Ex Parte Christie et alDownload PDFPatent Trial and Appeal BoardJun 22, 201612163908 (P.T.A.B. Jun. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/163,908 06/27/2008 Greg Christie 77705 7590 06/24/2016 APPLE c/o MORRISON & FOERSTER LLP PALO AL TO 755 PAGE MILL ROAD PALO ALTO, CA 94304-1018 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. 106842107200(P6042US1) 9425 EXAMINER HANNON, CHRISTIAN A ART UNIT PAPER NUMBER PIA NOTIFICATION DATE DELIVERY MODE 06/24/2016 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): EOfficeP A@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREG CHRISTIE, MARCEL VAN OS, STEPHEN 0. LEMAY, and EV AN RUSSELL DOLL Appeal2014-002332 Application 12/163,908 Technology Center 2600 Before DANIEL J. GALLIGAN, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1---6, 9--14, 18-24, and 28. Claims 25 and 26 have been canceled. App. Br. 7. Claims 7, 8, 15-17, and 27 have been objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Act. 11. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 5. Appeal2014-002332 Application 12/163,908 STATEMENT OF THE CASE Appellants 'Invention Appellants' invention generally relates to portable electronic devices for performing instant messaging. Spec. i-f 3. The portable electronic device displays an incoming message from a party on a touch screen display while the device is locked. Spec. i-f 12. The portable electronic device responds to detecting a user request to view the incoming message by immediately displaying a set of messages between the user of the device and the party in a chronological order. Id. The displayed set of messages includes the incoming message. Id. Claims 1, 2, 5, and 10, which are illustrative, read as follows: 1. A method, comprising: at a portable electronic device with a touch screen display: displaying an incoming message from a party to a user of the portable electronic device on the touch screen display while the portable electronic device is locked, the incoming message including at least a portion of text in the incoming message; and in response to detecting a user request to view the incoming message, immediately displaying a set of messages between the user of the portable electronic device and the party in a chronological order, wherein the displayed set of messages includes the incoming message. 2. The method of claim 1, wherein displaying the incoming message further includes: displaying a portion of the incoming message on the touch screen display while the portable electronic device is locked and a long-message indicia if the incoming message is longer than a predefined length; and displaying the incoming message in its entirety on the touch screen display while the portable electronic device is 2 Appeal2014-002332 Application 12/163,908 locked if the incoming message is equal to or less than the predefined length. 5. The method of claim 3, further including: after ceasing to display the incoming message, in response to detecting a user request to unlock the portable electronic device, unlocking the portable electronic device; and in response to detecting a user selection of an instant messaging icon, displaying a list of instant messaging conversations wherein the list includes an unread message indicia adjacent to the conversation between the user of the portable electronic device and the party. 10. A method, comprising: at a portable electronic device with a touch screen display: while the portable electronic device is unlocked, if the incoming message is longer than a predefined length, displaying: a portion of an incoming message from a party to a user of the portable electronic device, a view icon, and a long-message indicia on the touch screen; if the incoming message is equal to or less than the predefined length, displaying: the incoming message from the party to the user of the portable electronic device and, a reply icon on the touch screen display; and 3 Appeal2014-002332 Application 12/163,908 in response to detecting user selection of either the view icon or the reply icon, immediately displaying a set of messages between the user of the portable electronic device and the party in a chronological order, wherein the set of messages includes the incoming message. Rejections Claims 1, 2, 9, 19, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Klassen et al. (US 2007/0173267 Al; published July 26, 2007) and Helle (US 6,662,023 Bl; issued Dec. 9, 2003). Final Act. 2-5. Claims 3---6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Klassen, Helle, and Bast (US 2007 /0213099 Al; published Sept. 13, 2007). Final Act. 5---6. Claims 10, 12-14, 18, 20, 22, 24, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Klassen and Bast. Final i~ .. ct. 7-10. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Klassen, Bast, and Lee (US 2004/0015548 Al; published Jan. 22, 2004). Final Act. 10-11. ANALYSIS Claims 1, 3, 4, 6, 9, 19, 21, and 23 Issue 1: Did the Examiner err in finding the combination of Klassen and Helle teaches or suggests "displaying an incoming message from a party to a user of the portable electronic device on the touch screen display while the portable electronic device is locked, the incoming message including at least a portion of text in the incoming message," as recited in claim 1? 4 Appeal2014-002332 Application 12/163,908 Appellants contend the combination of Klassen and Helle fails to teach or suggest the disputed limitation. App. Br. 16-20; Reply Br. 6-9. In particular, Appellants contend "Klassen and Helle, either alone or in combination, fail to teach or suggest displaying an incoming message, which may be personal or confidential, on a locked portable electronic device." App. Br. 17. According to Appellants, the Examiner acknowledges that Klassen fails to teach displaying an incoming message while in a locked state and "Helle merely discloses displaying a 'phone locked display message' or a 'phone lost display message' or a 'phone stolen display message' 'for displaying on the mobile phone."' Id. Appellants contend Helle, therefore, teaches displaying a predefined, generic message and not an incoming message from a party to a user of the portable electronic device, as required by claim 1. Reply Br. 7-8. Appellants contend, therefore, the combination of Klassen and Helle merely teach[ es], when a device is in an unlocked state, displaying message threads in a message list application UI and \~1hen a device is in a locked state, displaying generic messages for "a mobile phone when it has been lost or stolen in order to prevent its use except to help the owner find it." App. Br. 19 (citing Klassen i-f 29; Helle, Abstract) (internal citations omitted). We do not find Appellants' contentions persuasive. The Examiner finds, and we agree, Klassen teaches displaying an incoming message from a party to a user of the portable electronic device on a touch screen display. Final Act. 2 (citing Klassen, Fig. 1; i-fi-130-31, 35); Ans. 2. The Examiner finds, and we agree, Helle teaches displaying messages on a display of a mobile phone while the mobile phone is in a locked state. Final Act. 3; Ans. 2-3 (citing Helle, Figs. 3---6). As such, the combination of Klassen and 5 Appeal2014-002332 Application 12/163,908 Helle teaches or suggests displaying an incoming message from a party to a user of the portable electronic device on a touch screen display, as taught by Klassen, when the mobile phone is in a locked state, as taught by Helle. Therefore, we are not persuaded the Examiner erred in finding the combination of Klassen and Helle teaches or suggests the disputed limitation. Accordingly, we are not persuaded the Examiner erred in rejecting claim 1. Regarding claims 3, 4, 6, 9, 19, 21, and 23, Appellants rely on the arguments presented for claim 1. See App. Br. 16. Accordingly, we sustain the rejection of these claims for the same reasons. Claim 2 Issue 2: Did the Examiner err in finding the combination of Klassen and Helle teaches or suggests the limitations recited in claim 2? Appellants contend the combination of Klassen and Helle fails to teach or suggest the disputed limitation because "[ n Jo logical combination of Klassen and Helle teach[ es] differing displays based on the incoming message length," as required by claim 2. App. Br. 20. Appellants contend "Klassen does not teach or suggest a long-message indicia for a single incoming message if the incoming message is longer than a predefined length" but, instead, teaches "scrollably displaying 'all text messages that have been exchanged over the history of the thread."' Reply Br. 9 (citing Klassen i-f 36). Appellants contend Klassen, therefore, teaches a comparison that includes a size of all text messages that have been exchanged over the history of a particular thread or conversation and not a single incoming message, as required by claim 2. App. Br. 21. 6 Appeal2014-002332 Application 12/163,908 The Examiner finds: Klassen explicitly contemplates the problem that that due to display size-constraints sometimes a message may not be able to fit on a portable device's display. Klassen provides a "long message indicia" solution to this problem by scrolling the text of the message across the display. This scrolling thereby imparts to a user witnessing this scrolling that the message is longer than the display's size capabilities. This teaching sufficiently qualifies, under the broadest reasonable interpretation, of a "long message indicia" (i.e. that which denotes to a user that a message is too long for the display' s size). Ans. 4--5 (citing Klassen i-f 36) (internal citations omitted). We do not find Appellants' contentions persuasive. Klassen teaches messages may be grouped into threads corresponding to conversations. Klassen i-f 27. Klassen teaches a thread may have one or more messages - e.g., one message. Id. i-f 31. Klassen teaches when a user selects a thread, a conversation history user interface (UI) display is presented containing all text messages that have been exchanged over the history of the thread. Id. i-f 36. Klassen teaches in the event the display is not large enough to display all of the text messages included in the conversation, all of the messages are opened and scrollably displayed in the conversation history UI display. Id. Because Klassen teaches that the thread may have one message, Klassen teaches or suggests displaying the entire message when the display is large enough (e.g., when the message is equal to or less than the predefined length) and scrollably displaying the message when the display is not large enough (e.g., when the message is larger than the predefined length). Klassen further teaches that the conversation history UI includes a scrollbar that is "used to provide the device user with the information regarding [the] 7 Appeal2014-002332 Application 12/163,908 length of the conversation history by displaying the scrollbar with a length ('thumb size') that is inversely proportional to the number of messages and by positioning the scrollbar ('thumb position') to represent the current display location in history." Klassen i-f 70. Klassen, therefore, teaches or suggests the limitations recited in claim 2. Accordingly, we are not persuaded the Examiner erred in rejecting claim 2. Claim 5 Issue 3: Did the Examiner err in finding the combination of Klassen, Helle, and Bast teaches or suggests "in response to detecting a user selection of an instant messaging icon, displaying a list of instant messaging conversations wherein the list includes an unread message indicia adjacent to the conversation between the user of the portable electronic device and the party," as recited in claim 5? Appellants contend the combination of Klassen and Helle fails to teach or suggest the disputed limitation. App. Br. 22-26; Reply Br. 10-13. In particular, Appellants contend Klassen's Figure 1 depicts a message list that indicates a type of message (e.g., e-mail, SMS, and PIN) in the message thread and does not include an unread message indicia adjacent to a conversation, as required by claim 5. App. Br. 23 (citing Klassen i-f 28; Fig. 1 ). Appellants contend: Figure 3 [of Klassen] is "an example conversation history UI display forming part of the text messaging UI" and is not a "list of instant messaging conversations" as recited in claim 5. A user interface displaying a list of messages in a single conversation is a fundamentally different user interface from one displaying a list of conversations, as demonstrated by the 8 Appeal2014-002332 Application 12/163,908 figures in Klassen as well as the figures in the current application. Further, Figure 3 of Klassen does not display "an unread message indicia adjacent to the conversation between the user of the portable electronic device and the party." Even assuming, arguendo, that Figure 3 of Klassen suggests a display of an unopened envelope in front of an individual unread message, the unopened envelope would only be displayed in front of each unread message in the conversation history of a single conversation, and not "adjacent to the conversation" in "a list of instant messaging conversations." App. Br. 24 (citing Klassen i-f 52) (internal citations omitted); see also Reply Br. 11. We do not find Appellants' contentions persuasive. Klassen teaches marking each inbound message as either opened (e.g., read) or unopened (e.g., unread) depending on the current status of the message. Klassen i-f 98. Klassen teaches that the message is marked by displaying a status icon 111 adjacent to each message. Id. at Fig. 3; see also id. i-f 73 ("The status icon 111 is a visual representation of a message's current status."). We agree with Appellants that Klassen teaches displaying the status icon adjacent to an individual message. However, Klassen teaches displaying a list of conversations (id. at Fig. 1) and indicating, through the use of representative messages (id. i-fi-1 41, 48), that a conversation includes an unread message (id. i-f 40). Using Klassen's status icon in place of the representative message to indicate that a conversation includes an unread message would have predictably used prior art elements according to their established functions- an obvious improvement. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants do not persuasively show that the resulting arrangement was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." See 9 Appeal2014-002332 Application 12/163,908 Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). As such, we are not persuaded of error in the Examiner's rejection of claim 5 as obvious over the combination of Klassen and Helle. Claims 10, 12-14, 18, 20, 22, 24, and 28 Issue 4: Did the Examiner err by finding the combination of Klassen and Bast teaches or suggests the limitations recited in claim 1 O? Appellants contend the combination of Klassen and Bast fails to teach or suggest the limitations recited in claim 10 because the applied references do not teach or suggest "making a determination as to whether 'the incoming message is longer than a predefined length' and if so, 'displaying a portion of an incoming message ... , a view icon, and a long-message indicia on the touch screen,"' nor "making a determination as to whether 'the incoming message is equal to or less than the predefined length' and if so, 'displaying the incoming message ... and a reply icon on the touch screen display,"' as required by claim 10. App. Br. 28. Appellants further contend Klassen and Bast fail to teach or suggest the limitations recited in claim 10 because the applied references do not teach or suggest displaying a view icon or a long-message indicia, as also required by claim 10. App. Br. 29. Appellants contend Klassen's description of "text messages 12A, 12B representing text message threads" (Klassen, paragraph 0029) simply indicates that 12A represents a text message thread, as opposed to an "e-mail message thread" or a "PIN message thread" (Klassen, paragraph 0029). Thus, item 12A representing a text message thread can hardly be considered a view icon. App. Br. 29. Appellants also contend 10 Appeal2014-002332 Application 12/163,908 Although Klassen discloses messages that are "scrollably displayed in the conversation history UI display," there is no teaching or suggestion of a "long-message indicia (e.g., an ellipsis, " ... ")" (Application specification, paragraph 00317). Merely teaching messages that are "scrollably displayed" does not teach or suggest that there is a "long-message indicia on the touch screen" as recited in claim 10. App. Br. 30. Appellants further contend the combination of Klassen and Bast fails to teach or suggest the limitations recited in claim 10 because: Klassen discloses a method where "to access any individual text message of a thread represented by a single text message, the thread is selected, and a thread open function invoked through the user interface" (Klassen, paragraph 0035). Klassen clarifies with an example where "to open the thread represented by text message entry 12A from John Smith, the user selects (moves the focus) to that message, and invokes the open thread function" (Klassen, paragraph 0035). However, a user selecting a thread (by moving the focus to that thread) is not the same as user section of either a view icon or a reply icon. App. Br. 27. Appellants also contend: Bast fails to teach or suggest "a reply icon on the touch screen display" as recited in claim 10. Bast discloses displaying "a static alert screen with one icon for every pending event (missed call, received SMS, ... )"(Bast paragraph 0051 ), but a reply is not a "pending event." Moreover, in Bast, as the user is "offered a direct route into reading the message and/or responding to the message," the pending event icon of Bast cannot be considered a "reply icon" that is distinct from a "view icon" as recited in claim 10. Further, there is no mention in Bast of a "touch screen display" as recited in claim 10. Moreover, the Examiner improperly separated the reply icon from its intended consequence, that is "immediately displaying a set of messages between the user of the portable 11 Appeal2014-002332 Application 12/163,908 electronic device and the party in a chronological order" as recited in claim 10. Even assuming, arguendo, that Bast's pending event icon is a reply icon, in Bast, the user is "offered a direct route into reading the message and/ or responding to the message." Bast merely discloses reading and/or responding to a single message, and fails to teach "displaying a set of messages . . . in a chronological order" in response to user selection of the pending event icon. Reply Br. 15. We do not find Appellants' contentions persuasive. Klassen teaches that an SMS processing function of a wireless device is "operable to: group a plurality of individual SMS messages into threads, each thread containing one or more messages between a respective pair of two addresses" and "for each thread, display via the display screen a respective UI (User Interface) display element representing the thread." Klassen i-f 18. Klassen further teaches that the SMS processing function is operable to "receive via the input panel a selection of a UI display element representing a particular thread; and perform an individual function upon each of the individual SMS messages of the particular thread." Id. Klassen teaches that the function may be "an open operation that opens all of the messages of a selected thread" (Klassen i-f 34) and that "the messages may be ordered chronologically within the thread" (Klassen i-f 33). Klassen, therefore, teaches or suggests "in response to detecting user selection of either the view icon or the reply icon, immediately displaying a set of messages between the user of the portable electronic device and the party in a chronological order, wherein the set of messages includes the incoming message," as recited in claim 10. 12 Appeal2014-002332 Application 12/163,908 Because Klassen teaches displaying the UI element that the UI display element can be selected for performing the open operation, Klassen teaches or suggests displaying a "view icon." Klassen also teaches or suggests that the UI display element can be selected for performing a reply function. See Klassen i-f 54. As discussed supra with respect to claim 5, Klassen teaches or suggests "if the incoming message is longer than a predefined length, displaying: a portion of an incoming message from a party to a user of the portable electronic device ... and a long-message indicia on the touch screen" and "if the incoming message is equal to or less than the predefined length, displaying: the incoming message from the party to the user of the portable electronic device." Claim 10 does not require that the "view icon" or the "reply icon" is displayed concurrently with the long-message indicia. Instead, claim 10 merely requires that the "view icon" is displayed "if the incoming message is longer than a predefined length" and that the "reply icon" is displayed "if the incoming message is equal to or less than the predefined length." As such, Klassen teaches or suggests "if the incoming message is longer than a predefined length, displaying: a portion of an incoming message from a party to a user of the portable electronic device, a view icon, and a long- message indicia on the touch screen" and "if the incoming message is equal to or less than the predefined length, displaying: the incoming message from the party to the user of the portable electronic device," as recited in claim 10. For the foregoing reasons, we are not persuaded the Examiner erred in finding the combination of Klassen and Bast teaches or suggests the limitations recited in claim 10 and claims 12-14, 18, 20, 22, 24, and 28, which are not argued separately. See App. Br. 16, 26-30. 13 Appeal2014-002332 Application 12/163,908 Claim 13 With respect to claim 13, Appellants rely on the arguments presented for claims 5 and 10. See App. Br. 26, 30. Accordingly, we are not persuaded the Examiner erred in rejecting claim 13 for the reasons discussed supra with respect to claims 5 and 10. DECISION We affirm the Examiner's rejections of claims 1-6, 9-14, 18-24, and 28 under 35 U.S.C. § 103(a). 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation