Ex Parte Schubert et alDownload PDFPatent Trial and Appeal BoardMay 30, 201713175581 (P.T.A.B. May. 30, 2017) Copy Citation 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). 2 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 3 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. 4 Appeal 2016-001174 Application 13/175,581 REVERSED 5 Copy with citationCopy as parenthetical citation