Ex Parte CHEN et alDownload PDFPatent Trial and Appeal BoardSep 30, 201614166418 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/166,418 01/28/2014 14673 7590 10/04/2016 The Law Office of James W. Rose PC 2595 E. Bayshore Rd., Suite 100 Palo Alto, CA 94303 FIRST NAMED INVENTOR Theodore C. CHEN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JWR1P002 4449 EXAMINER HUYNH, NAM TRUNG ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): JIM.ROSE159@GMAIL.COM jrose@nikonrca.com laura.dean@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THEODORE C. CHEN and MICHAEL P. DEMELE Appeal2015-004607 Application 14/166,418 Technology Center 2600 Before JAMES R. HUGHES, CATHERINE SHIANG, and JOHN P. PINKERTON, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-9, which constitute all the claims pending in this application. Final Act. 1. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 We refer to Appellants' Specification ("Spec."), filed Jan. 28, 2014 (claiming benefit of US 61/824,957, filed May 17, 2013); Appeal Brief ("App. Br.") filed Oct. 8, 2014; and Reply Brief ("Reply Br.") filed Mar. 5, 2015. We also refer to the Examiner's Answer ("Ans.") mailed Feb. 5, 2015, and Final Office Action (Final Rejection) ("Final Act.") mailed July 25, 2014. Appeal2015-004607 Application 14/166,418 Appellants ; Invention The invention concerns disabling communication and/or other application functionality on a mobile communication device, specifically applications (software) for disabling a communication device. The application resides in the mobile communication device. The application is configured to determine if the mobile communication device is in motion (in an undesirable motion state), prevent the use of other mobile applications on the mobile device when the device is in motion, and automatically play audio content on the mobile device when the mobile applications are disabled. (Spec. i1i13, 9--1 O; Abstract.) Representative Claim Independent claim 1, reproduced below with and the key disputed limitations emphasized, further illustrates the invention: 1. An application embedded in a non-transitory computer readable medium and intended for execution on a mobile communication device, the application configured to: ascertain if the mobile communication device is in an undesirable motion state, the undesirable motion state indicative of when the communication device is in a vehicle that is in motion; prevent the use of one or more mobile applications on the mobile communication device when it is ascertained that the mobile communication device is in the undesirable motion state so that the one or more mobile applications is/are discouraged from being used; and automatically play audio content on the mobile communication device when the one or more mobile applications is/are prevented from being used because the mobile communication device is in the undesirable motion state. 2 Appeal2015-004607 Application 14/166,418 Rejections on Appeal 1. The Examiner rejects claims 1, 2, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Guba et al. (US 2011/0009107 Al, published Jan. 13, 2011) ("Guba") and Sigal et al. (US 2013/0102300 Al, published Apr. 25, 2013) ("Sigal"). 2. The Examiner rejects claims 3 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Guba, Sigal, and Riemer et al. (US 2012/0289217 Al, published Nov. 15, 2012) ("Riemer"). 3. The Examiner rejects claims 4---6 under 35 U.S.C. § 103(a) as being unpatentable over Guba, Sigal, and Andrews (US 2012/0252484 Al, published Oct. 4, 2012) ("Andrews"). ISSUE Based upon our review of the record, Appellants' contentions, and the Examiner's findings and conclusions, the issue before us follows: Did the Examiner err in finding that Guba and Sigal collectively would have taught or suggested "ascertain[ing] if the mobile communication device is in an undesirable motion state ... indicative of when the communication device is in a vehicle that is in motion," "prevent[ing] the use of one or more mobile applications on the mobile communication device when ... the mobile communication device is in the undesirable motion state," and "automatically play[ing] audio content on the mobile communication device when the one or more mobile applications is/are prevented from being used," as recited in claim 1? 3 Appeal2015-004607 Application 14/166,418 ANALYSIS The Obviousness Rejection of Claims 1, 2, 8, and 9 Appellants do not separately argue dependent claims 2, 8, and 9 (or remaining dependent claims 3-7). App. Br. 9. Accordingly, we select independent claim 1 as representative of Appellants' arguments and grouping with respect to claims 1, 2, 8, and 9. 37 C.F.R. § 41.37(c)(l)(iv). We have reviewed the rejection of claim 1 in light of Appellants' arguments. In reaching this decision, we have considered all evidence and all arguments made by Appellants. We are not persuaded that Appellants identify reversible error. We agree with and adopt the Examiner's findings, reasoning, and conclusions as set forth in the Final Office Action (Final Act. 3--4) and the Examiner's Answer (Ans. 2--4). We highlight the following for emphasis. Appellants contend that Guba and Sigal do not teach the disputed limitations of claim 1, namely- "prevent[ing] the use of one or more mobile applications on the mobile communication device when ... the mobile communication device is in the undesirable motion state" and "automatically play[ing] audio content on the mobile communication device when the one or more mobile applications is/are prevented from being used" (claim 1 ). See App. Br. 4--9; Reply Br. 2--4. Specifically, Appellants contend the proposed combination results in the automatic launching of "music apps" as taught by Guba when the "ignition" of the user's car is turned as taught by Sigal. Thus, in the proposed combination, the turning on of the "ignition" of a car is the trigger that causes the automatic launch of the application, not if the vehicle is in an undesirable motion state. The proposed combination, therefore, fails to teach the present invention as 4 Appeal2015-004607 Application 14/166,418 claimed. App. Br. 7; See App. Br. 6-9; Reply Br. 2--4. We find Appellants' contentions unpersuasive of Examiner error. Here, Appellants argue the references individually and do not address the specific arguments set out by the Examiner. Compare Final Act. 3--4 and Ans. 2--4 with App. Br. 6-9 and Reply Br. 2--4. The Guba and Sigal references cited by the Examiner must be read, not in isolation, but for what each fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). The Examiner cited Guba as teaching disabling applications on a mobile device while the device is in an undesirable motion state (see Final Act. 3--4; Ans. 2--4 (citing Guba i-fi-1 66, 78, 116, 117, 119; Figs. 17, 24)), and Sigal as teaching automatically playing audio content (see Final Act. 3--4; Ans. 2--4 (citing Sigal i-fi-128, 29, 45)). The Examiner explains that the combination of Guba and Sigal teaches or at least suggests automatically playing audio content while disabling applications on a mobile device because the device is in an undesirable motion state. Appellants fail to appreciate the collective teachings of Guba and Sigal as a whole. We agree with the Examiner that the combination of Guba and Sigal at least suggests the disputed features of claim 1. Appellants' arguments do not take into account what the combination of Guba and Sigal would have suggested to one of ordinary skill in the art - The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; ... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. 5 Appeal2015-004607 Application 14/166,418 In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). We find that it would have been well within the skill of a person of ordinary skill in the art to combine such known techniques to automatically play audio content as taught by Sigal, while disabling mobile applications as taught by Guba. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill" (citations omitted)). Appellants have not provided persuasive evidence or reasoning establishing that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been "uniquely challenging or difficult for one of ordinary skill in the art" at the time of Appellants' invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, Appellants have not persuaded us of error in the Examiner's obviousness rejection of claim 1. Accordingly, we affirm the Examiner's rejection of claim 1, as well as claims 2, 8, and 9, which are dependent on claim 1 and not separately argued with particularity (supra). The Obviousness Rejections of Claims 3-7 The Examiner rejects claims 3 and 7 as obvious in view of Guba, Sigal, and Riemer (Final Act. 5-6) and claims 4--6 as obvious in view of Guba, Sigal, and Andrews (Final Act. 6-7). Appellants do not separately argue dependent claims 3-7. App. Br. 9. Accordingly, Appellants have not identified reversible error. We affirm the Examiner's rejections of claims 3- 6 Appeal2015-004607 Application 14/166,418 7 for the reasons set forth with respect to claim 1 (supra). That is, the combination of Guba and Sigal at least suggests automatically playing audio content while disabling applications on a mobile device when the device is in an undesirable motion state. CONCLUSION Appellants have not shown that the Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's rejections of claims 1-9. 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). 7 Copy with citationCopy as parenthetical citation