Ex Parte Govindaraju

Patent Trial and Appeal BoardJul 31, 2018

13714325 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/714,325 12/13/2012 Guru Prashanth Govindaraju 69753 7590 08/02/2018 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 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. 106842052400 (Pl5832US1) CONFIRMATION NO. 4134 EXAMINER JACKSON, JENISE E ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 08/02/2018 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): EOfficeLA@mofo.com PatentDocket@mofo.com pair_mofo@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GURU PRASHANTH GOVINDARAJU Appeal2018-002031 Application 13/714,325 1 Technology Center 2400 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. Â§ 134(a) of the Final Rejection of claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19, and 21-39. Claims 3, 6, 10, 13, 17, and 20 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellant, the real party in interest is Apple Inc. App. Br. 1. Appeal2018-002031 Application 13/714,325 STATEMENT OF THE CASE2 The Invention Appellant's disclosed and claimed inventions relate to "managing access to applications and content on an electronic device." Spec. ,r 1. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases added to contested limitations): 1. A method comprising: at an electronic device with a display and one or more input devices: while the electronic device is in a first mode during which access to content having a private designation is not restricted, displaying, on the display, a plurality of visual indications associated with content available on the electronic device, a first visual indication of the plurality of visual indications having the private designation, and a second visual indication of the plurality of visual indications having a public designation; while the electronic device is in the first mode, receiving, at the one or more input devices, user input enabling a privacy mode on the electronic device during which access to the content having the private designation is restricted; and in response to receiving the user input enabling the privacy mode on the electronic device: transitioning the electronic device from the first mode to the privacy mode; and 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed June 22, 2017); Reply Brief ("Reply Br.," filed Dec. 18, 2017); Examiner's Answer ("Ans.," mailed Oct. 17, 2017); Final Office Action ("Final Act.," mailed Dec. 22, 2016); and the original Specification ("Spec.," filed Dec. 13, 2012). 2 Appeal2018-002031 Application 13/714,325 visually altering the display of the first visual indication while maintaining the display of the second visual indication. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Chang et al. ("Chang") US 2013/0055378 Al Feb. 28, 2013 Horvitz et al. ("Horvitz") US 2013/0086674 Al April 4, 2013 Lemke US 2013/0145453 Al June 6, 2013 Rejections on Appeal RI. Claims 1, 8, and 15 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite by reciting "while the electronic device is in a first mode during which access to content having a private designation is not restricted." Final Act. 4. R2. Claims 1, 7, 8, 14, 15, 21, 23-28, 30-33, and 35-38 stand rejected under 35 U.S.C. Â§ I02(e) as being anticipated by Lemke. Final Act. 5. R3. Claims 2, 4, 9, 11, 16, 18, 22, 29, 34, and 39 stand rejected under 35 U.S.C. Â§ I03(a) as being obvious over the combination of Lemke and Chang. Final Act. 9. R4. Claims 5, 12, and 19 stand rejected under 35 U.S.C. Â§ I03(a) as being obvious over the combination of Lemke, Chang, and Horvitz. Final Act. 12. 3 Appeal2018-002031 Application 13/714,325 CLAIM GROUPING Based on Appellant's arguments (App. Br. 8-9), we decide the appeal of indefiniteness Rejection RI of claims 1, 8 and 15 on the basis of illustrative claim 1. We also decide the appeal of anticipation Rejection R2 of claims 1, 7, 8, 14, 15, 21, 23-26, 28, 30-33, and 35-38 on the basis of representative claim 1. We decide the appeal of separately argued claim claim 27, infra. Remaining claims 2, 4, 9, 11, 12, 16, 18, 19, 22, 29, 34, and 39 in obviousness rejections R3 and R4, not argued separately, stand or fall with the respective independent claim from which they depend. 3 We decide the appeal of separately argued claim 5 in Rejection R4, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments that Appellant could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We agree with particular arguments advanced by Appellant with respect to indefiniteness Rejection RI of claims 1, 8 and 15 for the specific reasons discussed below. However, we disagree with Appellant's arguments with respect to Rejections R2-R4 of claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19 and 21-39, and we incorporate herein and adopt as our own for these rejections: (1) the findings and reasons set forth by the Examiner in the action from which this 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." 3 7 C.F .R. Â§ 41.3 7 ( c )( 1 )(iv). 4 Appeal2018-002031 Application 13/714,325 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 claim 1 for emphasis as follows. 1. Â§ 112, ,r 2, Rejection RI: Claims 1, 8, and 15 Issue Appellant argues (App. Br. 8-9; Reply Br. 2-5) the Examiner's Rejection RI of claims 1, 8 and 15 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite is in error. These contentions present us with the following issue: Did the Examiner err in concluding the recitation in claim 1 of "while the electronic device is in a first mode during which access to content having a private designation is not restricted" is indefinite underÂ§ 112, second paragraph? Analysis The Examiner concludes the claim 1 limitation, "while the electronic device is in a first mode during which access to content having a private designation is not restricted," is indefinite because it is purportedly unclear. Final Act. 4. In particular, the Examiner concludes: Id. It's unclear how the first mode have content having a private designation that is not restricted. There is only two modes, first mode and privacy mode according to the claims. If the first mode is a disabled privacy mode, than how can there be a private designation? 5 Appeal2018-002031 Application 13/714,325 We disagree with the Examiner's conclusion. The Supreme Court guides, "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120, 2124 (2014). Further, we give pending claims "their broadest reasonable interpretation consistent with the specification" and "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant contends the disputed limitation is clear because it is supported by the Specification "which discloses that enabling a privacy mode can disable access to private applications that may otherwise be accessible (see paragraph [001 OJ)." App. Br. 8. Appellant further argues, "[B]ecause access to private applications can be disabled by enabling a privacy mode, in such circumstances, access to private applications must necessarily be enabled (e.g., access to private applications-that is, applications designated as private-is not restricted) before entering the privacy mode." Id. We conclude the plain language of claim 1, in light of the Specification, would have informed those skilled in the art at the time of the invention about the scope of the invention with reasonable certainty. See Nautilus, 134 S. Ct. at 2124. Moreover, The Examiner has not shown that independent claims 1, 8, and 15 are indefinite under the lower threshold of ambiguity set forth in the holding of Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the 6 Appeal2018-002031 Application 13/714,325 applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite"). Therefore, we reverse the Examiner's Rejection RI underÂ§ 112, second paragraph, of independent claims 1, 8, and 15. 2. Â§ I02(e) Rejection R2: Claims 1, 7, 8, 14, 15, 21, 23~28, 30~33, 35~38 Issue Appellant argues (App. Br. 7-8; Reply Br. 3-5) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ I02(e) as being anticipated by Lemke is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art anticipates a method that includes, inter alia, the steps of: while the electronic device is in a first mode during which access to content having a private designation is not restricted, displaying, on the display, a plurality of visual indications associated with content available on the electronic device, a first visual indication of the plurality of visual indications having the private designation, and a second visual indication of the plurality of visual indications having a public designation; while the electronic device is in the first mode, receiving, at the one or more input devices, user input enabling a privacy mode on the electronic device during which access to the content having the private designation is restricted; and in response to receiving the user input enabling the privacy mode on the electronic device: transitioning the electronic device from the first mode to the privacy mode; and visually altering the display of the first visual indication while maintaining the display of the second visual indication, as recited in claim 1? (Emphasis added). 7 Appeal2018-002031 Application 13/714,325 Analysis Appellant contends, "Lemke wholly lacks a detail contained in claim I-namely, receiving user input enabling a privacy mode while the mobile device is in a first mode (e.g., a mode in which access to content having a private designation is not restricted)." App. Br. 11. Appellant additionally contends, "the user input for enabling the privacy mode is received at the electronic device while the user has access to public and private applications. Ignoring this claim element ignores a key motivation behind the feature described by the claim." Id. In response, the Examiner further explains the basis for the rejection: The Examiner asserts that the first mode is full system access which requires a full system access code also called a master access code and/or a private access code which gives the user access to content, applications and services having a private designation that is not restricted. (Lemke: para. 0038, 0040, 0042). Ans. 3. We agree with the Examiner's findings because Lemke's unrestricted mode, providing full system access, discloses "a first mode," and Lemke's guest mode discloses a "privacy mode" as recited in claim 1. Lemke ,r,r 37, 3 8, 40, and 42. Regarding Appellant's different-motivations argument (App. Br. 11 ), our reviewing court guides this is irrelevant. " [ A ]rguments that the alleged anticipatory prior art is 'nonanalogous art' or 'teaches away from the invention or is not recognized as solving the problem solved by the claimed invention, is not 'germaine' [germane] to a rejection under section 102." 8 Appeal2018-002031 Application 13/714,325 Twin Disc, Inc. v. US., IO Cl.Ct. 713, 728 (1986) (citing In re Self, 671 F.2d 1344, 1350-51 (CCPA 1982)). 4 Appellant further argues Lemke does not disclose claim 1 's "transitioning" and "visually altering" limitations. App. Br. 17. Appellant alleges Lemke's lockscreen does not allow "access to content having a private designation." App. Br. 18. We are not persuaded by Appellant's argument because Lemke's teaching is not confined to a lock screen. We find Lemke's configuration provides access to a guest user without the need to shut down or reboot the mobile device, and the access control module configured to provide full system access or limited system access to applications clearly discloses the disputed "transitioning" limitation. Ans. 5-9, see Lemke ,r,r 15, 37. Appellant also argues the "visually altering" limitation is not disclosed in Lemke. App. Br. 18-20. The Examiner finds: Lemke discloses visually altering the display of the first visual indication, which is app#2 and app#5 on fig. 4b, and maintaining the display of the second visually indication which are apps #1, #3, and #4 (Lemke: para. 0045,fig. 4b ). Thus, when the user enters the privacy mode by providing the correct guest access code, certain applications on the device are visually altered (Lemke: para. 0045-0046,fig. 4b). Ans. 7-8. 4 To the extent Appellant may have intended their "different motivation" argument (App. Br. 11) as a "teaches away" argument, we further note that " [ t ]eaching away is irrelevant to anticipation." Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). 9 Appeal2018-002031 Application 13/714,325 Based upon our review of the evidence, we agree with the Examiner that Lemke's different applications disclose the "visually altering" limitation. Lemke, Fig. 4(b ). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on Lemke to disclose the disputed limitations of claim 1, nor do we find error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of independent claim 1, and grouped claims 7, 8, 14, 15, 21, 23-28, 30-33, and 35-38, which fall therewith. See Claim Grouping, supra. 3. Â§ 102(e) Rejection R2 of Claim 27 Appellant argues "Lemke fails to disclose 'the user input enabling the privacy mode on the electronic device comprises entry of first access credentials, different from second access credentials for accessing the electronic device,' as required by claim 27." App. Br. 25. The Examiner maps Lemke's user inputting the guest access code to ''first access credentials" and Lemke's full access code is mapped to "second access credentials," as recited in claim 27. Ans. 13-14. We agree with the Examiner's findings, because Lemke discloses two distinct access codes allowing different levels of access to the mobile device. Appellant has not responded to the Examiner's further findings and clarifications in the Answer in their Reply Brief. Arguments not made are waived. Therefore, we sustain the Examiner's anticipation rejection of dependent claim 2 7. 10 Appeal2018-002031 Application 13/714,325 4. Â§ 103(a) Rejection R4 of Claim 5 Regarding dependent claim 5 as obvious underÂ§ 103, Appellant argues none of the references teach or suggest "that the privacy mode be disabled based on the first gesture performed in reverse." App. Br. 21. While Appellant admits Horvitz discloses the detection of a reverse facial gesture (App. Br. 21 ), Appellant argues Horvitz does not teach "disabling." App. Br. 21-22. We are not persuaded by Appellant's arguments because Appellant is arguing the references separately when the rejection is for obviousness, relying upon what the reference combination would have suggested to a person of ordinary skill in the art. "[O]ne cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references." In re Keller, 642 F.2d 413,426 (CCPA 1981). The Examiner cites Lemke, not Horvitz, for teaching or suggesting disabling. Ans. 12-13. The Examiner further clarifies their findings in the Answer, to which Appellant does not respond in the Reply Brief. Id. Arguments not made are waived. Therefore, on this record, we sustain the Examiner's obviousness rejection of dependent claim 5. 5. Rejections R3/R4: Claims 2, 4, 9, 11, 12, 16, 18, 19, 22, 29, 34, 39 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R3 and R4 of claims 2, 4, 9, 11, 12, 16, 18, 19, 22, 29, 34, and 39 underÂ§ 103(a), we sustain the Examiner's rejection of these claims. Arguments not made are waived. 11 Appeal2018-002031 Application 13/714,325 REPLY BRIEF To the extent the Appellant may advance new arguments in the Reply Brief (Reply Br. 1-7) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. Â§ 41.4I(b)(2)), which Appellant has not shown. CONCLUSIONS (1) The Examiner erred with respect to indefiniteness Rejection RI of claims 1, 8, and 15 under 35 U.S.C. Â§ 112, second paragraph, and we do not sustain the rejection. (2) The Examiner did not err with respect to anticipation Rejection R2 of claims 1, 7, 8, 14, 15, 21, 23-28, 30-33, and 35-38 under 35 U.S.C. Â§ 102( e) over the cited prior art of record, and we sustain the rejection. (3) The Examiner did not err with respect to obviousness Rejections R3 and R4 of claims 2, 4, 5, 9, 11, 12, 16, 18, 19, 22, 29, 34, and 39 under 35 U.S.C. Â§ I03(a) over the cited prior art combinations of record, and we sustain the rejections. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision. See 37 C.F.R. Â§ 4I.50(a)(l). 12 Appeal2018-002031 Application 13/714,325 DECISION We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19, and 21-39. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 13