Ex Parte Setlur et al

Patent Trial and Appeal Board

Mar 31, 2017

13476615 (P.T.A.B. Mar. 31, 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.
13/476,615 05/21/2012 Vidya Raghavan Setlur 042933/417662 4746
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
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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 VIDYA RAGHAVAN SETLUR and
DAVID ALEXANDER DEARMAN
Appeal 2016-004480
Application 13/476,6151
Technology Center 2100
Before JOSEPH L. DIXON, TERRENCE W. McMILLIN, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—11, 13—17, and 19-23, which constitute all
claims pending in the application. Claims 5,12, and 18 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Nokia Technologies Oy.
App. Br. 1.
Appeal 2016-004480
Application 13/476,615
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to creating user groups in a computing
environment, so that a user “may be able to easily select those users with
whom he wishes to communicate without opening a dedicated application or
accessing a particular program.” Abstract. Claims 1, 8, and 14 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows (with the 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
processor, cause the apparatus to at least:
provide for presentation of one or more visual
representations in a first region of a display, each visual
representation being associated with a user;
receive an input moving a selected visual representation
to a previously undesignated location outside of the first region,
wherein the previously undesignated location is a location on the
display that was previously unassociated with the execution of
operations related to communication of information or contacts;
and
in response to receipt of the input moving the selected
visual representation to the previously undesignated location,
designate an area of the display that is larger than the selected
visual representation and comprising the previously
undesignated location to which the selected visual representation
is moved for creating a group of users, such that further inputs
received moving other selected visual representations from the
first region of the display to the designated area cause the other
selected visual representations to be added to the group of users.
App. Br. 18 (Claims App.).
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Appeal 2016-004480
Application 13/476,615
The Rejections on Appeal
Claims 1, 8, 14, and 21—23 stand rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Canfield et al. (US 2007/0006094 Al; Jan.
4, 2007) (“Canfield”). Final Act. 6-8.
Claims 2-4, 9-11, and 15—17 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Canfield and Hayashi et al. (US
2007/0255807 Al; Nov. 1, 2007) (“Hayashi”). Final Act. 9-11.
Claims 6, 7, 13, 19, and 20 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Canfield and Smarr et al. (US
2012/0110096 Al; May 3, 2012). Final Act. 11-13.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41,37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejections Under 35 U.S.C. § 102(b)
Appellants argue independent claims 1, 8, and 14 as a group, App. Br.
6—9, and we choose claim 1 as representative of the group. See 37 C.F.R.
§ 41,37(c)(l)(iv). Appellants contend the Examiner erred because “Canfield
is not directed to, and does not disclose, creating a group of users.” App. Br.
6. Appellants contend the “tear-off’ process in the instant messaging
interface disclosed in Canfield is not the same as Appellants’ “creation of a
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Appeal 2016-004480
Application 13/476,615
user group or ‘group of users,’” which Appellants assert is recited in the
independent claims. App. Br. 8—9. We are not persuaded of error.
First and foremost, as the Examiner finds, claim 1 does not recite (nor
do the other independent claims) “creating a group of users” as Appellants
allege. Ans. 2—3. Rather, the claim recites an apparatus with code
configured to “designate an area of the display . . .for creating a group of
users.” App. Br. 18 (Claims App.) (emphasis added). As described in
Appellants’ Specification, Spec. 195, the actual creation of the group of
users is a different step apart from “designating] the area of the display,”
and is not recited in claim 1. Ans. 2.
As the Examiner further finds, the recited limitation, “designate an
area of the display ... for creating a group of users,” is disclosed in
Canfield’s figures and accompanying description. Final Act. 7—8. Canfield
Figure 8 is reproduced below.
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Appeal 2016-004480
Application 13/476,615
Figure 8 illustrates a client user interface including an instant messaging
(IM) interface 525, sub-interface 526 for communicating with a particular
user, and “interface tear-off element 520.” Canfield 1 76. Canfield
discloses that the “sub-interface 526 . . . may be tom off from a UI 525 and
may persist beyond active display of the associated UI 525.” Id.
As the Examiner finds, Figure 8 (and similar Figures 9 and 12C)
illustrates an “area of the display” (interface 525 and sub-interface 526) for
creating groups of users, illustrated on Figure 8 as users such as
“ChattingChuck” and “SurfmDiane.” Id.\ Final Act. 7—8. Moreover,
Appellants admit, App. Br. 9, Canfield does disclose a “visual grouping” of
tear-off elements and associated sub-interfaces, Canfield 1 80. Such visual
grouping is an “area of the display.” Ans. 2.
Appellants further argue the Examiner erred in finding Canfield
discloses “designating an area of the display that is larger than the selected
visual representation and comprising the previously undesignated location.”
App. Br. 12. As the Examiner finds, however, Canfield discloses the
foregoing elements in its description (and illustration) of “tearing off’ a user
tab and designating a new area of the screen substantially larger than the
prior tab. Ans. 4. Figure 9, for example, illustrates this tear-off, id., and is
reproduced below.
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Application 13/476,615
Figure 9, like Figure 8, illustrates a client user interface including an instant
messaging (IM) interface 525 for communicating with a particular user, and
“interface tear-off element 522d.” Canfield 1 78. In Figure 9, however, the
user has performed a tear off of tear-off element 522d, and a new area of the
screen (526) is designated (shown as corresponding to user “SurfmDiane”),
which is larger than the corresponding tab for SurfmDiane. Ans. 4. We,
therefore, are not persuaded the Examiner erred. Ans. 4—5.
Dependent claims 21—23 are not argued separately. Accordingly, we
sustain the rejection of claims 1, 8, 14, and 21—23 as anticipated by Canfield
Rejections Under 35 U.S.C. § 103(a)
Regarding the rejection of claims 6, 7, 13, 19, and 20, Appellants
argue the Examiner erred in finding a rationale or motivation to combine
Canfield with Smarr. App. Br. 15. Appellants assert that combining
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Application 13/476,615
Canfield’s “instant messaging” concepts with Smarr’s “creation of social
circles in a social networking application” is hindsight. App. Br. 15—16. We
disagree.
As the Examiner finds, both Canfield and Smarr “teach graphical user
interfaces for users to communicate with each other utilizing drag-and-drop
mechanics.” Ans. 6. We agree with the Examiner’s finding that a “person
of ordinary skill in the art, having Canfield and Smarr before him, would see
that Canfield could be improved by Smarr so that “the user could post an
update about the aforementioned technical nuance to only a ‘coworker’
circle, and spare other contacts from seeing information that is irrelevant to
them.” Ans. 6; see KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[T]he obviousness analysis . . . can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
Moreover, Appellants describe the objectives of Canfield and Smarr in an
overly narrow manner. App. Br. 15—16. As the Examiner finds, both are
directed to graphical user interface improvement in social
networking/communications applications. See Innovention Toys LLC v.
MGA Entertainment Inc., 637 F.3d 1314, 1322—23 (Fed. Cir. 2011)
(motivation to combine may be found in references sharing the “same
purpose,” “goal,” or “objective”).
Regarding the remaining claims, Appellants argue only that the
dependent claims are patentable for the same reasons as independent claims
1, 8, and 14, and that the additional references do not cure the deficiencies
with respect to the anticipation rejection. We are unpersuaded of this
argument, for the reasons set forth above.
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Application 13/476,615
Accordingly, we sustain the rejection of claims 6, 7, 13, 19, and 20 as
obvious over Canfield and Smarr, and we sustain the rejection of claims 2-4,
9—11, and 15—17 as obvious over Canfield and Hayashi.
DECISION
We affirm the Examiner’s rejections of claims 1—4, 6—11, 13—17, and
19-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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