Ex Parte Behrens et al

Patent Trial and Appeal Board

Sep 27, 2017

14693557 (P.T.A.B. Sep. 27, 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.
14/693,557 04/22/2015 Heiko Behrens 033645-0106 5372
137159 7590 09/29/2017
Fitbit, Inc. / Rutan & Tucker, LLP
611 Anton Boulevard
Suite 1400
Costa Mesa, CA 92626
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKO BEHRENS, HENRY LEVAK,
and YOON KEAN WONG
Appeal 2017-001095
Application 14/693,5571
Technology Center 2400
Before JAMES R. HUGHES, CARL L. SILVERMAN, and ALEX S. YAP,
Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—10, 12—16, 18—21, and 23—26, which
constitute all the pending rejected2 claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Pebble Technology, Corp. App.
Br. 4.
2 Claims 5, 11, 17, and 22 are cancelled. Final Act. 2. While claim 6 is not
listed as pending in the Final Action heading, it is discussed as rejected in
the Final Action and it is listed as pending in the Claims Appendix. Id. at 3;
App. Br. 34.
Appeal 2017-001095
Application 14/693,557
STATEMENT OF THE CASE
Appellants’ invention relates to a notification system for merging new
messages into pending notifications. Abstract; Spec. 2, 7. Claim 1 is
exemplary of the matter on appeal (emphasis added):
1. One or more non-transitory computer-readable storage
media encoded with computer-executable instructions for
executing on a computer system a computer process
comprising:
receiving a communication from another device, wherein
the communication includes a first indicator and a plurality of
fields and at least one field corresponds to a message',
storing the communication in memory, wherein the at
least one field is assigned to a first portion of the memory and
at least one other field is assigned to a second portion of the
memory;
developing a notification from the plurality of fields;
displaying the notification;
receiving a new communication from another device,
wherein the new communication has a second indicator and a
plurality of fields and at least one field corresponds to a new
message;
storing the new communication in memory;
reading the new communication from memory;
determining whether the second indicator matches the
first indicator, and, if the second indicator matches the first
indicator, merging the new message into the notification by
overwriting the first portion of the memory with the new
message to update the notification', and
displaying the updated notification comprising the new
message.
App. Br. 33 (Claims Appendix).
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Application 14/693,557
REJECTIONS
Claims 1—4, 6—10, 12—16, and 23—25 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over US Publication issued to Tapley et al. (US
2015/0106221 Al; pub. Apr. 16, 2015) (“Tapley”), of Leahy et al. (US
8,688,528 B2; issued Apr. 1, 2014) (“Leahy”), Goss et al. (US
2014/0229655 Al; pub. Aug. 14, 2014) (“Goss”), and Van De Sluis et al.
(US 2006/0253451 Al; pub. Nov. 9, 2006) (“Van De Sluis”). Final Act. 2-
11.
Claims 18—21 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tapley, Leahy, Goss, Van De Sluis, and Grkov et al. (US
2012/0196571 Al; pub. Aug. 2, 2012) (“Grkov”). Final Act. 11-16.
ANALYSIS
Claims 1, 24, and 23
Appellants argue the Examiner errs in that neither Tapley nor Leahy
teaches the use of the “indicator” of claim 1, and do not teach an “auction
ID.” App. Br. 15—16 (citing Final Act. 4). The Examiner finds, and we
agree, the claim does not recite or require the indicator is an “auction ID.”
Ans. 3. The Examiner finds Tapley teaches an online auction in which users
bid for items and “there is a notification of a title [,] of the time, description
of items, etc.” and “one [of] ordinary skill in the art could interpret^ these
information as indicators.” Id. at 3 (citing Tapley 161). Regarding Leahy,
the Examiner finds teachings of different types of information (name of
item, current bid, time left, start date and time, history) that one of ordinary
skill in the art could interpret as “indicators.” Id.
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We are not persuaded that the Examiner’s claim interpretation and
findings are unreasonable or overbroad. Claim terms in a patent application
are given the broadest reasonable interpretation consistent with the
Specification, as understood by one of ordinary skill in the art. In re Crish,
393 F.3d 1253, 1256 (Fed. Cir. 2004).
Appellants argue neither Tapley nor Feahy teaches the claim 1
limitation “determining whether the second indicator matches the first
indicator.” App. Br. 17. According to Appellants, Tapley does not teach an
“auction ID” (which is not required by claim 1, supra) and there is no
disclosure of this limitation. Id. Appellants argue Feahys’ item 418 is not
used for matching notifications and item 418 is not used to match with the
item of a new bid to determine whether to overwrite the content in memory
with the new bid information to update the bid. Id. at 17.
The Examiner finds, and we agree:
Feahy, Fig. 18, 19, clearly shows item #, and other information
such as current bid, time left, start date, start time, history, high
bidder, when a new bid is placed, that bid overwrites the old
bids, therefore at the very least, there is matching of
information such as item#, which is used to know which item is
being bid on, or even the current bid, in order to overwrite the
old price, without the item# or the other information, the system
would not know what product the bidder is bidding on.
Tapley also fairly suggests this process of bidding and
overwriting of bids, para. 0108-0112; [(see also Figs. 1 IB,
11C)].
Ans. 6—7.
Appellants argue neither Tapley nor Feahy teaches sharing a message
portion of the communication in a different portion of the memory than the
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Application 14/693,557
other parts of the communications and Goss does not teach messages being
stored in memory. App. Br. 19 (citing Final Act. 5; Goss 36). According
to Appellants, Goss is non-analogous art related to “storing error correction
code data in a multi-tier memory structure” and “discloses an error
correction code software rather than a way to generate a notification from an
incoming communication.” Id. at 23.
The Examiner finds Tapley teaches a wearable watch, which includes
main memory and static memory. Ans. 7—8 (citing Tapley, Fig. 20, element
2004, 2006). Tapley teaches displaying “a notification ... for items on sale,
where the user is notif[ied] when the user is outbid on an item.” Id. (citing
Tapley, Figs. 6B, 11, || 30, 61, 65, 81, 108—112). The Examiner finds
“[therefore Tapley teaches storing communication in memory, and reading
the communication from memory, [i.e.], the notification.” Id.
The Examiner finds Goss teaches different tiers of memory in which
different types of data are stored in different tiers. Id. (citing Goss, Fig. 4; Tf
36). The Examiner interprets the different tiers as the “first portion of
memory” and the “second portion of memory.” Id. The Examiner finds,
and we agree, Goss is analogous art because Goss teaches different tiers of
different type of information, which improves performance. Ans. 11 (citing
Goss 137).
We are not persuaded by Appellants’ arguments and agree instead
with the claim interpretation and findings of the Examiner. In particular,
Appellants’ arguments rely on unreasonably narrow teachings of the cited
references as would be understood by one of ordinary skill in the art.
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Appellants argue Van De Sluis teaches “[t]he device comprises
communication means for establishing a communication path with an
external resource for receiving new content information therefrom and
control means for conditionally overwriting the content information in
the memory with the new content information so as to keep the memory
substantially filled” and
[t]hus, Van De Sluis’ disclosure is related to keeping the
memory substantially filled and is not related to overwriting
memory to update a notification. Van De Sluis certainly does
not disclose merely overwriting contents of a message, in a first
portion of a memory but not overwriting other parts of the
communication stored in a second portion of the memory.
App. Br. 27—28 (citing Van De Sluis 17).
The Examiner finds, and we agree, Van De Sluis “teaches the well
known art of when there is new content/data, then the old content/data is
overwritten with the new content/data.” Ans. 18 (citing Van De Sluis 7).
Appellants argue none of the cited art is trying to solve a similar
problem solved by claim 1 and the Examiner applies impermissible
hindsight. App. Br. 22—23. Appellants further argue the Examiner presents
insufficient reasoning to support obviousness. Id. at 23—27.
Regarding obviousness, we adopt the findings and conclusions of the
Examiner. Ans. 7—18; see a Iso Final Act. 4—6. We are not persuaded by
Appellants’ arguments and agree instead with the Examiner’s findings and
conclusions regarding obviousness and hindsight. Appellants argue an
unreasonably narrow teaching of the references as would be understood by
one of ordinary skill in the art and argue the references individually whereas
the rejection is based on the combination. In re Keller, 642 F.2d 413, 426
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(CCPA 1981) (“[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references” (citations omitted)); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
The 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. Keller, 642 F.2d at 425.
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[Sjome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” ....
[Hjowever, 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)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420—21. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.
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On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and claims
2-4 and 23 as these claims stand or fall together. App. Br. 13.
Claims 6, 12, 7—10, 13 16, 24, and 25
Appellants rely on claim 1 arguments, supra, and additionally argue
independent claims 6 and 12 recite “determining whether the new message is
from a predetermined source designated by settings stored in memory.”
App. Br. 29. According to Appellants, “Figure 10 of Tapley referred to in
the Office Action does not disclose determination via settings stored in
memory. “ Id.
The Examiner finds, and we agree, Tapley teaches this limitation.
Final Act. 3^4 (citing Tapley Fig. 10); Ans. 18. See also Tapley discussion
of settings for general notifications, settings for buyer notifications, and
settings for seller notifications. Tapley Tflf 104—107.
In view of the above, we sustain the rejection of independent claims 6
and 12, and claims 7—10, 13—16, 24, and 25 as these claims stand or fall
together. App. Br. 13.
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Claims 18—21 and 26
Appellants rely on claim 1 arguments, supra, and additionally argue
claim 18 recites “determining whether to merge the new message into the
notification based on instructions received from a remote device.” App. Br.
30. According to Appellants, the Grkov teaching of remote server command
does not remedy the deficiencies of Tapley, Leahy, Gross, and Van De Sluis.
Id. at 30 (citing Grkov 1158). We are not persuaded because, as discussed
supra, there is no deficiency. Therefore, we sustain the rejection of claims
18-21 and 26.
Claims 23—26
Appellants argue the Examiner errs in rejecting claim 23, which
depends from claim 1, and recites “wherein the second portion of the
memory remains unchanged during the merging.” App. Br. 30—31.
According to Appellants, “Van De Sluis does not disclose overwriting the
message stored in the first portion of the memory while the second portion
of the memory storing the indicator remains unchanged during the merging.”
Id. at 31.
The Examiner finds, and we agree:
Van De Sluis explicitly teaches overwriting old data with new
data, the prior art does not explicitly teach the limitations of
claim 23. However, to keep the second portion of memory
unchanged during merging would have been obvious to one
ordinary skill in the art since when data has not changed, then
there is no need to overwrite. Therefore it would have been
obvious to one ordinary skill in the art to modify the teaching to
not overwrite memory when data is unchanged in order to
provide the predicable result of having certain memory stay the
same when there is no new data. One ordinary skill in the art
would have been motivated to combine the teaching in order to
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reduce overwriting process when it's unnecessary to save
processing speed of a device.
Final Act. 9—10.
In view of the above, we sustain the rejection of claims 23—26.
DECISION
We affirm the Examiner’s decision rejecting claims 1—4, 6—10, 12—16,
18-21, and 23-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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