Ex Parte LeBeau et al

Patent Trial and Appeal BoardMar 5, 2019

14972911 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/972,911 12/17/2015 Michael J. LeBeau 26192 7590 03/07/2019 FISH & RICHARDSON P.C. PO BOX 1022 MINNEAPOLIS, MN 55440-1022 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. 16113-1842006 4613 EXAMINER SHEHNI, GHAZAL B ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 03/07/2019 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. LEBEAU, JOHN NICHOLAS JITKOFF, and ROMAIN P. GUY Appeal2018-006933 Application 14/972,911 Technology Center 2400 Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejection of claims 13-17, 21-27, 31, and 32. The Examiner objected to claims 18-20 and 28-30 as being dependent upon a rejected base 1 This Decision uses the following abbreviations: "Spec." for the original specification, filed Dec. 17, 2015, which claims benefit through several intermediate applications to U.S. Application Serial No. 12/851,739, filed Aug. 6, 2010; "Final Act." for the Final Office Action, mailed June 28, 2017; "App. Br." for Appellants' Appeal Brief, filed Nov. 27, 2017; "Ans." for Examiner's Answer, mailed May 10, 2018; and "Reply Br." for Appellants' Reply Brief, filed June 26, 2018. 2 According to Appellants, the real party in interest is Google LLC. App. Br. 1. Appeal2018-006933 Application 14/972,911 claim. Final Act. 6. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. BACKGROUND Appellants' disclosed embodiments and claimed invention relate to receiving a user command and an unlock command. Abstract. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A computer-implemented method, comprising: receiving, by a computing device that is in a locked state, a user command; receiving, by the computing device and after the computing device has begun to receive the user command, a user request to unlock the computing device; executing, by the computing device and responsive to the user request to unlock the computing device, an unlocking operation to transition the computing device from the locked state to an unlocked state; and presenting, by the computing device, while the computing device is in the unlocked state, one or more results responsive to the user command. App. Br. 16 (Claims App'x). 2 Appeal2018-006933 Application 14/972,911 THE REJECTI0N3 Claims 13-17, 21-27, 31, and 324 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Lee (US 2009/0136035 Al, published May 28, 2009) and Clark (WO 2010/075623, published July 8, 2010). Final Act. 6-8. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We have considered all of Appellants' arguments and any evidence presented. Based upon our review of the record, we find a preponderance of the evidence supports particular arguments by Appellants with respect to claim 13. We highlight and address specific findings and arguments for emphasis in our analysis below. 3 The Final Action rejected claims 13-32 on the grounds of nonstatutory double patenting (Final Act. 5---6), but Appellants have since filed a terminal disclaimer, mooting this ground of rejection (App. Br. 1 ). 4 The Final Action includes claims 18-21 and 28-30 in the lead paragraph for the rejection (Final Act. 6), but the Examiner corrects this typographical error in the Answer (Ans. 2). 3 Appeal2018-006933 Application 14/972,911 Obviousness Rejection Claims 13-17, 22-26, and 32 Claim 13 recites: "receiving, by a computing device that is in a locked state, a user command" and "receiving, by the computing device and after the computing device has begun to receive the user command, a user request to unlock the computing device." App. Br. 16 (Claims App'x). The Examiner found Lee teaches these limitations of claim 13. Final Act. 7. Specifically, the Examiner pointed to Lee's remote unlocking command sent to a device from a mobile communication terminal. Id. ( citing Lee ,r,r 22, 34, and 43). Appellants argue Lee fails to teach or suggest both the claimed "user command" and the claimed "user request." App. Br. 7. Appellants explain Lee discloses "only a single request/command" and not "a received 'user command' and a separate 'user request to unlock the computing device' that is received 'after the computing device has begun to receive the user command."' Id. ( emphasis removed) ( quoting claim language). The Examiner responds: "nowhere in the claim recites that a user command and user request are two separate/ different entities and where there is a user request, it is inherent that it was a user command, just as Lee uses command and request." Ans. 5 ( citing Lee ,r,r 22, 43). We agree with Appellants that claim 13 requires receiving a user command and a separate user request. Specifically, the claim language recites "receiving ... a user command" and "receiving, ... after the computing device has begun to receive the user command, a user request to unlock the computing device." Because this language requires receipt of the "user request" after receipt of the "user command" begins, i.e., a temporal limitation, we conclude the claim requires two separate items. 4 Appeal2018-006933 Application 14/972,911 Accordingly, we are persuaded the Examiner erred in finding that Lee's unlocking command teaches both the claimed "user request" and the claimed ''user command." As the Examiner found, Lee's mobile communication terminal sends an unlocking command to a device. Id. ,r,r 22, 43. But it is unclear how Lee's unlocking command teaches or suggests both the claimed "user command" and the later-received "user request." The Examiner argues that a user command is "inherent" in a user request, noting that Lee uses the terms "command" and "request" interchangeably. Ans. 5. However, the issue is not whether there are any differences between a "command" and a "request." Rather, as explained above, the issue is that the claim requires two separate items--( 1) a "user request" received after a device begins to receive (2) a "user command"- and the Examiner does not explain how Lee's unlocking command teaches or suggests both. Moreover, the Examiner has not explained how other aspects of Lee remedy this deficiency. The Examiner makes reference to Lee's teachings regarding the ongoing Bluetooth connection between the communication terminal and the device (see Ans. 4--5) and user input that could be received via the communication terminal's keypad (see Final Act. 3), but the Examiner fails to explain (and it is unclear from our review) how these other aspects of Lee teach or suggest one of the disputed claim limitations. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring a "rational underpinning to support the legal conclusion of obviousness"), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Therefore, based upon the findings above, on this record, we are persuaded of error in the Examiner's reliance on the cited prior art 5 Appeal2018-006933 Application 14/972,911 combination to teach or suggest disclose the disputed limitation of claim 13, and we find error in the Examiner's resulting legal conclusion of obviousness. Accordingly, we do not sustain the Examiner's obviousness rejection of independent claim 13, or independent claim 23, which recites the disputed limitations in commensurate form. The pending dependent claims (i.e., claims 14--17, 21, 22, 24--27, 31, and 32) stand with their respective independent claim. DECISION We reverse the Examiner's decision rejecting claims 13-17, 21-27, 31, and 32. REVERSED 6