Ex Parte Nilsson

Patent Trial and Appeal Board

Mar 4, 2016

12472570 (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/472,570 0512712009 Fredrik Nilsson
23380 7590 03/08/2016
TUCKER ELLIS LLP
950 MAIN A VENUE
SUITE 1100
CLEVELAND, OH 44113-7213
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.
PS09 0465US1 7920
EXAMINER
NABI,REZA U
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
03/08/2016 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@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIK NILSSON
Appeal2014-002852 1
Application 12/472,570
Technology Center 2100
Before JEAN R. HOMERE, WILLIAM M. FINK, and SHARON PENICK,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-18 and 20, which constitute all the
claims pending in this application. App. Br. 8. Claim 19 has been canceled.
Id. at 18. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real party in interest as Sony Mobile
Communications AB. App. Br. 3.
Appeal2014-002852
Application 12/472,570
Appellant's Invention
Appellant's invention is directed to an electronic device (100)
containing a touchscreen interface (130) that, when operating in a locked
mode, provides limited functionality to a user only with respect to
applications previously configured in an unlocked mode. Spec. i-fi-178-80,
Fig. 1.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A device, comprising:
a memory configured to store a plurality of application
programs;
a touch screen display configured to:
operate in a locked mode;
user interface logic configured to:
receive a selection from a user prior to the touch
screen display operating in the locked mode, the selection
identifying a first one of the plurality of application
programs to be used while the touch screen display is in
the locked mode; and
control logic configured to:
allow a user to input commands to the first
application program via the touch screen display while the
touch screen display is in the locked mode, and prohibit
interaction with other ones of the plurality of application
programs via the touch screen display while the touch
screen display is in the locked mode.
2
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Application 12/472,570
Berquist et al.
("Berquist")
Bodepudi et al.
("Bodepudi")
Pisula et al.
("Pisula")
Westerman et al.
("Westerman")
Prior Art Relied Upon
us 5,821,931 Oct. 13, 1998
US 2007 /0016958 Al Jan. 18,2007
US 2010/0060586 Al Mar. 11, 2010
US 2010/0211920 Al Aug. 19, 2010
Rejections on Appeal
Appellant requests review of the following Examiner's rejections:
Claims 1, 2, 8-13, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Pisula and Bodepudi.
Claims 3, 4, and 14--16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Pisula, Bodepudi, and Berquist.
Claims 5-7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Pisula, Bodepudi, Berquist, and
Westerman.
3
Appeal2014-002852
Application 12/472,570
ANALYSIS
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 9-25, and the Reply Brief, pages 3-11.2
Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the
disclosures of Pisula and Bodepudi are properly combined to teach or
suggest a user interface logic configured to receive from a user, prior to a
touchscreen associated therewith operating in the locked mode, a selection
identifYing one of a plurality of applications programs to be used in the
locked mode, as required by independent claim 1?
We have reviewed the Examiner's rejections in light of Appellant's
arguments. We are unpersuaded by Appellant's contentions. Except as
indicated otherwise, we adopt as our own the findings and reasons set forth
in the rejections from which appeal is taken and in the Examiner's Answer
in response to Appellant's Appeal Brief. See Ans. 2--46; Fin. Act. 2-33.
However, we highlight and address specific arguments and findings for
emphasis as follows.
First, Appellant argues the combination of Pisula and Bodepudi does
not teach or suggest the disputed limitations emphasized above. App. Br. 9-
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed July 3, 2013), the Reply Brief (filed
December 24, 2013), and the Answer (mailed October 24, 2013) for their
respective details. We have considered in this Decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv)(2013).
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Application 12/472,570
15; Reply Br. 3---6. In particular, Appellant argues Pisula discloses a user
interface (UI 400) containing multiple application icons including a workout
support icon (142), which can be selected by a user for subsequent
interaction therewith. However, Appellant submits the user interaction with
the application in the locked mode via the UI, as disclosed by Pisula, is not
in response to the application being selected via the interface prior to the
display entering the locked mode. App. Br. 10-11; Reply Br. 3. According
to Appellant, the settings icon ( 4002) disclosed by Pisula is not related at all
to the locked mode. Reply Br. 3. Appellant's arguments are not persuasive.
Pisula discloses a portable electronic device equipped with a
touchscreen display for providing a user with limited functionality to a
workout support application via the touchscreen interface while operating in
a locked mode. Abstr. In particular, the touchscreen interface (400A)
contains a plurality of application icons including a settings icon ( 4002) and
a workout support icon (142). Fig. 4A. Prior to the user interface entering
the locked mode, the user can utilize the settings application to adjust the
settings of the workout support application (142) such that the workout
support application become accessible to the user on a limited basis when
the touchscreen interface is operating in the locked mode. Pisula i-fi-f 141,
142, 149, 152, 158, and 159.
We agree with the Examiner that one of ordinary skill in the art would
have readily ascertained from Pisula's disclosure that the workout support
application was selected from a plurality of applications (Fig. 4A) prior to
entering the locked mode to subsequently provide the user with limited
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Application 12/472,570
functionality to the workout application when the touchscreen interface is
operating in the locked mode (Fig. 4Z). Ans. 28; see also Pisula i-fi-f 141 and
148. Appellant correctly argues that because the screenshots provided by
the Examiner in the Answer are not taken from any of the references of
record, they cannot be properly relied upon to show how the settings of the
workout support application are adjusted prior to the touchscreen interface
operating in the locked mode. Reply Br. 4. Nonetheless, we find the
contents of these screenshots are cumulative to the cited portions of Pisula,
and we do not rely upon the screenshots in our Decision. Further, we concur
with the Examiner's finding that Bodepudi' s express teaching of selecting
desired applications in an unlocked mode such that only the selected
applications are accessible to the user when the computer is in a locked
mode complements Pisula's teachings to the extent that the cited portions of
Bodepudi spells out specific steps for setting up the applications before and
after entering the lock mode. Ans. 29-32 (citing Bodepudi i-fi-137 and 38).
Accordingly, we agree with the Examiner that the proposed combination of
Pisula and Bodepudi teaches or suggests the disputed limitations.
Second, Appellant argues that there is insufficient motivation to
combine the Pisula and Bodepudi because the rationale provided by the
Examiner is a mere conclusory statement based on hindsight reasoning.
App. Br. 13-15; Reply Br. 5---6. This argument is unavailing.
The U.S. Supreme Court has held "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
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Application 12/472,570
no more than yield predictable results." KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; ... and the background knowledge
possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine
the known elements in the fashion claimed by the patent at issue.
Id. at 418. The Court also instructs that:
[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness . . . [H]owever, the analysis
need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
Id. (citation omitted). Additionally, the Court instructs that "if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill." Id. at 417.
The application of these controlling legal principles to the facts of this
appeal provides us with the necessary guidance in affirming this obviousness
rejection. First, as noted by the Examiner, Pisula is relied upon to teach
configuring the workout support application in an unlocked mode before the
application can be accessed by the user on a limited basis when the
touchscreen interface is in a locked mode. Ans. 30-31 (citing Pisula Figs.
4A and 4Z). Further, Bodepudi is relied upon to teach of selecting desired
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applications in an unlocked mode such that only the selected applications are
accessible to the user when the computer is in a locked mode. Id. at 31-32
(citing Bodepudi iii! 37 and 38). We agree with the Examiner that, at the
time of invention, incorporating in Bodepudi' s teaching into Pisula' s
disclosure would have been an obvious endeavor within the purview of the
ordinarily skilled artisan. Id. at 32-35.
The proposed combination is proper because the cited references
disclose known elements that perform their ordinary functions to predictably
result in a touchscreen interface that, when operating in a locked mode,
provides a user with limited functionality to only applications previously
configured prior to entering the locked mode. Thus, we find the Examiner's
findings to be supported by substantial evidence, and the ensuing conclusion
of obviousness to be consistent with controlling authorities.
ivioreover, we find the ordinarily skilled artisan, being a creative
individual, would have been able to fit the cited teachings of Pisula and
Bodepudi together like pieces of a puzzle to predictably result in the
touchscreen interface for providing a user with limited functionality to
previously selected applications only when the interface is operating in a
locked mode, as proffered by the Examiner. So long as the Examiner
provides an articulated reasoning with some rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. See
KSR, 550 U.S. at 418. In this case, the Examiner provided the following
rationale for combining the cited teachings of Pisula and Bodepudi:
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[T]o run an expensive vendor specific software application
providing access to any user with limited selection of the
applications while still allowing (sic) authorize user full, normal
access to the computer system (Bodepudi paragraph 0007,
lines18-26) and (sic) incorporate user preference into the system
facilitating users to customize the application based on their
preferences (Bodepudi paragraph 038, lines 1-5), and (sic) make
the system more useful and effective to user.
Ans. 6-8
We do not agree with Appellant that the afore-cited rationale provided
by the Examiner is a mere conclusory statement. In our view, such a
statement suffices as an articulated reason with a rational underpinning to
support the proffered combination. As noted above, the case law allows the
Examiner to look to the state of the prior art, including the knowledge of the
ordinarily skilled artisan, to arrive at such a reason for combining the known
elements of the prior art. See KSR, 550 U.S. at 418. Consequently, the
Examiner's reliance upon widely available knowledge in order to arrive at
an articulated reason with a rational underpinning to support the proffered
combination is proper. It follows Appellant has not shown error in the
Examiner's rejection of claim 1.
Regarding the rejection of claims 2-18 and 20, to the extent Appellant
has either not presented separate patentability arguments or has reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1 above, claims 2-18 and 20 fall therewith. See 37
C.F.R. § 41.37(c)(l)(iv). Further, to the extent Appellant has raised
additional arguments for patentability of these claims (App. Br. 16-25), we
find that the Examiner has rebutted in the Answer each and every one of
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those arguments by a preponderance of the evidence. Answer 38--46. We
adopt the Examiner's findings and underlying reasoning, which we
incorporate herein by reference. Because Appellant has failed to
persuasively rebut the Examiner's findings regarding the rejections of claims
2-19 and 20, Appellant has failed to show error in the Examiner's rejections
of these claims.
DECISION3
We affirm the Examiner's rejections under 35 U.S.C. § 103(a) of
claims 1-18 and 20. 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
3 In the event of further prosecution, the Examiner should consider rejecting
claims 18 and 20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter because the cited claims recite a computer-readable storage
medium, which is not defined in the Specification to exclude transitory
media. See Ex parte Mewherter, 107 U.S.P.Q.2d 1857 (PTAB 2013)
(precedential).
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