Ex Parte Cannon

Patent Trial and Appeal Board

Jun 8, 2017

13841757 (P.T.A.B. Jun. 8, 2017)

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.
13/841,757 03/15/2013 Bruce Cannon 079768-0147/ 17211(1) 8104
131888 7590 06/12/2017
Mattel, Inc. - Patent Group
333 Continental Blvd.
El Segundo, CA 90245
EXAMINER
CHUNG, ANDREW
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
epatents @ mattel. com
patricia. deleon @ mattel. com
alicia.villalpando@mattel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE CANNON
Appeal 2017-003947
Application 13/841,7571
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-7 and 9-21. Appellant has previously canceled
claim 8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Mattel, Inc. Br. 2.
Appeal 2017-003947
Application 13/841,757
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to "downloading
applications that change a display on the touchscreen based on the
movement of an object that is in contact with the touchscreen." Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. An electronic device, comprising:
a touch sensitive display screen capable of receiving
contact information from a contact device;
a processor configured to identify, using a local database,
the contact device based on an identifying pattern the contact
device creates when the contact device is in contact with the
touch sensitive display screen;
the processor configured to access a remote database to
update the local database with pattern recognition information
for the contact device in a case where the processor fails to
identify the contact device based on the identifying pattern
using the local database',
the processor configured to determine whether one or
more applications that are compatible with the contact device is
absent from the electronic device; and
2 Our decision relies upon Appellant's Appeal Brief ("Br.," filed
June 9, 2016); Examiner's Answer ("Ans.," mailed Aug. 11, 2016); Final
Office Action ("Final Act.," mailed Oct. 22, 2015); and the original
Specification ("Spec.," filed Mar. 15, 2013). We note Appellant did not file
a Reply Brief to respond to the Examiner's factual findings and legal
conclusions in the Answer.
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Application 13/841,757
the processor configured to generate a message to
download or access the one or more applications that are
compatible with the contact device.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Weishut et al. ("Weishuf')
Kurlander et al. ("Kurlander")
Franceschelli, Jr. et al.
("Franceschelli,")
Cannon
Chang et al. ("Chang")
Mayya et al. ("Mayya")
SA et al. ("SA")
Want et al. ("Want")
Yun
US 6,842,653 B2 Jan. 11, 2005
US 2005/0251800 Al Nov. 10, 2005
US 7,350,149 B1 Mar. 25, 2008
US 2011/0227871 Al
US 2012/0233031 Al
US 2013/0151993 Al
US 2013/0227418 Al
US 8,638,190 B1
US 2014/0059444 Al
Sept. 22,2011
Sept. 13, 2012
June 13, 2013
Aug. 29, 2013
Jan. 28, 2014
Feb. 27, 2014
Rejections on Appeal
R1. Claims 1, 2, 5, and 6 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cannon, Kurlander,
and Want. Final Act. 2.
R2. Claims 7, 9, and 12, stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cannon, Kurlander,
and Franceschelli. Final Act. 6.
R3. Claims 13-19 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cannon, Kurlander, and Sa.
Final Act. 9.
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R4. Claims 3 and 4 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cannon, Kurlander,
Want, and Mayya. Final Act. 14.
R5. Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cannon, Kurlander,
Franceschelli, and Mayya. Final Act. 16.
R6. Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cannon, Kurlander,
Franceschelli, and Chang. Id.
R7. Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cannon, Kurlander, Sa, and
Weishut. Final Act. 17.
R8. Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cannon, Kurlander, Sa, and
Yun. Final Act. 19.
CLAIM GROUPING
Based on Appellant's arguments (Br. 10-21), we decide the appeal of
the obviousness rejection R1 of claims 1, 2, 5, and 6 on the basis of
representative claim 1; we decide the appeal of obviousness Rejection R2 of
claims 7, 9, and 12 on the basis of representative independent claim 7; and
we decide the appeal of obviousness Rejection R3 of claims 13-19 on the
basis of representative independent claim 13.
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Remaining claims 3, 4, 10, 11, 20, and 21 in Rejections R4-R8, not
argued separately or substantively, stand or fall with the respective
independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Brief so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(vi).
We disagree with Appellant's arguments with respect to claims 1-7
and 9-21, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1, 7,
and 13 for emphases as follows.
1. $ 103(a) Rejection R1 of Claims E 2, 5, and 6
Issue
Appellant argues (Br. 10-14) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Cannon,
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Kurlander, and Want is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an electronic device with a processor configured to, inter alia,
"access a remote database to update the local database with pattern
recognition information for the contact device in a case where the processor
fails to identify the contact device based on the identifying pattern using the
local database," as recited in claim 1?
Analysis
Appellant contends:
Want does not update a local database with information from a
remote database to then use the local database to perform a
comparison, because in the embodiment of Want with the
remote database 20, the remote database 20 itself is just used
for performing the comparison, so there is no reason to update a
local database. . . .
Thus, the system in Want never accesses a remote database to
update a local database with pattern recognition information for
a contact device.
Br. 12-13.
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
We agree with the Examiner's finding that Want teaches or at least
suggests the disputed limitation. Final Act. 4; Ans. 3^4. We agree with the
Examiner because we find Want's system 10, using resources from both
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computing device 12 and remote server 18, allows for stored information to
be updated when needed using the most recent information possible, whether
it is from a remote database or any web-based resource, and thus teaches or
at least suggests the disputed limitation "a remote database to update the
local database." Ans. 3^4; Want, col. 7,11. 9-18. We agree with the
Examiner's findings (id.) because Want's computing device 12 teaches or
suggests a local database, and Want's remote server 18 teaches or suggests
"a remote database."4 We also agree with the Examiner's mapping of Want's
gesture input to "identifying pattern," and Want's position device to "the
contact device," as recited in claim 1. We note Appellant has not cited to
any definitions of these disputed claim terms in the Specification that would
preclude the Examiner's broader reading.
Appellant also presents a teaching away argument:
By teaching to have the remote server 18 just use the remote
database 20 to perform the comparisons, Want actually teaches
away from updating a local database with information from the
remote database 20, because there would be no need since the
remote database 20 itself is used for performing the comparison
in such an embodiment.
Br. 13.
4 "[T]he gesture input may utilize resources from both computing device 12
and remote server 18 in some examples. By storing commands and gesture
information in remote database 20, system 10 may allow any stored
information to be updated when needed such that the user of computing
device 12 accesses the most recent information possible. In other words, the
information related to gestures may be managed in a central server (e.g.,
remote server 18), a central database (e.g., remote database 20), or any web-
based resource." Want, col. 7,11. 9-18 (emphasis added). We find this
teaching of updating in Want teaches or at least suggests using data from
both the computing device and remote server.
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We are not persuaded by Appellant's argument because it is based on
an inaccurate premise that only the remote database is used. As pointed out
above, Want teaches using both the local and remote databases for updating
when needed. Ans. 3-4. Therefore, we do not find Want teaches away from
updating a local database with information from the remote database as
Appellant contends.
Appellant also argues "Want never discloses or suggests to first
attempt to identify a pattern using a local database and then if the
comparison fails in the local database to then access the remote database to
update the local database." Br. 14.
In response, the Examiner finds, and we agree:
Want, column 6, line 38-column 7, line 2 clearly discloses the
ability for gesture definition and comparison to occur using the
computing device or a remote server. Want further discloses
that a remote server may be used to define and compare
gestures instead of the computing device. This implies a
situation in which using the computing device to compare
gestures would be insufficient, thus using the remote server to
perform such functions. Further, Want, column 7, lines 3-18
disclose that the remote server may transmit gesture
information to the computing device, also disclosing that
gesture input may utilize resources from both computing device
and remote server in some examples.
Ans. 3^4.
We further note Appellant does not file a Reply Brief to rebut the
Examiner's factual findings and legal conclusions of obviousness in the
Answer.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
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Examiner's obviousness rejection of independent claim 1 and claims 2, 5,
and 6, which fall therewith. See Claim Grouping, supra.
2. $ 103(a) Rejection R2 of Claims 7, 9, and 12
Issue
Appellant argues (Br. 14-16) the Examiner's rejection of claims 7, 9,
and 12 under 35 U.S.C. § 103(a) as being obvious over the combination of
Cannon, Kurlander, and Franceschelli is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes an electronic device, "wherein the
electronic device is configured to determine that one or more incompatible
applications is on the electronic device and should be upgraded to utilize the
features of the contact device," as recited in claim 7?
Analysis
Appellant contends:
[Ajpplicant pointed out that there is no contact device
disclosed or suggested in Franceschelli, and that it is therefore
impossible for Franceschelli to teach the feature as asserted in
the Final Office Action of "wherein the electronic device is
configured to determine that one or more incompatible
applications is on the electronic device and should be upgraded
to utilize the features of the contact device."
Br. 15.
We are not persuaded by Appellant's arguments because Appellant is
arguing the references separately. "[Ojne cannot show nonobviousness by
attacking references individually where . . . the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
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While the Examiner cites Cannon, not Franceschelli, for teaching or
suggesting "the features of the contact device" (Final Act. 6), the Examiner
finds the combination of Cannon and Franceschelli teaches the disputed
limitation. Ans. 4. We agree with the Examiner's finding:
Cannon clearly teaches the use of a contact device and the
ability to perform functionalities on that contact device.
Franceschelli further teaches in column 7, lines 7-15 the ability
to upgrade a device when applications are determined
incompatible. The combination of Cannon and Franceschelli
would allow for Franceschelli's upgrade functionality to be
performed on a contact device such as Cannon's. It is
Franceschelli's ability to provide an upgrade upon determining
incompatibility which is relevant; this functionality would be
applicable to any software system.
Ans. 4-5.
We agree with the Examiner's findings, and specifically note
Appellant's challenge to the references individually is not convincing of
error in the Examiner's position because all of the features of the secondary
reference need not be bodily incorporated into the primary reference, but
consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art. See
Keller, 642 F.2d at 425.5 Furthermore, 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).
5 Non-obviousness cannot be established by
individually when the rejection is predicated
1 the references
a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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We again note Appellant does not file a Reply Brief to rebut the
Examiner's factual findings and legal conclusions in the Answer.
Appellant further argues the Examiner employed "impermissible
hindsight reasoning" "because without having access to Applicant's present
disclosure, one of ordinary skill in the art would not have considered any
application of the Franceschelli Java Web Start desktop/server interaction to
the disclosures of Cannon and Kurlander, and certainly not for any contact
device." Br. 16.6
We find that Appellant's invention is simply a combination of known
teachings that realize a predictable result. The Supreme Court has
determined that the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan would "be
able to fit the teachings of multiple patents together like pieces of a puzzle"
since the skilled artisan is "a person of ordinary creativity, not an
automaton." Id. at 420-21.
Here, we see the hindsight question before us as a balancing test, i.e.,
whether the Examiner's proffered combination of references is merely:
(1) "the predictable use of prior art elements according to their established
functions" (KSR, 550 U.S. at 417), consistent with common sense; or,
(2) would an artisan reasonably have combined the cited references in the
6 Mere attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
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manner proffered by the Examiner but for having the benefit of the claim to
use as a guide (i.e., impermissible hindsight)?
After reviewing the respective teachings and suggestions of the cited
references, we find the evidence more strongly supports the first prong of the
balancing test. It is our view that it would have been obvious to an artisan
having general knowledge of the object identification system of Cannon to
combine the functionality taught by Franceschelli to allow incompatible
applications to be updated. Final Act. 7-8; Ans. 4-5. We find the Examiner
provided sufficient articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. at 418.
Additionally, Appellants have not demonstrated that the Examiner's
proffered combination of references 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). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 7, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 7, and grouped
claims 9 and 12 which fall therewith. See Claim Grouping, supra.
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3. $ 103(a) Rejection R3 of Claims 13-19
Issue
Appellant argues (Br. 16-19) the Examiner's rejection of claims 13-
19 under 35 U.S.C. § 103(a) as being obvious over the combination of
Cannon, Kurlander, and Sa is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of:
determining whether the identification input is shared by
multiple contact devices;
displaying, if it is determined that the identification input
is shared by multiple contact devices, a list of the one or more
applications associated with the identification input, wherein
the list includes for each application of the one or more
applications a corresponding one or more device identifiers to
indicate which of the multiple contact devices are associated
with the application,
as recited in claim 13?
Analysis
Appellant contends:
Sa neither discloses nor suggests to perform any displaying of
any list in response to determining that identification input is
shared by multiple contact devices. Instead, the screen in Fig.
2 of Sa is just a set-up screen that pops up when a user presses
a button.
Br. 18.
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Appellant further argues:
The device of Sa does not even determine whether
identification input is shared by multiple contact devices ....
Paragraph 0050 of Sa merely indicates that actions to be
performed may be performed on one or more devices, but those
are devices that are carrying out actions and are not contact
devices for providing identification input. (Sa, 0050). The
rejection fails to distinguish between contact devices for
providing identification input to a touch sensitive display and
an electronic device with a touch sensitive display for receiving
the identification input.
Id. The Examiner finds Sa's gestures, shared by multiple devices, teach or
suggest the disputed limitation. Ans. 5, citing Sa | 50.
We agree with the Examiner's findings because, for Sa's gestures to
perform actions on multiple devices, the gesture information must be shared
between these devices. Ans. 5. Sa's list of actions associated with gestures
further teaches or at least suggests the disputed limitation. Ans. 5, citing Sa,
Fig. 2, || 39 40. We again note Appellant does not file a Reply Brief to
rebut the Examiner's findings and legal conclusions in the Answer.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 13, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 13, and grouped
claims 14-19, which fall therewith. See Claim Grouping, supra.
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4. $ 103(a) Rejections R4-R8 of Claims 3,4, 10, 11, 20, and 21
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R4-R8 of claims 3, 4, 10, 11, 20, and 21 under
35 U.S.C. § 103 (see Br. 19-21), we sustain the Examiner's rejection of
these claims. Arguments not made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections Rl-
R8 of claims 1-7 and 9-21 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-7 and 9-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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