Nokia Technologies OyDownload PDFPatent Trials and Appeals BoardMay 28, 20212020001057 (P.T.A.B. May. 28, 2021) 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. 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. Appeal 2020-001057 Application 15/949,263 2 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). Appeal 2020-001057 Application 15/949,263 3 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. Appeal 2020-001057 Application 15/949,263 4 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). Appeal 2020-001057 Application 15/949,263 5 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). Appeal 2020-001057 Application 15/949,263 6 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. Appeal 2020-001057 Application 15/949,263 7 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). Appeal 2020-001057 Application 15/949,263 8 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 Appeal 2020-001057 Application 15/949,263 9 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 Appeal 2020-001057 Application 15/949,263 10 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. Appeal 2020-001057 Application 15/949,263 11 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 Copy with citationCopy as parenthetical citation