Nokia Technologies Oy

Patent Trials and Appeals Board

May 28, 2021

2020001057 (P.T.A.B. May. 28, 2021)

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.
15/949,263 04/10/2018 Piia Innanen 800.2119.U3(US) 7892
10948 7590 05/28/2021
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
ABEBE, SOSINA
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
USPTO@hspatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIIA INNANEN, TITA KANGAS, MIKKO WITH,
ANDREW FOWLIE, and LAURA JUNKKONEN
Appeal 2020-001057
Application 15/949,263
Technology Center 2600
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nokia Technologies
Oy. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a re-configuring the standby screen of an
electronic device. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to “[a]n electronic device
comprising: a user interface having a display for displaying a standby screen
when the device is in an idle state and a user input device, wherein the user
interface provides a menu system, for re-configuring the standby screen, that
is navigated using the user input device.” Spec. 17 (Abstract).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis added to contested prior-art limitations):
1. An apparatus, comprising:
a user interface comprising a touch screen and a display
for displaying a first standby screen, the first standby screen
comprising a plurality of graphical items when the apparatus is
in an idle state;
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 at least one processor, cause the
apparatus at least to:

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
June 5, 2019); Reply Brief (“Reply Br.,” filed Nov. 22. 2019); Examiner’s
Answer (“Ans.,” mailed Oct. 4, 2019); Final Office Action (“Final Act.,”
mailed Nov. 29, 2018); and the original Specification (“Spec.,” filed
Apr. 10, 2018) (claiming benefit under 35 U.S.C. § 120 to PCT/IB2005/
002097, filed June 10, 2005).
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allow a user to access a menu provided by the user
interface, the menu being for reconfiguring the first
standby screen and navigable using the touch screen;
allow a user to select an option in the menu to
cause the display to display a representation of a second
standby screen, different from the first standby screen,
which includes a plurality of zones, wherein the zones in
the representation of the second standby screen are
associated with graphical items of the first standby
screen; and
allow the user to move, in the representation of the
second standby screen, a zone associated with a graphical
item of the first standby screen, which causes the
graphical item of the first standby screen to move.
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Bolnick et al. (“Bolnick”) US 5,838,317 Nov. 17, 1998
Enns et al. (“Enns”) US 2002/0065110 A1 May 30, 2002
Moon et al. (“Moon”) US 6,433,801 B1 Aug. 13, 2002
Chaudhri et al. (“Chaudhri”) US 2006/0015818 A1 Jan. 19, 2006
Innanen et al. (“Innanen '688”)3 US 9,390,688 B2 July 12, 2016
Innanen et al. (“Innanen '616”)3 US 9,953,616 B2 Apr. 24, 2018

3 Innanen ‘688 and ‘616 cited in OTDP Rejections R1 and R2 are not prior
art to the claimed invention, per se, but these references are listed for
completeness.
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REJECTIONS
Rejection Claim(s) Rejected
35
U.S.C. § Reference(s)/Basis
R1 1, 9, 10, 16 OTDP
4 over claims 1,4, 8, 10, 11, 13,
14, 17 of Innanen ‘616, Enns
R2 1, 9, 10, 16 OTDP over claims 1, 3, 4, 7, 8, 10, 13, 14, 17, 19, 20 of Innanen ‘688, Enns
R3
1, 3–6, 9, 10,
12, 13, 16,
18, 19
103(a) Enns, Moon
R4 2, 11, 17 103(a) Enns, Moon, Bolnick
R5 7, 8, 14, 15, 20 103(a) Enns, Moon, Chaudhri
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 9–15) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R3 of claims 1, 3–6, 9, 10, 12, 13, 16, 18, and 19 on the basis of
representative claim 1. We decide the appeal of OTDP Rejections R1 and
R2 of claims 1, 9, 10, and 16 in, infra.
Remaining claims 2, 7, 8, 11, 14, 15, 17, and 20 in obviousness
Rejections R4 and R5, not argued separately, stand or fall with the
respective independent claim from which they depend.5

4 “OTDP” refers to the judicially-created doctrine of obviousness-type
double patenting.
5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § OTDP Rejections R1 and R2 of Claims 1, 9, 10, and 16
Issue 1
Did the Examiner err in concluding claims 1, 9, 10, and 16 are
unpatentable over the judicially-created doctrine of obviousness-type double
patenting (OTDP) over the specified claims of each of Innanen '616 and
Innanen '688, both in combination with Enns, as set forth by the Examiner?
Analysis
In view of the lack of any substantive or separate arguments directed
to OTDP Rejections R1 and R2 of claims 1, 9, 10, and 16, (see Appeal

In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Br. 9), we pro forma affirm the Examiner’s rejection of these claims.
Arguments not made are waived.6
2. § 103(a) Rejection R3 of Claims 1, 3–6, 9, 10, 12, 13, 16, 18, 19
Issue 2
Appellant argues (Appeal Br. 9–12; Reply Br. 5–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Enns and Moon is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus that includes “at least one memory including
computer program code . . . configured to, with [ ] at least one processor,
cause the apparatus [ ] to,” inter alia, “allow a user to access a menu
provided by the user interface, the menu being for reconfiguring the first
standby screen,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,

6 Appellant merely states, “Appellant may be willing to file one or more
terminal disclaimers pending an allowance of the present claims.” Appeal
Br. 9.
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the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. Keller, 642 F.2d at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
The Examiner finds the combination of Enns and Moon teach or
suggest the limitations of claim 1 and, in particular, finds that Moon teaches
the disputed limitation identified above. Final Act. 7–9 (citing Moon Fig. 1,
element 30; 2:14–20, 31–35, 49–67; 3:1–27; 6:24–44).
Appellant contends, however, “Moon fails to disclose or suggest an
apparatus that ‘allows a user to access a menu provided by the user interface,
the menu being for reconfiguring the first standby screen,’ as recited in
claim 1.” Appellant further alleges, “[t]he only relevant portion of the Moon
reference is at column 3, lines 14–17” which discloses a series of file folders
with tabs displayed at different horizontal locations on the screen. Appeal
Br. 11 (citing Moon 3:14–17).
Instead, in Moon, the tabs are simply rearranged without there
being any access to a menu. More specifically, Figure 2A of the
present application clearly shows a “My Idle” menu that gets
accessed in order to reconfigure the first standby screen, but in
Moon there is no similar menu - in Moon, there is simply a
horizontal configuration of tabs that can be rearranged on the
display. A configuration of tabs that can be rearranged does not
“[allow] a user to access a menu provided by the user interface,
the menu being for reconfiguring the first standby screen,” as
recited in claim 1.
Appeal Br. 11.
The Examiner responds by explaining that Appellant’s argument is
unpersuasive because Moon “allows a user to access a menu (e.g. fig. 3)
provided by the user interface” as shown by the cellular telephone with
touch screen display discussed at column 2, lines 15–20 of Moon. Ans. 4.
The Examiner further finds Moon teaches provision of finger-based
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navigation of a menu system, and a graphical user interface “that consists of
virtual tabs and image buttons that can be selected by a human finger.”
Ans. 4–5 (citing Moon 2:49–67; 3:1–27). The Examiner further finds
(Ans. 6–7) that Moon teaches the standby screen can be reconfigured by
dragging and dropping tabs, i.e., control buttons, to allow reordering of these
controls, or the entire grouping can be changed, and a control button can be
moved to a completely new panel which is automatically created when the
button is moved.
In the Reply Brief, Appellant argues
In Appellant’s apparatus as recited in claim 1, the tabs are
accessed, but in doing so access is gained to underlying
hierarchical layers through which the standby screen is resized,
moved, or modified. In Moon, on the other hand, there may be
finger-based navigation, but the selection of virtual tabs and
buttons in Moon is limited to a drag and drop type of
manipulation.
Reply Br. 5.
We are not persuaded by Appellant’s arguments, which are not
commensurate with the scope of the claim, which does not recite
“underlying hierarchical layers through which the standby screen is resized.”
Therefore, we agree with the Examiner’s finding that Moon teaches or
suggests the disputed limitation of claim 1.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
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claims 3–6, 9, 10, 12, 13, 16, 18, and 19, which fall therewith. See Claim
Grouping, supra.
3. Rejections R4 and R5 of Claims 2, 7, 8, 11, 14, 15, 17, 20
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R4 and R5 of claims 2, 7, 8, 11, 14, 15, 17, and 20
under § 103(a) (see Appeal Br. 15), we sustain the Examiner’s rejection of
these claims. Arguments not made are waived.7
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 4–8) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
We AFFIRM the Examiner’s rejections.
More specifically, Appellant has not persuasively argued that the
Examiner erred with respect to obviousness Rejections R3 through R5 of
claims 1–20 under 35 U.S.C. § 103(a) over the cited prior art combinations
of record, and we sustain the rejections. Moreover, because Appellant has

7 Appellant merely argues, “[t]hough the claims dependent upon the
independent claims contain their own allowable subject matter, these claims
should at least be allowable due to their dependence from an allowable
independent claim.” Appeal Br. 15.
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not presented any argument that the Examiner erred in rejecting claims 1, 9,
10, and 16 in OTDP Rejections R1 and R2, we pro forma sustain those
rejections.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9, 10, 16 OTDP over claims
1, 4, 8, 10, 11, 13,
14, and 17 of
Innanen '616, and
Enns
1, 9, 10, 16
1, 9, 10, 16 OTDP over claims
1, 3, 4, 7, 8, 10, 13,
14, 17, 19, and 20
of Innanen '688,
and Enns
1, 9, 10, 16
1, 3–6, 9,
10, 12, 13,
16, 18, 19
103(a) Enns, Moon 1, 3–6, 9,
10, 12, 13,
16, 18, 19

2, 11, 17 103(a) Enns, Moon,
Bolnick
2, 11, 17
7, 8, 14, 15,
20
103(a) Enns, Moon,
Chaudhri
7, 8, 14, 15,
20

Overall
Outcome
1–20
FINALITY AND RESPONSE
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