Ex Parte Huhtala et al

Patent Trial and Appeal Board

Feb 24, 2016

12428405 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/428,405 0412212009
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
02/26/2016
FIRST NAMED INVENTOR
YKAHUHTALA
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.
P2277USOO 8851
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YKA HUHTALA, JUSSI KAASINEN, and RIKU SUOMELA
Appeal2013-009711
Application 12/428,405
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STi\TE1\1ENT OF THE Ci\.SE
Appellants2 seek our review under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-17. 3 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br." filed
July 12, 2012), Reply Brief ("Reply Br." filed Aug. 1, 2013), the
Specification ("Spec.," filed April 22, 2009), and the Examiner's Answer
("Ans." mailed June 21, 2013).
2 Appellants identify the real party in interest as "Nokia Corporation." App.
Br. 1.
3 Claims 18-23 are canceled. Id. at 20, Claims Appendix.
Appeal2013-009711
Application 12/428,405
STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to 37 C.F.R. § 41.50(b).
INVENTION
Appellants' invention relates to automatically monitoring and
reporting user activity performed using linked services. Spec. i-f 2. Claim 1
is illustrative of the subject matter on appeal.
1. A method comprising:
[a] initiating, via one or more processors, monitoring of
progress of a user towards achieving a goal or performing
a task corresponding to a first service,
[b] wherein the goal or the task includes an activity to be
completed in one or more second services different from
the first service, and wherein the first service and the one
or more second services are linked to share information.
App. Br. 17, Claims Appendix (with lettering in brackets added).
REJECTIONS
The following rejections are before us for review.
I. Claims 1-5, 7-11, 13, 16, and 17 stand rejected as unpatentable under
35 U.S.C. § 103(a) over Chu (US 2008/0270240 Al, pub. Oct. 30,
2008) and Short (US 2005/0010439 Al, pub. Jan. 13, 2005). Ans. 3-
9.
II. Claims 6, 12, 14, and 15 stand rejected as unpatentable under
35 U.S.C. § 103(a) over Chu, Short, and Magar (US 2009/0054737
Al, pub. Feb. 26, 2009). Id. at 9-12.
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Application 12/428,405
ANALYSIS
Rejection I
Obviousness over Chu and Short
Claims 1-5, 7-11, 13, 16, and 17
In reaching the legal conclusion of obviousness over Chu and Short
with respect to independent claims 1, 8, and 16, the Examiner concluded that
it would have been obvious
to have modified the system and method of Chu so as to have
included multiple service functionality, as taught by Short, in
order to provide for variability in service utilization, since so
doing could be performed readily and easily by any person of
ordinary skill in the art, with neither undue experimentation,
nor risk of unexpected results.
Ans. 5.
Appellants contend that a prima facie case of obviousness has not
been established because the Examiner's rationale for combining Short with
Chu is flawed. App. Br. 11. In particular; Appellants argue "[t]he claims
are not concerned with providing 'multiple service functionality' and
'variability in service utilization."' Id. "Rather, they are directed to
monitoring the progress of a user towards achieving a goal or performing a
task corresponding to a first service, wherein the goal or the task includes
an activity to be completed in one or more second services different from
the first service." Id.
We agree that the preponderance of evidence supports the Appellants'
position that the Examiner failed to establish a prima facie case of
obviousness. "[R ]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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Application 12/428,405
obviousness." KSR Int'! Co. v. T'elejlex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Short is directed "to
an insurance strategy that utilizes a state-governed fully-insured health
insurance policy with benefits contingent upon an employee adopting
aspects of a healthy lifestyle, such as refraining from tobacco usage." Short
i-f 2. We fail to see how Short provides "multiple service functionality" and
how "variability in service utilization" would have motivated one skilled in
the art to combine these references. Thus, we conclude the Examiner failed
to provide some "rational underpinning" to support the conclusion that it
would have been obvious to combine Chu with Short to arrive at the claimed
invention.
As a result, we find that the Examiner failed to establish a prima facie
case of obviousness in rejecting claims 1-5, 7-11, 13, 16, and 17 based on
the combination of Chu and Short. Accordingly, we do not sustain the
rejection of claims 1-5, 7-11, 13, 16, and 17 as obvious over Chu and Short.
Rejection II
Obviousness over Chu, Short, and Magar
Claims 6, 12, 14, and 15
The rejection of dependent claims 6, 12, 14, and 15 as obvious over
Chu, Short, and Magar relies on the same flawed reasoning as in Rejection I
above. See Ans. 10-12. As a result, we do not sustain the rejection of
claims 6, 12, 14, and 15 as obvious over Chu, Short, and Magar.
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Application 12/428,405
New Ground of Rejection
Obviousness over Chu
Claims 1-5, 7-11, 13, 16, and 17
As discussed above with respect to Rejections I and II, the Examiner
erred in combining the teachings of the references. This combination of
references was necessitated by the Examiner's finding that Chu discloses all
the limitations of the independent claims, but fails to disclose "a second
service different from the first service," which Short was relied upon to
remedy. See Ans. 5. Thus, in light of the new ground of rejection, we will
address only arguments presented with respect to Chu.
Appellants argue independent claims 1, 8, and 16 together as reciting
substantially similar subject matter, and select claim 1 as being
representative. App. Br. 7. We also focus our analysis on claim 1.
Chu is directed to a method for managing tasks assigned to an
individual. Chu, Abstract. We find that Chu's Task Management Server
802 is operably linked to Kids Database 810, which stores assigned tasks,
progress on completion of tasks, points balances etc. Id., i-f 150. We find
that Task Management Server 802 hosts "To Do wizards" that allow for
categorizing tasks in separate To Do Charts 828, such as Health Chart 838.
Id. By way of example, Chu discloses that Health Chart 83 8 may be
integrated with a heart rate monitor, or alternatively, a user's heart rate
monitor may be synchronized with the Health Chart 838 facility. Id.
According to Chu, if a task is to get 30 minutes of exercise every day, and if
the heart rate monitor detects an elevated heart rate, it wirelessly indicates
the elevation to the Health Chart 838, or alternatively, indicates that an
exercise task has been completed to Health Chart 838 facility. Id. As a
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Application 12/428,405
result of completing the exercise task, the user earns points from the Health
Chart 838 facility. Id. "Points earned by an individual in the To Do Charts
828 may be received by the points API 808 associated with the Task
Management Server 802," and those points are communicated to and stored
in the Kids Database 810. Id.; see also Fig. 8 (depicting an example of a
task management system). Thus, the task management system of Chu as
depicted in Figure 8
Id.
demonstrates an advantage of the invention in that the Task
Management Server 802 facilitates the use of points earned in
the To Do Chart 828 for payment of items and rewards within
the Rewards Catalog 812, the Game Server 814, the Game
Client 848, a third party game client 818, an online music store
820, an online movie store 822, an online store 824, and the
like.
Appellants argue that Chu fails to disclose limitation [b] of claim 1,
which recites, "wherein the goal or the task includes an activity to be
completed in one or more second services different from the first
service, and wherein the first service and the one or more second services
are linked to share information." App. Br. 7.
We find that contrary to Appellants' arguments "that Chu discloses no
such 'service"' (id.), the Specification broadly describes the term "services:"
Although various exemplary embodiments are described
with respect to linking services within a wireless network
environment, it is contemplated that the approach for linking
services described herein may be used within any type of
communication system or network. As used herein, the term
"services" refers to applications, functions, and/or content
provided over a communication system or network. In addition,
it is contemplated that the services may reside on a client, a
server, or both.
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Spec. il 23 (emphasis added).
Based on the disclosures in Chu and in light of the Specification, we
determine that Chu fairly teaches or suggests limitation [b] of claim 1. We
determine that Chu's Task Management Server 802, which provides
functionality as discussed supra, and resides on a server, corresponds to the
claimed "first service." We determine that Health Chart 838, which
provides functionality and stores content (e.g., receives an indication of an
elevated heart rate, completion of a task, stores earned points) via task
management communication system 800, corresponds to a "second service
different from the first service." We determine that the first service and
second service are linked4 to share information because Task Management
Server 802 hosts "To Do wizards" to categorize and communicate tasks
assigned to be completed in Health Chart 838, and points earned after
completing the task in Health Chart 83 8 are communicated to or shared with
Task Management Server 802 via Points API 808. In other words, Chu
teaches or suggests limitation [b] of claim 1, "wherein the goal or the task
includes an activity to be completed in one or more second services" (task
includes 30 minutes of exercise daily to be completed in Health Chart 838)
"different from the first service" (different from Task Management Server
802), "and wherein the first service and the one or more second services are
linked to share information" (Task Management Server 802 and Health
4 The Specification states "the term 'link' or 'linking' refers to sharing
information among multiple services to, for instance, direct users to or
integrate the applications, functions, and content associated with the
multiple services." Spec. i-f 25.
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Chart 83 8 are linked to communicate as displayed in Figure 8 to share
information, e.g., points earned in Health Chart 838).
Appellants further dispute that Chu discloses limitation [a] of claim 1
because "in accordance with the claim language, the monitoring task must
originate in a first service but the completion of an activity included in that
task must occur in a second service, with the second service being different
from the first service." Reply Br. 2.
We are not persuaded because Appellants' argument is not
commensurate in scope with limitation [a] of claim 1. This claim limitation
recites "monitoring of progress of a user towards achieving a goal or
performing a task corresponding to a first service," rather than originating in
a first service. We find that upon detecting the elevated heart rate of a user,
the heart rate monitor in Chu begins monitoring the elevation towards
performing a task (e.g., 30 minutes of daily exercise) corresponding to or
associated with the Task Management Server 802, which categorized and
assigned that task to be completed in Health Chart 838. Thus, we decline to
read the argued limitations into the claim because "limitations not appearing
in the claims cannot be relied upon for patentability." See In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Thus, we reject independent claim 1 as being obvious over Chu. We
reject independent claims 8 and 16, which recite substantially similar subject
matter, as being obvious over Chu. To the extent that the Examiner relied
on Chu in further rejecting claims 2-5, 7, 9, 10, 11, 13, and 17, we adopt the
Examiner's findings on pages 6-9 of the Answer as our own. For the
foregoing reasons, we reject dependent claims 2-5, 7, 9, 10, 11, 13, and 17
as being obvious over Chu.
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Application 12/428,405
Claims 6, 12, 14, 15
Claims 6 and 12 recite, inter alia, "wherein the automated
measurement is performed using a physical measurement device to measure
parameters including acceleration, movement, location, elevation, heart rate,
orienteering support parameters, galvanic skin response, conductivity, body
fat, body mass, body mass index, or a combination thereof." App. Br. 18,
12, Claims Appendix (emphasis added). As discussed with respect to claim
1, Chu discloses using a heart rate monitor (physical measurement device) to
detect an elevated (measure) heart rate. See Chu i-f 150. Thus, claims 6 and
12 are further rejected as being obvious over Chu.
With respect to claims 14 and 15, Appellants contend that Chu does
not suggest the employment of those systems within a mobile device. App.
Br. 15. We are not persuaded because Chu discloses that "[t]he task
management system 102 may be deployed as an internet-based application, a
desktop-based application, a wireless application, a combination thereof, or
the like." Chu i-f 53. Thus, claims 14 and 15 are further rejected as being
obvious over Chu.
DECISION
The decision to reject claims 1-5, 7-11, 13, 16, and 17 under 35
U.S.C. § 103(a) over Chu and Short is REVERSED.
The decision to reject claims 6, 12, 14, and 15 under 35 U.S.C.
§ 103(a) over Chu, Short, and Magar is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1-17 as
unpatentable under 35 U.S.C. § 103(a) over Chu.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides that "[a] new
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Application 12/428,405
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
REVERSED; 37 C.F.R. § 41.50(b)
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