Ex Parte CannonDownload PDFPatent Trial and Appeal BoardJun 8, 201713841757 (P.T.A.B. Jun. 8, 2017) 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. 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. 2 Appeal 2017-003947 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. 3 Appeal 2017-003947 Application 13/841,757 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. 4 Appeal 2017-003947 Application 13/841,757 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). 5 Appeal 2017-003947 Application 13/841,757 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 6 Appeal 2017-003947 Application 13/841,757 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. 7 Appeal 2017-003947 Application 13/841,757 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 8 Appeal 2017-003947 Application 13/841,757 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). 9 Appeal 2017-003947 Application 13/841,757 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). 10 Appeal 2017-003947 Application 13/841,757 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). 11 Appeal 2017-003947 Application 13/841,757 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. 12 Appeal 2017-003947 Application 13/841,757 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. 13 Appeal 2017-003947 Application 13/841,757 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. 14 Appeal 2017-003947 Application 13/841,757 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 15 Copy with citationCopy as parenthetical citation