Ex Parte Newman et al

Patent Trial and Appeal Board

Jan 30, 2017

13285751 (P.T.A.B. Jan. 30, 2017)

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.
13/285,751 10/31/2011 John-Rhys Newman 042933/411977 1048
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
KELLS, ASHER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN-RHYS NEWMAN, PASCAL WEVER, MARCO PAGLIA,
DUNCAN BURNS, JULIAN BLEECKER, and JACOB ZUKERMAN
Appeal 2016-003 315
Application 13/285,7511
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
MICHAEL M. BARRY, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1,2, 4—7, and 9—22.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants indicate the Real Party in Interest is Nokia Technologies Oy.
App. Br. 2.
2 Claims 3, 8, and 23 are cancelled. Final Act. 2.
Appeal 2016-003315
Application 13/285,751
Invention
According to Appellants, the disclosure relates to the field of portable
electronic device modes, associated methods, computer programs and
apparatus. Spec. 1:5—6
Exemplary Claim
Claim 1 is reproduced below with disputed limitations emphasized:
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one memory and the computer program code
configured to, with the at least one processor, cause the
apparatus to perform at least the following:
provide a first mode of operation for a portable electronic
device, the first mode configured to allow general unlocked
user interaction with the user interface of the portable electronic
device, the first mode associated with allowing for the
availability of one or more of a first level of power
consumption and processor activity for the portable electronic
device;
provide a second mode of operation for the portable
electronic device, the second mode configured to allow locked
user interaction with the user interface of the portable electronic
device, the second mode associated with allowing for the
availability of one or more of a second level of power
consumption or processor activity for the portable electronic
device;
wherein the locked user interaction of the second mode
of operation allows for the user to provide one or more specific
limited user inputs to the portable electronic device using the
user interface of the portable electronic device, to directly
interact with associated second mode output provided using the
user interface in the second mode of operation, the one or more
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Application 13/285,751
specific limited user inputs not being associated with general
unlocking of the portable electronic device to enter the first
mode of operation; and
wherein the apparatus is configured to, in the second
mode, provide an indication of an event associated with second
mode output, the event being receipt of a message from a third
party or a scheduled event, the occurrence of the event
triggering the availability, for a predetermined period of time
following the occurrence of the event, in the second mode, of
allowing at least one of the one or more specific limited user
inputs associated with the second mode output to enable display
of abbreviated second mode output for the event in response to
said at least one of the one or more specific limited user inputs
made within the predetermined period,
abbreviated second mode output being an abbreviated
version of output for the event available in the first mode; and
the at least one of the one or more specific limited user
inputs comprising moving the portable electronic device.
Rejections
Claims 1, 2, 4—7, 9-12, 16, 19, and 20-22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Makela et al. (US 2007/0300140
Al; Dec. 27, 2007) and Beeman et al. (US 7,250,955 Bl; July 31, 2007).
Claims 13—15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Makela, Beeman, and Moore et al. (US
2010/0123724 Al; May 20, 2010).
ANALYSIS
We have reviewed the Examiner’s rejections and the evidence of
record in light of Appellants’ arguments that the Examiner has erred. We
disagree with Appellants’ arguments and conclusions. We adopt as our
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Application 13/285,751
own: (1) the findings and reasons set forth by the Examiner in the Office
Action from which this appeal is taken and (2) the findings and reasons set
forth in the Examiner’s Answer. We concur with the conclusions reached by
the Examiner and further highlight specific findings and argument for
emphasis as follows.
Independent Claims 1, 21, and 22.
Appellants contend the Examiner erred in rejecting independent claims
1,21, and 22 because the combination of Makela and Beeman fails to teach
or suggest:
[P]rovid[ing] an indication of an event associated with second
mode output . . . the occurrence of the event triggering the
availability, for a predetermined period of time following the
occurrence of the event, in the second mode, of allowing at least
one of the one or more specific limited user inputs associated
with the second mode output to enable display of abbreviated
second mode output for the event in response to said at least one
of the one or more specific limited user inputs made within the
predetermined period,
as recited in those claims. App. Br. 9—12; Reply Br. \—A.
Appellants argue that the notification window of Beeman is not
provided in response to a user’s movement input. App. Br. 10. Appellants
also argue Makela’s menu options 47 and 49 are not provided in response to
a user’s movement input. Id. at 10—11. Appellants further argue that the
abbreviated content of Makela and Beeman are automatically shown to the
user upon the event occurring and remain displayed until the user interacts
with the device. Id. at 11 (citing Beeman 7:23—25; Makela 143). Although
Appellants concede Makela makes a general statement that a gesture input
may also be movement of a device, Appellants argue that there is no
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Application 13/285,751
disclosure in Makela of how a movement user input may be used to enable
display of content. Id. at 12 (citing Makela 120). Finally, Appellants argue
that the combination of Makela and Beeman is improper because there is no
motivation for a skilled person to combine only the fade-in/fade-out aspect
of Beeman’s notification window and associated controls without also
choosing to display its abbreviated content. Id. at 12—13.
The Examiner finds, however, and we agree, that Makela teaches the
receipt of a specific limited user input to cause display of abbreviated output
in a locked mode. Final Act. 5; Ans. 16. The Examiner further finds, and
we agree, Makela teaches that the interface of Figure 3B is presented in
response to user input. Ans. 16—17 (citing Makela 37, 42). Makela
explains that a gesture input enables the display of abbreviated second mode
output for an event. Id. at 17—18 (citing Makela 128). The Examiner also
finds, and we agree, Makela teaches that a gesture user input includes
moving (e.g., shaking) a portable electronic device. Id. (citing Makela 120).
The Examiner relies on Beeman to teach that an occurrence of an event may
trigger the availability, for a predetermined time following the occurrence of
an event, of allowing specific limited user input. Final Act. 6; Ans. 16.
Therefore, we are not persuaded the combination of Makela and Beeman
fails to teach the disputed limitation.
The Examiner has also articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). A reason to combine teachings
from the prior art “may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved.” IVMS Gaming Inc. v.
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Application 13/285,751
Inti Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet,
149 F.3d 1350, 1357 (Fed. Cir. 1998)). “Under the correct [obviousness]
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR, 550 U.S. at 420.
The Examiner has articulated reasoning with a rationale from Beeman
for the motivation to combine the teachings of Makela and Beeman.
Specifically, the Examiner finds, and we agree, “[s]uch a modification
would give a user an appropriate amount of time to be notified of the
message and respond accordingly, without the notification taking up space
on the display for too long or leaving the device subject to unintentional user
input.” Final Act. 6; Ans. 18. (citing Beeman 2: 4—17.). Appellants’
arguments do not provide sufficient evidence or a technical line of reasoning
to persuade us this finding constitutes error. Arguments of counsel cannot
take the place of factually supported objective evidence. See, e.g., In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
In reply, Appellants raise new arguments for the first time that were
not raised in Appellants’ opening brief. For example, in their Reply Brief,
Appellants now argue the Examiner used hindsight to find that Beeman
teaches an interaction with a device to be available for a limited time period
(Reply Br. 2) and that Makela requires a user input to change modes to view
content relating to a missed call or message (Reply Br. 4). These new
arguments are not entitled to our consideration because they were not
initially presented in Appellants’ opening brief and were not raised in
response to a new argument presented by the Examiner in the Answer.
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Appellants could have made these arguments in their opening brief, but did
not. The Examiner provided a detailed explanation of the evidence and the
basis for rejecting the claims at issue as obvious over the combination of
Makela and Beeman. See Final Act. 3—7. Appellants have not explained
why these arguments were not presented until the Reply Brief, nor is it
apparent that these arguments were necessitated by an argument or rationale
presented by the Examiner in the Answer for the first time, or any other
circumstance constituting “good cause” for their belated presentation. See
37 C.F.R. § 41.41(b)(2) (2016). Therefore, Appellants’ arguments are
waived.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Makela and Beeman teaches or suggests:
[P]rovid[ing] an indication of an event associated with second
mode output . . . the occurrence of the event triggering the
availability, for a predetermined period of time following the
occurrence of the event, in the second mode, of allowing at least
one of the one or more specific limited user inputs associated
with the second mode output to enable display of abbreviated
second mode output for the event in response to said at least one
of the one or more specific limited user inputs made within the
predetermined period,
as recited in the independent claims. Therefore, we sustain the Examiner’s
rejection of independent claims 1,21, and 22.
Remaining Claims 2, 4—7, and 9—20
Appellants rely on the same arguments they made with respect to the
independent claims to assert that the Examiner erred in rejecting claims 2, 4—
7, and 9-20. App. Br. 9-13. Based upon the analysis provided above, we
are not persuaded the Examiner erred in rejecting these claims. See 37
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C.F.R. § 41.37(c)(l)(iv) (2014); In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir.
2011) (“We conclude that the Board has reasonably interpreted Rule 41.37
to require applicants to articulate more substantive arguments if they wish
for individual claims to be treated separately.”). Accordingly, we sustain the
Examiner’s rejection of claims 2, 4—7, and 9—20.
DECISION
We AFFIRM the Examiner’s rejection of claims 1, 2, 4—7, and 9—22.
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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