Ex Parte Beaumont et al

Patent Trial and Appeal BoardNov 30, 2018

14204181 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/204,181 03/11/2014 63203 7590 ROGITZ & AS SOCIA TES 4420 Hotel Circle Court SUITE 230 SAN DIEGO, CA 92108 12/04/2018 FIRST NAMED INVENTOR Suzanne Marion Beaumont 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 ATTORNEY DOCKET NO. CONFIRMATION NO. RPS920130221-US-NP 8177 EXAMINER BORJA, ROBERTO ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 12/04/2018 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUZANNE MARION BEAUMONT, RUSSELL SPEIGHT V ANBLON, PAUL PLASKONOS, JON WAYNE HEIM, GREYSON CRAIG DA VIS, and MARK DAVID KRYNOCK 1 Appeal 2018-003643 Application 14/204, 181 2 Technology Center 2100 Before JOSEPH L. DIXON, MARC S. HOFF, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Lenovo Singapore PTE. Ltd., as the real party in interest. See Appeal Br. 2. 2 The application on appeal has an effective filing date of Mar. 11, 2014. Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the U.S. Code(Â§Â§ 102, 103) are applicable. See Manual of Patent Examining Procedure (MPEP) Â§ 2159. 02 (The amended sections "apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013."). Appeal 2018-003643 Application 14/204, 181 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1, 2, 8, 9, 11, 12, 14, 15, 18, 19, 21, 30, and 39--46. Claims 3-7, 10, 13, 16, 17, 20, 22-29, and 31-38 have been canceled. See Final Act. 1-2. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. Appellants 'Invention The invention at issue on appeal generally concerns "presenting elements on a display of a device based on the device being in either a laptop or tablet configuration" (Spec. 1:4--5). See Spec. 1:16-2:15; Abstract. Illustrative Claim Independent claim 1, reproduced below, further illustrates the invention: 1. An apparatus, comprising: a touch-enabled display; a processor; and storage accessible to the processor and bearing instructions executable by the processor to: make a first determination that a device is being or has been transitioned between a laptop configuration and a tablet configuration; and at least in part based on the first determination, make a second determination pertaining to at least one change in presentation of an element presented on the touch-enabled 3 We refer to Appellants' Specification ("Spec.") filed Mar. 11, 2014; Appeal Brief ("Appeal Br.") filed Apr. 26, 2017; and Reply Brief ("Reply Br.") filed Feb. 20, 2018. We also refer to the Final Office Action ("Final Act.") mailed Jan. 26, 2017; and Examiner's Answer ("Ans.") mailed Dec. 21, 2017. 2 Appeal 2018-003643 Application 14/204, 181 display relative to its presentation prior to the first determination, the element associated with an application, the change in presentation being from a first presentation to a second presentation; wherein the instructions are executable by the processor to make the second determination at least in part based on a third determination that the application has launched a threshold number of launches each following a transition to one of the laptop configuration and tablet configuration. Rejections on Appeal 1. The Examiner rejects claims 1, 2, 8, 9, 11, 12, 14, 18, 19, 39, and 42 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer (US 2014/0215201 Al, published July 13, 2014 (filed Jan. 31, 2013)), Wan et al. (US 2014/0075385 Al, published Mar. 13, 2014 (filed Sept. 13, 2012)) ("Wan"), and Lee et al. (US 2014/0123022 Al, published May 1, 2014 (filed Oct. 26, 2012)) ("Lee"). See Final Act. 6-22. 2. The Examiner rejects claim 15 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer and Wan. See Final Act. 23-26. 3. The Examiner rejects claim 21 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer, Wan, Lee, and Christ (US 2010/0223047 Al, published Sept. 2, 2010). See Final Act. 26-27. 4. The Examiner rejects claim 30 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer, Wan, Lee, and Alameh (US 2013/0249785 Al, published Sept. 26, 2013). See Final Act. 27-29. 5. The Examiner rejects claims 40, 41, 45, and 46 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer, Wan, Lee, and Chu et al. (US 2013/0173513 Al, published July 4, 2013) ("Chu"). See Final Act. 29-33. 3 Appeal 2018-003643 Application 14/204, 181 6. The Examiner rejects claims 43 and 44 under 35 U.S.C. Â§ 103 as being unpatentable over Pfeifer, Wan, and Chu. See Final Act. 34--36. ISSUES Based upon our review of the record, Appellants' contentions, and the Examiner's findings and conclusions, the issues before us follow: Did the Examiner err in finding the combination of Pfeifer, Wan, and Lee would have rendered obvious Appellants' claims 1 and 18, and the combination of Pfeifer and Wan would have rendered obvious Appellants' claim 15? ANALYSIS The Examiner rejects independent claim 1 (as well as independent claim 18 and dependent claims 2, 8, 9, 11, 12, 14, 19, 39, and 42) as being obvious in view of Pfeifer, Wan, and Lee. See Final Act. 6-11; Ans. 2--4. The Examiner rejects independent claim 15 as being obvious in view of Pfeifer and Wan. See Final Act. 23-26; Ans. 9-11. The Examiner rejects the remaining dependent claims, 21, 30, 40, 41, and 43--46 over Pfeifer and Wan and additional references (see supra). Appellants contend that the Examiner does not provide a proper rationale for combining Pfeifer, Wan, and Lee and does not comply with recent Federal Circuit precedent. See Appeal Br. 4--8; Reply Br. 1--4. Specifically, Appellants contend, inter alia, that the Examiner did not present a sufficient rationale explaining why a person having ordinary skill in the relevant art (a PHOSITA) at the time of Appellants' invention would have combined the references-specifically Pfeifer and Wan----or how such a combination would be accomplished. See Appeal Br. 4--8; Reply Br. 1--4. 4 Appeal 2018-003643 Application 14/204, 181 More specifically, Appellants cite two recent Federal Circuit decisions-In re Nuvasive, 842 F.3d 1376 (Fed. Cir. 2016), and Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017}-in support of their contentions that the Examiner's rationale was insufficient. See Appeal Br. 6-8; Reply Br. 2--4. We agree with Appellants that Examiner's rationale for combining Pfeifer and Wan is not sufficient. See id. A determination ofunpatentability on a ground of obviousness must include "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). As explained by our reviewing court, it is "important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. We are not persuaded that the Examiner has presented a sufficient rationale to combine the teachings of the Pfeifer and Wan references. Here, the Examiner, similar to the Board in the Nuvasive and Personal Web Technologies decisions, failed to articulate in detail how the references could be combined to obtain the claimed features. See Personal Web Technologies, 848 F.3d at 991 ("the Board [must] find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed"); Nuvasive, 842 F.3d at 1384 ("[T]he PTAB never articulated why the additional information would benefit a PHOSIT A .... It also failed to explain the type of additional information a PHOSITA would obtain or how the PHOSITA would use that information." The PT AB' s explanation "addresses neither the benefits that could have been 5 Appeal 2018-003643 Application 14/204, 181 obtained by combining the prior art references nor the PHOSITA's motivation to combine at the time of the invention."). In particular, we find the Examiner's originally articulated reasoning-that it "would have been obvious ... to have modified Pfeifer's converting device mode to incorporate the teachings of Wan's icon and application presentation" because "to do so would be to provide the user with the most useful applications and icons using their behavior" (Final Act. 1 O}-as well as the Examiner's supplemental reasoning- that one "would have recognized that users may store many applications on a device, and have a need to organize them" and "would have recognized the advantages of being able to provide an interface that learns and anticipates a user's needs automatically as taught by Wan" and therefore "would have been motivated to combine Pfeifer and Wan in order to provide the user with the most useful applications and icons using their behavior" (Ans. 3}-are conclusory. See Nuvasive, 842 F.3d at 1383 ("conclusory statements alone are insufficient and, instead, the finding must be supported by a reasoned explanation" (internal quotations omitted)). Such conclusory statements are insufficient to establish persuasively that a person of ordinarily skill in the art would have recognized some deficiency in Pfeifer's interface or had some other reason to look to Wan' s learning interface and combine it with Pfeifer's. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Pfeifer and Wan ( and Lee) renders obvious Appellants' claims. 6 Appeal 2018-003643 Application 14/204, 181 CONCLUSIONS The Examiner erred in rejecting claims 1, 2, 8, 9, 11, 12, 14, 15, 18, 19, 21, 30, and 39--46 under 35 U.S.C. Â§ 103. DECISION We reverse the Examiner's rejection of claims 1, 2, 8, 9, 11, 12, 14, 15, 18, 19, 21, 30, and 39--46. REVERSED 7