Ex Parte Klassen et al

Patent Trial and Appeal BoardJul 29, 2015

13244884 (P.T.A.B. Jul. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/244,884 09/26/2011 90140 7590 07/31/2015 BlackBerry Limited (HFZ) Patent Team 2200 University A venue East Waterloo, ON N2K OA 7 CANADA FIRST NAMED INVENTOR Gerhard Dietrich Klassen 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. 30278-US-CNT2 4733 EXAMINER D AGOSTA, STEPHEN M ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 07/31/2015 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): patdoctc@fr.com portfolioprosecution@blackberry.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERHARD DIETRICH KLASSEN, SHAUL S. WISEBOURT, and SAMER F ARMY Appeal2013-005612 Application 13/244,884 Technology Center 2600 Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and A. T"""'\. A. 1'. Jr T T""lt.""I[ T,,........,.-.,. TT-.i. T ' 1 â€¢ â€¢ , , â€¢ T'lo , , T 1 AUAlVl J. Y Y Ul'Hl"l, Aamznzsrranve rarenr Juages. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal2013-005612 Application 13/244,884 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1-5, 8-20, and 22-33. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. THE INVENTION Appellants' claimed invention is directed to visually representing information on a display of a portable electronic device by receiving location coordinates from at least one other portable electronic device, plotting a visual identifier on a map, and displaying the map on the display of the portable electronic device. Abstract. Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method for visually representing information on a display of a portable electronic device, said method comprising: receiving location information of at least one other portable electronic device; receiving status information of said at least one other portable electronic device; and displaying (i) a map at said portable electronic device, (ii) a visual identifier on said map corresponding to said location information of said at least one other portable electronic device, and (iii) said status information of said at least one other portable electronic device; presenting additional information associated with the visual identifier, wherein the additional information is from a 1 Claims 6, 7, and 21 have been canceled. App. Br. 1. 2 Appeal2013-005612 Application 13/244,884 contact list of the portable electronic device, when the visual identifier is selected. REFERENCES and REJECTIONS 1. The Examiner provisionally rejected claims 1-5, 8-20, and 22-302 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-3 and 5-15 of co-pending App. No. 11/346,280. 2. The Examiner rejected claims 1-5, 8-12, 15-20, 22-26, 29-30, and 32-33 under 35 U.S.C. Â§ 103 as unpatentable over Fish (US 7,219,303 B2; filed May 20, 2004) and further in view ofMohi (US 6,980,813 B2; issued Dec. 27, 2005) and {Ozaki (JP 08-005394; pub. Jan. 12, 1996) or Wakabyashi (JP 03-121162; pub. April 23, 2003)} and Yomoda (US 7,308,277 B2; filed July 20, 2004). 3. The Examiner rejected claims 13 and 27 under 35 U.S.C. Â§ 103 as unpatentable over Fish and further in view of Mo hi and {Ozaki or Wakabyashi} and further in view of Muramatsu (US 2002/0115450 Al; pub. Aug. 22, 2002). 2 The Final Office Action refers to provisionally rejecting claims 1-30 (Fin. Act. 2); however, as claims 6-7 and 21 had been canceled prior to the Final Office Action (Amendment dated March 9, 2012, pp. 2-6), we will treat the provisional rejection as applying to claims 1-5, 8-20, and 22-30. 3 Appeal2013-005612 Application 13/244,884 4. The Examiner rejected claims 14, 28, and 31under35 U.S.C. Â§ 103 as unpatentable over Fish and further in view of Mohi and {Ozaki or Wakabyashi} and further in view of Official Notice. ISSUES The issues are whether the Examiner erred in finding: 1. that claims 1-5, 8-20, and 22-30 are subject to a provisional nonstatutory obviousness-type double patenting rejection; 2. sufficient motivation to combine the references applied in the rejection of independent claims 1 and 18; and 3. a prima facie case of obviousness with respect to claims 10 and 24. ANALYSIS Claims 1-5, 8-20, and 22-30: Double Patenting We acknowledge that Appellants do not offer arguments against this rejection. Instead Appellants state that "[ u ]pon a first one of the claims sets being indicated to be allowable, the Applicant will consider the propriety of filing a terminal disclaimer to obviate the obviousness-type double patenting rejections." Reply Br. 5. The decision to enter additional rejections against the claims of the application or to withdraw the provisional double-patenting rejection lies with the Examiner. Under these circumstances, we have the authority to decline to reach the rejection. Given this authority, we decline to reach the provisional rejection of claims 1-5, 8-20, and 22-30 on the ground ofnonstatutory obviousness- 4 Appeal2013-005612 Application 13/244,884 type double patenting as being unpatentable over claims 1-3 and 5-15 of Application No. 11/346,280. Claims 1-5, 8-9, 11-20, 22-23, and 25-33 Appellants first argue that in the rejection of independent claims 1 and 18, "the Final Office Action combines at least four references and provides insufficient motivation for such a combination." App. Br. 5; see also Reply Br. 5. Appellants contend that "the Final Office Action merely provides a conclusory statement of obviousness." App. Br. 7. We do not agree with Appellants' argument. The Examiner articulates, and we agree, that CHAT, PRESENCE, and LOCATION DETERMINATION systems would allow a user to "check at a glance" the location and connection status of a friend so as to give real-time feedback regarding whether a response to a message would be timely, and prevent the user for example, from inviting a friend to a lunch or a meeting when the friend is not located nearby (Ans. 6). Thus, contrary to Appellants' contention, the Examiner provides a rational underpinning to support the legal conclusion of obviousness. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Appellants additionally contend that independent claims 1 and 18 are not obvious because "they incorporate new functionality into their elements that yield unexpected results." App. Br. 9. We do not agree. Appellants rely only on argument, and argument of counsel cannot take the place of factually supported objective evidence. See, In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants provide no evidence of new functionality that yields unexpected results. 5 Appeal2013-005612 Application 13/244,884 Finally, Appellants contend that Fish teaches away from the combination with the other references because Fish teaches allowing a user to control how much information to disseminate, whereas placement of a visual identifier on a map (as taught by the combination) would disseminate the actual position of the device (App. Br. 9; Reply Br. 5). We do not find this argument persuasive. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not "criticize, discredit, or otherwise discourage" investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not shown where Fish criticizes, discredits, or discourages use of a map to disseminate an actual position. While Fish does teach that the granularity of the geographic information disseminated may be controlled by a user interface (col. 19, 11. 37-64; Fig. 5), Fish does not discourage from a visual identifier disseminating an actual position because Fish teaches a "street address" as a location option (id.). For these reasons, we affirm the Examiner's rejection of claim 1 and of claim 18 which has commensurate limitations. We also affirm the rejections of claims 2-5, 8-9, 11-17, 19-20, 22-23, and 25-33, which are dependent from claims 1 and 18 and which were not argued separately. Claims 10 and 2 4 Appellants separately argue that the Final Office Action fails to address the elements of dependent claims 10 and 24. App. Br. 10. Both claims require the status information to comprise an indication of the status of use of the at least one other portable electronic device. We do not find this argument persuasive. The Examiner finds (Ans. 11 ), and we agree, that Ozaki teaches an indication of the status of use of at least one other portable 6 Appeal2013-005612 Application 13/244,884 electronic device. See Ozaki Abstract, describing "confirm[ing] the members' presences at a glance." We note that Appellants' Reply Brief does not challenge the Examiner's finding. Accordingly, we affirm the Examiner's rejection of claims 10 and 24. CONCLUSION We decline to reach the Examiner's provisional rejection of claims 1- 5, 8-20, and 22-30 on the ground of nonstatutory obviousness-type double patenting. The Examiner did not err in finding: 1. sufficient motivation to combine the references applied in the rejection of independent claims 1 and 18; and 2. a prima facie case of obviousness with respect to claims 10 and 24. DECISION We decline to reach the Examiner's provisional rejection of claims 1- 5, 8-20, and 22-30 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 5-15 of Application No. 11/346,280. We affirm the Examiner's decision rejecting claims 1-5, 8-20, and 22-33. 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). AFFIRMED tc 7