Ex Parte Hernandez et al

Patent Trial and Appeal Board

Dec 8, 2016

13351092 (P.T.A.B. Dec. 8, 2016)

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.
13/351,092 01/16/2012 Sarah Hernandez WAV-PT063.1 5252
61521 7590
DOVAS LAW P.C.
307 BAINBRIDGE STREET
PHILADELPHIA, PA 19147
12/12/2016 EXAMINER
NEALON, WILLIAM
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/12/2016 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):
DDOVAS @ DOVASLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH HERNANDEZ, ANDREW TALBOT, and
MITCHELL SCOTT OZER
Appeal 2015-007822
Application 13/351,092
Technology Center 2600
Before MARC S. HOFF, KRISTEN L. DROESCH,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—19.1 We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify WaveMarket, Inc., as the real party in interest. (Br. 1.)
Appeal 2015-007822
Application 13/351,092
THE INVENTION
Appellants’ disclosed and claimed invention is directed to logging and
reporting mobile device information. (Abstract.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A computer-implemented method for logging and
reporting mobile device information comprising:
receiving device activity information corresponding to use
of a particular mobile device via a client executed on the
particular mobile device;
sorting the activity information based on at least one
predetermined criterion; and
providing a display to a user showing a plurality of
graphical indications respectively corresponding to at least one
of a plurality of days and a plurality of time slots in a day to report
the sorted activity information to the user.
REJECTION
The Examiner rejected claim 9 under 35 U.S.C. § 112(a), first
paragraph, as failing to comply with the written description requirement.
(Final Act. 3.) Appellants do not address this rejection in their brief, and
therefore this rejection is summarily affirmed.2
The Examiner rejected claims 1—3, 11—12, and 17—19 under 35 U.S.C.
§ 103(a) as being unpatentable over Eldering (US 2008/0176585 Al, pub.
Jul. 24, 2008) and Sheha (US 2011/0045868 Al, pub. Feb. 24, 2011). (Final
Act. U-6.)
2 We note Appellants’ amended claim 9 after the Final Action, which
amendment was entered by the Examiner. (2/6/2014 Reply Pursuant to 37
C.F.R. § 1.116, p. 5; 2/24/2014 Advisory Action.) However, the Examiner
has not withdrawn the Section 112 rejection. (See Ans. 3.)
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Application 13/351,092
The Examiner rejected claims 4 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Eldering, Sheha, and Klassen (US 2011/0055546
Al, pub. Mar. 3, 2011). (Final Act. 6—7.)
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Eldering, Sheha, and Khazaka (US 6,529,724 Bl, issued
Mar. 4, 2003). (Final Act. 7-8.)
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Eldering, Sheha, Khazaka, and Klassen. (Final Act. 8—9.)
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Eldering, Sheha, and Angiolillo (US 2010/0330972
Al, pub. Dec. 30, 2010). (Final Act. 9-10.)
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Eldering, Sheha, Angiolillo, and Klassen. (Final Act. 10-
11.)
The Examiner rejected claims 13—16 under 35 U.S.C. § 103(a) as
being unpatentable over Eldering, Sheha, and Malik (US 7,272,633 B2, Sep.
18,2007). (Final Act. 11-12.)
ISSUES ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
dispositive issues:3
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed May 24, 2014); the Final
Office Action (mailed Nov. 6, 2013); and the Examiner’s Answer (mailed
Sep. 15, 2014) for the respective details.
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Application 13/351,092
Issue One: Whether the Examiner erred in finding the combination of
Eldering and Sheha teaches or suggests the independent claim 1 limitation,
“providing a display to a user showing a plurality of graphical indications
respectively corresponding to at least one of a plurality of days and a
plurality of time slots in a day to report the sorted activity information to the
user,” and the similar limitations recited in independent claims 18 and 19.
(App. Br. 5-8.)
Issue Two: Whether the Examiner erred in finding the combination of
Eldering and Sheha teaches or suggests the additional limitations of
dependent claim 11. (App. Br. 9—10.)
Issue Three: Whether the Examiner erred in finding the combination
of Eldering, Sheha, and Klassen teaches or suggests the additional
limitations of dependent claims 4 and 10. (App. Br. 10—12.)
Issue Four: Whether the Examiner erred in finding the combination
of Eldering, Sheha, and Angiolillo teaches or suggests the additional
limitations of dependent claim 8. (App. Br. 13—14.)
Issue Five: Whether the Examiner erred in finding the combination of
Eldering, Sheha, and Malik teaches or suggests the additional limitations of
dependent claims 13—16. (App. Br. 17—19.)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner errs. As to the obviousness rejections of claims
1—3, 5—7, and 12—19, we disagree with Appellants’ arguments, and we adopt
as our own (1) the pertinent findings and reasons set forth by the Examiner
in the Action from which this appeal is taken (Final Act. 3—9, 11—12) and (2)
the corresponding reasons set forth by the Examiner in the Examiner’s
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Answer in response to Appellants’ Appeal Brief (Ans. 3—7). We concur with
the applicable conclusions reached by the Examiner and emphasize the
following.
Issue One
In finding that Eldering and Sheha teach or suggest the limitation at
issue for the independent claims, the Examiner relies on the disclosure in
Eldering of displaying contact records arranged by order of number of calls
placed to the contacts, and/or durations of such calls. (Final Act. 4—5;
Eldering Fig. 15A, || 58—60.) The Examiner also relies on the disclosure in
Sheha of displaying the call history, for a date and time range specified by
the user, of calls or messages to or from contacts. (Final Act. 4; Sheha Figs.
11, 12, || 153, 319—320.) In addition, the Examiner interprets the pertinent
claim language as requiring, “displaying a view of sorted activity
information, the view showing some type of indication(s) of one of (1) a
plurality of days and (2) time slots in a day.” (Ans. 4.)
Appellants argue that the references do not teach or suggest displaying
“graphical indications” to report sorted activity, but rather only discloses
“listing a call history showing caller names.” (App. Br. 7—8.) Appellants
further argue the references “fail to suggest or disclose ‘showing a plurality
of graphical indications respectively corresponding to a plurality of days and
a plurality of time slots’ as recited in independent claims 1,18, and 19.”
(App. Br. 8.) As to the latter argument, Appellants mischaracterize the
claim requirement, which, as the Examiner finds, require only graphical
indications corresponding to “a plurality of days” OR “time slots in a day.”
(Ans. 4.) We agree with the Examiner that the cited references teach or
suggest at least the “plurality of days” alternative. Particularly taking into
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account the “time range identifiers 1102” of Figure 11 of Sheha, the lists in
the cited figures of Eldering and Sheha teach or suggest the display of calls
spanning multiple days. (Eldering Fig. 15A; Sheha Figs. 11, 12,1319.)
Therefore we are not persuaded the Examiner errs in finding the
combination of Eldering and Sheha teach or suggest the subject matter of
this limitation. In combination, the references teach or suggest displaying a
list, spanning multiple days, of calls in the order of call duration, (e.g.,
Eldering Fig. 15A; Sheha Figs. 11, 12.)
As to the former argument, Appellants dispute that such a listing
includes “graphical indications” of sorted activity corresponding to a
plurality of days. (App. Br. 7.) However, we agree with the Examiner that
the claims broadly encompass displays “showing some type of indication(s)”
of the required information. (Ans. 4.) The lists disclosed in the cited art are
comparable to the list of calls ranked by communication frequency depicted
in Figure 6 of the Specification, which Appellants admit is a “graphical
example[]” of the claimed subject matter. (App. Br. 3; cf. Eldering Fig. 15A
and Sheha Figs. 11, 12, with Spec. Fig. 6,133.)
Accordingly, we sustain the Examiner’s rejection of independent
claims 1,18, and 19.
Issue Two
Dependent claim 11 specifically requires the display of activity levels
for “a plurality of predetermined time slots during at least one day.” (App.
Br. 23.) The Examiner cites the above-discussed portions of Eldering as
teaching or suggesting this limitation. (Final Act. 5.)
Appellants argue that Eldering does not teach displaying activity
levels by predetermined time slots. (App. Br. 9.) The Examiner responds:
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Application 13/351,092
Examiner sees the actual cited portions of Eldering as
disclosing the specific subject matter of limitation and the
combination of Eldering with Sheha as teaching/suggesting all
the elements of the claim including those claims that the claim
depends from.
(Ans. 5.)
In contrast to the teaching in the cited art of displaying graphical
indications for a “plurality of days” as discussed above for the independent
claims, we are unable to discern in the cited portions of Eldering and Sheha
a teaching or suggestion of displaying activity levels by “predetermined time
slots,” and the Examiner’s response does not assist us. Therefore, on the
record before us, we are constrained to find the Examiner errs in rejecting
claim 11.
Issue Three
Dependent claim 4 requires “an alert to the user for each of the
plurality of days for which the activity information corresponds to the
predetermined period of time,” and claim 10 requires “an alert to the user for
each of the plurality of days corresponding to the at least one predetermined
criterion.” (App. Br. 20—22.) In addition to the disclosures of Eldering
discussed above, the Examiner relies on the additional disclosure in Eldering
of “time of day” directives to control which contacts are displayed at a
particular time of day, in combination with the general teachings in Klassen
regarding alerts of user activity on a mobile device, as teaching or
suggesting this limitation. (Final Act. 6—7; Eldering Fig. 9A, || 45, 51;
Klassen | 62.)
Appellants argue neither Eldering nor Klassen teach or suggest
providing the required alerts. (App. Br. 11—12.) Appellants admit that
Klassen generally teaches the concept of generating alerts, but argue
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“Klassen fails to suggest that such alerts can be displayed in conjunction
with indications of a plurality of days based on predetermined criteria.”
(App. Br. 12.) Instead, the Examiner relies on the disclosure of Eldering as
teaching or suggesting the determinations of whether activity information
corresponds to a predetermined criterion such as time periods, relying on
Klassen only for the additional requirement of providing alerts when the
predetermined criterion are satisfied. (Final Act. 7.)
In regard to the Examiner’s reliance on Eldering, Appellants argue
that the Examiner misunderstands the Eldering disclosure:
Eldering, paragraph [0051 ] does not teach disclosing for
each of a plurality of days anything at all. The correct
understanding of paragraph [0051] is that it teaches the use of
specific “time of day” directives to control what is displayed
when and how. . . .
. . . What is taught is that viewable contact fields can be
controlled by time of day directives. . . .
(App. Br. 11.)
We agree with Appellants — the portion of Eldering relied on by the
Examiner does not relate to determining whether activity information
corresponds to a predetermined criterion, but rather provides for establishing
criterion for which contacts are to be displayed on a contact list, and when
they are to be displayed. (Eldering Fig. 9 A, || 45, 51.) Although Klassen
does generally teach the concept of generating alerts, and portions of
Eldering, in combination with Sheha, as discussed above in connection with
the independent claims, do not teach displaying sorted activity information
for a plurality of days, we do not find a teaching or suggestion in the cited
references, whether taken alone or in combination, that teach or suggest the
“predetermined period of time” and “predetermined criterion” limitations at
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issue. Therefore, on the record before us, we are constrained to find the
Examiner errs in rejecting claims 4 and 10.
Issue Four
Dependent claim 8 requires the display of the total duration of phone
calls or electronic messages for each of a plurality of time slots in a day.
(App. Br. 22.) The Examiner again cites the above-discussed portions of
Eldering relied on for the rejection of the independent claims as teaching or
suggesting this limitation. (Final Act. 10.) In addition, the Examiner relies
on the disclosure in Angiolillo of a dynamic contact list with the capability
of displaying contacts that typically occur during a specified time period in
the day. (Final Act. 10; Angiolillo Fig. 7, Tflf 67—68.) As discussed above
for claim 11, we agree with Appellants that Eldering does not teach or
suggest displaying activity levels by predetermined time slots. (See App. Br.
13—14.) We also agree that the disclosure in Angiolillo regarding sorting
contact lists does not provide any additional pertinent teaching or
suggestion. (App. Br. 14.) The Examiner’s response, “Examiner, being one
of ordinary skill in the art, disagrees with the Appellants characterization of
the prior art of Angiolillo, Sheha, Eldering and Klassen” (Ans. 6), is
conclusory and unpersuasive, and accordingly we do not sustain the
rejection of claim 8. We also do not sustain the rejection of claim 9, which
depends from claim 8.
Issue Five
Dependent claim 13 requires the activity information of claim 1 to
include a “communication level based on at least two forms of
communication,” claim 15 further requires the communication forms to
comprise “phone communications and electronic messages,” and claims 14
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and 16 (dependent, respectively, from claims 13 and 15) further require the
communication level to be based on “factors.” (App. Br. 23.)
In rejecting these claims, the Examiner relies on the above discussed
teachings or suggestions in Eldering and Sheha of displaying call history, for
a date and time range, ordered by call duration or number of calls, together
with the disclosure in Malik of “a computer-implemented manager that
allows a user to participate in, keep track of, log and monitor all types of
communication activity including call activity, email, IMs, etc.” (Final Act.
11; Malik Abstract, col. 7,11. 52—67, col. 14,11. 19—24.) The Examiner also
finds Malik teaches the required use of factors. (Final Act. 2; Malik Fig. 5A,
col. 20,11. 43-62, col. 22,11. 51-67.)
Appellants, relying on the disclosure in the Specification of an
example of determining communication levels based on factors, argue
“Malik does not determine a communication level based on multiple forms
of communication.” (App. Br. 18; see Spec. 133.) This argument is
unpersuasive in that it focuses on Malik alone, whereas the rejection is based
on the combination of Eldering, Sheha, and Malik. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981) (the test for obviousness is whether the combination of references,
taken as a whole, would have suggested the patentee’s invention to a person
having ordinary skill in the art). In addition, as the Examiner states,
although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van Geuns, 988
F.2d 1181 (Fed. Cir. 1993).
In sum, we are not persuaded that the Examiner erred in rejecting
claims 13—16. Broadly but reasonably construing the requirement of
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determining a communication level based on factors, the combination of
displaying call history, for a date and time range, ordered by call duration or
number of calls as disclosed in Eldering and Sheha, together with the
processing of multiple communication forms as disclosed in Malik,
reasonably teaches or suggests the limitations at issue.
We note that Appellants do not challenge the Examiner’s finding, for
claim 12 (from which the claims at issue depend), that Eldering teaches
determining a communication level for a mobile device. (Final Act. 5;
Eldering Fig. 15A, | 58—59.) Further, given the teaching of Malik regarding
multiple communication forms, the Examiner’s findings are reasonable
because the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle,” because the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420-21 (2007)). We are persuaded the claimed subject
matter exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416.
CONCLUSIONS
Given the failure of Appellants to address the rejection, we summarily
affirm the rejection of claim 9 pursuant to 35 U.S.C. § 112(a), First
Paragraph.
For the reasons stated above, we sustain the obviousness rejections of
claims 1,18, and 19 over Eldering and Sheha, and of claims 13—16 over
Eldering, Sheha, and Malik.
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We also sustain the obviousness rejections of claims 2—3, 12, and 17
over Eldering and Sheha, of claim 5 over Eldering, Sheha, and Khazaka, of
claim 6 over Eldering, Sheha, Khazaka, and Klassen, and of claim 7 over
Eldering, Sheha, and Angiolillo, which rejections are not argued separately
with particularity.
Also for the reasons stated above, we do not sustain the obviousness
rejection of claim 11 over Eldering and Sheha, of claims 4 and 10 over
Eldering, Sheha, and Klassen, and of claim 8 over Eldering, Sheha, and
Angiolillo. We also do not sustain the rejection of claim 9 over Eldering,
Sheha, Angiolillo, and Klassen, which depends from claim 8.
DECISION
We affirm the Examiner’s rejection of claim 9 pursuant to 35 U.S.C.
§ 112(a), First Paragraph.
We affirm the Examiner’s obviousness rejections of claims 1—3, 5—7,
and 12—19.
We reverse the Examiner’s obviousness rejections of claims 4 and 8—
11.
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).
AFFIRMED-IN-PART
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