Ex Parte HREHADownload PDFPatent Trial and Appeal BoardJul 12, 201814684823 (P.T.A.B. Jul. 12, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/684,823 04/13/2015 68103 7590 07/16/2018 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 FIRST NAMED INVENTOR Jason HREHA 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. 0201-2048 7141 EXAMINER SKHOUN, HICHAM ART UNIT PAPER NUMBER 2155 NOTIFICATION DATE DELIVERY MODE 07/16/2018 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON HREHA Appeal2018-005652 Application 14/684,823 1 Technology Center 2100 Before ALLEN R. MacDONALD, NABEEL U. KHAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-35, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Samsung Electronics Co., Ltd. ("Appellant") is the applicant, as provided for under 3 7 C.F .R. § 1.46, and is also identified in the Brief as the real party in interest. See Appeal Br. 2. Appeal2018-005652 Application 14/684,823 STATEMENT OF THE CASE Invention Appellant's invention relates to a computing system that "identifies what actions may be performed by apps presently installed on [a] user device and recommends apps that can perform additional actions and/or improve the operation of the existing actions." Spec. ,r 51. 2 Exemplary Claim Claims 1, 35, and 36 are independent. Claim 1 is exemplary and is reproduced below with limitations at issue emphasized. 1. A system comprising: a first data store configured to store a plurality of records, wherein each of the plurality of records: corresponds to an application for a mobile device; and includes metadata identifying actions available to a mobile device user through use of the application, wherein the identified actions are chosen from an ontology; a query module configured to process an application recommendation request corresponding to a user device, wherein the application recommendation request includes data indicating a set of applications installed on the user device; a set generation module configured to identify, using the first data store, a set of available actions associated with the set of applications installed on the user device; 2 Throughout this Decision, we refer to: (1) Appellant's Specification, filed April 13, 2015 ("Spec."); (2) the Final Office Action ("Final Act."), mailed March 15, 2017; (3) the Appeal Brief, filed December 7, 2017 ("Appeal Br."); (4) the Examiner's Answer ("Ans."), mailed March 14, 2018; and (5) the Reply Brief ("Reply Br."), filed May 11, 2018. 2 Appeal2018-005652 Application 14/684,823 select a set of unavailable actions, wherein the set of unavailable actions is mutually exclusive with the set of available actions; and determine a consideration set of applications from the first data store, wherein each application in the consideration set implements at least one of the set of unavailable actions; a set processing module configured to select a chosen subset of applications from the consideration set of applications; and a results generation module configured to respond to the application recommendation request with an application recommendation response, wherein the application recommendation response includes identifying data for each application in the chosen subset. Appeal Br. 11. REFERENCES The Examiner relies upon the following prior art in rejecting the claims on appeal: Umezu Mehta et al. ("Mehta") Procopio et al. ("Procopio") Stout et al. ("Stout") N alluri et al. ("N alluri") Bansal et al. ("Bansal") US 2012/0150892 Al US 2012/0291022 Al US 2014/0344247 Al US 2015/0100268 Al US 2015/0220734 Al US 2015/0370874 Al REJECTIONS June 14, 2012 Nov. 15, 2012 Nov. 20, 2014 Apr. 9, 2015 Aug. 6,2015 Dec. 24, 2015 Claims 1-16, 20, 21, and 28-35 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu and Procopio. Final Act. 4--16. 3 Appeal2018-005652 Application 14/684,823 Claims 17 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu, Procopio, and Bansal. Final Act. 17-19. Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu, Procopio, Bansal, and Nalluri. Final Act. 19. Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu, Procopio, and Mehta. Final Act. 20. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu, Procopio, and Nalluri. Final Act. 21-22. Claims 25-27 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination ofUmezu, Procopio, and Stout. Final Act. 22-24. Our review in this appeal is limited only to the above rejections and the issues raised by Appellant. Arguments not made are waived. See MANUAL OF PATENTING EXAMINING PROCEDURE§ 1205.02 (9th Ed., Rev. 08.2017 (Jan. 2018)); 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l). ANALYSIS Rejections Under § 103 Issue 1: Whether the Examiner errs in finding the combination of Umezu and Procopio teaches or suggests "the application recommendation request includes data indicating a set of applications installed on the user device," as recited in claim 1. 4 Appeal2018-005652 Application 14/684,823 Appellant disputes the Examiner's factual findings with respect to Procopio. Namely, Appellant argues "the Office Action did not cite any portion of Procopio that teaches or suggests that the user's selection of a file to be viewed (alleged application recommendation request) includes data indicating a set of applications installed on the user device." Appeal Br. 7. In response, the Examiner clarifies that the limitation at issue is taught by Procopio at paragraphs 18, 20, and 21. See Ans. 4. Appellant argues Procopio "merely discloses that a user may manually determine (in a time consuming or inefficient manner) whether a local application will open a file, or alternatively be provided a listing of web-based applications that a user may select to open a file." Reply Br. 6. We are unpersuaded. The Examiner finds, and we agree, that Procopio teaches a system that "determine[ s] an application that is locally installed on the user's device to open the file." Procopio ,r 18; see Ans. 4. The Examiner further finds, and we agree, that Procopio teaches, "[ w ]hen the user selects to view the contents of the file, the server 104 interprets the selection as a request from the user to view a list of applications." Procopio ,r 20 ( emphasis omitted); see Ans. 4. Appellant's argument unpersuasively requires the Examiner to treat Procopio' s paragraphs 18 and 20 as if they were mutually exclusive, non-combinable teachings. This is not the law. Rather than assessing obviousness based on a mutually exclusive analysis of individual embodiments or teachings, the prior art should be viewed as a combination of select teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (The conclusion of obviousness can be based on the "interrelated teachings of multiple patents"). Furthermore, a "person 5 Appeal2018-005652 Application 14/684,823 of ordinary skill in the art is also a person of ordinary creativity, not an automaton" and "in many cases ... will be able to fit the teachings ... together like pieces of a puzzle." KSR, 550 U.S. at 420-21. The Examiner combines these individual teachings from Procopio to find Procopio teaches providing a list of applications that may be stored on either a server or locally on a user device. Appellant's argument unpersuasively attacks these teachings from Procopio individually when the Examiner's rejection is based on the combination of Procopio's teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references") ( citation omitted). Appellant's argument is, thus, unpersuasive because Appellant does not address the Examiner's combination of teachings from Procopio, but instead individually attacks the teachings of Procopio. Issue 2: Whether the Examiner errs in finding the combination of Umezu and Procopio teaches or suggests "identify[ing], using the first data store, a set of available actions associated with the set of applications installed on the user device," as recited in claim 1. The Examiner finds Procopio' s discussion of "a list of applications, where each application in the displayed list is capable of opening, rendering, editing, and/or displaying the contents of the file" teaches or suggests the second disputed limitation. Procopio ,r 20 ( emphasis added); see Ans. 5. As discussed above with respect to issue 1, the Examiner also finds Procopio teaches the applications may be "locally installed on the user's device." Procopio ,r 18; see Ans. 5. The Examiner combines these teachings to find Procopio teaches the second disputed limitation. Ans. 5. 6 Appeal2018-005652 Application 14/684,823 Appellant argues that "determining a single file type may be opened by a local applications fails to disclose or suggest ... 'identify[ing], using the first data store, a set of available actions associated with the set of applications installed on the user device'" because Procopio "at most discloses determining that a single action may be performed by using that application itself." Appeal Br. 8. We are unpersuaded because Appellant's argument does not address the Examiner's finding that Procopio' s discussion of applications "capable of opening, rendering, editing, and/or displaying" (i120; see Ans. 5) teaches "a set of available actions associated with the set of applications" nor does the argument address the Examiner's finding that Procopio teaches the applications may be locally installed on the user device. Ans. 5; see ,r 18. Issue 3: Whether the Examiner errs in finding the combination of Umezu and Procopio teaches or suggests "select[ing] a set of unavailable actions, wherein the set of unavailable actions is mutually exclusive with the set of available actions," as recited in claim 1. The Examiner finds Procopio teaches or suggests the third disputed limitation. Namely, in Procopio, the Examiner finds: The systems and methods disclosed herein identify a set of one or more web-based applications (Apps not installed in user device) that may be used to display the contents of the file to the user and allow the user to interact with the file (unavailable actions in the installed applications), without requiring the downloading of the file and installation of local software on the user device. Ans. 8. 7 Appeal2018-005652 Application 14/684,823 Appellant first argues "Procopio does not teach or suggest the combined used of the two techniques as asserted by the Office Action." Appeal Br. 9. As discussed above with respect to the first and second disputed limitations, we find this argument unpersuasive because the Examiner correctly combines the teachings of Procopio. See Ans. 4--8. Appellant next argues: Procopio does not teach or suggest that the actions provided by the web application are unavailable actions. For example, a web application that can view and edit a text file can be identified even if an application that can view and edit a text file is locally installed. In Procopio, the identified actions provided by the web applications are neither necessarily unavailable actions nor mutually exclusive of the actions already provided by the locally installed applications. Appeal Br. 9. We are unpersuaded. The Examiner finds, and we agree, that in clarifying the meaning of the above-disputed terms, Appellant's Specification states that "'[a]t 808, control selects a set of unavailable actions that are mutually exclusive with the available actions. In some implementations, the unavailable actions may be all other actions that are not available from the installed apps. "' Ans. 7 ( quoting Spec. ,r 119) ( emphasis omitted). The Examiner further finds "Procopio discloses two alternative techniques for interacting with a file. . .. Procopio discloses the use of web applications to access files as an alternative to, rather than in combination with, downloading files and then determining locally installed applications to access them." Ans. 7. 8 Appeal2018-005652 Application 14/684,823 We agree with the Examiner's findings and conclusion. That is, we agree that the Examiner's interpretation of "unavailable actions" and "mutually exclusive" is reasonable in view of Appellant's Specification. See Ans. 7. We also agree with the Examiner that Procopio' s discussion of locally stored applications teaches available actions and Procopio' s discussion of remotely stored (web) applications teaches unavailable actions that are mutually exclusive with the set of available actions (see Ans. 7-8) because absent an internet connection, only available actions, but not unavailable actions could be selected. Accordingly, we agree with the Examiner that Procopio teaches the third disputed limitation. For the reasons discussed, Appellant has not shown error in the Examiner's factual findings or conclusion of obviousness. Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of independent claim 1. Independent claims 34 and 35 and dependent claims 2-33 are not argued separately and so the rejections of these claims are sustained for the same reasons given for independent claim 1. See Appeal Br. 9. DECISION We affirm the Examiner's rejections of claims 1-35 under 35 U.S.C. § 103. 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 9 Copy with citationCopy as parenthetical citation