Ex Parte Robertson et al

Patent Trial and Appeal BoardApr 19, 2016

13555582 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/555,582 07/23/2012 82313 7590 04/21/2016 Conley Rose - BlackBerry Files Attn: J. Robert Brown 5601 Granite Parkway, Suite 500 Plano, TX 75024 FIRST NAMED INVENTOR Ian M. Robertson 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. 10577-US-DIV2 4214-62804 3149 EXAMINER TN, BACKHEAN ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): ConleyRoseReporting@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IAN M. ROBERTSON and DAVID F. TAPUSKA Appeal2014-003869 Application 13/555,582 Technology Center 2400 Before ROBERT L. KINDER, KEVIN C. TROCK, and JESSICA C. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants 1 appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1-7 and 9-19, which are all the pending claims. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party in interest is Research in Motion Limited. (App. Br. 3.) 2 Claim 8 has been canceled. (Final Act. 2.) Appeal2014-003869 Application 13/555,582 EXEMPLARY CLAIM Claim 1 is exemplary and is reproduced below with disputed limitations italicized: 1. A wireless communication device comprising: a user input device; a buff er configured to store characters of an electronic message as the characters are being input via the input device; and a controller configured to wirelessly transmit the stored characters over a wireless network, without receiving user entry of a submit input, in response to a pause, in the input of characters, exceeding a threshold time period. REJECTIONS 3 Claims 1, 2, 6, 7, 9, 10, 14, 18, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim (US 2002/0058522 Al; published May 16, 2002), Price (EP 0396309 A2; published Nov. 7, 1990), and Lowe (US 6,189,066 Bl; issued Feb. 13, 2001). (Final Act. 3-5.) Claims 3 and 11 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim, Price, Lowe, and Spaur (US 6,516, 192 B 1; issued Feb. 4, 2003). (Id. at 5---6.) Claims 4 and 12 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim, Price, Lowe, and Westerberg (US 6,058,302; issued May 2, 2000). (Id. at 6-7.) Claims 5, 13, and 15-17 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim, Price, Lowe, and Official Notice. (Id. at 7-9.) 3 The Examiner has withdrawn the obviousness-type double patenting rejection of claims 1-17. (Ans. 3.) 2 Appeal2014-003869 Application 13/555,582 INDEPENDENT CLAIMS 1 9 AND 15 ' ' Issues Did the Examiner err in finding the combination of Kim, Price, and Lowe teaches or suggests transmitting characters "without receiving user entry of a submit input, in response to a pause, in the input of characters, exceeding a threshold time period," as recited in claim 1, and similarly recited in claims 9 and 15? Did the Examiner improperly combine Kim and Price? Analysis We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the Final Action (Final Act. 3-10) from which this appeal is taken and the findings and reasons set forth in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 3-11). We highlight and address specific findings and arguments for emphasis as follows. Appellants argue Price does not teach or suggest transmitting characters "without receiving user entry of a submit input, in response to a pause, in the input of characters, exceeding a threshold time period," as recited in claim 1, and similarly recited in claims 9 and 15. (App. Br. 6-8; Reply Br. 2.) Specifically, Appellants argue Price "differs from the present claim limitation" for four reasons: "1) what data is being received; 2) what activity is paused; 3) whether a user has entered a submit input; and 4) from what device is the data received." (App. Br. 7-8.) 3 Appeal2014-003869 Application 13/555,582 We are not persuaded by any of these four arguments, which we address in tum below. The Examiner finds, and we agree, Kim teaches a device which wirelessly transmits text messages input by a user. (Final Act. 4 (citing Kim i-fi-154--59, Figs. 1, 2A-2C); Ans. 3, 6.) The Examiner further finds, and we agree, Price teaches a Packet Assembler/Disassembler (PAD) which receives data and then transmits the received data after an idle time period during which no additional data is received by the PAD (i.e., a pause in received data). (Ans. 4 (citing Price Abstract, 4:1-18); Final Act. 4, 10; see Price Fig. 4, 8: 1-30.) The Examiner concludes, and we agree, that it would have been obvious to incorporate Price's data transmission technique into Kim's device in order to transmit a text message after a pause in user inputted text. (Ans. 6; Final Act. 10.) Appellants' first argument, that the data transmitted in Price is not "a message as claimed nor [is it] being currently input by a user" (App. Br. 7; Reply Br. 2), is unpersuasive because it does not address the Examiner's finding that Kim transmits text messages input by a user (Ans. 3 (citing Kim i-fi-154--59, Figs. 1, 2A---C); Final Act. 4). Appellants' second argument, that Price's pause "is not a pause in user input of characters" (App. Br. 7; Reply Br. 2), is unpersuasive because it attacks Price individually when the rejection is based on a combination of references, i.e., Kim and Price. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). The Examiner's combination of Kim and Price applies Price's idle time period, i.e., a pause in the receipt of data, to Kim's received user inputted text data, resulting in a pause in user inputted text data. (Ans. 6; Final Act. 10.) 4 Appeal2014-003869 Application 13/555,582 Appellants' third argument, that Price transmits a data file "in response to receiving user-entry of a submit-input" rather than transmitting data without user entry of a submit input (App. Br. 7 (citing Price 2:7-8) (emphasis omitted)) is not persuasive because it addresses an embodiment in Price upon which the Examiner does not rely. Specifically, Appellants cite an embodiment in Price in which block transfers of data occur in response to a user's command (id. (citing Price 2:7-8)), but the Examiner relies on a different portion of Price teaching data transmission is based on the expiration of an idle time period (Ans. 4 (citing Price Abstract, 4: 1-18); Final Act. 4, 10; see Price Fig. 4, 8: 1-30). Appellants' fourth argument, that the device in Price which transmits data is "separate from the device that inputs characters from the user" (App. Br. 7 (emphasis omitted)), is unpersuasive because it does not address the Examiner's finding that Kim's device both accepts user inputted text messages and transmits those text messages (Ans. 6; Final Act. 4 (citing Kim Figs. 1, 2A--C, ifif 54--59)). Appellants further argue that MPEP Â§ 2143 .02 requires "that features being incorporated into a primary reference must be 'with no change in their respective functions,"' but Appellants' argument takes that statement out of context. (App. Br. 8 (citations omitted).) The portion of MPEP Â§ 2143.02 cited discusses "[a] rationale" for an obviousness conclusion, but that section goes on to state: "Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success." MPEP Â§ 2143.02 (citations omitted). Appellants have not presented persuasive evidence and arguments that one of ordinary skill in the art would not have 5 Appeal2014-003869 Application 13/555,582 reasonably expected success in combining Kim and Price. (See id. at 6-8.) Accordingly, we are not persuaded the Examiner erred by finding the combination of Kim, Price, and Lowe teaches or suggests transmitting characters "without receiving user entry of a submit input, in response to a pause, in the input of characters, exceeding a threshold time period," as recited in claim 1, and similarly recited in claims 9 and 15. Additionally, Appellants argue Price teaches away from transmitting inputted text after a pause because Price teaches transmitting characters without a pause in an echoplexing mode. (Id. at 8 (citing Price Abstract, 1:54; 5:8-12).) We are not persuaded. To teach away, a reference must actually "criticize, discredit, or otherwise discourage" investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants highlight an alternative embodiment in Price in which data is transmitted without a pause, but have not proffered evidence showing that Price actually criticizes, discredits, or otherwise discourages transmitting data after a pause. (See App. Br. 8.) Furthermore, Price's echoplexing mode is a process in which "a character which is transmitted to and then is echoed back by the" receiving terminal (Price 1 :54--2:2), but Kim's text messages are not transmitted in an echoplexing mode because there is no text echoed back by a receiving device (see Kim i-fi-154--59, Figs. 1, 2A---C). Appellants' reliance on an optional embodiment-particularly one that the Examiner's combination does not rely on---does not persuade us that Price teaches away from transmitting text messages after a pause. Additionally, Appellants argue "in the absence of hindsight from the present application, the skilled person would have considered it counterintuitive to wirelessly transmit a portion of a message before the 6 Appeal2014-003869 Application 13/555,582 message's drafter indicates he/she wants it to be transmitted." (App. Br. 8.) We are not persuaded. The Examiner finds "a long pause could indicate a finished message." (Ans. 7.) The Examiner's reason to combine Price and Kim, transmitting finished text messages, is supported by rational underpinning, avoiding the storage of data that should be sent. (Ans. 6-7; see Final Act. 4.) Because Appellants do not address the Examiner's articulated reason to combine Kim and Price (see App. Br. 8; see also Reply Br. 2), we are not persuaded the Examiner impermissibly used hindsight reasoning and improperly combined Kim and Price. DEPENDENT CLAIMS 2--4, 10-12, AND 17 Issues Did the Examiner err in finding the combination of Kim, Price, and Lowe teaches or suggests "dynamically adjust[ing] the threshold," as recited in claim 2, and similarly recited in claims 3, 4, 10-12, and 17? Did the Examiner err in finding the combination of Kim, Price, Lowe, and Spaur teaches or suggests "the threshold based on at least one of a latency and a bandwidth," as recited in claims 3 and 11? Did the Examiner err in finding the combination of Kim, Price, Lowe, and Westerberg teaches or suggests "the threshold based on processing resources," as recited in claims 4 and 12? Analysis Appellants argue Lowe does not teach or suggest "dynamically adjust[ing] the threshold" time period before transmitting a message as recited in claim 2, and similarly recited in claims 3, 4, 10-12, and 17. (App. 7 Appeal2014-003869 Application 13/555,582 Br. 9; Reply Br. 2.) Specifically, Appellants argue the time threshold that "Lowe dynamically adjusts is unrelated to the claimed time threshold for wirelessly transmitting a message." (App. Br. 9; Reply Br. 2.) We are not persuaded. The Examiner finds, and we agree, Lowe teaches a technique to dynamically adjust a threshold time period for network communications. (Ans. 8 (citing Lowe 17:24--36, 18:35--45, 18:65- 19:6); Final Act. 4.) We also agree with the Examiner's conclusion that it would have been obvious to use the technique taught in Lowe to dynamically adjust the threshold time period for a pause in the text input taught by the Kim and Price combination (Ans. 8). Appellants argue Price's time period is for data transmission while Lowe's time period is for interrupts (App. Br. 9; Reply Br. 2), but highlighting differences in the type of time period does not persuasively show that applying Lowe's technique to dynamically adjust the threshold time period in the Kim and Park combination would have been "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we are not persuaded the Examiner erred by finding the combination of Kim, Price, and Lowe teaches or suggests "dynamically adjust[ing] the threshold" time period as recited in claim 2, and similarly recited in claims 3, 4, 10-12, and 17. Additionally, Appellants argue Spaur does not teach or suggest adjusting a time threshold "based on at least one of a latency and a bandwidth," as recited in claims 3 and 11, and Appellants also argue Westerberg does not teach or suggest adjusting a time threshold "based on processing resources available on the device," as recited in claims 4 and 12. 8 Appeal2014-003869 Application 13/555,582 (App. Br. 9; Reply Br. 2.) Specifically, Appellants argue "just because [latency, bandwidth, and processing resources] are known to exist does not suggest they be used as a basis for adjusting a pause threshold as claimed." (Reply Br. 2; App. Br. 9.) We are not persuaded by Appellants' arguments against Spaur and Westerberg individually. See Keller, 642 F.2d at 426 (citation omitted). As discussed supra, the Examiner's combination of Kim, Price, and Lowe teaches adjusting a pause threshold time period. (Final Act. 6-7; Ans. 8.) The Examiner modifies the Kim, Price, and Lowe combination to adjust the pause threshold time period based on latency and bandwidth, taught by Spaur (Final Act. 6 (citing Spaur 7:45-65, 8:7-10); Ans. 9-10), or processing resources, taught by Westerberg (Final Act. 6-7 (citing Westerberg 2:55-57); Ans. 10-11). Appellants' arguments do not persuasively address the combination of Kim, Price, Lowe, and Spaur or the combination of Kim, Price, Lowe, and Westerberg. (See App. Br. 9; see also Reply Br. 2.) Furthermore, Appellants do not address the Examiner's rationales for the combinations, optimizing data transfer (Ans. 1 O; Final Act. 6) and ensuring a device has enough processing resources to perform a function (Ans. 11; Final Act. 7). Accordingly, we are not persuaded the Examiner erred by finding the combination of Kim, Price, Lowe, and Spaur teaches or suggests adjusting a time threshold "based on at least one of a latency and a bandwidth," as recited in claims 3 and 11 and the combination of Kim, Price, Lowe, and Westerberg teaches or suggests adjusting a time threshold "based on processing resources available on the device," as recited in claims 4 and 12. 9 Appeal2014-003869 Application 13/555,582 DEPENDENT CLAIMS 5-7, 13, 14, 16, 18, AND 19 Appellants have not separately argued dependent claims 5-7, 13, 14, 16, 18, and 19. (See App. Br. 6-9.) For the reasons set forth above, therefore, we are not persuaded the Examiner erred in rejecting these claims. See 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 decision to reject dependent claims 5-7, 13, 14, 16, 18, and 19. See 37 C.F.R. Â§ 41.37(c)(l)(iv). DECISION For the above reasons, the Examiner's rejection of claims 1-7 and 9- 19 is affirmed 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 10