Apple Inc.

Patent Trials and Appeals Board

Nov 30, 2021

2021004209 (P.T.A.B. Nov. 30, 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.
15/144,618 05/02/2016 Brandon J. NEWENDORP P26268US1/77870000221101 4655
150004 7590 11/30/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
11/30/2021 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 BRANDON J. NEWENDORP and LIA T. NAPOLITANO

Appeal 2021-004209
Application 15/144,618
Technology Center 2600
____________

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 1–4 and 7–26, which constitute all
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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. 3.
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STATEMENT OF THE CASE
Appellant’s disclosure is directed to intelligent identification and use
of devices in multi-device systems. Abstract; Spec. ¶¶ 2, 139, 141, 142,
159; Figs. 6B, 8C, 9B.
Claim 1 is representative3 of the invention and reads as follows
(emphasis added):
1 A non-transitory computer-readable storage medium
storing one or more programs, the one or more programs
comprising instructions, which when executed by one or more
processors of an electronic device, cause the electronic device to:
receive, at a first electronic device, data indicative of a
task, wherein the task is associated with an audio input;
determine, by the first electronic device, a display size
requirement for the task;
identify, by the first electronic device, a second electronic
device from a plurality of electronic devices based on a display
size of the second electronic device and the display size
requirement, wherein identifying the second electronic device
includes determining that the display size of the second
electronic device meets the display size requirement;
determine that a display size of the first electronic device
meets the display size requirement;
in response to a determination that both the display size of
the first electronic device and the display size of the second
electronic device meet the display size requirement, determine,
with the first electronic device and based on one or more rules
of a plurality of prioritization rules, whether the first electronic

3 Appellant argues claim 1 is representative of Group A independent claims
11 and 12, and dependent claims 2, 3, 4, 7, 10, 15, 18, and 21. Appeal Br. 8,
13. See 37 C.F.R. § 41.37(c)(1)(iv) (2020).
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device or the second electronic device is to perform the task,
wherein the one or more rules of the plurality of prioritization
rules are based on a display size of the first electronic device and
the display size of the second electronic device;
in accordance with a determination that the task is to be
performed by the first electronic device, perform the task with
the first electronic device; and
in accordance with a determination that the task is to be
performed by the second electronic device, cause data indicative
of the task to be transmitted to the second electronic device.
Appeal Br. 34 (Claims Appendix A).
REFERENCES AND REJECTIONS
The prior art relied upon by the Examiner is:
Name Reference Date
Igoe US 2008/0066123 A1 March 13, 2008
Seo et al. US 2013/0204967 A1 August 8, 2013
Halash et al. US 2015/0243283 A1 August 27, 2015
Marshall et al. US 2008/0034081 Al Feb. 7, 2008

Claims 1–3, 11, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Halash and Seo. Non-Final Act. 5–15.
Claims 8–10, 14, 16–18, 20, 22–24, and 26 stand rejected under
35 U.S.C. § 103 as being unpatentable over Halash, Seo, and Igoe. Non-
Final Act. 15–20.

4According to Appellant, this is the Appellant’s corrected Claims Appendix
in response to a notification that the earlier Appeal Brief does not contain a
correct copy of the appealed claims as an appendix. RESPONSE TO
NOTIFICATION OF NON-COMPLIANT APPEAL BRIEF, filed January
11, 2021.
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Claims 7, 13, 15, 19, 21, and 25 stand rejected under 35 U.S.C. § 103
as being unpatentable over Halash, Seo, and Khan. Non-Final Act. 21–23.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Halash, Seo, and Marshall. Non-Final Act. 23–24.

ANALYSIS
We have reviewed the Examiner’s rejections 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 not persuaded by Appellant’s
contentions of Examiner error. In our analysis below, we highlight and
address specific findings and arguments for emphasis.

The § 103 rejection of claims 1–3, 11, and dependent claims 2,
3, 4, 7, 10, 15, 18, and 21 (Group A)

Appellant argues the Examiner errs in finding Seo teaches the claim 1
limitation “determin[ing] that a display size of the first electronic device
meets the display size requirement.” Appeal Br. 30, 14–16. According to
Appellant, Seo merely recommends external devices that meet a
predetermined size preference, and at most, discloses comparing a size of an
external device to predetermined preferences of a service. Id. at 15 (citing
Seo ¶¶ 37, 65, 66, 72, 84). Appellant argues Seo does not disclose that the
portable terminal (first electronic device) checks its own display size, let
alone that it determines whether its own display meets a predetermined size
preference of a requested service and, therefore, Seo fails to disclose or
suggest “determin[ing] that a display size of the first electronic device meets
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the display size requirement,” as required by claim 1. Id. According to
Appellant, in Seo “the portable terminal . . . classifies the recommended
service interoperation device into an input device and an output device and
determines functions thereof,” and “when the recommended interoperation
device includes one input device, the portable terminal 100 serves as an
output device.” Id. (citing Seo ¶¶ 62, 63). Thus, according to Appellant,
this portion of Seo merely discloses selecting the portable terminal as an
output device based on whether another device is selected as an input device,
not based on any display requirements of a task nor the display capabilities
of the possible devices. Id.
Appellant argues that a device that is capable of displaying a media
item is not the same as the device meeting a display size requirement. Id. at
15–16 (citing Seo ¶¶ 36, 37, 45, 46). According to Appellant,
For example, a display size requirement may be given where the
display size requirement is greater than the capabilities of the
portable terminal. In this case, even if the portable terminal may
be capable of displaying a movie at a smaller size, the portable
terminal may not meet the display size requirement of the current
task. In other words, the capability of the portable terminal to
display a movie is separate from whether the portable terminal
meets a display size requirement of a task. Thus, the Examiner’s
reasoning that because Seo describes the portable terminal as
capable of displaying a movie, Seo also teaches determining that
the portable terminal meets the display size requirement is
incorrect and flawed. Indeed, there is no teaching in Seo of
determining that the portable terminal (e.g., the alleged first
electronic device) meets a display size requirement.

Moreover, the cited portion of Seo discloses that “[f]or a
Game service, the portable terminal may recommend itself as a
service output device and recommend another portable terminal
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and keyboard/mouse as the control input device.”5 Thus, the
cited portion of Seo merely discloses that a portable terminal may
recommend itself as an output device for a gaming service, not
for playing a movie, as the Ex[a]miner suggests. Further, Seo is
silent about how such a recommendation is made, much less with
regard to making such a recommendation based on “a display
size of the first electronic device meet[ing] the display size
requirement.” Thus, even if Seo discloses that the portable device
is capable of displaying a game (or a movie), it fails to disclose
how a decision is made that the portable device should display
the game. Accordingly, this portion of Seo also fails to disclose
or suggest “determin[ing] that a display size of the first electronic
device meets the display size requirement,” as required by claim
1.

Id. at 16.
Appellant additionally argues the combination of Halash and Seo fails
to teach or suggest the following claim 1 limitation,
in response to a determination that both the display size of the
first electronic device and the display size of the second
electronic device meet the display size requirement, determine,
with the first electronic device and based on one or more rules of
a plurality of prioritization rules, whether the first electronic
device or the second electronic device is to perform the task,
wherein the one or more rules of the plurality of prioritization
rules are based on a display size of the first electronic device and
the display size of the second electronic device.

Id. at 16–19.
According to Appellant, claim 1 requires that a determination be made
that the display size of both the first and the second electronic devices meet
a display size requirement, and, once that determination is made, determine

5 Seo at ¶ [0045].
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which of those two devices will perform the task. Id. at 17. As such, claim
1 requires a selective determination by an electronic device to perform a task
based on a determination that the display size of the first electronic device
(the same device that received the data indicative of the task and determined
the display size requirement) and a determination that the display size of the
second electronic device both meet a display size requirement, and this
teaching is wholly absent in the cited references. Id. Appellant argues any
Seo recommendation is based on the display sizes of external devices, not
whether the first device meets a display size requirement. Id. at 17–18.
And, any selection for the portable devices as an output device is based on
when the recommend service includes one input device, not based on any
display size of the portable terminal or a display size requirement. Id. at 18.
Instead, according to Appellant, the external device is recommended for
interoperability based on the external device’s characteristics, without
consideration as to the portable terminal characteristics. Id. Appellant
argues the external device is recommended when it meets the predetermined
preferences whether the portable terminal meets a display size requirement
or not. Id.
Appellant additionally argues the combination of Halash and Seo does
not teach or suggest the claim 1 limitations set forth below,
in accordance with a determination that the task is to be
performed by the first electronic device, perform the task with
the first electronic device; and
in accordance with a determination that the task is to be
performed by the second electronic device, cause data indicative
of the task to be transmitted to the second electronic device.

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Id. at 19–20.
Appellant argues the Examiner errs because Halash merely discloses
selecting a device to perform a task with an application and fails to disclose
that this selection is “based on one or more rules of a plurality of
prioritization rules,” as required by claim 1. Id. at 19 (citing Halash ¶¶ 42–
46). According to Appellant, the Examiner ignores the required antecedent
basis of the claim when rejecting the two limitations at issue, instead
examining them in isolation. Id. Appellant argues Seo fails to cure the
deficiencies of Halash because, as discussed supra, Seo does not teach “a
determination that both the display size of the first electronic device and the
display size of the second electronic device meet the display size
requirement,” Id. at 20.
Appellant additionally argues the Examiner has failed to account for
the recited relationship between recited elements and therefore failed to
consider the claim as a whole as required. Id. at 21 (citing Manual Patent
Examining Procedure (“MPEP”) § 2103 (I)(C), stating that “USPTO
personnel may not dissect a claimed invention into discrete elements and
then evaluate the elements in isolation. Instead, the claim as a whole must be
considered.” See, e.g., Diamond v. Diehr, 450 US 175, 188–89, (1981)).
Appellant argues the Examiner disregards the required continuity between
the elements of claim 1, and thus clearly fails to consider “the claim as a
whole” for evaluating the patentability of a claim.6 Id. at 22.

6 Appellant cites MPEP § 2103(I)(C); see also In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983), stating that “the board cannot dissect a claim, excise
[an element] from it, and declare the remaining portion of the mutilated
claim to be unpatentable. The claim must be read as a whole.” (Emphasis
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In the Answer, the Examiner refers to the Specification description of
determining “a display size requirement” of a task/service:
A determination whether the indication meets a
requirement of the task may then be made. For example, it may
be determined whether the task requires a screen size greater than
a threshold size or less than a threshold size. Ans. 3–4 (citing
Spec. ¶ 159).

The Examiner notes that
[Because] Appellant’s claims do not include a specific
value/standard for what constitutes a required display size, and
Appellant’s original specification describes such requirement as
a threshold, the lowest display one can think of can be ascribed
to such a display threshold, and as such, If the portable terminal
100 (based on its display size) is able to display an output
task/service for the task/service that requires an unknown display
size, then the portable terminal meets the unknown display size
requirement.
Therefore, thinking of the display size threshold as being
a wrist watch display would instantly make Seo’s portable device
100 (shown in fig. 1 of Seo) as well as the other external devices
101, 102 and 103 (shown in fig. 1 of Seo) larger than the wrist
watch display and eligible to meet the display size requirement,
absent any explicit standard for what constitutes a required
display size, and [because] the portable display recommends
itself for providing display/output (para. [0045]; para. [0086])
and is capable of providing playback for movie services (para.
[0036]) given the requirement for such is a display output device
having output larger than a predetermined/threshold size (para.
[0072]), Seo discloses “determine that a display size of the first
electronic device meets the display size requirement.”

added.). See also MPEP § 2141.02(I) stating that “[i]n determining the
differences between the prior art and the claims, the question under
35 U.S.C. [§] 103 is not whether the differences themselves would have
been obvious, but whether the claimed invention as a whole would have
been obvious.”
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Id. at 4–5 (emphasis omitted).
In response to Appellant’s argument that the references fail to show
certain features of Appellant’s invention, the Examiner notes that the
features upon which Appellant relies (i.e., a display size requirement that is
greater than the capabilities of a portable terminal and how a
recommendation is made based on a display size greater than the capabilities
of a portable terminal) are not recited in the rejected claims. Id. at 6. The
Examiner determines the claims call for a display size requirement, and not a
display size requirement that is greater than the display of a portable
terminal and certainly not how a recommendation is made based on a
display size requirement that is greater than the display of a portable
terminal. Id.
Additionally, the Examiner finds
Seo describes (para. [0036]) the portable terminal 100
providing a movie playing service as well as recommending one
of the external device to provide output services, as well as also
recommending devices to provide output for a movie service
that have displays greater than a threshold size (para. [0071]-
[0072]) including itself (para. [0086]), and not just the example
game service implementation pointed out by Appellant where
Seo describes the portable terminal recommending itself as the
display output device for the game service (para. [0045]).
[Because] Seo is capable of providing playback for movie
services (para. [0036]) given the requirement for such is a display
output device having output larger than a predetermined (i.e.[,]
threshold) size, Seo discloses “determine that a display size of
the first electronic device meets the display size requirement.”

Id. at 6–7.
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The Examiner finds Seo teaches “determine that a display size of the
first electronic device meets the display size requirement and further
discloses recommending output devices with displays that are larger than a
predetermined size/threshold to perform a movie service.” Id. at 7–8 (citing
¶ 72). The Examiner finds Seo describes examples in which the portable
device recommends selecting other devices, or itself based on conditions,
including a priority for devices having sizes greater than a predetermined
size. Id. at 8–9 (citing Seo ¶¶ 45, 52–54, 72, 84, 86).
Regarding Appellant’s argument that Halash does not teach “based on
one or more rules of a plurality of prioritization rules” the Examiner notes
this rejection is based on Seo, not Halash. Id. at 9 (citing Seo ¶¶ 36, 45, 86,
95). Regarding antecedent, the Examiner notes the rejection is based on a
combination of references, and Halash teaches the antecedent limitations.
Id. at 9–10 (citing Halash ¶¶ 13–15, 42–46).
Regarding considering the claim as a whole, the Examiner notes
combining references in a 35 U.S.C. [§] 103 rejection involving
multiple references addressing limitations recited in a claim to
arrive at the overall claimed language does not rise to the level
of failing to consider the claim a whole. Arguing that one
reference fails to disclose limitations that another reference is
utilized to address also does not rise to the level of failing to
consider the claim a whole. Such argument amounts to a general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims
patentable distinguishes them from the references.

Id. at 11.
The Examiner explains Seo discloses the limitation “in response to a
determination that both the display of the first electronic device and the
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display size of the second electronic device meet the display size
requirements, determine . . . .” Id. at 11–12 (citing Seo ¶¶ 53, 72).
According to the Examiner,
When combined together with the suggestion/motivation
of providing a high quality and rich user experience by allowing
the user to interoperate the portable terminal with external
devices (Seo, para. [0034]; para. [0037]), particularly since Seo
and Halash are within the same field of Appellant’s invention of
multi-device systems and identification/selection of devices,
Examiner maintains that the claims are considered as a whole
and as a result, Examiner maintains that claims 1 and 11 are not
allowable.

Id. at 12.
In the Reply Brief, Appellant argues the Examiner misreads Seo and,
even if the portable terminal meets an “unknown” display size requirement
as the Examiner suggests, the system of Seo does not make such a
determination nor is such a determination required, as any determination to
use the portable terminal is based solely on whether other output devices are
recommended. Reply Br. 3–6 (citing Seo ¶¶ 72, 86). According to
Appellant, even, if the portable terminal could perform a movie service in a
vacuum, there is no indication that the system of Seo would use the portable
terminal as an output for a movie service when the topology of devices
disclosed by Seo is provided. Id. at 6.
Appellant argues Seo discloses two separate criteria for selecting an
output device, that if no output device is recommended then the portable
terminal serves as an output, and conversely that when multiple output
devices are recommended the portable terminal may select one based on the
output devices display size. Id. at 7 According to Appellant, thus, any
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determination of whether to use the portable terminal (first electronic
device) is based on whether any other output devices are recommended and
not on any determination of the display size of the portable terminal and
whether it meets any alleged “display size requirement.” Id.
Appellant argues, because Seo fails to teach “a determination that
both the display size of the first electronic device and the display size of the
second electronic device meet the display size requirement,” Seo must also
fail to disclose or suggest “determin[ing], with the first electronic device and
based on one or more rules of a plurality of prioritization rules, whether the
first electronic device or the second electronic device is to perform the task,”
“in response” to such a determination as required by claim 1. Id. at 8.
Appellant similarly argues Seo fails to teach “in accordance with a
determination that the task is to be performed by the first electronic device
[based on one or more rules of a plurality of prioritization rules], performing
the task with the first electronic device,” and “in accordance with a
determination that the task is to be performed by the second electronic
device [based on one or more rules of a plurality of prioritization rules],
cause data indicative of the task to be transmitted to the second electronic
device.” Id.
As discussed below, we are not persuaded by Appellant’s arguments
as they are based on unreasonably narrow claim construction and conclusory
attorney arguments. On the record before us, the Examiner provides
sufficient evidence to support the findings and conclusions.
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
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted).
The Examiner’s interpretation of the disputed limitation “a display
size requirement for the task” is broad and reasonable. Appeal Br. 30; In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364. The interpretation is
consistent with the Specification and Appellant does not identify
persuasively that the Specification is inconsistent with the Examiner’s
interpretation. Spec. ¶ 159. Appellant’s proffered interpretation is not
commensurate with a broad and reasonable interpretation.
Halash teaches receiving data indicative of a task on a main device
which recommends itself or an external device (second device) to perform
the task. Halash ¶¶ 13–15, 42. If the external device is selected, the
command is provided from the main device to the second device. Id. ¶¶ 42–
46.
Seo teaches recommending and utilizing various devices in a system
that includes a portable device and external devices. Seo Abstract, ¶¶ 3, 37,
39, 44–46, 63, 65–67, 69–72, 84; Figs. 1, 2; Table 3. The recommendation
is based on the characteristics of the task and the available devices. Seo
teaches utilizing a screen size as a characteristic. For example, Figure 1
describes a portable device 100 and a plurality of external devices. Seo
describes how an external device may be selected for a task based on the
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task and the characteristics of the various devices. For example, Table 3
describes tasks that may be best served by identified displays. Seo also
describes situations where the portable device 100 is the selected display
device. For example, if there are no external devices, and in situations with
external devices where the portable device recommends itself. Seo ¶ 45.
The claim limitation “a display size requirement for a task” does not
recite details as to a particular size or type of display. Nor does it recite how
the requirement is measured for a task. The Specification describes,
A determination whether the indication meets a requirement of
the task may then be made. For example, it may be determined
whether the task requires a screen size greater than a threshold
size or less than a threshold size.

Spec. ¶ 159

We agree with the Examiner’s interpretation that the requirement is a
threshold requirement that is met if a display device is able to display the
selected task. This is a broad and reasonable interpretation and is not
persuasively argued by Appellant. Additionally, this interpretation is
consistent with the Specification, and Appellant does not identify
Specification support for a narrower interpretation.
Applying this broad and reasonable interpretation, Seo teaches that the
portable device displays the task and identifies external devices that can also
display the task. Seo ¶¶ 36–39, 45, 46; Figs. 1. Seo teaches that a device is
selected to display the task based on the task and the available devices. Id.
Seo teaches that the portable device may be selected to perform the task. Id.
Seo teaches that the selection by the portable device of the device to perform
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the display is based on prioritization of the devices that meet the display
requirement, including the portable device. Id. ¶ 72; Table 3.
We agree with the Examiner findings and conclusion. The references
teach the disputed limitations as broadly and reasonably interpreted and the
Examiner is applying the findings to the claim as whole.
Appellant argues an unreasonably narrow teaching of the cited
references to attempt to limit the teaching to the express disclosures, and
asserts an overly demanding standard of obviousness. However, we note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citation omitted).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, 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) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
We note much of Appellant’s arguments are unsupported by factual
evidence. Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
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699, 705 (Fed. Cir. 1984); Ex parte Belinne, Appeal 2009-004693, 2009 WL
2477843, at *3–4 (BPAI Aug. 10, 2009) (informative).
In view of the above, we sustain the rejection of Group A
representative claim 1, independent claims 11 and 12, and dependent claims
2, 3, 4, 7, 10, 15, 18, 21 which are not argued separately.
The § 103 rejection of dependent claims 8, 16, and 22 (Group B)
Claim 8 (and similarly claims 16 and 22) recites
8. The non-transitory computer-readable storage medium
of claim 1, wherein performing the task with the first electronic
device comprises performing a first task associated with a first
user, and wherein the instructions, which when executed by the
one or more processors of the electronic device, further cause the
electronic device to:
perform, with the first electronic device, a second task
associated with a second user different from the first user.

In the rejection of dependent claim 8, the Examiner relies on Seo,
Halash, and additionally relies on Igoe. Non-Final Act. 15–16 (citing
Halash ¶¶ 8, 42, 45; Igoe ¶ 28). The Examiner finds Halash teaches
performing a first task with a first user and Igoe teaches
The identification of the user 120 can be used to control access
to various devices of the HES [Home Entertainment System] 100
based on a set of rules customizable for each user of the HES 100
by an authorized user . . . para. [0068]-[0069], controlling access
to perform tasks based on identification of a user among multiple
users as suggesting limitation.

Id. at 15–16.

Appellant argues the Examiner errs because Igoe merely teaches that
access to certain applications or device may be restricted based on a user’s
identify. Appeal Br. 22–23 (citing Igoe ¶¶ 68, 69). According to Appellant
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However, this fails to disclose or suggest “perform[ing] . .
. a second task associated with a second user different from the
first user.” Importantly, restricting access to an application or
customizing an application to permit access to certain content is
not the same as associating a task with a specific user. Indeed,
Igoe clearly contemplates that many different users may want to
access the Xbox gaming console or watch different television
channels and that each of them may have a specific level of
access. For example, while the children of Igoe’s example are
not allowed to view channels with programming of a certain
rating, those children’s parents likely do want to watch that
programming, or at the very least also want access to the same
level of programming as the children. Thus, the alleged task of
watching TV, even of a specific rating, cannot be associated with
“a second user different from the first user.”

Id. at 23 (emphasis omitted).
In the Answer, the Examiner finds,
Igoe discloses several instances of a first user providing requests
to a main device 102 (WHEH 102) integrated into a remote
control device 118 including initially activating a device with
audible command (para. [0042]; para. [0050]) and subsequently
providing commands “channel 21” or “volume up” to effect a
change on an external TV device of devices HES 100, or other
requests to start watching programming based on devices (para.
[0042]; para. [0050]). Igoe further discloses the user providing
the commands/requests in an environment having other users
(para. [0060]; para. [0068]) where the main device 102 further
performs providing programming or control to other sink devices
that are associated with the other users and that allows the other
users (i.e.[,] at least a second user) to receive the programming
or the controlled function (para. [0044]; para. [0056]; para.
[0060]). Therefore, since the other users receive the
programming/control provided/performed by the first device on
their sink devices, they are associated with the subsequent
audible commands/tasks provided by the first user, and as a
result, Igoe discloses “to: perform, with the first electronic
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device, a second task associated with a second user different
from the first user.”

Ans. 13.
In the Reply Brief, Appellant argues the Examiner’s reasoning in
erroneous because,
Igoe merely discloses that a single wireless home entertainment
hub may provide programming to multiple different devices by
establishing several zones and thus, the different devices may
receive data from different sources. Accordingly, this portion of
Igoe merely discloses that the system may include several
different devices that receive and play data from different
sources. However, this is completely irrelevant to different users
and whether the tasks are associated with different users. At best
the various tasks may be associated with the various devices or
the various zones, but there is nothing to indicate that specific
tasks performed in each zone are associated with a specific user,
much less users “different from the first user,” as required by
claim 1.

Reply Br. 9.
We are not persuaded by Appellant’s arguments because they are
based on unreasonably narrow claim interpretation and are not consistent
with the requirement of obviousness, as discussed supra. Igoe teaches
multiple users who access content and perform tasks associated with
different users. Igoe ¶¶ 42, 44, 50, 56, 60, 68. For example, Igoe teaches
other users, including children and parents, access permitted content. Id.
Therefore, we sustain the rejection of claims 8, 16, 22 (Group B).

The § 103 rejection of dependent claims 9, 17, and 23 (Group C)
Claim 9 (and similarly claims 17 and 23) recites
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9. The non-transitory computer-readable storage medium
of claim 1, wherein performing the task with the first electronic
device comprises:
authenticating a user associated with the first electronic
device; and responsive to authenticating the user, performing the
task.

In the rejection of dependent claim 9, the Examiner relies on Seo,
Halash, and additionally relies on Igoe. Non-Final Act. 16–19 (citing Igoe ¶¶
50, 62, 65, 68, 69).
Appellant argues the Examiner errs because the rejection is silent with
regard to the limitation “responsive to authenticating the user, performing
the task,” and provides no citation to a portion of Igoe alleged to teach this
limitation, nor any reasoning as to why this limitation would be obvious to
one of ordinary skill in the art. Appeal Br. 23–24 (citing Non-Final Act. at
16–17). Appellant additionally argues the Examiner errs in finding Igoe
paragraphs 68 and 69 teach “response to authenticating the user, performing
the task.” Id. at 24. According to Appellant, the cited portions of lgoe
merely disclose that authentication may be used to permit access to the
system, but are silent with regard to “performing the task,” “responsive” to
such authentication. Id. at 25.
In the Answer, the Examiner finds,
Igoe discloses a first user providing a request for accessing
programming channels to a main device 102 (WHEH 102)
integrated into a remote control device 118 by providing
commands “channel 21” and “volume up” to effect a change on
an external TV device (para. [0028]; para. [0050]) where
identification of the user via fingerprint identification is required
to access programming (“channel 21”) or the function (“volume
up”) required by the user (para. [0068]). Igoe further discloses
controlling/adjusting the external device in the HES 100 based
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on the identification of the user (para. [0068]), where the adjusted
characteristics include volume and channel adjustments (para.
[0069]). The control function performed by lgoe’s first device
being the task performed.
Therefore, [because] Igoe discloses identification of the
user via fingerprint analysis in connection with responding to
commands of the user, Igoe discloses “authenticating a user
associated with the first electronic device”, and [because] Igoe
further discloses controlling access to programming based on
identifying the user and controlling other devices based on the
identification/authentication, Igoe discloses performing “the
task” (i.e.[,] “the task” being the control) and as such limitation
“responsive to authenticating the user, performing the task.”

Ans. 14–15.
In the Reply Brief, Appellant argues the Examiner errs in finding Igoe
“discloses identification of the user via fingerprint analysis in connect[ion]
with responding to commands of the user . . . ” and “further discloses
controlling access to programming based on identifying the user and
controlling other devices based on the identification/authentication.” Reply
Br. 9 (citing Ans. 13–15; Igoe ¶ 60; Appeal Br. 24–25). According to
Appellant, the Examiner alleges that this “control” is the claimed “task” and
thus, Igoe discloses the instant limitation. Id.
According to Appellant, generic control of a device is not the same as
a task. Id. Appellant argues,
This access is clearly different from performing a task, as
a task can be “playback, mapping, lookup, and storing
functions,” as described in Appellant[’s] [S]pecification.
[¶[]0154]. Thus, playback of a specific TV show, or mapping to
a specific location is much more than simply allowing a user
access to a phone or a TV, as described by Igoe. Further, the
examples disclosed by Igoe are related to restricting access. Put
another way, Igoe discloses the situation in which a user is not
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allowed to do something based on their identity, but this is clearly
different than doing something “responsive to authenticating the
user.” Thus, Igoe contemplates wholesale lockout of devices
based on identity, but does not disclose or suggest “responsive to
authenticating the user, performing the task,” as required by
claim 9.

Id. at 10.
We are not persuaded by Appellant’s arguments because they are
based on unreasonably narrow claim interpretation and are not consistent
with the requirement of obviousness, as discussed supra. Appellant
provides no persuasive argument to limit the term “task” to limited
operations so as to exclude the broad teachings of Igoe. As discussed,
supra, regarding the rejection of Group B claims, Igoe teaches multiple users
who access and perform tasks. Igoe ¶¶ 42, 44, 50, 56, 60, 68.
Therefore, we sustain the rejection of claims 9, 17, 23 (Group C).
The § 103 rejection of dependent claims 13, 19, and 25 (Group D)
Claim 13 (and similarly claims 19 and 25) recites,
13. The non-transitory computer-readable storage medium
of claim 1, wherein one or more rules of the plurality of
prioritization rules are based on a mobility capability of
the first electronic device and a mobility capability of the
second electronic device.

In the rejection of dependent claim 13, the Examiner relies on Seo,
Halash, and additionally relies on Khan. Non-Final Act. 21–22 (citing Khan
¶¶ 93–95, 117–128). The Examiner finds Khan teaches a device can record
physical activity and such recorded activity can then be used for device
arbitration to select a single device to respond to the user, perform a task, or
the like. Id. The Examiner finds such activity can be derived from hardware
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sensors. Id. at 22. The Examiner finds, “[f]or example, physical movement
of a device . . . para. [0080]; para. [0093]-[0095]; para. [0117]-[0128].” Id.
Appellant argues the Examiner errs in finding that Khan teaches the
limitation, “based on a mobility capability.” Appeal Br. 26. According to
Appellant, Khan merely discloses that sensors may determine user activity
and based on that user activity, select a device, but this user activity is
clearly distinct from “a mobility capability” of an electronic device. Id.
According to Appellant, user movement is not the same as the ability for a
device to move (e.g., mobility capability). Moreover, Khan is unconcerned
with whether a device is able to move as a criteria of selection and instead
only discloses determining the recent movements of a user based on
hardware of a device to select a device. Id.
In the Answer, the Examiner finds,
Khan explicitly equates “physical activity” with “physical
movement of a device” (para. [0080]). Khan further explicitly
describes using the recorded physical activity (i.e.[,] physical
movement of a device) detected by device sensors for device
arbitration in determining which device is to perform a user’s
task (para. [0080]), where the arbitration involve[s] arbitration
rules to select a device out of a topology of devices (Abstract;
para. [0093]). Therefore, [because] Khan discloses using
physical movement of devices in determining which device is to
perform a task according to arbitration rules, Khan discloses the
mobility of one device and the non-mobile nature of the second
device (i.e.[,] mobile capability) or the mobility of one device
and the mobility of the other device, either manner contributing
to the “mobility capability” of the first device and the “mobility
capability” of the second device, and as a result, limitation
“wherein one or more rules of the plurality of prioritization rules
are based on a mobility capability of the first electronic device
and a mobility capability of the second electronic device.”

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Ans. 16.
In the Reply Brief, Appellant reiterates and argues under the
disclosure of Khan, a device without any mobility capability that does not
move and a device that can move but is not moved would be treated the
same, because neither has physically moved. Reply Br. 10–11 (citing Khan
¶ 80). According to Appellant, the mobility capability of each of those
devices is very different, as one is not capable of moving at all, although the
other can be moved but has not been moved recently. Accordingly, simply
determining a device to respond based on physical movement does not
disclose a rule “based on a mobility capability” of a device, as past physical
movement does not reflect whether a device can move. Id. at 11.
We are not persuaded by Appellant’s arguments because they are
based on unreasonably narrow claim interpretation and are not consistent
with the requirement of obviousness, as discussed supra. Appellant
provides no persuasive argument to limit the term “mobility” to limited
operations so as to exclude the broad teachings of Khan. Khan teaches using
physical movement of devices in determining which device is to perform a
task according to arbitration rules. Khan ¶ 80.
Therefore, we sustain the rejection of claims 13, 19, and 25 (Group D)
The § 103 rejection of dependent claims 14, 20, and 26 (Group E)
Claim 14 (and similarly claims 20 and 26) recite,
14. The non-transitory computer-readable storage medium of
claim 1, wherein performing the task with the first electronic device
comprises:
determining, based on the task, whether user authentication is
required to perform the task; and
in accordance with a determination that user authentication is
required to perform the task:
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receiving a second input;
authenticating a user associated with the first electronic device based
on the second input; and
in accordance with authenticating the user, performing the task with
the first electronic device.

In the rejection of dependent claim 14, the Examiner relies on Seo,
Halash, and additionally relies on Igoe. Non-Final Act. 17–18 (citing Igoe
¶¶ 50, 68, 69). In particular, the Examiner finds Igoe teaches fingerprint
authentication and performing tasks. Id. at 18.
In the Appeal Brief, Appellant argues,
Igoe is silent with regard to “receiving a second input,”
“authenticating a user . . . based on the second input,” and “in
accordance with authenticating the user, performing the task with
the first electronic device,” “in accordance with a determination
that the user authentication is required to perform the task.” Put
simply, Igoe merely discloses a generic use of authentication in
a system, but fails to disclose or suggest the specific steps
required by the limitations of claim 14. In particular, claim 14
requires a specific set of determinations to be made, followed by
a specific input, upon which the authentication is based. In
contrast, Igoe merely discloses that a fingerprint scanner may be
available, but not when or how an input to this fingerprint
scanner may be provided.

Appeal Br. 28 (emphasis omitted).
In the Answer, the Examiner finds Igoe teaches identification of the
user via fingerprint analysis in connection with responding to commands of
the user. Ans. 17–18. The Examiner finds Igoe further teaches controlling
access to programming based on identifying the user and controlling other
devices based on the identification/authentication, and, therefore, Igoe
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teaches performing “the task” (i.e.[,] “the task” being the control). Id.
(citing Igoe ¶¶ 28, 50, 68, 69).
In the Reply Brief, Appellant argues the Examiner errs in finding
paragraphs 68 and 69 of Igoe teach the claim 14 limitations. Reply Br. 11–
12 (citing Ans. 17). According to Appellant
paragraph [0068] of Igoe merely discloses that certain users can
be denied access to specific devices based on their identity, and
thus, does not disclose “determining, based on the task, whether
user authentication is required to perform the task.” Paragraph
[0069] of Igoe fails to cure this deficiency. In particular, this
portion of Igoe discloses that characteristics such as “the height
or orientation . . . of the display device or speakers, and system
characteristics such as volume or equalization of the audio,” may
be automatically adjusted based on identification of the user.
[[0069]]. This merely discloses that some properties may be
adjusted based on a user identity, but does not disclose
“performing the task,” “in accordance with authenticating the
user,” because these characteristics or properties are independent
of any requested task.

Id. 11–12.
We are not persuaded by Appellant’s arguments because they are
based on unreasonably narrow claim interpretation and are not consistent
with the requirement of obviousness, as discussed supra. Similar to the
discussion of Group C supra, Appellant provides no persuasive argument to
limit the term “task” to limited operations so as to exclude the broad
teachings of Igoe. Igoe teaches multiple users who access and perform
tasks. Igoe ¶¶ 42, 44, 50, 56, 60, 68. Igoe teaches identifying the user with
fingerprint analysis and controlling (performing tasks) on devices based on
the identification/authentication. Id.
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Therefore, we sustain the rejection of claims 14, 20, and 26 (Group
E).
CONCLUSION
For the reasons stated above, we sustain the obviousness rejection of
claims 1–4 and 7–26.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 11,
12
103 Halash, Seo 1–3, 11,
12

8–10, 14,
16–18, 20,
22–24, 26
103 Halash, Seo, Igoe 8–10, 14,
16–18, 20,
22–24, 26

7, 13, 15,
19, 21, 25
103 Halash, Seo, Khan 7, 13, 15,
19, 21, 25

4 103 Halash, Seo, Marshall 4
Overall
Outcome
1–4, 7–26

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. § 1.136(a)(1)(iv) (2011).

AFFIRMED