Time Warner Cable Enterprises LLC

Patent Trials and Appeals BoardJan 15, 2021

2019005472 (P.T.A.B. Jan. 15, 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. 14/501,596 09/30/2014 David Ritchey Braden V TWC14-18(14-51) 8023 156874 7590 01/15/2021 Armis Intellectual Property Law, LLC P.O. Box 1564 Westborough, MA 01581 EXAMINER LI, LIANG Y ART UNIT PAPER NUMBER 2143 NOTIFICATION DATE DELIVERY MODE 01/15/2021 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): chris.lutz@armisiplaw.com docket@armisiplaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID RITCHEY BRADEN V and CHRISTOPHER WILLIAM DURA Appeal 2019-005472 Application 14/501,596 Technology Center 2100 BeforeST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT,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 1–5, 8–16, 21, 23, 36–38, and 43–56, which are all claims pending in the application. Appellant has canceled claims 6, 7, 17–20, 22, 24–35, and 39–42. See Appeal Br. 42–49. 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 Time Warner Cable Enterprises LLC, Inc. Appeal Br. 2. Appeal 2019-005472 Application 14/501,596 2 STATEMENT OF THE CASE2 The claims are directed to a method and system for display, management, and use of an on-screen keyboard to provide a more useful on- screen keyboard experience. See Spec. (Title); ¶ 2. Exemplary Claims Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases added to contested prior-art limitations): 1. A method comprising: via computer processor hardware, executing operations of: initiating display of multiple display regions on a display screen, the multiple display regions including a first display region and a second display region, the second display region assigned a symbol, the second display region displaying the symbol; initiating display of a visual prompt in the first display region, the visual prompt indicating a current navigation position in the display screen, the first display region not assigned any corresponding selectable symbol; displaying directional information in the first display region highlighted by the visual prompt, the directional information pointing from the first display region to the second display region to indicate a direction button on a remote control device in which to select the symbol in the second display region for storage in a buffer; and 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Feb. 25, 2019); Reply Brief (“Reply Br.,” filed July 10, 2019); Examiner’s Answer (“Ans.,” mailed May 10, 2019); Final Office Action (“Final Act.,” mailed July 19, 2018); and the original Specification (“Spec.,” filed Sept. 30, 2014). Appeal 2019-005472 Application 14/501,596 3 in response to receiving directional input with respect to the visual prompt from the first display region to the second display region, storing a copy of the symbol in the buffer to indicate selection of the symbol assigned to the second display region. REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Radloff et al. (“Radloff”) US 2006/0267995 A1 Nov. 30, 2006 Fyke US 2008/0303796 A1 Dec. 11, 2008 Tsuruzono US 2010/0171706 A1 July 8, 2010 Occhino et al. (“Occhino”) US 2011/0004692 A1 Jan. 6, 2011 REJECTIONS3 R1. Claims 1, 2, 8, 11–16, 21, 23, 36–38, 44, 45, 52–56 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tsuruzono and Radloff. Final Act. 2. R2. Claims 3–5, 9, 10, and 48–51 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tsuruzono, Radloff, and Occhino. Final Act. 11. R3. Claim 43 and 47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tsuruzono, Radloff, and Fyke. Final Act. 16. 3 The Examiner withdrew the written description rejection under 35 U.S.C. § 112(b), of appealed claims 53 and 54. Ans. 3. Appeal 2019-005472 Application 14/501,596 4 CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 18–40) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent- ineligible subject matter Rejection R1 of claims 1, 2, 8, 11–16, 21, 23, 36– 38, 44, 45, and 52–56 on the basis of representative claim 1. Dependent claims 3–5, 9, 10, and 48–51 in obviousness Rejection R2, not argued separately, stand or fall with independent claim 1 from which they depend.4 We address Rejection R3 of separately argued dependent claims 43 and 47, infra. 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 Rejection R1 of claim 1 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 4 “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). 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 2019-005472 Application 14/501,596 5 arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. § 103(a) Rejection R1: Claims 1, 2, 8, 11–16, 21, 23, 36–38, 44, 45, and 52–56 Issue 1 Appellant argues (Appeal Br. 18–22; Reply Br. 4–6) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Tsuruzono and Radloff is in error. These contentions present us with the following issues: (1) Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method . . . executing operations of” that includes, inter alia, the limitation “displaying directional information in the first display region highlighted by the visual prompt, the directional information pointing from the first display region to the second display region,” as recited in claim 1? (2) Did the Examiner err in rejecting claim 1 as being obvious over the reference combination because of alleged reliance upon impermissible hindsight? 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, Appeal 2019-005472 Application 14/501,596 6 the test is what the combined teachings of the 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 2019-005472 Application 14/501,596 7 Analysis Issue (1): “displaying directional information” Limitation The Examiner finds Tsuruzono’s relative positioning of the buttons in the layout shown in Fig. 3 teaches or at least suggests “displaying directional information,” and Tsuruzono’s directional buttons shown in Fig. 2:121–124, further teach or suggest “displaying directional information . . . in the first display region highlighted by the visual prompt.” Final Act. 3–4. The Examiner also finds Radloff’s Figure 7, paragraph 87, Table 20:3.0 showing pressing up/down arrows to change the Playlist’s order, teaches or at least suggests the disputed “displaying directional information” limitation. Final Act. 4. Appellant argues: [S]electing an up/down arrow on a remote control device in Radloff to change a play list order on a display screen has nothing to do with selection of a symbol (in a second display region), especially not one in which a copy of the symbol is included in a buffer to indicate its selection. Instead, selection of a respective button on a remote control device in Radloff enables a user to change an order of a playlist, presumably, from first to last or last to first or last to first. Thus, the combination of Radloff with Tsuruzono does not make sense since Tsuruzono has nothing to do with reordering anything. Appeal Br. 20. Appellant further contends “Tsuruzono is undesirable because it provides no indication of directional information in a visual prompt to aid a user in selection of a display region (symbol).” Appeal Br. 21. The Examiner explains that Radloff’s cursor moving from the “4” spot to the “3” spot by the up/down arrows teach or at least suggest the disputed limitation. Ans. 21. The Examiner further explains that the use of Appeal 2019-005472 Application 14/501,596 8 arrow keys and indicators are GUI features known in data operation. Id. The Examiner states that, although Radloff does not explicitly disclose copying the selected symbol in a buffer, a person with ordinary skill in the GUI field would understand such a well-known use of a buffer, e.g., a display buffer. Ans. 22. During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We are not persuaded by Appellant’s arguments because Appellant does not traverse the Examiner’s specific findings regarding the teachings and suggestions of the Tsuruzono reference, which the Examiner cites to for teaching almost the entirety of the disputed limitation: displaying directional information in the first display region highlighted by the visual prompt, the directional information pointing from the first display region to the second display region, except for the preposition “in.” Final Act. 3–4. We agree with the Examiner’s finding Tsuruzono’s directional buttons in Figure 2 teach or at least suggest “displaying directional information” in/around “the first display region highlighted by the visual prompt, the directional information pointing from the first display region to the second display Appeal 2019-005472 Application 14/501,596 9 region.” The Examiner cites to Radloff to specifically teach the particular preposition “in” within this context (the Examiner finds Tsuruzono teaches displaying directional information around (but not in) the first display region), whereas the Examiner cites to Tsuruzono for teaching the balance of the disputed limitation. Id. We also agree with the Examiner and find that such GUI-user interaction, as recited in claim 1, is known in the art, and would have been a predictable use of prior art elements according to their function. Final Act. 4. We are not persuaded the Examiner erred because Appellant has not demonstrated that the Examiner’s proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor has Appellant provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Issue (2): The Examiner did not rely on impermissible hindsight Appellant argues “[T]the office action uses improper hindsight reasoning to reject the claimed invention.” Appeal Br. 19. Appellant also argues There is nothing in the combination of prior art as a whole to suggest the desirability, and thus the obviousness, of combining the scrolling in Tsuruzono to the on-screen keyboard. Nor is there an indication that such a combination would even be remotely similar in function to the limitations as recited by the claimed invention. Thus, the assertion that the claimed invention is obvious in view of the combination of references is Appeal 2019-005472 Application 14/501,596 10 improper. That is, the office action uses improper hindsight reasoning to reject the claimed invention. App. Br. 21. Appellant contends the Examiner used “hindsight,” but does not address the reasoning provided by the Examiner. Final Act. 4. By not showing error in the reasoning provided, Appellant has not shown error in the conclusion regarding obviousness. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as “essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references”). First, as explained in In re McLaughlin: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Our review of the record establishes that the Examiner’s case for obviousness is only based on knowledge which was within the level of ordinary skill at the time of Appellant’s invention and does not include knowledge gleaned only from Appellant’s disclosure. Second, the Examiner identifies the relevant portions of each of the references relied on throughout the Final Action and Examiner’s Answer. See Final Act. 3–4, Ans. 20–22. To the extent that the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: Appeal 2019-005472 Application 14/501,596 11 Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (alteration in original). In this case, the Examiner's conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record. See Final Act. 3–4; Ans. 20–22. Thus, we agree with the Examiner’s findings and legal conclusions. Moreover, as discussed above, Appellant has not demonstrated that the Examiner’s proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog, 485 F.3d 1157 at 1162 (citing KSR, 550 U.S. at 418). Nor has Appellant provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., 725 F.3d at 1352. Appeal 2019-005472 Application 14/501,596 12 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 limitations 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 claims 2, 8, 11–16, 21, 23, 36–38, 44, 45, and 52–56, which fall therewith. See Claim Grouping, supra. Further, while Appellant raised additional arguments for patentability of dependent claims 44 and 52–56, we find that the Examiner has, in the Answer, rebutted each of those arguments by a preponderance of the evidence. Final Act. 8–11; Ans. 24–26. Therefore, we adopt the Examiner’s findings and underlying reasoning, which we incorporate herein by reference. Consequently, we find no error in the Examiner’s rejections of claims 1, 2, 8, 11–16, 21, 23, 36–38, 44, 45, and 52–56. 2. Rejections R2 of Claims 3–5, 9, 10, and 48–51 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claims 3–5, 9, 10, and 48–51 under § 103(a), we sustain the Examiner’s rejections of these claims. Arguments not made are waived. 3. Rejection R3 of Claims 43 and 47 Appellant argues regarding dependent claim 43 that “the office action cites Fyke as disclosing a DONE button on a display screen. Applicants respectfully disagree.” Appeal Br. 36. We are not persuaded by Appellant’s argument and agree with the Examiner’s finding because Fyke’s “return” or “enter” button at least Appeal 2019-005472 Application 14/501,596 13 suggests a selectable “DONE” button. Final Act. 16 (citing Fyke, Fig. 1; 32). We note Appellant’s Specification describes the DONE button as being selected and used at the completed creation of a text string, which we find to be similar to the use of an enter or return button. Spec. 13, ll. 5–9. We agree with the Examiner’s broad but reasonable interpretation of the recited “DONE” limitation in light of the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 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 43, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of dependent claim 43. Regarding dependent claim 47, Appellant, in addition to the arguments made for claim 43, further argues: [I]n contrast to Fyke, the claimed invention recites: the displayed on-screen keyboard includes display of a selectable DONE button adjacent and in-line with respect to the third zone of display regions. There is no indication in the office action what is equivalent or suggestive of this limitation. Appeal Br. 40 (emphasis omitted). We are not persuaded by Appellant’s argument and agree with the Examiner because Appellant does not address the Examiner’s specific Appeal 2019-005472 Application 14/501,596 14 findings regarding Tsuruzono. Final Act. 17; Appeal Br. 39–40. The Examiner finds the combination of Fyke and Tsuruzono, specifically Tsuruzono’s S to X row in the middle right portion of Figure 3, teaches or at least suggests a third zone of display region. See Final Act. 17 (citing Tsuruzono, Fig. 3). However, we note Appellant does not address the Examiner’s relevant findings regarding Tsuruzono. 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 47, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of dependent claim 47. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 4–17) 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 The Examiner did not err with respect to obviousness Rejections R1 through R3 of claims 1–5, 8–16, 21, 23, 36–38, and 43–56 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. Appeal 2019-005472 Application 14/501,596 15 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 1, 2, 8, 11– 16, 21, 23, 36–38, 44, 45, 52–56 103(a) Tsuruzono, Radloff 1, 2, 8, 11– 16, 21, 23, 36–38, 44, 45, 52–56 3–5, 9, 10, 48–51 103(a) Tsuruzono, Radloff, Occhino 3–5, 9, 10, 48–51 43, 47 103(a) Tsuruzono, Radloff, Fyke 43, 47 Overall Outcome 1–5, 8–16, 21, 23, 36– 38, 43–56 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