of Carle describes that “[a] client device includes, for example, a set-top box, a digital satellite receiver, a cable box, a digital video recorder (DVR), and a television with a built-in receiver.” However, Carle emphasizes that storing information on client devices is disadvantageous because, “[a]dding persistent memory device to a client device increases the cost and complexity of the client device.” Appeal Br. 23–24. Appellant also argues that combining Carle with the other applied references would not have been obvious. Appeal Br. 24–25; Reply Br. 9. The Examiner responds by stating that “Carle reference discloses Existing client devices store user settings, preferences, and account information and device includes computer (Para [0003][0017]).” Ans. 6. The Examiner explains that, contrary to Appellant’s assertion, the disclosed device in Carle “includes a set top box, DVR, TV with built in receiver,” which also “includes computer (Para [0017]).” Id. Appeal 2020-001676 Application 11/850,020 13 We are unpersuaded by Appellant’s argument that Carle teaches away from the combination because adding memory to the client device increases the cost and complexity. See Appeal Br. 24. As explained by the Examiner, the client device is described as ranging “from clients with substantial memory and processing resources, such as television-enabled personal computers and television recorders equipped with hard-disks, to clients with little or no memory and/or limited processing resource.” See Carle ¶ 17. Therefore, Carle does not teach away from storing the settings on a local device because the reference allows storing the account information at the client device. With respect to the propriety of combining Carle with the other applied prior art, we also observe that the Examiner’s stated rationale provides an articulated reasoning that sufficiently justifies the proposed combination. The Examiner presented the rationale for combining the references as “effectively allowing users or other systems to access the configuration information from the headend systems without requiring interaction with the client device with which the configuration information is associated.” Final Act. 11 (citing Carle ¶ 14). We also note that the rationale to modify or combine the prior art does not have to be expressly stated in the prior art. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988). Instead, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. See KSR, 550 U.S. at 416. Further, if a technique has been used to improve one device and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond Appeal 2020-001676 Application 11/850,020 14 his or her skill. See id. at 417. Moreover, we are not persuaded the Examiner’s proffered combination for adding the way settings are stored at a local computer, as suggested by Carle, would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Claim 17 Appellant argues the patentability of claim 17 based on similar arguments presented for claim 7. Appeal Br. 26–28. For the same reasons stated above in the analysis of claim 7, we are also unpersuaded of Examiner error in rejecting claim 17. Claims 22, 26 Appellant argues the patentability of claims 22 and 26 based on similar basis presented for claim 17 and adds that the further relied-on Thomas reference does not cure the deficiency of the applied prior art because “the Examiner did not rely on Thomas to supply any claim element other than the additional elements of claim 22.” Appeal Br. 28; see also Appeal Br. 29–30 (providing similar argument for claim 26). As explained by the Examiner, “[a]dditional elements introduced in claim 22, was not part of the independent claim and Thomas reference used to teach only the newly added claim.” See Ans. 6. Therefore, based on the same analysis presented above for claims 1 and 17, we are also unpersuaded of Examiner error in rejecting claims 22 and 26. Appeal 2020-001676 Application 11/850,020 15 CONCLUSION Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 1, 7, and 17, dependent claims 22 and 26. We also sustain the Examiner’s obviousness rejection of the remaining appealed claims which are not separately argued by Appellant. See Appeal Br. 15–30. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 24, 25 103 Akram, Cho, Andrew, Saito, Yue 1–3, 24, 25 7, 27, 28 103 Akram, Cho, Andrew, Saito, Okazawa, Carle, Yue 7, 27, 28 17–21, 23 103 Akram, Cho, Andrew, Saito, Okazawa, Carle, Ferris, Yue 17–21, 23 22 103 Akram, Cho, Andrew, Saito, Okazawa, Carle, Ferris, Yue, Thomas 22 26 103 Akram, Cho, Andrew, Saito, Yue, Thomas 26 Overall Outcome 1–3, 7, 17–28 Appeal 2020-001676 Application 11/850,020 16 FINALITY AND 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