Ex Parte Schubert et al

Patent Trial and Appeal Board

May 30, 2017

13175581 (P.T.A.B. May. 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.
13/175,581 07/01/2011 Emily Clark Schubert 090911-P5906USX4-0803503 2861
65656 7590 06/01/2017
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHAPIRO, LEONID
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY CLARK SCHUBERT and
PETER T. LANGENFELD
Appeal 2016-001174
Application 13/175,581
Technology Center 2600
Before ERIC S. FRAHM, LINZY T. McCARTNEY, and
CARL L. SILVERMAN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—8 and 14—17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-001174
Application 13/175,581
STATEMENT OF THE CASE
Appellants’ patent application concerns “portable media devices and
in particular to allowing a portable media device to provide a user interface
for controlling the media device to an accessory.” Spec. 12. Claims 1, 6,
and 14 are independent. Claim 1 illustrates the claimed subject matter:
1. A method for controlling a portable media device using an
accessory, the method comprising:
requesting, by the accessory, from the portable media
device, a list of graphical user interface image types available for
a third-party application resident on the portable media device;
receiving, by the accessory, from the portable media
device, the list of graphical user interface image types available
for the third-party application;
selecting, by the accessory, a graphical user interface
image type, from among the list of graphical user interface image
types;
communicating, by the accessory, to the portable media
device, the selected graphical user image type from among the
list of graphical user interface image types;
receiving, by the accessory, from the portable media
device, a graphical user interface image conforming to the
selected graphical user interface image type; and
displaying, by the accessory, the received graphical user
interface image on a display device of the accessory.
REJECTIONS
Claims 1—3, 6—8, 14, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Klask (US 8,555,180 B2; Oct. 8, 2013), Wugofski (US
6,556,219 Bl; April 29, 2003), Chavers et al. (US 2004/0216058 Al; Oct.
28, 2004), and Ocheltree et al. (US 2003/0154291 Al; Aug. 14, 2003).
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Appeal 2016-001174
Application 13/175,581
Claims 4, 5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ocheltree, Chavers, Wugofski, Klask, and Sadovsky et al.
(US 2006/0288036 Al; Dec. 21, 2006).
ANALYSIS
Claim 1 recites “communicating, by the accessory, to the portable
media device, the selected graphical user image type from among the list of
graphical user interface image types.” App. Br. 27. Appellants contend the
Examiner did not address this limitation in the Final Rejection or the
Advisory Action, and any event, the cited art does not teach or suggest this
limitation. See id. at 21—22.
We find Appellants’ arguments persuasive. As argued by Appellants,
the Examiner did not address claim 1 ’s “communicating” limitation in either
the Final Rejection or the Advisory Action. See Final Act. 2-4, 5—8;
Advisory Act. 2. However, the Examiner did address this limitation in the
Answer. See Ans. 4—5. Specifically, the Examiner found Wugofski alone
teaches or suggests this limitation. See id. (citing Wugofski Fig. 2, items
206, 208, 214). But the “communicating” limitation recites communicating
data from one device (“the accessory”) to another (“the portable media
device”). See App. Br. 27. In contrast, as argued by Appellants, Wugofski
appears to disclose that a single device, personal computer 130, retrieves
graphical user interface elements from its own memory. See Wugofski
4:57—6:14; App. Br. 21—22. Accordingly, we agree the Examiner has not
established the cited art teaches or suggests this limitation.
Appellants also contend the Examiner has not provided sufficient
reason to combine Wugofski’s and Klask’s teachings to arrive at the
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Appeal 2016-001174
Application 13/175,581
“requesting ... a list of graphical user interface image types” limitation
recited in claim 1 and a similar limitation recited in independent claim 14.
See App. Br. 22—23. Appellants argue this error extends to the Examiner’s
rejection of independent claim 16. See id. at 24—25.
We find Appellants’ arguments persuasive. In rejecting independent
claims 1, 6, and 14, the Examiner found neither Wugofski nor Klask teaches
the disputed “requesting” step. Final Act. 2—3. Nevertheless, the Examiner
found it would have been obvious “to replace query from the database [as
taught by Wugofski] [with] requesting . . . with [the] predictable result of
receiving [a] user interface as in Klask” or “to incorporate [the] teachings of
Wugofski into Klask[’s] system in order to construct [a] user interface.” Id.',
Ans. 5. These rationales are not only conclusory but also fail to address why
it would have been obvious to modify either reference to do something their
respective inventions already do—generate an appropriate user interface for
an associated device. See, e.g., Wugofski 4:56—6:14 (explaining the
disclosed invention identifies a connected device, retrieves user interface
elements from memory that correspond to the device, and creates a user
interface); Klask 3: 24—33 (disclosing a peripheral device sends a user
interface document to a host that in turns uses the document to generate a
user interface for the device).
For the above reasons, based on the record before us, we do not
sustain the Examiner’s rejections of independent claims 1, 6, and 14 and
their respective dependent claims.
DECISION
We reverse the rejections of claims 1—8 and 14—17.
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Appeal 2016-001174
Application 13/175,581
REVERSED
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