Ex Parte Zhang et al

Patent Trial and Appeal Board

Apr 10, 2013

10253283 (P.T.A.B. Apr. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUNBIAO ZHANG and JUN LI
____________

Appeal 2010-010845
Application 10/253,283
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010845
Application 10/253,283

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention relates to controlling a user interface. Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method for controlling the activation of at least
one user interface via which a user is capable of selecting an
application for execution, comprising the steps of:

monitoring at least one condition that could impact
performance of the application;

determining if the monitored condition is met and if so
then
constraining the at least one user interface to preclude a
user from selecting the application and to limit the user’s ability
to activate an application prior to the user’s selection of the
application by selectively controlling a hyperlink within the at
least one user interface to control user selection of the
application.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gidron

Hegli

Humes
US 2002/0142760 A1

US 2003/0105863 A1

US 2003/0140152 A1
Oct. 3, 2002
(filed Nov. 15, 2001)
June 5, 2003
(filed Dec. 5, 2001)
July 24, 2003
(filed Nov. 30, 1999)
Appeal 2010-010845
Application 10/253,283

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REJECTIONS
Claims 11-17 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1, 4, 6-11, 14, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hegli and Humes.
Claims 2, 3, 5, 12, 13, and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hegli, Humes, and Gidron.

ANALYSIS
The Indefiniteness Rejection
The Examiner entered a new ground of rejection for claims 11-17
under § 112, second paragraph (Ans. 9-12), after the Board issued an order
remanding the appeal (Order mailed April 6, 2010). Appellants did not file a
Reply Brief responding to this rejection. “If appellant fails to respond to a
new ground of rejection made in an examiner’s answer by either filing a
reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing
of the examiner’s answer, the appeal is sua sponte dismissed as to the claims
subject to the new ground of rejection.” MPEP § 1215.03. Accordingly, the
appeal is dismissed with respect to claims 11-17.
The proper course of action upon dismissal following a new ground of
rejection is for the Examiner to “use form paragraph 12.179.02 to notify the
appellant of the dismissal and cancel those claims” (MPEP § 1215.03).
However, rather than remand to the Examiner for this sole purpose, we
proceed to address the remaining claims on appeal and leave it to the
Examiner to cancel dismissed claims 11-17 following this decision.

Appeal 2010-010845
Application 10/253,283

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The Obviousness Rejections
Claims 2, 3, and 5
We start our review with dependent claims 2, 3, and 5. Appellants
argue dependent claims 2, 3, and 5 together as a group (see Br. 12-14) and
contend that “although Gidron teaches that an application may be selectively
disabled in accordance with a user’s subscription or device capabilities,
Gidron does not disclose or remotely suggest that applications are
selectively restricted prior to user selection of the applications” (Br. 14). We
disagree.
Gidron discloses that a “service provider preferably controls access to
the content or user applications by the user, for example according to a
subscription of the user and/or capabilities of the limited resource device of
the user” (Gidron, Abstract). Gidron defines “user applications” as “a unit
of dynamic content and/or . . . a set of instructions for execution by the
limited resource (user) device, possibly interacting with a server side
application across the network” (Gidron, ¶ [0030]). Content that is
“approved” by the service provider is published (Gidron, ¶ [0040]). Then,
After publication, as shown in stage 5, the content is in
the “enabled” stated, from which the content may optionally be
discovered and downloaded by subscribers. The content is
optionally placed into the “disabled” state by a manual action or
according to at least one dynamic rule, for example according
to the date and/or the number of downloads.

(Gidron, ¶ [0041]). Appellants have not specifically explained why
Gidron’s “disabled” state fails to disclose “limit[ing] the user’s ability to
activate an application prior to the user’s selection of the application,” as
recited in claim 1, from which claims 2, 3, and 5 depend. Appellants merely
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argue that “Gidron does not provide any details regarding how user-devices
are evaluated to determine whether they should be restricted from accessing
applications” (Br. 14). However, as cited above, Gidron discloses the
“disabled” state can be based on a “dynamic rule, for example according to
the date and/or the number of downloads” (Gidron, ¶ [0041]). Gidron
further discloses an embodiment where “the user could optionally have some
type of subscription, to a particular application but more preferably to a
category or type of application.” (Gidron, ¶ [0061]). Absent specific
argument to the contrary, we find Gidron would have taught or suggested
limiting a user’s ability to activate an application “prior to the user’s
selection of the application” (claim 1), for example, by disabling an
application because a certain number of downloads have occurred or by
restricting a user from accessing an application based on an existing
subscription. In either case, Gidron’s system pre-determines that a user or
users shall not be able to activate the application before any attempt to select
the application.
We are, therefore, not persuaded that the Examiner erred in rejecting
dependent claims 2, 3, and 5.

Claims 1, 4, and 6-10
Appellants contend that “neither Hegli nor Humes disclose the feature
of limiting a user’s ability to activate an application prior to user-selection of
the application” (Br. 10). We agree with Appellants that the Examiner has
not shown that either Hegli or Humes discloses this feature. Specifically,
although the Examiner finds that Humes “teaches the feature of limiting the
user’s ability to activate an application prior to the user’s selection of said
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application (abstract, paragraphs 0014-0018, 0031-0033)” (Ans. 4), Humes
requires that a user request a web page URL before determining whether to
deny the request or filter any content from the requested web page (see
Humes, ¶¶ [0032]-[0033]).
However, Gidron discloses the argued claim 1 limitation “prior to the
user’s selection” as discussed above with respect to dependent claims 2, 3,
and 5. Claims 2, 3, and 5, which were rejected over the combination of
Hegli, Humes, and Gidron, necessarily include all the limitations of claim 1,
from which they depend. See 35 U.S.C. § 112(d) (“A claim in dependent
form shall be construed to incorporate by reference all the limitations of the
claim to which it refers.”). Thus, because Appellants have not persuaded us
that the Examiner erred in concluding that the dependent claims are obvious
over Hegli, Humes, and Gidron, our reviewing court guides that base claim 1
is also obvious over this same combination. See Ormco Corp. v. Align
Technology, Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (“Because [the
dependent claims] were found to have been obvious, the broader
[independent] claims . . . must also have been obvious.”).
We, therefore, sustain the Examiner’s rejection of independent claim
1, and claims 4 and 6-10, which depend therefrom and are not separately
argued, based on the combination of Hegli, Humes, and Gidron, for the
reasons discussed above regarding claims 2, 3, and 5.

CONCLUSION
The Examiner did not err in rejecting claims 1-10 under 35 U.S.C.
§ 103(a).

Appeal 2010-010845
Application 10/253,283

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DECISION
For the above reasons:
We dismiss the appeal with respect to claims 11-17; and
We affirm the rejection of claims 1-10.
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)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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