Ex Parte Bakos et al

Patent Trial and Appeal Board

Feb 27, 2014

11462159 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BALAZS BAKOS and PETER BODA
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Appeal 2011-011180
Application 11/462,1591
Technology Center 2600
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Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

Dissenting Opinion filed by FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Nokia Corporation.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1-35, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to “cross triggering and
detection of platform dependent resources and features, such as actions
triggered by certain events.” Spec. ¶ [0001].
Claim 1 is illustrative:
1. A method comprising:
establishing at an electronic device a seamless connection
with a host device, the seamless communication connection providing
the electronic device with access to resources of the host device;
receiving at the electronic device, via the seamless
communication connection, an instruction defining an operation to be
performed at the electronic device in response to future occurrence of
a particular stimulus, the instruction being received from the host
device responsive to user input at a user interface of the host device,
the instruction being enabled to be modified via a user interface of the
electronic device; and
performing the operation at the electronic device in
response to the stimulus.

Appellants appeal the following rejection:
Claims 1-35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quinones (US Patent Pub. 2004/0162063 A1, Aug. 19,
2004) and Beyer (US Patent Pub. 2006/0063539 A1, Mar. 23, 2006).

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ANALYSIS
Our representative claim, claim 1, recites, inter alia, “the instruction
[received from the host device] being enabled to be modified via a user
interface of the electronic device” (emphasis added). Independent claims
13, 20, 32, and 35 recite commensurate limitations. Thus, the scope of each
of the independent claims includes instructions received from the host being
modified via a user interface of the electronic device.

Issue: Did the Examiner err in finding that the combined teachings of
Quinones and Beyer teaches and/or suggests instruction received from a host
being enabled to be modified via a user interface of the electronic device, as
set forth in claim 1?

Appellants contend that “Beyer never provides any teaching or
suggestion that the instruction can be modified at the remote cellular phone”
(App. Br. 7).
The Examiner found that in Quinones “parameters can be updated by
an updating process, thus Quinones teaches modifying instructions” (Ans. 12
(citation omitted)). The Examiner further found that “Beyer’s mobile device
can perform tasks (such as changing sound intensity) by instructions sent by
another device remotely and also can modify the changes . . . , at the mobile
phone itself via a user interface” (id. at 12-13 (citation omitted)).
While we agree with the Examiner that Quinones discloses an
“updating process,” we note that Quinones’ “updating process,” for updating
the preprogrammed expiration time and date, is only performed at a user
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interface of the service provider, not at a user interface of the remote-device.
Specifically, Quinones discloses:
To update an existing preprogrammed expiration time and date
20 with a new expiration time and date 111, the service
provider will need to enter the update conditioned access
system shown in step 100. Then the service provider will enter
the new expiration time and date 111 into the remotely-
accessible device 10 directly by using a command, direct
connect or an over-the-air transmission. This command may be
directly sent to the remotely-accessible device 10 by any source
. . . .
(¶ [0026]). In other words, the instruction received at the remote device of
Quinones is modifiable via a user interface of the service provider, not a
user interface of the remote device, as similarly required by claim 1.
In an attempt to cure this deficiency of Quinones, the Examiner
expressly states that Beyer teaches this feature (see Ans. 5, 12). For
example, the Examiner found Beyer discloses modifying instructions sent by
another device (see Ans. 12-13). However, in reviewing the cited portions
of Beyer, we fail to see how Beyer teaches and/or suggests a
remote/electronic device modifying instructions sent from another device,
e.g., particularly an instruction to perform an operation in response to a
future occurrence of a particular stimulus. In fact, the Examiner has not
identified, and we cannot readily find, where Beyer discloses modifying an
instruction, or any other data for that matter, at the user interface of the
electronic device. “A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention.” See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
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Here, it appears that the Examiner is stating that having a “user
interface” in and of itself gives one the ability to modify instructions
received. We are not convinced that such a capability rests with merely
having a user interface, as typically some sort of authentication/validation
process (i.e., a signature code as shown in the base reference Quinones ¶
[0026]) is associated with making changes to instructions (i.e., rules/code).
Quinones clearly uses a validation process to make changes to instructions.
Quinones also includes a user interface, but only allows the service provider
(host) to make modifications via the same by first entering a signature code
necessary to validate and maintain the function (id.). The Examiner has not
shown that Beyer or Quinones discloses giving such privilege to make
changes to instructions at the remote/electronic device’s user interface, only
at the sender’s (host) interface after an authentication process.
Beyer discloses “a cellular phone that allows for remote alarm
activation on another cellular phone” (¶ [0022]) and the ability to activate
other functions (see also ¶¶ [0013], [0033]). In other words, Beyer merely
discloses remote activation of features, such as verbal announcements,
displaying of images, changing sound intensity, etc. While it is reasonable
to suggest that most cellular phones include a user interface having control
buttons for adjusting a feature, such as volume, the Examiner has not
established, nor can we readily find, any disclosure in Beyer teaching or
suggesting such a user interface for modifying instructions sent from and
created at another device. Specifically, in Beyer’s system, a cellular phone
is remotely activated by an initiator, causing the remote cellular phone to
annunciate audio announcements, call another phone number, increase the
volume of the speaker, vibrate, or display images or videos (see Abstract).
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However, like Quinones, Beyer is completely silent about modifying any of
these remotely sent instructions at the recipient’s end. Remotely received
instructions to perform a particular function are distinguishable from
adjusting features of a cell phone. We find the Examiner has not shown that
the combined teachings of Quinones and Beyer teach and/or suggest
instructions being enabled to be modified via a user interface of the
electronic device, as required by claim 1. We are therefore constrained by
the record before us to find the Examiner erred in rejecting representative
claim 1, and claims 2-35 for similar reasons.
In view of the above discussion, we are of the opinion the proposed
combination of references set forth by the Examiner does not support the
obviousness rejection. We, accordingly, do not sustain the rejection of
independent claims 1, 13, 20, 32, and 35, or the rejection of claims 2-12, 14-
19, 21-31, 33, and 34, which are dependent thereon.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
the combined teachings of Quinones and Beyer render claims 1-35
unpatentable.
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DECISION2
We reverse the Examiner’s § 103 rejection.

REVERSED

2 In the event of further prosecution, we leave it to the Examiner to consider
if the computer readable storage medium claim, claim 13, should be rejected
under 35 U.S.C. § 101. The Specification does not define the term
“computer readable storage medium.” Given this silence in the
Specification, we are compelled to note that the ordinary and customary
meaning of “computer readable storage medium” to a person of ordinary
skill in the art is broad enough to encompass both non-transitory and
transitory media. Signals are not patentable eligible subject matter under
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP
§ 2106(I) (8th ed. Rev. 9 Aug. 2012); Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential).
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FISHMAN, Administrative Patent Judge, DISSENTING:
I respectfully dissent from particular findings of the Majority.
The principle issue between the Examiner and Appellants is whether
the combined references teach or suggest “the instruction being enabled to
be modified via a user interface of the electronic device.”
Initially, I note that the claim requires that the instruction is enabled
to be modified by a user interface of the electronic device. The claim does
not positively recite that the instruction is modified by the electronic device.
In particular, the recitation of method claim 1 does not require that the
electronic device actually modifies the instruction received from the host.
Rather, this limitation expresses a feature or attribute of the instruction,
namely that the instruction is enabled to be modified by a user interface of
an electronic device—in other words, the instruction possesses an attribute
or feature that it is capable of being modified (i.e., enabled to be modified)
by a user interface of the electronic device that received the instruction.
Thus, for at least this reason, I would urge there is no requirement that the
prior art references disclose a feature of the electronic device that actually
performs the recited modification. Rather, the Examiner has shown the
combination of references teaches or suggests that an instruction, such as
changing sound intensity, sent from a first device to a second device is
capable of being modified by a user interface of the second device.
Regardless, as explained by the Examiner in the response portion of
the Answer, Quinones alone teaches or suggests this disputed limitation
becauser Quinones actually does modify an instruction via a user interface of
the electronic device (hence such an instruction must be enabled to be so
modified). The Examiner explains:
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Quinones teaches a hosting device sending instruction to the
electronic device to control the behavior of the electronic
device (such as disabling the electronic device) via a user
interface (the service provider has to input a logon sequence via
a user interface)
. . .
and these parameters can be updated by an updating process
([0020], lines 10-11), thus Quinones teaches modifying
instructions. . . . A user of the remotely-accessible device may
input rules and actions via serial direct connection (see
Quinones, [0022], line 24). Note that the serial direct
connection is understood to be serial connector to a mouse or a
keyboard and therefore the remotely-accessible device is
directly connected with user interface such as a mouse or
keyboard. Thus Quinones teaches modifying instructions
(updating the parameters) and using the user interface of the
electronic device (using serial direct connection) to input the
instructions.
Ans. 11-12. In other words, Quinones utilizes a “user interface” of the
electronic device (i.e., a serial direct connection) to logon to the electronic
device for purposes of sending the instruction and for modifying (updating)
the previously sent instruction. Thus, I agree with the Examiner’s finding,
“Quinones discloses user modifying/updating instructions via the serial
direct connection which is understood to be the user interface.” Id. at 12.
Although the Examiner finds Quinones alone teaches the disputed
feature, the Examiner further explains, “Beyer is brought to explicitly teach
a user interface a user uses for modifying instructions.” Id. In other words,
Beyer is cumulative with respect to the teachings of Quinones but explicitly
teaches a user interface that may be used locally by an electronic device to
modify an instruction received from a host device. Specifically, the
Examiner explains Beyer shows an electronic device having a stylus, touch
screen, actuator, switch, and buttons, which are deemed to be a user
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interface. Ans. 13. The Examiner also explains Beyer discloses a device
that can receive instructions sent by another device, including, for example,
setting a sound intensity (volume) level for the electronic device. Id. at 12.
The Examiner identified the example of setting sound intensity because, “it
is a common feature of a mobile device that a user of the mobile device can
change sound intensity by pressing a button or key on the mobile device,
thus via a user interface.” Id.
Appellants argue that:
Beyer must show more than just that an instruction can be
modified via a user interface of a device. Beyer must show that
an instruction provided to an electronic device to define an
operation to be performed (at the electronic device) in response
to future occurrence of a particular stimulus must be modifiable
using a user interface of the electronic device. Even to the
extent that Quinones is relied upon for showing an instruction
for defining an operation to be performed in response to future
occurrence of a particular stimulus, Beyer must show at least
that an instruction received from another device can be
modified by the receiving device using a user interface of the
receiving device.
App. Br. 7. I disagree. As discussed supra, the Examiner has explained that
Quinones alone teaches or suggests actually modifying (updating) an
instruction via a user interface (serial direct connection) of the electronic
device. Beyer is therefore cumulative with respect to this teaching. Beyer at
least suggests a similar capability in that it possesses a user interface and it
receives instructions from a remote device – including instructions (sound
intensity, for example) that are commonly modified via a user interface.
Regardless of whether Beyer actually teaches the disputed limitation, I
would find Quinones actually teaches the disputed limitation and Beyer at
least suggests the limitation.
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Appellants’ arguments present other issues that the majority does not
reach by virtue of reversing the rejections over a single dispositive issue. I
have not considered these other issues and thus, I cannot indicate whether I
would affirm the rejections. Rather, I dissent from the majority opinion with
respect to the findings discussed supra and I defer to the Examiner to
consider whether the positions expressed in this Decision are deserving of
further consideration.

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