Ex Parte Davydov et al

Patent Trial and Appeal Board

Aug 22, 2017

12958326 (P.T.A.B. Aug. 22, 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.
12/958,326 12/01/2010 Anton Davydov 106842096600 (P9964US1) 2819
119082 7590 08/24/2017
Apple c/o MORRISON & FOERSTER LLP SF
425 MARKET STREET
SAN FRANCISCO, CA 94105-2485
EXAMINER
LANDIS, LISAS
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
EOfficeSF @mofo.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON DAVYDOV, JORGE FINO,
POLICARPO BONILLA JR. WOOD, and
JESSE BOETTCHER
Appeal 2017-000152
Application 12/958,3261
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing of our
Decision on Appeal mailed June 26, 2017.
We reconsider our Decision in light of Appellants' Request, but
decline to change the decision for the reasons provided, infra.
1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 4.
Appeal 2017-000152
Application 12/958,326
BACKGROUND2
Appellants have filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claims 1—4, 9—
11 and 16—34 under § 103(a) as anticipated over Lemay. Request 2—6.
APPELLANTS' ARGUMENTS
Appellants contend:
[T]he Board misapprehended the Examiner's rejection. In the
Decision at page 6, the Board affirmed the Examiner's rejection
by citing to FIG. 7A of Lemay for teaching "the first predefined
set of media player controls." In the Final Office Action mailed
on December 24, 2014, and the Advisory Action mailed on
May 14, 2015, however, the Examiner never alleged that FIG. 7
A included any "media player controls" at all. Instead, the
Examiner mapped FIG. 7C to "the first predefined set of media
player controls" (Final Action, p.4) and mapped FIG. 8C to "the
second predefined set of media player controls" (Advisory
Action). See also Examiner's Answer at 4—5.
Request 2.
s specifically contend "[T]he Examiner's rejection relied on
Lemay's contexts D and X for the required different sets of media player
controls." Id.
Appellants further contend:
The Decision, however, seems to misapprehend the Examiner's
rejection that relies on Context D and Context X. While the
2 Our decision on Rehearing relies upon Appellants' Appeal Brief ("App.
Br.," filed Jan. 25, 2016); Reply Brief ("Reply Br.," filed Sept. 27, 2016);
Request for Rehearing ("Request," filed June 26, 2017); Examiner's Answer
("Ans.," mailed July 27, 2016); Final Office Action ("Final Act.," mailed
Dec. 24, 2014); our Decision on Appeal (“Decision” mailed April 24, 2017);
and the original Specification ("Spec.," filed Dec. 1, 2010).
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Application 12/958,326
Decision acknowledges that "[t]he Examiner finds Lemay's
applications 'D' [of FIG. 7C] and 'X' [of FIG. 8C], which apply
to different pieces of media (songs), disclose the disputed
limitation," the Decision goes on to confirm the Examiner's
rejection based on FIGS. 7A—7C without any discussion of
Context X of FIG. 8C.
Accordingly, Appellants assert that the Board has
misapprehended the Examiner's rejection, which never relied on
FIGs. 7A—7C to show the both of the recited distinct sets of
media player controls.
Request 3.
RESPONSE TO ARGUMENTS
We have only considered those timely arguments actually made by
Appellants in deciding this Request. See 37 C.F.R. § 41.52(a)(1)
(“Arguments not raised, and Evidence not previously relied upon, pursuant
to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section.”).
We have not misapprehended the Examiner’s rejection in our
Decision. As a matter of claim construction, we adopt a broad but
reasonable interpretation of the recited "predefined set of media player
controls." Claim l.3 In particular, we note Appellants do not point to or
3 In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term “must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own
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Application 12/958,326
otherwise present evidence of a definition of a "predefined set of media
player controls" operation that would preclude the Examiner's broader
interpretation of the zooming operation, or that a person with skill in the art
would attribute a different meaning to this term.
Appellants quote the Examiner: "The differing application contexts D
and X are applying to different pieces of media. One references one song or
track and the second references a different song or track. This
differentiation allows for two "distinct" media player controls as each one is
specific to the different application context." Request 2, citing Ans. 5.
However, we note the Examiner makes this statement in response to
Applicants arguing "that only a single set of media player controls are
disclosed in Lemay, because the "same" media player controls are being
used." Ans. 5.
The Examiner finds Lemay’s description of a user selecting an artist
(A, B, D, C, or X), by using a first set of media controls, resulting in a new
display of a predefined second set of media player controls associated with a
selected song (1, 2, 3, 4, 5, 6, etc.) from the selected artist discloses the
disputed, distinct first and second sets of "media player controls," as recited
in claim 1. Final Act. 3—5.
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description.”). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
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Application 12/958,326
We are not persuaded by Appellants' argument the Examiner never
alleged that Figure 7A included any "media player controls" (Request 2)
because we find Figures 7A—7C represent a continuum of the successive
process of selecting an artist and song and then playing the selected song.4
While our reading of Appellants’ claim 1 on the Femay reference
supplemented the Examiner’s mapping, it is our view that Appellants have
been given full and fair notice of the Femay reference and are responsible
for all it discloses. See In re Zenitz, 333 F.2d 924, 926 (CCPA 1964) (“This
court has held in a number of decisions that a United States patent speaks for
all it discloses as of its filing date, even when used in combination with other
references.”). Our reviewing court has stated: “[t]he use of patents as
references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain.” In re Heck, 699
F.2d 1331, 1333 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968)).
We observe both Figs 7A-C and Figs 8A-C represent a music player
application with touch sensitive displays that allow the user to select artists
and then songs from a predefined list associated with each artist,5 and then
play the selected songs using multiple sets of new control displays that
4 "FIGS. 7A—7C are diagrams illustrating navigation to a succeeding
application context of an application, according to some embodiments of the
invention." Femay. | 76.
5 We note the songs a user may select are organized by artist. Femay 1 54.
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Application 12/958,326
disclose multiple, distinct "predefined set of media player controls."6
Figures 7A through 7C and 8A through 8C both show selecting a song from
a list associated with an artist. In each of these cited figures, a new
predefined set of controls slides into the context region once a selection is
made by the user. Lemay, Figs. 7A-C, 8A—C.
We note, upon selection of an artist, Lemay’s device activates a new
predefined set of media controls that allows for selection of a song. Lemay,
158. We are not persuaded by Appellants' arguments distinguishing the
cited figures because a selection, using another distinct set of media player
controls, of a song (i.e., 1, 2, 3, 4, 5, or 6) from the selected artist (A, B, C,
D . . . X (where X can be any artist listed)) is shown both in Figs 7A, and the
left hand column of Fig. 7B. We note yet another distinct set of media
controls is shown in Figs 7B and 7C where the "play, pause, stop, fast-
forward" controls depict this distinct set of media player controls.
We note Lemay’s title bar in both Figs 7A—C and Figs 8A—C displays
different artists represented by labels A, B, C, D or X, where X is a symbol
representative of any particular artist. Lemay, Figs 7A-C and Figs 8A—C.
We are not persuaded by Appellants' argument distinguishing between the
specific labels because the particular selection of the artist/label A, B C D or
X does not alter the result that the selection of any of these artists is done by
a set of media player controls, as depicted in the top bar of Figs. 7 A, 7B,
and 7C.
6 Figs 7A—C and Figs 8A—C are a continuation of the example in Fig. 2:
"Continuing with the music player application example described above, in
relation to FIG. 2." Lemay 71.
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Application 12/958,326
Accordingly, based on the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on Lemay to disclose the
contested limitation "first predefined set of media player controls are distinct
from the media player controls in the second predefined set of media player
controls" of claim 1.
CONCLUSION
We have considered all of the arguments timely raised by Appellants
in the Request. However, Appellants have not persuasively shown we
misapprehended or overlooked any points regarding the Examiner's
rejection, or that our Decision should otherwise be modified. For the
aforementioned reasons, Appellants' contentions have not persuaded us of
error in our Decision.
DECISION
Accordingly, while we have granted Appellants' Request to the extent
that we have reconsidered our Decision, that request is denied with respect
to making any changes therein.
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).
REQUEST FOR REHEARING DENIED
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