Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Mar 31, 2022

2020006542 (P.T.A.B. Mar. 31, 2022)

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. 14/696,802 04/27/2015 Sumit SAXENA 0203-1578 4194 68103 7590 03/31/2022 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER STANLEY, JEREMY L ART UNIT PAPER NUMBER 2179 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SUMIT SAXENA ____________________ Appeal 2020 -006542 Application No. 14/696,802 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, MARC S. HOFF, and BETH Z. SHAW, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of claims 1-16, 19, and 21-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant states that the real party in interest is Samsung Electronics Co., Ltd. Appeal Br. 2. 2 Throughout this decision, we refer to the Appeal Brief (“Appeal Br.,” filed Apr. 13, 2020), the Reply Brief (“Reply Br.,” filed Sept. 18, 2020), and the Examiner’s Answer (“Ans.,” mailed July 22, 2020) for their respective details. Appeal 2020-006542 Application No. 14/696,802 2 Appellant’s invention is a method and system for displaying an item for communication with a contact stored in an electronic device. The method includes storing a frequency of usage of at least one item for each contact. The method further includes identifying the at least one item for communication with the at least one contact, and displaying the at least one identified item, based on the frequency of usage of the at least one identified item, in response to at least one interaction event performed on the at least one contact. Spec., Abstr. Claim 1 is reproduced below: 1. A method for executing a communication application for communication with at least one contact stored in an electronic device, the method comprising: storing, by the electronic device, a frequency of usage of a plurality of communication applications for each contact in a database; receiving a user input for displaying a contact list including a plurality of contacts; identifying a most frequent communication application of the plurality of communication applications corresponding to each of the plurality of contacts from the database based on the frequency of usage of the plurality of communication applications; displaying, by the electronic device, the contact list simultaneously along with a single icon representing the identified most frequent communication application for each of the plurality of contacts in the contact list; and executing the identified most frequent communication application, as a response to at least one interaction event performed on one of the plurality of contacts in the displayed contact list. Appeal 2020-006542 Application No. 14/696,802 3 The prior art relied upon by the Examiner as evidence is: Name Reference Date Hawkins US 7,231,229 Bl June 12, 2007 Russell US 9,710,134 Bl July 18, 2017 Hartman US 2008/0147639 Al June 19, 2008 Krutik US 2008/0207271 Al Aug. 28, 2008 Kim US 2008/0259045 Al Oct. 23, 2008 Thorsander US 2013/0227470 Al Aug. 29, 2013 Zhang US 2015/0277684 Al Oct. 1, 2015 Claims 1-14, 19, and 21-26 stand rejected under 35 U.S.C. § 112(a) as failing to satisfy the written description requirement. Claims 1-14, 19, and 21-26 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Thorsander, Hawkins, and Zhang. Claims 1, 2, 8, 19, 21-24, and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Thorsander, Hawkins, and Russell. Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Thorsander, Hawkins, Russell, and Hartman. Claims 5-7, 12-14, and 25 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Kim, and Krutik. ISSUES 1. Does Appellant’s Specification provide written description support for “a single icon representing the identified most frequent communication application is displayed simultaneously with each contact in a contact list?” Appeal 2020-006542 Application No. 14/696,802 4 2. Is the claim limitation “displaying the contact list simultaneously along with a single icon representing the identified most frequent communications application” indefinite? 3. Does the combination of Thorsander, Hawkins, and Zhang teach or suggest displaying a most frequent communication application associated with the at least one other application? 4. Does the combination of Thorsander, Hawkins, and Russell teach or suggest displaying, by the electronic device, the contact list simultaneously along with a single icon representing the identified most frequent communication application corresponding to each of the plurality of contacts in the contact list? 5. Does the combination of Hartman, Kim, and Krutik teach or suggest displaying the list including the plurality of communication applications simultaneously along with the identified single contact having the highest frequency of communication for each of the plurality of communication applications in the list? Principles of Law The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). “A patent’s claims [must] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Appeal 2020-006542 Application No. 14/696,802 5 ANALYSIS 35 U.S.C. § 112(a) rejection The Examiner finds that “nothing in the specification or drawings appears to describe or show that only a single icon representing the identified most frequent communication application is displayed simultaneously with each contact in a contact list.” Final Act. 14-15. Appellant responds in the Brief that support for the claimed limitation may be found at Figs. 7A-7E, and paragraphs 107-111, of the Specification. Appeal Br. 9. The Examiner responds in the Answer that nothing in these figures “can be reasonably interpreted as conveying that any of these icons represent an identified most frequent communication application.” Ans. 4. The Examiner finds that the Specification discloses the displayed icons as being “a frequent mode of communication,” but there is no “identifying, or displaying, a most frequent communication application for each contact.” Ans. 4-5. We agree with the Examiner’s finding. Appellant’s Specification refers to a “frequent mode communication item associated with a contact in an electronic device.” Spec. ¶ 107. An email application “is displayed as a frequent mode of communication for the contact ‘Dan Banderet,’ and ‘Mark Xerri.’” Spec. ¶ 109. Similar examples are given for a “Chat-on application” and a “SNS2 application.” Id. Appellant’s Specification does not, however, contain disclosure that a most frequent communication is identified. With respect to claims 5 and 12, these claims recite “identifying a single contact having a highest frequency of communication,” and “displaying the list including the plurality of communication applications simultaneously along with the identified single contact having the highest Appeal 2020-006542 Application No. 14/696,802 6 frequency of communication.” Ans. 4. The Examiner finds that “[a]t most, the specification appears to describe displaying a list including a plurality of communication applications without any contacts displayed,” and on a separate screen, “displaying a single communication application along with a single contact having the highest frequency of communication for the single application.” Ans. 6. The Examiner finds that the Specification does not simultaneously disclose the list of applications and the highest frequency contact. Id. Appellant argues that support for these limitations may be found at Figure 14 and Specification paragraphs 157-163. Appeal Br. 9. We have reviewed the sections of Appellant’s Specification relied upon, and we agree with the Examiner that there is no disclosure of simultaneously displaying the list of a plurality of applications along with the identified single highest frequency contact, as clams 5 and 12 require. We find that Appellant’s Specification does not disclose the argued limitations, and therefore Appellant has not demonstrated possession of the invention claimed. We sustain the Examiner’s § 112(a) rejection of claims 1-14, 19, and 21-26. 35 U.S.C. § 112(b) rejection The Examiner notes that the claims recite displaying the contact list simultaneously along with a single icon representing the identified most frequent communications application. The Examiner concludes it is unclear whether the claim limitation “is intended to limit the display to only a single icon representing only a single most frequent communication application for each contact . . . or if the limitation requires the display of at least one icon Appeal 2020-006542 Application No. 14/696,802 7 representing at least one more frequent communication application for each contact in the contact list, and the display of more than one icon is also permitted. Therefore the limitation is indefinite.” Final Act. 17. Appellant argues that the indefiniteness rejection is improper because, given the plain language of the claim, one of ordinary skill in the art could not interpret the limitation at issue as “displaying at least one icon” where the display of more than one icon is also permitted. Appeal Br. 9. We do not agree with the Examiner that the limitation “displaying . . . the contact list simultaneously along with a single icon representing the identified most frequent communication application for each of the plurality of contacts” is indefinite. Figure 7A is reproduced below: Appellant’s Figure 7A illustrates an example scenario of a frequent mode [of] communication associated with a contact in an electronic device. Spec. ¶¶ 31, 107-111. We find that one skilled in the art would understand Appeal 2020-006542 Application No. 14/696,802 8 that the limitation means that an icon is displayed for each of the plurality of contacts, and that the displayed icon represents the identified most frequent communication application for that particular contact. We find that Appellant’s claims, viewed in light of the Specification, inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, 572 U.S. at 910. We determine that the Examiner erred in rejecting claims 1-14, 19, and 21-26 as indefinite. We do not sustain the § 112(b) rejection. Rejection of claims 15 and 16 over Thorsander, Hawkins, and Zhang Appellant argues that Zhang teaches that “some frequently used functions, such as calling and sending short message, are displayed on at least part of an execution screen,” but that this does not make obvious the limitation “displaying a most frequent communication application associated with the at least one other application” expressed in independent claim 15. Appeal Br. 11. Appellant’s argument is not persuasive. The Examiner finds that Thorsander teaches displaying, within a sidebar of an executing application, a plurality of operational shortcut icons, including those associated with communication applications, where the display of the operational shortcut icons is prioritized and ordered based on frequency of use. Ans. 18. The Examiner then finds that Thorsander does not teach, and cites Zhang for a teaching of, displaying a most frequent communication application on at least part of an execution screen of the executed at least one other application. Ans. 19. Appeal 2020-006542 Application No. 14/696,802 9 Figure 4 of Thorsander shows an application in display 204, and a sidebar 444 on the right side of the display. “The sidebar 444 contains a number of icons related to or representing actions.” Thorsander ¶ 136. “The icons may be prioritized, for example, by the frequency of use of the associated action by the specific user.” Thorsander ¶ 137. Zhang teaches that certain functions, “such as calling and sending short message are frequently used by the user.” Zhang ¶ 62. Zhang further teaches that “a communication mode or a contact that is used most frequently by the user is displayed in the first display region and it is convenient for the user to choose.” Zhang ¶ 64. Appellant further argues that Zhang “merely discloses displaying the frequently used communication mode or contact in different display regions and fails to disclose the relationship between the communication mode of the first display region and the contact of the second display region. The feature of displaying a second application, which is most frequently used application corresponding to the contact that can be used through a first application, is not obvious from Zhang.” Reply Br. 5. We are not persuaded by Appellant’s Reply Brief argument. Appellant does not rebut the Examiner’s findings concerning teachings relied upon in Thorsander, outlined supra. We agree with the Examiner that Zhang supplies a teaching of displaying a most frequent communication mode “in a first display region.” Appellant does not contest the propriety of the Examiner’s combination of references. Because we do not agree with Appellant that the Examiner erred, we sustain the Examiner’s § 103 rejection of claims 15 and 16 over Thorsander, Hawkins, and Zhang. Appeal 2020-006542 Application No. 14/696,802 10 Rejection of claims 1, 8, 19, 21, and 23 over Thorsander, Hawkins, and Russell Independent claim 1 recites, in pertinent part, “displaying, by the electronic device, the contact list simultaneously along with a single icon representing the identified most frequent communication application corresponding to each of the plurality of contacts in the contact list.” Independent claims 8, 19, 21, and 23 recite analogous limitations. Appellant argues that “at most Thorsander is directed to providing a menu with a plurality of shortcuts for any particular selected object.” Appeal Br. 14. Appellant concedes that “the plurality of shortcuts may be prioritized by frequency of use” but argues that Thorsander “does not teach or suggest anything specific is done with a most frequently used communication application.” Id. Appellant contends that Hawkins also does not teach the argued limitations, because “Hawkins merely discloses displaying a contact list,” and in response to a user selecting a contact in a particular manner, communication is initiated via a default communication mode which may be the most recently or frequently used mode for that contact. Appeal Br. 15. Last, Appellant argues that Russell also fails to teach the argued limitation, because icons displayed with Russell’s contact list “do not represent a most frequent communication application.” Appeal Br. 16. Appellant’s arguments do not persuade us of error in the rejection. The Examiner finds that “Thorsander is cited with regard to its other teachings . . . including storing frequency of usage of the communications applications for each contact in a database, along with its general related teachings regarding identifying a frequent communication application corresponding to at least one contact.” Ans. 26-27. For example, Thorsander Appeal 2020-006542 Application No. 14/696,802 11 teaches displaying icons on a sidebar 444 in a list prioritized by, for example, “the frequency of use of the associated action by the specific user.” Thorsander ¶ 137. The Examiner cites Hawkins for its teaching of identifying a most frequent communication application corresponding to each of the plurality of contacts. Ans. 28; Hawkins, col. 7:28-32. “[I]n Hawkins, a speed dial icon is created for each contact in the contact list, where the speed dial button is operable to initiate communication with the contact using the default communication mode for that contact, and the default communication mode is a most frequently used communication application for that contact.” Ans. 29. The Examiner next finds that Hawkins does not teach simultaneously displaying both contact list information and a separate icon representing the most frequent communication application. Ans. 31. The Examiner finds that Russell teaches displaying a contact list including a plurality of contacts simultaneously along with the single icon representing a communication application corresponding to each of the plurality of contacts in the contact list. Ans. 31. Figure 1 of Russell is reproduced below: Appeal 2020-006542 Application No. 14/696,802 12 Figure 1 of Russell shows a system for providing smart contact lists. Russell displays list (130A, 130B, 130C) of contacts 140-190 simultaneously along with “selectable features 142-192 for initiating a telephone call and 144-194 for initiating an email message.” Ans. 31. The Examiner relies on Hawkins, rather than Russell, for a teaching of identifying the most frequent communication application corresponding to each of the plurality of contacts. Ans. 30. Russell thus displays the icon for the most frequent communication application, as well as other application(s), on its contact list of a plurality of contacts. Appellant’s Reply Brief argument that Russell “merely discloses displaying two basic communication icons next to a contact,” and therefore does not disclose “displaying a single icon representing a most frequently used communication application,” is not well taken. The set of icons Appeal 2020-006542 Application No. 14/696,802 13 displayed by Russell necessarily includes the single icon representing a most frequently used communication application. We determine that the Examiner did not err in rejecting claims 1, 2, 8, 9, 19, 21-24, and 26 over Thorsander, Hawkins, and Russell. We sustain the Examiner’s § 103 rejection. Rejection of claims 3, 4, 10, and 11 over Thorsander, Hawkins, Russell, and Hartman Appellant argues only that Hartman fails to cure the deficiencies of the combination of Thorsander, Hawkins, and Russell. Appeal Br. 19. As we determine supra that no such deficiencies exist, we sustain the Examiner’s rejection of dependent claims 3, 4, 10, and 11 over Thorsander, Hawkins, Russell, and Hartman, for the reasons given with respect to the rejection of independent claims 1 and 8. Rejection of claims 5-7, 12-14, and 25 over Hartman, Kim, and Krutik The Examiner finds that Krutik teaches “displaying the list including the plurality of communication applications simultaneously along with the identified single contact having the highest frequency of communication for each of the plurality of communication applications in the list,” the limitation determined to be missing from Hartman and Kim. Final Act. 64- 65; Krutik, Fig. 2, ¶¶ 24-26. Paragraph 24 of Krutik discloses forming contact list 103, based on a frequency of communication with the contacts. “The frequency based contact list threshold, for example may be two contacts of a particular communication type.” Figure 2 of Krutik, in pertinent part, is reproduced below: Appeal 2020-006542 Application No. 14/696,802 14 Krutik’s display 218d, illustrated in Figure 2, shows “a frequency contact list 224 including those contacts that equal or exceed the frequency threshold value for communications that may span any particular time period.” Krutik ¶ 25. The frequency threshold value is set “either by default or by user preference.” Id. Appellant argues that Krutik’s display of a plurality of contacts that exceed a contact frequency threshold “is not equivalent or analogous” to displaying the single identified contact having the highest frequency of communication. Appeal Br. 20. We are not persuaded that the Examiner erred. We agree with the Examiner that “nothing in the specification precludes the display of contacts having other frequencies in addition to the contact identified as having a highest frequency.” Ans. 38. We find that displaying the set of contacts that exceed a contact frequency threshold necessarily includes displaying the contact displaying the contact having the highest frequency of communication. Accordingly, we find that the combination of Hartman, Kim, and Krutik teaches or suggests all the disputed limitations of claims 5-7, 12-14, and 25. We sustain the Examiner’s § 103 rejection. Appeal 2020-006542 Application No. 14/696,802 15 CONCLUSIONS 1. Appellant’s Specification does not provide written description support for “a single icon representing the identified most frequent communication application is displayed simultaneously with each contact in a contact list.” 2. The claim limitation “displaying the contact list simultaneously along with a single icon representing the identified most frequent communications application” is not indefinite. 3. The combination of Thorsander, Hawkins, and Zhang teaches or suggests displaying a most frequent communication application associated with the at least one other application. 4. The combination of Thorsander, Hawkins, and Russell teaches or suggests displaying, by the electronic device, the contact list simultaneously along with a single icon representing the identified most frequent communication application corresponding to each of the plurality of contacts in the contact list. 5. The combination of Hartman, Kim, and Krutik teaches or suggests displaying the list including the plurality of communication applications simultaneously along with the identified single contact having the highest frequency of communication for each of the plurality of communication applications in the list. Appeal 2020-006542 Application No. 14/696,802 16 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-14, 19, 21- 26 112(a) Written Description 1-14, 19, 21-26 1-14, 19, 21- 26 112(b) Indefiniteness 1-14, 19, 21- 26 15, 16 103 Thorsander, Hawkins, Zhang 15, 16 1, 2, 8, 9, 19, 21-24, 26 103 Thorsander, Hawkins, Russell 1, 2, 8, 9, 19, 21- 24, 26 3, 4, 10, 11 103 Thorsander, Hawkins, Russell, Hartman 3, 4, 10, 11 5-7, 12-14, 25 103 Hartman, Kim, Krutik 5-7, 12- 14, 25 Overall Outcome 1-16, 19, 21-26 ORDER The Examiner’s decision to reject claims 1-16, 19, and 21-26 is affirmed. [extension of time language] TIME PERIOD FOR 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