Ex Parte Moore et al

Patent Trials and Appeals Board

Mar 25, 2019

13596666 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/596,666 08/28/2012 Bradford Allen Moore
150004 7590 03/27/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
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.
P7292USD1/7777000016430l 3403
EXAMINER
ULRICH, NICHOLAS S
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
patents.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADFORD ALLEN MOORE, BAS ORDING, ELIZABETH
CAROLINE FURCHES, STEPHEN J. CHICK,
and KENNETH L. KOCIENDA
Appeal 201 7-005116
Application 13/596,666 1
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ALEX S. YAP, 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 1-9. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Apple Inc. as the real party in interest. (App. Br. 3.)
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Application 13/596,666
THE INVENTION
Appellants' disclosed and claimed invention is directed to a portable
electronic device with a touch screen display that includes simultaneously
displaying a character input area operable to display text character input and
emoji character input selected by a user. (Abstract.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method, comprising:
at a portable electronic device with a touch screen
display, while the portable electronic device is in a
user-interface locked mode:
receiving an incoming message from a party to a
user of the portable electronic device while
the touch screen display is in a power-
conserving state;
in response to receiving the incoming message:
powering up the touch screen display, and
displaying at least part of the incoming
message from the party to the user on
the touch screen display;
detecting a predefined user action to immediately
display a plurality of predefined responses to
the incoming message while displaying at
least part of the incoming message from the
party to the user on the touch screen display,
wherein the predefined responses include a
plurality of emoji characters and at least one
predefined response simultaneously includes
text and an emoji character;
in response to detecting the predefined user action
to immediately display the plurality of
predefined responses to the incoming
message, displaying the plurality of
predefined responses;
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detecting a predefined user action for selecting a
predefined response in the plurality of
predefined responses;
detecting a predefined user action to initiate
sending the selected predefined response to
the incoming message; and
in response to detecting the predefined user action
to initiate sending the selected predefined
response to the incoming message, sending
the selected predefined response to the
incoming message, wherein the selected
predefined response comprises an emoji
character in the plurality of emoji characters.
REJECTION
The Examiner rejected claims 1-9 under 35 U.S.C. § I03(a) as being
unpatentable over Chang et al. (US 2009/0288032 Al, pub. Nov. 19, 2009),
Ballard (US 6,727,916 Bl, issued Apr. 27, 2004), Buford (US 2006/0025091
Al, pub. Feb. 2, 2006), Cunningham et al. (US 7,669,135 B2, issued Feb.
23, 2010), Kamiya et al. (US 2006/0148526 Al, pub. July 6, 2006), and
Shaffer et al. (US 6,145,083, issued Nov. 7, 2000). (Final Act. 5-13.)
ISSUE ON APPEAL
Appellants' arguments present the following issue2 :
Whether the Examiner erred in finding the combination of Chang,
Ballard, Buford, Cunningham, Kamiya, and Shaffer teaches or suggests the
limitations of the claims. (App. Br. 17-23.)
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed July 26, 2016); the Reply Brief
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner errs. 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. 5-13)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 2-16).
We concur with the applicable conclusions reached by the Examiner and
emphasize the following.
In rejecting the claims as obvious, the Examiner relies on Chang,
which discloses a handheld electronic device with a touch-sensitive display,
with a screen lock function when the device is idle, and with the ability to
display in a dialog box a preview of an incoming message or email, in
response to which a user can prepare and send a reply via a submenu. (Final
Act. 5---6; Chang, Abstract, Figs. 13A---C, 15, ,r,r 39, 45--46, 76-77, 80-82.)
The Examiner also relies on the disclosure in Ballard of a handheld
device with a display and softkeys, which facilitates chat sessions by
displaying an incoming message and, by pressing a "Menu" softkey,
provides a list of canned replies selectable by the user. (Final Act. 6-7;
Ballard, Abstract, Figs. 4, 5, 4:24--26, 10:39-59.) The Examiner finds:
It would have been obvious to one of ordinary skill in the
art, having the teachings of Chang and Ballard before him at the
time the invention was made, to modify the replying to an
incoming message taught by Chang to include the user action to
display a plurality of predefined responses of Ballard, in order
to obtain detecting user action to display a plurality of
(filed Jan. 17, 2017); the Final Office Action (mailed Aug. 26, 2015); and
the Examiner's Answer (mailed Nov. 17, 2016) for the respective details.
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predefined responses to the incoming message. It would have
been advantageous for one to utilize such a combination as
providing a simple robust user interface to facilitate interactive
chat sessions would have been obtained, as suggested by
Ballard (Column 4 lines 24-26).
(Final Act. 7 .)
The Examiner also relies on the disclosure in Buford of enabling rapid
instant messaging input for a handheld device that superimposes on the
display of the message session, a pop-up window of frequently used
message phrases, from which the user may select a desired phrase to be
inserted into the current message. (Final Act. 7-9; Buford, Abstract, Fig. 1,
,r,r 6, 16.) The Examiner finds:
It would have been obvious to one of ordinary skill in the
art, having the teachings of Chang, Ballard, and Buford before
him at the time the invention was made, to modify the detecting
user action to display a plurality of predefined responses to the
incoming message taught by Ballard to include the detecting a
predefined user action to immediately display a plurality of
responses while displaying message text of Buford, in order to
obtain detecting a predefined user action to immediately display
a plurality of predefined responses to the incoming message
while displaying at least part of the incoming message from the
party to the user on the touch screen display. It would have
been advantageous for one to utilize such a combination as
accelerating messaging input would have been obtained, as
suggested by Buford (Paragraph 0006 lines 2-4 and Column 14
lines 1-2).
In Ballard, when a user wants to input predefined
responses for reply to an incoming message they are required to
navigate away from a view of the incoming message and move
through a series of menu's in order to arrive at the predefined
responses. Buford provides a quicker way of entering
predefined responses by requiring only a single input from the
user to bring up a menu of responses for selection. Further,
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Buford does not require the user to navigate away from their
current view in order to select predefined responses. The menu
of responses in Buford is displayed over the current screen.
Therefore, Buford would improve upon Ballard by accelerating
messaging input by not requiring a user to navigate away from
the incoming message and not requiring the user to enter
multiple inputs to arrive at a menu of predefined responses
(Final Act. 8-9.)
The Examiner also relies on the disclosure in Cunningham of the use
of emoticons in electronic communications. (Final Act. 9; Cunningham,
1 :22-24.) The Examiner finds:
It would have been obvious to one of ordinary skill in the
art, having the teachings of Chang, Ballard, Buford, and
Cunningham before him at the time the invention was made, to
modify the predefined responses taught by Ballard to include
the plurality of emoticons of Cunningham, in order to obtain
wherein the predefined responses include a plurality of emoji
characters and at least one predefined response simultaneously
includes text and an emoji character and wherein the selected
predefined response comprises an emoji character in the
plurality of emoji characters. It would have been advantageous
for one to utilize such a combination as providing well known
features of electronic communications and the ability to express
mood or tone in ways that text alone cannot, as suggested by
Cunningham (Column 1 lines 22-25).
As taught by Ballard, when replying to messages, plural
canned messages can be provided to the user in order for the
user to reply an incoming message. We are taught by
Cunningham that electronic communications are readily
implemented with emoticons in order for a user to indicate
moods or tones associated with the electronic communication.
It is obvious to one skilled in the art, that the predetermined
canned messages taught by Ballard could include emoticons in
order to provide canned messages that include an emoticon that
express a tone or mood associated with the canned message.
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(Final Act. 9--10.)
The Examiner further relies on the disclosure in Kamiya of a handheld
device that switches from an active to standby, power saving state after a
period of inactivity, and switches back to an active state upon receipt of an
incoming communication. (Final Act. 10; Kamiya, Abstract, ,r,r 43--45.)
The Examiner finds:
It would have been obvious to one of ordinary skill in the
art, having the teachings of Chang, Ballard, Buford,
Cunningham, and Kamiya before him at the time the invention
was made, to modify the receiving an incoming message taught
by Chang to include powering up the touch screen when an
event occurs of Kamiya, in order to obtain while the touch
screen display is in a power-conserving state in response to
receiving the incoming message powering up the touch screen
display. It would have been advantageous for one to utilize
such a combination as the mobile station would not display
information when in a standby state but display necessary
information on the display in a case that an event occurs, as
suggested by Kamiya (Paragraph 0045 lines 11-15).
(Final Act. 10-11.)
Finally, the Examiner relies on the disclosure in Shaffer of a
computing device that, when in locked mode, allows access to a subset of
incoming and outgoing communications, including email. (Final Act. 11;
Shaffer, Abstract, 2:45-58, 3:50-53, 4:30--40.) The Examiner finds:
It would have been obvious to one of ordinary skill in the
art, having the teachings of Chang, Ballard, Buford,
Cunningham, Kamiya, and Shaffer before him at the time the
invention was made, to modify the displaying and replying to
incoming messages taught by Chang, Cunningham, and Kamiya
to include the while the electronic device is in a locked mode of
Shaffer, in order to obtain displaying and replying to incoming
messages while in a user-interface locked mode. It would have
been advantageous for one to utilize such a combination as
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maintaining security and resolving conflicts between
communication access capability and lock mode, as suggested
by Shaffer (Column 2 lines 41-44).
(Final Act. 11.)
Appellants argue, "The rejections are improper because they depend
on the Examiner's dissection of the claim language into individual phrases
instead of addressing the claims as a whole, which is required in an
obviousness analysis." (App. Br. 12.) Appellants also argue, "The
Examiner has used Appellants' claims as a blueprint for piecing together
portions of six references to defeat patentability - the essence of
hindsight." (App. Br. 13.)
For example, for the limitation, "at a portable electronic device with a
touch screen display, while the portable electronic device is in a user-
interface locked mode," Appellants object to the Examiner's reliance on
Chang as disclosing a portable electronic device with a touch screen display,
and on Shaffer for a device in a user-interface locked mode. (App. Br. 15-
1 7.) Appellants argue that Shaffer discloses a desktop computer used for
telephony applications, and that the subset of communication access
capabilities enabled during locked mode relates to emergency outgoing calls
or internal calls. (App. Br. 15-16.) However, Shaffer is not so limited-
the disclosure of outgoing emergency calls is an example, not a limitation,
and Shaffer specifically states, "the method and system may be used in other
messaging applications, e.g., email applications." (Schaffer 2:47--48, see
also 3:50-53, 4:38--40.) Appellants' argument is unpersuasive because the
Examiner relies on the combination of the references as teaching or
suggesting the subject matter of the claims. (Final Act. 5-13; Ans. 2-16).
In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642
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F.2d 413,425 (CCPA 1981)) ("[T]he test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.").
We agree with the Examiner's reasoning that Schaffer generally teaches or
suggests enabling, in an electronic device, a subset of communication access
capabilities during locked mode, and that it is reasonable to rely on other
references for the particular capabilities set forth in the claims at issue.
Appellants also argue that Schaffer is non-analogous art, because it is
"neither from the same field of endeavor as the independent claims nor
reasonably pertinent to the problem faced by the inventor." (App. Br. 28-
30.) We agree with the Examiner's finding that Shaffer's disclosure of a
computing device that, when in locked mode, allows access to a subset of
incoming and outgoing communications, including email, is pertinent to the
problem faced by the inventors of the subject matter of the claims at issue.
(Ans. 15-16.)
For the limitation, "detecting a predefined user action to immediately
display a plurality of predefined responses to the incoming message while
displaying at least part of the incoming message from the party to the user
on the touch screen display, wherein the predefined responses include a
plurality of emoji characters and at least one predefined response
simultaneously includes text and an emoji character," Appellants object to
the Examiner's reliance on Ballard as disclosing predefined responses, on
Buford as disclosing the immediate display of predefined responses while
displaying a portion of the incoming message, and on Cunningham for the
use of emoji characters. (App. Br. 17-27.) Also, for the limitation,
"receiving an incoming message from a party to a user of the portable
electronic device while the touch screen display is in a power-conserving
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state," Appellants object to the Examiner's reliance on Chang as disclosing a
portable electronic device with a touch screen display that receives an
incoming message, and on Kamiya for a device in a power-conserving state.
(App. Br. 27-28.) These arguments are again unpersuasive as focusing on
the individual references rather than on the combination of references that
the Examiner relies on.
In sum, we are unpersuaded the Examiner has used improper
hindsight or has incorrectly dissected the claims rather than considering the
claimed subject matter as a whole. Reliance on multiple references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed.
Cir. 1991 ). In addition, any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning. However, so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made, and does not
include knowledge gleaned only from the Appellants' disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
In addition, we agree with the Examiner's statement:
The Examiner has not dissected out the claim limitations
as argued. The Examiner has established the factual inquiries
set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ
459 (1966) and establishes a clear basis as to why the claimed
invention is obvious over the prior art of record. When forming
the rejection of the claims, the Examiner has left out certain
portions of claim limitations when demonstrating the teachings
of a reference because the reference does not disclose such
features. The examiner is not dissecting these features but is
showing that a reference(s) discloses similar subject matter but
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not the limitation(s) as a whole. In doing so, the Examiner is
establishing the first basic factual inquiry of Graham v. John
Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) (Determining the
scope and content of the prior art). This in no way indicates that
the examiner has dissected the limitations as argued. The
Examiner establishes that a prior art reference(s) teaches X and
that a prior art reference(s) teaches Y. The Examiner then
addresses the supposed dissected limitations in each
combination of the references. In doing so, the Examiner
establishes the second basic factual inquiry of Graham v. John
Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) (Ascertaining the
differences between the claimed invention and the prior art).
The examiner indicates that the reference(s) discloses X and Y
but fails to disclose Z ( the limitation( s) as a whole). The
Examiner establishes the third basic factual inquiry of Graham
v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)
(Resolving the level of ordinary skill in the pertinent art) and
indicates that combining the reference( s) that teach X and Y
arrive at Z ( the claimed limitation( s)) with factual rationale to
support the combination. For each combination provided in the
rejections, the Examiner provides clear and articulate reason(s)
why the claimed invention would have been obvious over the
cited prior art.
(Ans. 2-3.)
Moreover, Appellants do not point to any evidence of record that the
resulting combination would be "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)). 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, 550 U.S. at 420-21. We are persuaded the claimed
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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.
Accordingly, we sustain the Examiner's rejection of claims 1-9 as
obvious over Chang, Ballard, Buford, Cunningham, Kamiya, and Shaffer.
DECISION
We affirm the Examiner's obviousness rejections of claims 1-9.
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
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