Ex Parte CONNERS et al

Patent Trial and Appeal Board

May 29, 2018

14839660 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/839,660 08/28/2015
909 7590 05/31/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Timothy Kent CONNERS
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.
016982-0439496 1081
EXAMINER
VO,TIMT
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY KENT CONNERS, ERIK KRAWIEC,
and JEREMIAH BLUE MOUNTAIN PIERSON
Appeal2017-005272
Application 14/839,660 1
Technology Center 2100
Before DAVID M. KOHUT, KAMRAN JIVANI, and
SCOTT E. BAIN, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review, under 35 U.S.C. § 134(a), of the
Examiner's final rejection of claims 1-19 and 21. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants indicate the real party in interest is CIGNA Intellectual
Property, Inc. App. Br. 2.
2 Claim 20 was previously cancelled.
Appeal2017-005272
Application 14/839,660
INVENTION
"The invention relates to a dock for extending utility of an electronic
device." Spec. ,r 1.
Claims 1 and 21 are reproduced below, with emphasis on the disputed
limitation of claim 1.
1. A dock for extending the utility of electronic devices, the
dock comprising:
one or more output devices;
one or more physical processors programmed with computer
program instructions that, when executed, cause the dock to
effectuate operations comprising:
responsive to detecting an electronic device, causing an
establishment of a connection between the dock and the
electronic device;
obtaining one or more interface requirements for the
electronic device that enable the dock to interact with the
electronic device;
obtaining, via the established connection, based on the one
or more interface requirements, a request from an
application of the electronic device for content stored at a
source external to the dock and the electronic device; and
responsive to obtaining the requested content from the
external source, causing the requested content to be
presented via at least one of the one or more output devices
without the requested content being provided to the
electronic device such that access to the requested content
by any application existing on the electronic device is
prevented.
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Application 14/839,660
21. A dock for extending the utility of electronic devices, the
dock comprising:
one or more output devices;
one or more physical processors programmed with computer
program instructions that, when executed, cause the dock to
effectuate operations comprising:
responsive to detecting an electronic device, causing an
establishment of a connection between the dock and the
electronic device;
obtaining one or more interface requirements for the
electronic device that enable the dock to interact with the
electronic device;
obtaining, via the established connection, based on the one
or more interface requirements, a request from an
application of the electronic device for content stored at a
source external to the dock and the electronic device;
responsive to obtaining the requested content from the
external source, modifying the requested content based on
the one or more interface requirements, the modification
comprising rearranging elements of the requested second
content, resizing the requested second content or resizing
one or more elements of the requested second content, or
causing one or more elements of the requested second
content to be hidden during a presentation of the modified
requested second content; and
providing, via the established connection, the modified
requested content to the electronic device based on the one
or more interface requirements for presentation via the
application of the electronic device such that the requested
second content is modified before being provided to the
electronic device.
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Appeal2017-005272
Application 14/839,660
REJECTIONS
The Examiner rejects claims 1, 2, 7, 8, 13, 14, and 15, under
35 U.S.C. § I02(b), as anticipated by Hasenei (US 2014/0059623 Al;
Feb. 27, 2014). Final Act. 3-7 (June 10, 2016).
The Examiner rejects claims 3 and 16, under 35 U.S.C. § I03(a), as
obvious over Hasenei and Krueger (US 2009/0063744 Al; Mar. 5,
2009). Final Act. 7-9, 14--17.
The Examiner rejects claims 4--6, 17-19, and 21, under
35 U.S.C. § I03(a), as obvious over Hasenei and Zhang
(US 2008/0301545 Al; Dec. 4, 2008). Final Act. 9-12.
The Examiner rejects claims 9-12, under 35 U.S.C. § I03(a), as
obvious over Hasenei and Solomon (US 2006/0061958 Al; Mar. 23,
2006). Final Act. 12-13.
The Examiner rejects claim 7, under 35 U.S.C. § 112, as
indefinite. Final Act. 12-13.
ANALYSIS
Indefiniteness Rejection of Claim 7
Claim 7 depends from claim 1 and recites ( emphasis added):
wherein the dock is further caused to effectuate operations
compnsmg:
obtaining information from the [docked] electronic device that is
to be provided to a destination external to the dock and the
electronic device; and
modifying a resource size of the obtained information and
providing the modified obtained information to the external
destination such that the obtained information is modified before
being provided to the external destination.
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Appeal2017-005272
Application 14/839,660
The Examiner finds the above-emphasized limitations indefinite,
stating:
In claim 7, it is unclear what may be "information from the
electronic device." Also, the language, "modifying a resource
size of the obtained information" is unclear in view of [047] of
the specification. As understood from [0047], "the request from
an application of the electronic device for content stored at a
source external to the dock and the electronic device" ( claim 1)
is the "information from the electronic device that is to be
provided to a destination external to the dock and the electronic
device" ( claim 7), obtained by the dock. The obtained
information is modified based on an interface requirement
including a "size requirement."
Final Act. 2.
Appellants' arguments explain claim 7 's limitations in view of the
claim language and Specification. App. Br. 19; Reply Br. 13-14; see, e.g.,
Reply Br. 13. We agree with Appellants.
The disputed claim limitation requires that the dock obtain, modify,
and transmit the information, particularly obtained from the docked
electronic device, modified as to its resource size, and then providing the
information to the external destination. See claim 7. We do not agree with
the Examiner that these restrictions of claim 7 are indefinite in view the
Specification's paragraph 47 (see above block quote), which describes a
dock obtaining, modifying, and transmitting information.
We also do not agree with the Examiner that claim 1 's request and
claim 7' s information ( see above block quote) are the same because they
originate from the docked device. Claim 1 's request may be, for example, a
request of the electronic device for content stored at the "source external"
(the dock handling the request and content). See Spec. ,r 43. On the other
hand, claim 7 's information may be, for example, content of the electronic
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Application 14/839,660
device that is sent to the "destination external" (the dock passing the content
with modifications). See Spec. ,r,r 33-34, 47, 70-71.
Accordingly, we do not sustain the indefiniteness rejection of claim 7.
Prior Art Rejections of Claims 1-19
Independent claims 1 and 14 recite: a dock connected to an electronic
device and output device; the electronic device requesting, via the dock
connection, externally stored content (i.e., not stored by the electronic device
or dock); and the dock, responsive to the request, causing display of the
content on the output device. Claims 1 and 14 further recite that the
displaying of content is performed "without the requested content being
provided to the electronic device[,] such that access to the requested content
by any application existing on the electronic device is prevented." Each of
remaining claims 2-13 and 15-19 depends from claim 1 or 14.
The Examiner finds the claimed dock, electronic device, and output
device read on Hasenei' s docking station 110, smart device 140, and
alternative viewing device (unlabeled; herein "A VD"), respectively. See
Final Act. 3-5; see also Hasenei ,r 26 (alternate viewing device).
Appellants argue Hasenei routes the A VD' s displayed content through
the docked smart device and thus does not teach the claimed output device's
displaying of content "without the requested content being provided to the
electronic device." App. Br. 11-12; Reply Br. 3-5. The Examiner finds
Hasenei decodes all received content at the docking station via an included
Pro:Idiom chip and, as such, accordingly needs not and does not route the
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Application 14/839,660
A VD' s displayed content through the docked device. Final Act. 5 ( citing
Hasenei ,r 26; Pro:Idiom System Description3); Ans. 6-7. Appellants reply:
[E]ven assuming ... "the 'Pro:Idiom' chip ... supplies the
authentication keys used to decrypt or decode the requested
content" (as alleged by the Examiner), the mere fact that the
docking station 110 ( or its decoding chip) handles the decoding
of requested content does not imply that the docked smart device
140 cannot access or is prevented from accessing the requested
content.
Reply Br. 8.
We agree with Appellants' argument insofar as the Examiner's
findings and cited disclosures do not reach the disputed claim limitation's
"access to the requested content by any application existing on the electronic
device is prevented." Even assuming Hasenei' s docking station directly
routes the decrypted content to the A VD ( e.g., by decoding and routing the
content via the included Pro:Idiom chip), the Examiner fails to show
Hasenei' s system prevents concurrent access of the decrypted content by the
docked smart device ( e.g., by omitting or selectively blocking the smart
device's disclosed access to the content). 4 The additional references use for
the 35 U.S.C. § 103 rejections were not cited to teach or suggest this
limitation and we will not engage in any inquiry as to whether the additional
references cure the noted deficiencies.
3 Available at "http://www.zenith.com/wp-content/uploads/2013/05
/Proldiom_ Overview _2010-10-08. pdf."
4 We have reviewed the Pro:Idiom System Description. It describes the chip
as integrated within a hotel television. Pro:Idiom System Description 2.
Thus, the Pro:Idiom System Description does not contemplate selective
blocking of a connected device.
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Application 14/839,660
Accordingly, we do not sustain the Examiner's prior art rejections of
claims 1-19.
Prior Art Rejection of Claim 21
Independent claim 21 stands rejected over Hasenei and Zhang. Like
claims 1 and 14, addressed above, claim 21 requires a dock, docked device,
and externally stored content. However, claim 21 requires the dock to
modify received content for display on the docked device ( and does not
recite above-addressed feature of claims 1 and 14).
The Examiner reads the claimed modifying and displaying of content
on Hasenei' s processing of content at a docking station and Zhang' s
modifying of content for display on a smart device. Final Act. 14--17;
Ans. 14--15. The Examiner finds it would have been obvious for the
docking station's processing of content to include, in view of Zhang,
conforming of the content to the docked device's display parameters. Final
Act. 16-17; Ans. 14--15.
Appellants argue the Examiner does not support the proposed
conforming of content at the dock, contending:
The Examiner failed to provide any reason why it would have
been obvious to modify Hasenei' s dock so that the dock itself ( as
opposed to the remote server or the docked smart device)
performs the rearrangement of the original content[.] See Office
Action at 16-17 ( where the Examiner merely alleges that "it
would have been obvious to ... modify the requested content
... , as taught by Zhang, to enable the second content to be
displayed properly on the display of the smart device").
Reply Br. 10 ( emphasis omitted).
We are unpersuaded because the argument does not address the
Examiner's specific finding with regard to Hasenei' s docking station. Like a
typical docking station, Hasenei' s docking station is limited to a specific
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type of device. See Hasenei ,r 9 ("[S]mart docking station ... houses the
smart device[.]" (emphasis added)); see also Spec. ,r 2 ("[D]ocks are each
generally limited to a specific type of device[.]"). Further, Hasenei's
docking station includes components for processing content directed to the
docked device. Ans. 11-16. These features are prima facie evidence that an
artisan would consider Hasenei' s docking station suited to determine the
display's parameters and conform the received content thereto. Id.
Appellants' argument neglects these features and, in tum, fails to address the
prior art as applied.
Accordingly, we sustain the prior art rejection of claim 21.
DECISION
We affirm the rejection of claim 21.
We reverse the rejections of claims 1-19.
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-IN-PART
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