Ex Parte AOKI et al

Patent Trial and Appeal Board

Mar 30, 2017

13436171 (P.T.A.B. Mar. 30, 2017)

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.
13/436,171 03/30/2012 Norihiro Edwin AOKI 10587.0864-00000 7930
100692 7590
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIHIRO EDWIN AOKI, CHRISTINA WICK,
TODD BRANNAM, and LEOTIS GIVENS, JR.
Appeal 2017-000039
Application 13/436,1711
Technology Center 2400
Before LARRY J. HUME, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—5, 7—26, 28—31, 33, and 34. Appellants have canceled
claims 6, 27, and 32. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is AOL Inc. App. Br. 3.
Appeal 2017-000039
Application 13/436,171
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "generally relate[] to
techniques for transferring a state of an application between devices. In
particular, and without limitation, the present disclosure relates to systems
and methods for transferring a state of an application between networked
devices in response to gestural input." Spec. 12.
Exemplary Claims
Claims 1 and 11, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A computer-implemented method, comprising:
detecting, using a sensor associated with a first device, a
predetermined signal corresponding to a triggering event, the
predetermined signal being detected at a first point in time;
in response to the detected predetermined signal,
identifying, using at least one processor, a source application
with which a user of the first device interacts at the first point in
time, the source application comprising a first web browser
executed by the first device to present, to the user through a
first interface, a first portion of a web page at the first point in
time, the first interface corresponding to a first viewing window
established by the first web browser upon execution by the first
device;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 11, 2016); Reply Brief ("Reply Br.," filed Sept. 19, 2016); Examiner's
Answer ("Ans.," mailed July 18, 2016); Final Office Action ("Final Act.,"
mailed Sept. 11, 2015); and the original Specification ("Spec.," filed
Mar. 30, 2012).
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Application 13/436,171
determining, using the at least one processor, data
indicative of a position of the first portion within the web page',
and
using the at least one processor, transmitting, to a second
device, first information identifying a user of the first device,
second information identifying the first web browser, and third
information associated with the first portion, the third
information comprising an identifier of the web page, a
location of the web page, and the determined position data, the
determined position data being indicative of a position of at
least a portion of the first viewing window within the web page
at the first point in time,
wherein the transmitted first, second, and third
information causes the second device to execute a second web
browser that presents at least the first portion of the web page
to the user through a second viewing window.
11. The method of claim 1, further comprising:
transmitting, to the second device, a request that a state
of a target application executing at the second device be
transferred to the first device;
receiving, in response to the request, fourth information
identifying the target application and fifth information
associated with a portion of electronic content presented to the
user by the target application through a second interface at a
second point in time, the second point in time being associated
with the request, and the fifth information comprising the
identifier of the electronic content, data specifying the location
of the electronic content, and data indicative of a position of the
presented portion within the electronic content; and
executing, using the at least one processor, an instance of
an application that corresponds to the target application state
based on at least the fourth and fifth information.
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Application 13/436,171
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Salas et al. ("Salas") US 2002/0087476 Al July 4, 2002
Cronk et al. ("Cronk") US 2002/0133526 Al Sept. 19, 2002
Ludwig et al. ("Ludwig") US 2005/0144284 Al June 30, 2005
Kim US 2006/0008245 Al Jan. 12, 2006
Jung et al. ("Jung") US 2008/0052165 Al Feb. 28, 2008
Swenson et al. ("Swenson") US 2008/0104520 Al May 1,2008
Mizuno et al. ("Mizuno") US 2009/0207263 Al Aug. 20, 2009
Wong US 2009/0292838 Al Nov. 26, 2009
Vander Veen US 2010/0087178 Al Apr. 8, 2010
Stone et al. ("Stone") US 7,865,931 B1 Jan. 4, 2011
Cader et al. ("Cader") US 2011/0065384 Al Mar. 17,2011
Rejections on AppeaP
Rl. Claims 11—15, 17, 19, and 31 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. Final Act. 3.
R2. Claims 1—4, 7, 10, 16, 18, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Cader,
Ludwig, and Swenson. Final Act 4.
3 The Examiner did not enter Appellants' Amendment after Final Action
which according to the Examiner, if entered, would appear to overcome the
§ 112, first paragraph, written description rejection. Adv. Act. (PTOL-303).
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Application 13/436,171
R3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cader, Ludwig, Mizuno, and Vander
Veen. Final Act. 18.
R4. Claims 8, 9, 11, 13—15, 17, 19-24, 26, 31, and 34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Cader, Ludwig, Swenson, and Stone. Final Act. 19.4
R5. Claims 12, 25, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cader, Ludwig,
Swenson, Stone, and Salas. Final Act. 35.
R6. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cader, Ludwig, Swenson, Stone, and
Wong. Final Act. 38.
R7. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cader, Ludwig, Swenson, and Kim.
Final Act. 39.
R8. Claim 2 stands alternatively rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cader, Ludwig, Swenson, and
Jung. Id.
R9. Claim 29 stands alternatively rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cader, Ludwig, Swenson,
Stone, and Cronk. Final Act. 40.
4 In the explicit statement of Rejection R4, the Examiner rejected claim 22,
but did not address this claim in the detailed rejection. However, the
Examiner provided a detailed rejection of claim 22 in Rejection R6. See
Final Act. 19 et seq.
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Application 13/436,171
CLAIM GROUPING
We separately address written description Rejection R1 of claims 11—
15, 17, 19, and 31, infra.
Based on Appellants' arguments (App. Br. 15—23), we decide the
appeal of obviousness Rejection R2 of claims 1—4, 7, 10, 16, 18, and 33 on
the basis of representative claim 1.
Remaining claims 5, 8, 9, 11—15, 17, 19—26, 28—31, and 34 in
rejections R3 through R9, not argued separately or with specificity, are
addressed, infra.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to Rejection R1 of claims 11—15, 17, 19, and 31 for the specific
5 "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)(l)(iv).
In addition, when Appellants do 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); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983) ("Since neither of the parties argue
separately the patentability of each of the rejected claims, the dependent
claims will stand or fall with [the] independent claims 1 and 10 .In re
Burckel, 592 F.2d 1175, 1178-79, 201 U.S.P.Q. 67, 70 (Cust. &
Pat. App. 1979)."
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Application 13/436,171
reasons discussed below. However, we disagree with Appellants' arguments
with respect to the § 103 Rejections R2 through R9 of claims 1—5, 7—26, 28—
31,33, and 34, and we incorporate 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 Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. $ 112,fl Rejection R1 of Claims 11—15, 17, 19, and 31
Issue 1
Appellants argue (App. Br. 13—14; Reply Br. 3—5) the Examiner's
rejection of claims 11—15, 17, 19, and 31 under 35 U.S.C. § 112, first
paragraph, as lacking written description support is in error. These
contentions present us with the following issue:
Did the Examiner err in finding "these dependent claims claim a
'second application' that is unbounded in the manner that they have now
limited the first application . . . [such that] the second application suffers
from the same overbreadth that the first application previously did" (Final
Act. 3), because the Specification does not provide written description
support for the allegedly claimed "second application?"
Analysis
Appellants contend "Appellant traverses the rejection and notes that a
'second application' is not specifically recited in the claims." App. Br. 13;
and see Reply Br. 4 ("[Because] the Examiner's Answer fails to address this
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Application 13/436,171
argument identified by the Appellants] in the Appeal Brief, the rejection
should be reversed by the Board.").
We agree with Appellants arguments and, on this record, find the
Examiner has not identified with specificity any claimed limitations that are
not disclosed in the Specification in a manner sufficient to meet the written
description requirements of § 112, first paragraph.
Therefore, we do not sustain the Examiner's written description
rejection of claims 11—15, 17, 19, and 31.
2. $103 Rejection R2 of Claims 1—4, 7, 10, 16, 18, and 33
Issue 2
Appellants argue (App. Br. 15—23; Reply Br. 5—13) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Cader, Ludwig, and Swenson is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a computer-implemented method that includes, inter alia, the
steps of:
determining . . . data indicative of a position of the first portion
within the web page . . . transmitting, to a second device . . .
second information identifying the first web browser, and third
information associated with the first portion, the third
information comprising an identifier of the web page, a location
of the web page ... the determined position data being
indicative of a position of at least a portion of the first viewing
window within the web page at the first point in time, wherein
the transmitted first, second, and third information causes the
second device to execute a second web browser that presents at
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Application 13/436,171
least the first portion of the web page to the user through a
second viewing window,
as recited in claim 1 ?
Analysis
Appellants generally contend the cited prior art does not teach or
suggest the contested limitations of claim 1. App. Br. 16. In addition,
Appellants argue Cader does not teach or suggest transmitting "second
information" from a first device to a second device that identifies a first web
browser executed by the first device. App. Br. 16. " [N]owhere in | [0034]
or any other portion of Cader is there any teaching of suggestion of
transferring information identifying a web browser executed by the first
device." App. Br. 16—17. Similarly, Appellants argue Cader does not teach
or suggest "the transfer of information that 'causes the second device to
execute a second web browser' let alone 'a second web browser that
presents at least the first portion of the web page to the user through a
second viewing window,' as recited in claim 1." App. Br. 17.
Further, Appellants allege Ludwig does not teach or suggest the
contested "determining" step of claim 1. App. Br. 18. Appellants make
further arguments asserting Ludwig and Swenson do not make up for
purported deficiencies of Cader (App. Br. 19-20), and contend the Examiner
oversimplified the teachings of Cader, Ludwig, and Swenson. App. Br. 21.
Finally, Appellants argue "no reason has been articulated as to why
one of skill in the art would find the claimed combination obvious in view of
the prior art." Id.
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Application 13/436,171
In the Answer, the Examiner summarizes the rejection, and reiterates
"Cader and Ludwig teach a general technique for transferring the state of an
application, and Swenson shows how it can be applied to a web browser; the
combination renders the claimed subject matter obvious." Ans. 5; and see
Ans. 18—19. The Examiner goes on to find that Appellants are attacking the
references separately, when the rejection is for obviousness under § 103.
Ans. 6. We agree with the Examiner and note 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. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Moreover, Appellants have not challenged the
combinability of the teachings of Cader, Ludwig, and Swenson.
With respect to Appellants' argument the Examiner failed to provide
motivation to combine, we disagree, and point to the Examiner's detailed
reasons and rationale for combining the references in the manner suggested
to render the subject matter of claim 1 unpatentable under § 103. See Final
Act. 7.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation 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—4, 7, 10, 16, 18, and 33 which fall therewith. See Claim Grouping,
supra.
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3. Rejections R3—R9 of Claims 5, 8, 9, 11—15, 17, 19-26, 28—31, and 34
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 through R9 of claims 5, 8, 9, 11—15, 17, 19—
26, 28—31, and 34 under § 103 (see App. Br. 23), we sustain the Examiner's
rejection of these claims. Arguments not made are waived.6
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3—14) not in response to a shift in the Examiner's position
in the Answer, we note 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 Appellants have not shown.
CONCLUSIONS
(1) The Examiner erred with respect to written description
Rejection R1 of claims 11—15, 17, 19, and 31 under 35 U.S.C. § 112, first
paragraph, and we do not sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R9 of claims 1—5, 7—26, 28—31, 33, and 34 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
6 Appellants merely argue, "[cjlaims 2-5, 7-15, 17, 19, and 21-26, 28-31,
33, and 34 depend directly or indirectly from one of independent claims 1,
16, 18, and 20. Therefore, these claims are allowable for at least the reasons
indicated above." App. Br. 23.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. §41.50(a)(1).
DECISION
We affirm the Examiner's decision rejecting claims 1—5, 7—26, 28—31,
33, and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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