Ex Parte GärdenforsDownload PDFPatent Trial and Appeal BoardAug 29, 201613340777 (P.T.A.B. Aug. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/340,777 12/30/2011 95866 7590 08/31/2016 Fleit Gibbons Gutman Bongini & Bianco P,L, 551 NW 77th street Suite 111 Boca Raton, FL 33487 FIRST NAMED INVENTOR Dan Zacharias Giirdenfors 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. 41994-US-PAT 3496 EXAMINER HE,WEIMING ART UNIT PAPER NUMBER 2612 NOTIFICATION DATE DELIVERY MODE 08/31/2016 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): ptoboca@fggbb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAN ZACHARIAS GARDENFORS 1 Appeal2015-005608 Application 13/340,777 Technology Center 2600 Before, KRISTEN L. DROESCH, NATHAN A. ENGELS, and JAMES W. DEJMEK, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1---6, 8-12, 14, 16, and 17, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant indicates the real party-in-interest is BlackBerry Limited. App. Br. 2. Appeal2015-005608 Application 13/340,777 RACKGROUNn The disclosed invention relates to the display of icons on electronic devices having touch sensitive displays. See Spec. Abstract, i-fi-f l, 13-19. Representative claim 1, reproduced from the Claims Appendix of the Appeal Brief, reads as follows (disputed limitations in italics): 1. A method of operating a portable electronic device compnsmg: by a control circuit: applying at least one prioritization metric to select some icons of a plurality of icons to provide selected icons; scrolling a display of a plurality of icons; while scrolling the display of the plurality of icons: displaying the selected icons of the plurality of icons in a highlighted form; and displaying the non-selected icons of the plurality of icons in a non-highlighted form; halting the scrolling of the display of the plurality of icons; and within a predetermined time of halting the scrolling of the display of the plurality of icons, automatically displaying all presently-displayed icons of the plurality of icons in a default form. REJECTION Claims 1---6, 8-12, 14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lai (US 2009/0172562 Al; published July 2, 2009), Orr et al. (US2008/0074384 Al; published Mar. 27, 2008) ("Orr"), and Cragun et al. (US2004/0080532 Al; published April 29, 2004) ("Cragun"). 2 Appeal2015-005608 Application 13/340,777 ANALYSIS We have reviewed the Examiner's rejection in light of Appellant's arguments in the Appeal Brief, the Examiner's Answer, and the arguments in the Reply Brief. We disagree with Appellant's conclusions, and highlight the following findings and arguments below for emphasis. We are not persuaded by Appellant's argument that "the Examiner has failed to present a prima facie showing of obviousness" because "the Examiner has failed to 'determine what is analogous prior art for the purpose of analyzing the obviousness of the subject matter at issue."' App. Br. 10. Appellant does not direct us to persuasive authority to support the suggestion that the Examiner must provide an explicit analysis of what constitutes analogous prior art. Appellant also argues that Lai, the primary reference, and Cragun, the tertiary reference, are non-analogous art. See App. Br. 10-12. Appellant first asserts that Lai's presentation of user-assertable menu icons to activate corresponding functionality is a different field of endeavor than Cragun's presentation of informational textual documents. See id. at 10. Appellant contends that Lai's icons serve the purpose of facilitating active interaction with a user, but Cragun's text serves the purpose of facilitating a passive impartation of information to the user. See id. at 10-11. Appellant also argues that a person of ordinary skill in the art trying to solve the problem identified by Lai (i.e., avoiding misselection of one icon for another) would not consider Cragun's suggestion that highlighted text be unhighlighted. See id. at 11-12. Appellant's arguments are misplaced and not persuasive because the arguments address whether the Lai and Cragun references are analogous to each other, where the correct inquiry is whether the 3 Appeal2015-005608 Application 13/340,777 reference(s) are analogous art to the claimed invention. See Irz re Bigio, 381 F.3d 1320, 1325 (Fed. Cir 2004) ("References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention."). Related to the previous arguments, Appellant argues that modifying the teachings of Lai in view of Cragun is contrary to the principle of operation of Lai. See App. Br. 12; Reply Br. 2. Appellant contends the purpose of Lai is to provide highlighting of certain icons to help a user to avoid misse1ecting a particular icon. Appellant contends that modifying Lai to undo such highlighting nrns contrary to Lai's purpose or intent. See App. Br. 12; Reply Br. 2. Appellant's arguments are not persuasive because Appellant's arguments mischaracterize the teachings of Cragun as relied upon by the Examiner. The Examiner does not rely on Cragun for teaching undoing highlighting generally, or undoing the highlighting at a11 times. Instead, the Examiner relies on Cragun for teaching automatically highlighting while a user is scrolling, and the use of a timer to disable highlighting once a user stops scrolling altogether if automatic highlighting is desired only when scrolling. S~ee Final Act. 5 (citing Cragun i-f 43); Cragun Fig. 7. Thus, we are not persuaded that Cragun's teachings of disabling highlighting once a user stops scrolling altogether (if highlighting is desired only when scrolling) is contrary to the Lai's purpose of highlighting of certain icons to help a user to avoid misselecting a particular icon. Lastly, Appellant argues that Lai is silent with respect to scrolling and only discloses icons displayed in a user interface, with a display parameter of each icon is adjusted based on its utilization frequency. See Reply Br. 3 4 Appeal2015-005608 Application 13/340,777 (citing Lai i-f 51 ). On this basis, Appellant contends Lai does not teach or suggest that any of its operations are performed "while scrolling the display of the plurality of icons," as recited in independent claims 1, 10, 16. See id. Appellant also argues that Orr and Cragun do not disclose "within a predetermined time of halting the scrolling of the display of the plurality of icons, automatically displaying all presently-displayed icons of the plurality of icons in a default form." See id. Appellant contends Orr is directed to detecting movement of the device itself, not scrolling of icons. See Reply Br. 3 (citing Orr i-fi-157, 70-76). Appellant contends Cragun teaches disabling automatic highlighting, but does not teach or suggest automatically displaying in a default form. See Reply Br. 4. Appellant's aforementioned arguments are presented for the first time in the Reply Brief and are not responsive to an argument raised for the first time in the Answer. Arguments raised for the first time in the Reply Brief are deemed waived and will not be considered by the Board without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). Appellant does not provide good cause for consideration of Appellant's belated arguments. See Reply Br. 3--4. For all the foregoing reasons, we affirm the rejection of independent claims 1, 10, and 16. As Appellant did not present separate substantive arguments addressing dependent claims 2---6, 8, 9, 11, 12, 14, and 17 (see App. Br. 12-13), for the same reasons as claim 1, 10, and 16, we affirm the rejection of dependent claims 2-6, 8, 9, 11, 12, 14, and 17. 5 Appeal2015-005608 Application 13/340,777 nECISION WeAFFIRMtherejectionofclaims 1---6, 8-12, 14, 16, and 17. 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 6 Copy with citationCopy as parenthetical citation