Amy Leigh. Rose et al.

Patent Trials and Appeals Board

May 19, 2020

2018008669 (P.T.A.B. May. 19, 2020)

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.
14/502,404 09/30/2014 Amy Leigh Rose RPS920140213USNP(710.426) 4925
58127 7590 05/19/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
GENACK, MATTHEW W
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
05/19/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY LEIGH ROSE, JENNIFER LEE-BARON,
NATHAN J. PETERSON, BRYAN L. YOUNG, and
JOHN SCOTT CROWE
Appeal 2018-008669
Application 14/502,404
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL1

1 Throughout this Decision we have considered the Specification filed
September 30, 2014 (“Spec.”), the Final Rejection mailed January 9, 2018
(“Final Act.”), the Appeal Brief filed June 11, 2018 (“Appeal Br.”), the
Examiner’s Answer mailed July 3, 2018 (“Ans.”), and the Reply Brief filed
September 4, 2018 (“Reply Br.”).
Appeal 2018-008669
Application 14/502,404

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–24. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a selecting an operating mode for an
information handling device that modulates the noise of user notifications.
Spec. Abstract. Operating mode may be selected based on detected
availability of an input and the type of notification. Id. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method, comprising:
detecting, using a processor, a notification at an
information handling device;
detecting, using a processor, availability of an input
associated with a user at the information handling device,
wherein the detecting an availability of an input comprises
detecting an interaction of the user with the information handling
device; and
selecting, using a processor, an operating mode of the
information handling device, wherein the selected operating
mode of the information handling device comprises a mode that
modulates a noise and wherein the selecting an operating mode
is based upon a user defined rule set associated with the detected
availability of an input and a type of the notification.

2 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 is Lenovo
(Singapore) PTE. LTD. Appeal Br. 3.
Appeal 2018-008669
Application 14/502,404

3
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Glatzer U.S. 2005/0078090 A1 Apr. 14, 2005
Li U.S. 2008/0214246 A1 Sept. 4, 2008
Luciani U.S. 2008/0242287 A1 Oct. 2, 2008
Pinto U.S. 2011/0022666 A1 Jan. 27, 2011
Lee U.S. 2014/0156269 A1 June 5, 2014
Varghese U.S. 2014/0273974 A1 Sept. 18, 2014
Kao U.S. 2014/0289384 A1 Sept. 25, 2014
Walley U.S. 2015/0134801 A1 May 14, 2015
REJECTIONS
Claims 1, 2, 9, 10, 12–14, 21, 23, and 24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Li, Varghese, Pinto, and Glatzer. Final
Act. 6–17.
Claims 3, 5, 11, 15, 17, and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Li, Varghese, Pinto, Glatzer, and Lee. Final Act.
17–22.
Claims 4 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Li, Varghese, Pinto, Glatzer, and Kao. Final Act. 22–24.
Claims 6 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Li, Varghese, Pinto, Glatzer, and Luciani. Final Act. 24–
26.
Claims 7, 8, 19, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Li, Varghese, Pinto, Glatzer, and Walley. Final Act. 26–
30.
OPINION
We review the appealed rejections for error based upon the issues
Appeal 2018-008669
Application 14/502,404

4
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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 have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Claim 1
The Examiner finds that claim 1 would have been obvious over the
combination of Li, Varghese, Pinto, and Glatzer. Final Act. 6–9.
Specifically, the Examiner cites to Li as teaching the bulk of the limitations,
but relies on Varghese as teaching or suggesting “wherein the selecting an
operating mode is based upon a user defined rule set associated with the
detected availability of an input,” on Pinto for teaching “a type of the
notification,” and on Glatzer for teaching “wherein the detecting an
availability of an input comprises detecting an interaction of the user with
the information handling device.” Id.
In explaining the combination of Varghese with Li, the Examiner
points to Varghese’s disclosure that, in order to receive simultaneous
independent communications on a mobile device configured for dual-SIM
dual active (DSDA) operation, the device’s memory may “store application
data, such as pre-determined user preference setting and/or rules for
automatically determining when to commence voice/text conversation
mode” and “may determine whether user input to use voice/text
conversation mode was received for processing the incoming voice call.”
Appeal 2018-008669
Application 14/502,404

5
Final Act. 8; Varghese ¶¶ 35, 45. According to the Examiner, a person of
ordinary skill in the art at the time of filing would have been motivated to
combine Li’s system for controlling the audio alarm of a communication
device with this teaching of Varghese “in order to facilitate a user
simultaneously participating in two separate telephone calls.” Id. (citing
Varghese ¶ 4).
Appellant argues the Examiner has not provided sufficient motivation
to combine Varghese with Li. Appeal Br. 19–21. Specifically, Appellant
contends the Examiner’s proffered motivation—facilitating participation in
two separate telephone calls—“is not applicable to the claimed limitations.”
Id. at 20. According to Appellant, “the teachings of Varghese and Li are
directed to a completely different problem than that of the claimed
limitations.” Id. at 21.
In response to Appellant’s arguments, the Examiner explains that
“both Li and Varghese relate to mobile device notifications (specifically,
incoming call notifications . . . )” and “[a]n individual using the terminal of
Li who is currently participating in a telephone call would benefit from the
pre-determined user rules of Varghese when receiving an incoming
telephone call during said first telephone call.” Ans. 5–6.
Although we agree with the Examiner that Li and Varghese are
directed to analogous art, we nevertheless agree with Appellant that the
Examiner has not sufficiently explained why a person of ordinary skill in the
art would have combined the teachings of Li and Varghese. The Examiner
does not point to any disclosure in Li, nor do we see any, describing its
communication device as supporting multiple installed SIMs or
simultaneous independent communications. Thus, it is unclear why a person
Appeal 2018-008669
Application 14/502,404

6
of ordinary skill in the art would be motivated to add a solution tailored for
such a setup. Paragraph 4 of Varghese, relied upon by the Examiner for this
rationale does not appear to strengthen the position that a person would be
motivated to modify Li’s system “in order to facilitate a user simultaneously
participating in two separate telephone calls.” Varghese ¶ 4 (describing the
ability of dual-SIM devices to allow both SIMs to be active simultaneously
and noting that “a user cannot generally participate in two separate telephone
calls at the same time”); Final Act. 8.
Moreover, even assuming a person of ordinary skill in the art would
recognize that a second call may arrive while a first call is in progress on
Li’s communication device, it is unclear why this scenario would motivate a
person of ordinary skill in the art to add pre-determined user preferences to
address the situation instead of applying the solutions explicitly described in
Li for dealing with notifications. See, e.g., Li ¶¶ 26–28 (describing
embodiments for determining what alarm mode to use for incoming
notifications, including changing the alarm mode based on proximity of a
user). Other than citing to paragraph 4 of Varghese, which as discussed
above, does not support the Examiner’s proffered reasoning, the Examiner
does not provide any support or explanation for this rationale for combining
Li and Varghese.3

3 Although we recognize a person of ordinary skill at the relevant time may
have had other reasons to add pre-determined user preferences to specify
how to deal with notifications, for example as a convenient method of
allowing a user to customize behavior leading to higher satisfaction of the
product, the Examiner has not made any such reasoning part of this
rejection, nor do we see any evidence in the record to support such a finding.
See Final Act. 7–8; Ans. 5–8. Instead, the Examiner relies solely on the
rationale of facilitating “simultaneous participa[tion] in two separate
Appeal 2018-008669
Application 14/502,404

7
Accordingly, we are persuaded of error in the Examiner’s rejection of
claim 1 as obvious over the combination of Li, Varghese, Pinto, and Glatzer.
Claims 2–24
Independent claims 13 and 24 contain similar limitations to those of
claim 1, and their rejection suffers from the same problems identified with
the rejection of claim 1. Compare Final Act. 8 (articulating motivation to
combine Li and Varghese for claim 1), with id. at 11, 14 (articulating same
motivation to combine these references for claims 13 and 24). Claims 2, 9,
10, 12, 14, 21, and 23 depend from claims 1 and 13, and therefore, their
rejections also suffer from the same deficiencies discussed above.
Claims 3–5, 7, 8, 11, 15–20, and 22, each of which depend, directly or
indirectly, from claims 1 and 13, are rejected over Li, Varghese, Pinto, and
Glatzer combined with either Lee, Kao, Luciani, or Walley. Final Act. 17–
30. Each of these rejections relies on the same reasoning regarding the
combination of Li and Varghese, and therefore, their rejections suffer from
the same deficiencies discussed above.
CONCLUSION
We reverse the Examiner’s rejections.

telephone calls.” Final Act. 8; Ans. 5–8. Should there be further
prosecution of claims 1–24, we leave to the Examiner to consider the
appropriateness of further rejection(s) of claims 1–24 under 35 U.S.C. § 103.
Appeal 2018-008669
Application 14/502,404

8
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis/Reference(s) Affirmed Reversed
1, 2, 9, 10, 12–
14, 21, 23, 24
103 Li, Varghese, Pinto,
Glatzer
1, 2, 9, 10, 12–
14, 21, 23, 24
3, 5, 11, 15,
17, 22
103 Li, Varghese, Pinto,
Glatzer, Lee
3, 5, 11, 15,
17, 22
4, 16 103 Li, Varghese, Pinto,
Glatzer, Kao
4, 16
6, 18 103 Li, Varghese, Pinto,
Glatzer, Luciani
6, 18
7, 8, 19, 20 103 Li, Varghese, Pinto,
Glatzer, Walley
7, 8, 19, 20
Overall
Outcome
1–24
REVERSED