Apple Inc.

Patent Trials and Appeals Board

Nov 16, 2021

2021004194 (P.T.A.B. Nov. 16, 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.
14/475,471 09/02/2014 James B. Cary P22932US2/77770000518102 2058
150004 7590 11/16/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
SPARKS, JONATHAN A
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
11/16/2021 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES B. CARY, DAVID A. SCHIMON, CHRISTOPHER P.
SAARI, KAREN L. BECHTEL, ANTONY J. DZERYN,
TYLER D. HAWKINS, ELIZA C. BLOCK, CURTIS ROTHERT,
GUSTAVO R. CHAURAIS, and GREGORY B. NOVICK

Appeal 2021-004194
Application 14/475,471
Technology Center 2400
____________

Before MAHSHID D. SAADAT, ELENI MANTIS MERCADER, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 5–8, 11, 20–27, 43, 48, 49, and 54–
86, which constitute all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 A video/telephonic hearing was held for this appeal on November 1, 2021.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple
Inc. Appeal Br. 4.
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STATEMENT OF THE CASE
Appellant’s disclosure is directed to managing alerts among multiple
devices, such as watches, phones, and tablets. Abstr.; Spec. ¶¶ 3, 4, 17, 18
and 80; Figs. 1, 2A.
Claim 1 is representative3 of the invention and reads as follows:
1. A computer-implemented method comprising:

at a coordinating device:

detecting, at the coordinating device, a message received from a
remote source;

identifying a plurality of other devices, wherein each of the
coordinating device and the plurality of other devices is
associated with a same account and is available to present an alert
corresponding to the message;

in accordance with a determination that a proximate condition is
not satisfied for the plurality of other devices, presenting, at the
coordinating device, the alert corresponding to the message; and
in accordance with a determination that at least one device of the
plurality of devices satisfies the proximate condition:
in accordance with a determination that the coordinating device
is in an active mode: presenting, by the coordinating device, the
alert;
suppressing, at a first device of the plurality of devices,
presentation of the alert corresponding to the message, wherein
suppressing the alert includes causing the first device to forgo
the presentation of any audio, visual, and haptic alerts in
correspondence with the message; and

3 Appellant argues claim 1 is representative of Group A independent claims
1, 20, 57, and 58, and dependent claims 5–8,11, 21–27, 43, 48, 49, 54–56,
and 59–86. Appeal Br. 16. See 37 C.F.R. § 41.37(c)(1)(iv) (2020).
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in accordance with a determination that the coordinating device
is not in the active mode: transmitting, by the coordinating
device, a signal to the first device that corresponds to an
invitation to present the alert at the first device; and
in accordance with a determination that an acceptance message
responsive to the invitation is not received from the first device,
presenting, by the coordinating device, the alert.
Appeal Br. 33 (Claims App.) (emphasis added).
REFERENCES AND REJECTION
The prior art relied upon by the Examiner is:
Name Reference Date
Gunn US 2014/0118272 A1 May 1, 2014
Hodges et al. US 2014/0244715 A1 Aug. 28, 2014
Touloumtzis US 2014/0368333 A1 Dec. 18, 2014
Lee et al. US 2015/0061862 A1 Mar. 5, 2015

Claims 1, 5–8, 20–27, 43, 48–49, 54–64, 66–77, and 79–86 stand
rejected under 35 U.S.C. § 103 as unpatentable over Hodges, Lee, and
Touloumtzis. Final Act. 4–13.
Claims 11, 65, and 78 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hodges, Lee, Touloumtzis, and Gunn. Final Act. 14–15.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. As discussed below, we are persuaded by Appellant’s
contentions of Examiner error. In our analysis below, we highlight and
address specific findings and arguments for emphasis.
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Appellant argues, inter alia, the Examiner errs in finding that Hodges,
Lee, and Touloumtzis teaches the claim 1 limitation
suppressing, at a first device of the plurality of devices,
presentation of the alert corresponding to the message, wherein
suppressing the alert includes causing the first device to forgo
the presentation of any audio, visual, and haptic alerts in
correspondence with the message (also referred to as “disputed
limitation”).

Appeal Br. 16–23; Reply Br. 4–6.
In the Final Action, the Examiner finds the combination of Hodges,
Lee, and Touloumtzis teaches the limitations of claim 1. Final Act. 4–9.
The Examiner finds the combination of Hodges and Lee teaches many of the
claim limitations but does not teach the disputed limitation. Id.; see also
Ans. 3–5. The Examiner then finds Touloumtzis teaches the disputed
limitation, and provides reason to combine the teachings of Hodges, Lee,
and Touloumtzis. Id.
Regarding the disputed limitation, the Examiner finds Touloumtzis
describes how the System pings all the user devices to
determine which devices are active, device proximity with
relation to the other devise, and other device/user context; The
system then determines which device the user is engaging in
and provides an alert to the device while providing a passive
alert (suppressed) to the other user devices within proximity of
the active device, wherein the passive alert may not wake up the
display of the other device).

Final Act. 8–9 (citing Touloumtzis ¶ 20).
Appellant argues Touloumtzis describes various embodiments of
providing notifications to devices that are not compatible with one another.
Appeal Br. 17. Regarding the disputed limitation, Appellant argues, in one
embodiment, Touloumtzis identifies an active device (a device the user is
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actively using) and inactive devices from a plurality of devices, and sends an
active notification to the active device and a passive notification to the
inactive device. Id. (citing Touloumtzis ¶ 20). According to Appellant, in
another embodiment, Touloumtzis describes a system that identifies an
active device from a plurality of devices and then sends a notification to only
the active device (the device the user is interacting with). Id. (citing
Touloumtzis ¶ 23).
Appellant argues, regarding the first embodiment in which the active
device provides an active notification and the passive device provides a
passive notification, all devices provide a notification to the user by
outputting either an active notification or a passive notification. Id. at. 18.
According to Appellant, Touloumtzis refers to examples identified in Figs.
3(a) and 3(b) in which the smartphone (302) provides both a vibration (308)
and a default notification banner (306), without providing a sound alert. Id.
(citing Touloumtzis ¶¶ 18, 20, 21: Figs. 3(a), 3(b)). Appellant argues none
of the embodiments teaches the disputed limitation. Id. at 17–23.
Appellant argues paragraph 20 of Touloumtzis also refers to “a
different example from the example of FIGS. 3(a) and 3(b) that provides
the vibration (308), but that does not cause the device screen to ‘wake up’ to
display the default notification banner (306).” Id. at 19. According to
Appellant:
Thus, this additional example of Touloumtzis also
provides an alert at each device, as required by Touloumtzis. In
fact, Touloumtzis is not considering whether to provide a
notification, but rather what the proper notification is in view of
the context of the user. The same paragraph of Touloumtzis
([0020]) confirms that some alert is always presented at each
device. In particular, [0020] states that the user's context is used
to provide notifications at each device that are less disruptive,
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rather than not providing notifications. Further, [0020] states that
each device itself can determine a “proper notification” to
provide based on the user's context--not whether to provide a
notification:
• “Alternatively, each respective device could
determine a respective proper notification to
provide when a notification is received based on the
user's context and other situational, circumstantial,
or environmental conditions instead of a server
querying each device for the same.”
Accordingly, Touloumtzis does not contemplate or describe any
scenario with respect to figures 3-5 that causes a device to “forgo
the presentation of any audio, visual, and haptic alerts in
correspondence with the message,” as required in claim 1.
Id. at 19.
In the Answer, the Examiner reiterates and refers further to
Touloumtzis, particularly paragraph 20:
Touloumtzis describes various combinations and
permutations of notifications throughout the disclosure that
include sending varying notifications to the plurality of user
devices based on differing contexts (Touloumtzis: Paragraph
[0020] e.g.). As laid out by Appellant in the response on Pages
18-21, the variations of active and passive alerts may be an active
alert (banners, sounds, etc.) and the passive alerts on the other
device(s) are meant to be discrete or quiet. Paragraph [0020] in
Touloumtzis describes various passive alert possibilities as a
simple vibration, visual banner with no sound, and other
possibilities. The claim requires the first device to suppress
presentation of the alert meaning the first device is still receiving
the alert/notification, but is required to suppress the presentation
of alerting/notifying by forgoing presentation of any audio,
visual, and haptic alerts. Paragraph [0020] lays out the various
examples of passive alerts while then continuing on to state: “[
... ] In this example, the active notification is intended to at least
catch the user’s attention and even interrupt the user. The
passive notification, however, is not designed with the same
intent. In this example, since both devices are both close to the
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user, the user likely only needs to be notified by one of them to
understand that a notification has been received. As mentioned
above, two or more notifications interrupting the user can be
potentially annoying and disruptive to many users. Therefore, in
this example, the passive notification is meant to be discrete or
quiet by displaying a notification banner without a sound, in one
example. In another example, the passive notification does not
necessarily even have to cause a change in the device status,
such as cause the device screen to “wake up. Therefore, in this
example, since the smartphone 302 is in close proximity to the
tablet computer 304, for which user engagement has been
verified, the smartphone 302 remains silent since an additional
sound in close proximity to the user would be redundant and
potentially annoying or distracting. [...]” The emphasized
portions first describe what constitutes as a “change in the device
status” for passive alerts including vibrations, small visual
banners, screen wake up, etc. but then after stating these various
examples of passive alerts, further states that in one example the
passive notification does not necessarily even have to cause a
change in the device status. In other words, since the user need
only be “notified” by one of the devices that a notification has
been received-the passive alert received by the other device does
not necessarily even have to cause a change in the device status
[at all] (e.g. vibration, sound, banner, etc.). Therefore, the
Examiner finds that Touloumtzis discloses the above-argued
limitation(s) and Appellant’s arguments to this point
unpersuasive.

Ans. 4–5.
In the Reply Brief, Appellant reiterates and argues Touloumtzis does
not teach or suggest a device that can suppress all audio, visual, and haptic
notifications. Reply Br. 5. According to Appellant, the Examiner’s finding
is predicated on an erroneous Touloumtzis interpretation that a “passive
notification” can provide no notification and this interpretation is not
rooted in Touloumtzis’s disclosure.” Id.
Appellant argues
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Nothing in Touloumtzis, either implicitly or explicitly,
teaches that a passive alert is one that does not cause at least one
of a vibration, a sound, or a visual banner. The Examiner’s
reliance on Touloumtzis’ paragraph [0020] completely ignores
the two specific examples described in paragraph [0020]. More
specifically, in the first example in paragraph [0020], the
smartphone provides both a vibration and a default notification
banner, without providing a sound alert. Additionally, paragraph
[0020] of Touloumtzis also references another different example
that provides the vibration, but that does not cause the device
screen to “wake up” to display the default notification banner.
Specifically, when Touloumtzis states that, “[i]n another
example, the passive notification does not necessarily even have
to cause a change in the device status, such as cause the device
screen to ‘wake up,’” it does not mean that no notification is
outputted, but as an example, just no visual notification is
displayed. Notably, in that example, Touloumtzis does not
preclude other forms of notifications from being presented, such
as vibrations. In other words, nothing in Touloumtzis suggests
that the two examples are combinable, or that a “passive
notification” can be a notification that provides no notification to
a user.
In fact, as discussed in the Appeal Brief, the plain ordinary
definition of “notification” is “the act or an instance of
notifying.” Adopting the Examiner’s interpretation of
Touloumtzis’ paragraph [0020] such that a notification does not
produce any audio, visual, or haptic alert would strip the meaning
from Touloumtzis’ “passive notification.” A notification by
definition must necessarily notify. The Examiner’s purported
interpretation of paragraph [0020] would result in a system that
provides no notification (no audio, visual, or haptic). Thus, the
Examiner’s interpretation of Touloumtzis would result in system
that is inconsistent with Touloumtzis’ disclosure, which requires
providing a “passive notification.”

Id. at 5–6.
On the record before us, we are persuaded by Appellant’s argument
because the Examiner provides insufficient evidence to support the finding
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that Touloumtzis teaches performing the disputed limitation. Although
Touloumtzis teaches alerts with active notifications and passive
notifications, the Examiner does not sufficiently identify teaching in
Touloumtzis in which the alerts are suppressed with no presentation of any
audio, visual, and haptic alerts as set forth in the disputed limitation.
Touloumtzis describes variable notification alerts to provide a user
with less disruptive event notifications (also referred to as “alerts”). Abstr.
Touloumtzis teaches the use of active notifications and passive notifications.
Touloumtzis ¶ 20. For example, Touloumtzis describes passive notification
including a vibration 308 and a default notification banner 306 to a
smartphone 306. Id. In contrast, tablet 304 receives an active notification of
audible noise and a smaller notification banner. Id. Other Touloumtzis
examples also provide alerts and teach employing the user’s context to
provide the proper notification that is less disruptive, but do not teach not
providing a notification.
Although Touloumtzis describes the use of active and passive
notifications, the Examiner does not clearly identify Touloumtzis teaching
that includes suppressing the alert to forgo any audio, visual, and haptic
alerts in correspondence with the message, as set forth in the disputed
limitation. Additionally, the Examiner’s assertion that Touloumtzis
paragraph 20 notification may include no audio, visual, or haptic alert is
inconsistent with the ordinary meaning of notification because there would
be no notification, and is inconsistent with Touloumtzis which describes a
passive notification, and an active notification.
Accordingly, the Examiner does not provide prima facie support for
the rejection. “[T]he [E]xaminer bears the initial burden, on review of the
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prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, on the record before us, we are constrained to conclude the
Examiner errs in rejecting Group A representative claim 1, and claims 5–8,
20–27, 43, 48–49, 54–64, 66–77, and 79–86, as obvious.
Similarly, we conclude the Examiner errs in rejecting dependent
claims 6, 62, 75 (Group B), dependent claims 7, 63, 76 (Group C), and
dependent claims 11, 66, and 78 (Group D). In these rejections, the
Examiner provides no persuasive evidence that the additional references
teach the disputed limitation, discussed supra. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992).
In view of the above, we do not sustain the obviousness rejection of
representative claim 1, and claims 5–8, 11, 20–27, 43, 48, 49, and 54–86.

CONCLUSION
For the reasons stated above, we reverse the obviousness rejection of
representative claim 1, and claims 5–8, 11, 20–27, 43, 48, 49, and 54–86.
Because our decision with regard to the disputed limitation is
dispositive of the rejections made, we do not address additional arguments
raised by Appellant.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–8, 20–27,
43, 48–49, 54–
103 Hodges, Lee,
Touloumtzis
1, 5–8, 20–
27, 43, 48–
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Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
64, 66–77, 79–
86
49, 54–64,
66–77, 79–
86
11, 65, 78 103 Hodges, Lee,
Touloumtzis, Gunn
11, 65, 78
Overall
Outcome
1, 5–8, 11,
20–27, 43,
48, 49, 54–
86

REVERSED