Ex Parte Kimball et al

Patent Trials and Appeals Board

Apr 25, 2019

13727440 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/727,440 12/26/2012 Jeffrey David Kimball
107193 7590 04/29/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487 .20.1.1.6 3632
EXAMINER
NGUYEN, NHAT HUY T
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY DAVID KIMBALL,
CHRIST AINA ANN RANK DOLAN, and
JOHN THURSTON WAS SOM, JR.
Appeal2018-000518
Application 13/727,440
Technology Center 2100
Before JOHN A. EVANS, LINZY T. MCCARTNEY, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 61---68, 71, 73-91, 95-97, and 100-109,
which constitute all of the claims pending in this application. Claims 69, 70,
72, 92, 94, 98, and 99 are canceled. We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 3.
Appeal2018-000518
Application 13/727,440
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention is generally directed to
customizing a user interface based on user profile information. Spec.
2:13-17. 2
Claim 61 is illustrative of the claims on appeal and reads as follows
(with the disputed limitation emphasized):
61. A method comprising:
accessing, by at least one processor, user profile
information associated with a user;
identifying a first functionality to perform a type of
action provided by a default user interface to be modified based
on the accessed user profile information;
identifying a control of the default user interface that
invokes the first functionality; and
customizing, by the at least one processor, the control
based on the user profile information so that a selection of the
control invokes a second, different functionality rather than the
first functionality.
App. Br. 22 (Claims App.).
Rejections on Appeal
Claims 61, 62, 65, 67, 71, 74, 76, 77, 79, 81, 82, 95, 97, and 104--109
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kerr (US
5,115,501; issued May 19, 1992). See Non-Final Act. 2-7.
Claims 63, 64, 68, 75, 80, 83-90, 96, 100, 102, and 103 stand rejected
2 Our Decision refers to the Non-Final Office Action mailed Dec. 23, 2016
("Non-Final Act."); Appellants' Appeal Brief filed June 9, 2017 ("App.
Br.") and Reply Brief filed Oct. 23, 2017 ("Reply Br."); the Examiner's
Answer mailed Aug. 24, 2017 ("Ans."); and the original Specification filed
Dec. 26, 2012 ("Spec.").
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Application 13/727,440
under 35 U.S.C. § I03(a) as being unpatentable over Kerr and Himmel et al.
(US 6,037,934; issued Mar. 14, 2000) ("Himmel"). See Non-Final Act.
7-12.
Claims 66 and 78 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kerr and Cole et al. (US 5,933,827; issued Aug. 3, 1999)
("Cole"). See Non-Final Act. 12.
Claim 73 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kerr and Handel et al. (US 6,195,651 Bl; issued Feb. 27,
2001) ("Handel"). See Non-Final Act. 13.
Claims 91, 93, and 101 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kerr, Himmel, and Cole. See Non-Final Act. 13-
14.
ANALYSIS
Rejection of Claims 61, 62, 65, 67, 71, 74, 76, 77,
79, 81, 82, 95, 97, and 104-109 under§ 102(b)
The Examiner finds that Kerr discloses the "selection of the control
invokes the second, different functionality rather than the first functionality,"
as recited in independent claims 61, 81, and 95. Non-Final Act. 3, 5---6. In
particular, the Examiner finds that selection of the control FILE, item 23 as
shown in Figures 2A and 2B of Kerr, provides a customized set of
functionality based on the user's job type and level of familiarity. Id. at 3.
The Examiner also finds that selection of the control FILE invokes a first
functionality in Figure 2A of Kerr and invokes a second functionality in
Figure 2B of Kerr, namely, LINK, MERGE, PAGE-SETUP, which are
different functionalities than the first functionalities. Id.; Ans. 13.
According to the Examiner, "'[fJunctionality' is a very broad term in the art
of user interface" and the use of the term in the claim without additional
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Application 13/727,440
limitations results in a broad claim, which is anticiptated by Kerr. Ans. 13.
In regard to Appellants argument that Kerr's drop down menu is not the
same as "invok[ing] the second, different functionality," the Examiner
further finds this argument is not persuasive because a "second, different
functionality" is displayed as a result of a user invoking the user interface
object. Id.
Appellants argue that Kerr "does not teach customizing the control or
interface [so that] 'selection of the control invokes the second, different
functionality rather than the first functionality,"' because the functionality
invoked by the selection of any control disclosed in Kerr "is always
providing a drop-down menu." App. Br. 13-14; Reply Br. 2. According to
Appellants, "Kerr discloses that it is simply the available selection of drop-
down menu items that changes based on the user's class," but providing a
different selection of drop-down menu items is merely an exercise of the
same function-providing a drop-down menu. App. Br. at 14. Appellants
further argue that the Examiner's interpretation of "invokes a second,
different functionality" is inconsistent with the Specification and
unreasonable because the Specification distinguishes between "producing a
different pull-down menu control (as taught by Kerr) and modifying a
control to have a different preprogrammed function (as recited by the
independent claims)." Reply Br. 3--4 ( citing Spec. 21-25).
We are persuaded by Appellants' arguments that the Examiner erred.
In particular, we determine that the Examiner erred in interpreting the
limitation "selection of the control invokes a second, different functionality
rather than the first functionality." Regarding claim construction, we give
this phrase the broadest reasonable interpretation that is "consistent with the
specification." In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir.
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Application 13/727,440
2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). As
Appellants argue, the Specification distinguishes between ( 1) producing "a
different pull-down menu control by removing or adding menu choices from
an existing pull-down control" (Spec. 9:22-23) and (2) producing a new
button "by modifying an existing button to have a different ...
preprogrammed function" (Spec. 9:24--25). The disputed limitation
specifically describes the second alternative because it recites that "selection
of the control invokes a second, different functionality." (Emphasis added).
The term "invoke" is defined as "to put into effect or operation: implement;
bring about, cause." See Webster's Ninth New Collegiate Dictionary, 637
(1985). Thus, the disputed limitation does not mean displaying different
drop-down menus, as the Examiner finds. See Ans. 13. Instead, the
limitation means that "selection of the control puts into effect or implements
a second function that is different than the first function." Although Kerr
discloses displaying different drop-down menus upon selection of a control,
Kerr does not disclose that selection of the control puts into effect or
implements a second, different functionality than the first functionality, as
recited in claims 61, 81, and 95. See Reply Br. 4. Thus, because Kerr does
not disclose the disputed limitation, Kerr does not anticipate claims 61, 81,
and 95. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In
re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)) ("A rejection for
anticipation under section 102 requires that each and every limitation of the
claimed invention be disclosed in a single prior art reference.").
Accordingly, we do not sustain the Examiner's rejection of claims 61,
81, and 95, as well as dependent claims 62, 65, 67, 71, 74, 76, 77, 79, 82, 97,
and 104--109, for anticipation under § 102(b ).
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Application 13/727,440
Rejection of Claims 63, 64, 66, 68, 73, 75, 78,
80, 83-91, 93, 96, and 100-103 under§ 103(a)
In rejecting claims 63, 64, 66, 68, 73, 75, 78, 80, 83-91, 93, 96, and
100-103 under§ 103(a), the Examiner relies on Kerr in the same manner as
the rejection under§ 102(b). See Non-Final Act. 7-14. For the same
reasons argued with respect to the rejection of independent claims 61, 81,
and 95 under § 102(b ), Appellants argue that Kerr fails to teach or suggest
the disputed limitation of these claims and that Himmel, Cole, and Handel
fail to remedy this deficiency of Kerr. App. Br. 18-19.
For the reasons discussed above regarding the rejection under
§ 102(b), we do not sustain the Examiner's rejection of claims 63, 64, 66,
68, 73, 75, 78, 80, 83-91, 93, 96, and 100-103 under§ 103(a) over Kerr,
Himmel, Cole, and Handel because the Examiner relies on Kerr in the same
manner as discussed with respect to claims 61, 81, and 95 and does not
perform further fact-finding to support an obviousness conclusion that the
disputed limitation would have been obvious over Kerr and does not rely on
Himmel, Cole, and Handel in any manner that remedies the deficiencies of
the underlying anticipation rejection. See CRFD Research, Inc. v. Mata!,
876 F.3d 1330, 1345 (Fed. Cir. 2017) (holding findings on anticipation
insufficient as a matter of law to decide the obviousness inquiry) ( citing
Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) overruled on
other grounds, Aqua Prods., Inc. v. Mata!, 872 F.3d 1290, 1296 n.1 (Fed.
Cir. 2017) ( en bane)).
Accordingly, we do not sustain the Examiner's rejections of claims
63, 64, 66, 68, 73, 75, 78, 80, 83-91, 93, 96, and 100-103 for obviousness
under 35 U.S.C. § 103(a).
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DECISION
We reverse the Examiner's decision rejecting claims 61, 62, 65, 67,
71, 74, 76, 77, 79, 81, 82, 95, 97, and 104--109 under 35 U.S.C. § 102(b).
We reverse the Examiner's decisions rejecting claims 63, 64, 66, 68,
73, 75, 78, 80, 83-91, 93, 96, and 100-103 under 35 U.S.C. § 103(a).
REVERSED
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