Nikhil M. Bhatt

Patent Trials and Appeals BoardSep 12, 2019

14774664 - (D) (P.T.A.B. Sep. 12, 2019)

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. 14/774,664 09/10/2015 Nikhil M. Bhatt P14751US1/77770000517101 8429 150004 7590 09/12/2019 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER YANG, JIANXUN ART UNIT PAPER NUMBER 2664 NOTIFICATION DATE DELIVERY MODE 09/12/2019 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): dentons_PAIR@firsttofile.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIKHIL M. BHATT ____________ Appeal 2018-007876 Application 14/774,664 Technology Center 2600 ____________ Before JOSEPH L. DIXON, KEVIN F. TURNER, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 28–47, all pending claims. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 STATEMENT OF THE CASE 1 Appellant states the real party in interest is Apple Inc. App. Br. 3. 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed April 23, 2018, “App. Br.”), the Examiner’s Answer (mailed May 31, 2018, “Ans.”), the Final Action (mailed August 25, 2017, “Final Act.”), and the Specification (filed September 10, 2015, “Spec.”) for their respective details. Appeal 2018-007876 Application 14/774,664 2 The claims relate to a wearable device that communicates with a host device to initiate communication functionality of the host device. See Abstract. Invention Claims 28, 37, and 45 are independent. An understanding of the invention can be derived from a reading of claim 28, which is reproduced below with some formatting added. 28. A method of sending a message, the method comprising: receiving, by a wearable device, first user input identifying a recipient of the message; receiving, by the wearable device, second user input comprising information that identifies a content of the message; transmitting, by the wearable device, the information to a host device over a first wireless connection; and transmitting, by the wearable device, an instruction to the host device to transmit the message over a second wireless connection, the instruction comprising an identifier of the recipient and of the information that identifies the content of the message. References and Rejections3 Chihara et al. Cho Hutcheson US 2002/0068600 A1 US 2006/0217104 A1 US 2009/0231960 A1 June 6, 2002 Sept. 28, 2006 Sept. 17, 2009 3 The present application was examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2018-007876 Application 14/774,664 3 Jersa et al. Mastandrea Miller et al US 2012/0044062 A1 US 2013/0027341 A1 US 8,624,836 B1 Feb. 23, 2012 Jan. 31, 2013 Jan. 7, 2014 YOUTUBE, https://www.youtube.com/watch?v=hXG-MdlW6FA (last visited Feb. 18, 2013) (“YouTube”). 1. Claims 28, 30, 32, 34–40, 42, and 45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cho and Jersa. Final Act. 2– 13. 2. Claims 29, 41, 46, and 47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cho, Jersa, Mastandrea, and YouTube. Final Act. 13–15. 3. Claims 31 and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cho, Jersa, and Miller. Final Act. 15–17. 4. Claims 41 and 43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cho, Jersa, and Chihara.4 Final Act. 17–18. 5. Claim 44 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Cho, Jersa, and Hutcheson. Final Act. 18–19. ANALYSIS We have reviewed the rejections of claims 28–47 in light of Appellant’s arguments. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are 4 Claim 43 is not listed in the rejection header, but is discussed along with Claim 41 in the body of the rejection. See Final Act. 17. Appeal 2018-007876 Application 14/774,664 4 deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt as our own the findings and reasons set forth in the rejection from which this Appeal is taken and in the Examiner’s Answer, to the extent consistent with our analysis below. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 7–24. CLAIMS 28, 30–36, AND 45: OBVIOUSNESS OVER CHO AND JERSA. Appellant argues “Group A,” claims 28, 30–36, and 45 as a group in view of the limitations of independent claim 28. App. Br. 7. Appellant further designates claim 28 as “[r]epresentative.” Id. at 9 (emphasis omitted). Inherency. Appellant contends the Examiner improperly relies on an inherency finding to supply a limitation allegedly missing from the prior art. See App. Br. 8. Appellant refers to an interview conducted with the Examiner July 13, 2017. App. Br. 15. The Board, in its decision, may affirm or reverse the decision of the Examiner in whole or in part on the grounds and on the claims specified by the Examiner. 37 CFR § 41.50(a)(1). “Inherency” is not a ground specified by the Examiner. See Final Act. 2–4. Transmitting an instruction. Claim 28 recites, inter alia, “transmitting, by the wearable device, an instruction to the host device to transmit the message over a second wireless connection, the instruction comprising an identifier of the recipient and of the information that identifies the content of the message.” Appellant Appeal 2018-007876 Application 14/774,664 5 contends the combination of Cho and Jersa fails to teach this disputed limitation. App. Br. 8. Cho discloses: “Upon receiving a key for employing the SMS through the key input unit 225, the controller 230 transmits control data for operating the SMS to the mobile terminal 100 through the radio communicator 210.” Cho ¶ 44. The Examiner finds Cho teaches the SMS message is sent to the recipient over a cellular network. Final Act. 3. The Examiner finds Cho, thus, teaches the claimed “transmitting, by the wearable device, an instruction to a host device to transmit the message over a second wireless connection.” Id. (quoting Cho ¶ 44). The Examiner finds Cho teaches the claimed “instruction comprising an identifier of the recipient and of the information that identifies the content of the message,” because the “sending SMS would need to provide recipient information from watch 200 by the user.” Final Act. 4 (emphasis omitted). The Examiner finds the needed information, i.e., first user input identifying a recipient of the message, is not taught by Cho, but is taught by Jersa. Id. (citing Jersa ¶ 17). Appellant admits: “Cho describes a ‘mobile terminal’ that communicates with a ‘remote control device.’” App. Br. 13. Appellant further admits Cho discloses: “the user can not only create a short message in the conventional text input method, but also can employ various SMSs” and that “the controller [of the remote control] . . . transmits control data for operating the SMS to the mobile terminal.” Id. Appellant argues that transmission of the claimed “instruction” differed from transmission of “control data,” as taught by Cho. Id. at 13–14; Reply Br. 3. However, Appeal 2018-007876 Application 14/774,664 6 Appellant fails to provide evidence that the Specification definition distinguishes the claimed “instruction” from the taught “control data.” A second wireless connection. Appellant contends Cho fails to teach transmitting a message over “a second wireless connection.” App. Br. 15. The Examiner maps the claimed “first wireless connection” to the wireless connection between radio communicator 110 and remote control device 200 and maps the claimed “second wireless connection” to a wireless connection between controller 230 and mobile terminal 100. Ans. 22–23 (citing Cho ¶¶ 17, 24, 44) (emphasis omitted). Appellant argues the two connections, taught by Cho, do not correspond to the claimed first and second connections because they are sent over the same wireless network. App. Br. 15; Reply Br. 4. Appellant’s argument fails to persuade because the claims recite first and second wireless connections, not first and second wireless networks, as argued. In view of the foregoing, we sustain the rejection of claims 28, 30– 36, and 45. CLAIM 37: OBVIOUSNESS OVER CHO AND JERSA. Appellant’s contentions with respect to claim 37 are substantially identical to those raised in favor of claim 28. Compare App. Br. 8–17 against App. Br. 17–22. In view of the foregoing, we sustain the rejection of claim 37. CLAIMS 29, 41–44, 46, AND 47: OBVIOUSNESS OVER CHO, JERSA, MASTANDREA, AND YOUTUBE. Appeal 2018-007876 Application 14/774,664 7 Appellant contends these claims are allowable in view of their dependence from one of independent claims 28, 37, or 45. App. Br. 22. In view of the foregoing discussion, we are not persuaded of the allowability of the independent claims. Dependent claim 29 recites, inter alia, “receiving, over the first wireless connection, a confirmation from the host device that the message was sent.” Appellant further contends claim 29 is allowable because neither Mastandrea, nor YouTube, teach this limitation. App. Br. 23. Appellant admits that both Mastandrea and YouTube disclose “a message receiver that confirms receipt of the message by sending acknowledgement of the receipt back to the sender,” as found by the Examiner. Reply Br. 6. But Appellant argues receipt by the sender is not the same as “receiving . . . a confirmation from the host device that the message was sent,” as claimed because the host device of Appellant’s claims is configured to transmit the message. We find confirmation of receipt of a message implies the message had been sent. DECISION The rejection under 35 U.S.C. § 103(a) of claims 28–47 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED