Ex Parte Kotzin et al

Board of Patent Appeals and Interferences

Sep 1, 2010

10814485 (B.P.A.I. Sep. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL D. KOTZIN and RACHID ALAMEH
____________________

Appeal 2009-007691
Application 10/814,4851
Technology Center 2600

Before KENNETH W. HAIRSTON, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is MOTOROLA, INC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007691
Application 10/814,485

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to a handheld electronic device including
at least one context sensor, a microprocessor, and a user interface. The
context sensor detects a contextual characteristic of the device (e.g., ambient
light, motion of the device, proximity to or contact with another object, or
how the user is holding the device) . Additionally, a virtual output
representative of the sensed characteristic associated with a data
management function of the device is generated by the context sensor. A
virtual physical representation of the sensed characteristic is displayed on
the user interface in response to the execution of the data management
function. In the alternative, the virtual physical representation may be
related to the data management function. (Abstract; Spec. 4:7-18).
Claim 1 is exemplary:
1. A method of representing content management in an electronic device
having a context sensor:
receiving signals from a context sensor;
determining a contextual characteristic of the device based on the
received context sensor signals;
associating the determined contextual characteristic with a data
management function of the device; and
determining a virtual physical representation to be output in response
to the execution of the data management function.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steele US 5,169,342 Dec. 8, 1992
2
Appeal 2009-007691
Application 10/814,485

Nykanen US 2002/0173295 A1 Nov. 21, 2002

Claims 1-16 and 20-21 stand rejected under 35 U.S.C. § 102(b) as
being unpatentable over Nykanen.
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nykanen in view of Steele.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed July 3, 2008) and the Examiner’s
Answer (mailed September 19, 2008) for their respective details.

ISSUE
Appellants contend that Nykanen fails to teach "determining a virtual
physical representation to be output in response to the execution of the data
management function" (App. Br. 5). Appellants argue that the wireless
device disclosed in Nykanen that signals an alarm and provides suggestions
for medication is not the same as determining a virtual physical
representation to be output in response to the execution of the data
management function as recited in the claims (App. Br. 6). Accordingly,
Appellants conclude that the reference teaches away from determining a
virtual physical representation (App. Br. 6-7).
Appellants’ contentions present us with the following issue:
1. Do the references disclose a method of representing content
management in an electronic device that includes a step of “determining a
virtual physical representation to be output in response to the execution of
the data management function”?

3
Appeal 2009-007691
Application 10/814,485

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. The user interface of the handheld electronic device provides
virtual physical feedback to the user which corresponds to the sensed
environmental or contextual characteristic. Virtual physical feedback is a
presentation of information that generally illustrates common physical
properties which are generally understood. More particularly, virtual
physical representation is a presentation that a user can easily relate to which
follows basic physical science principles that are commonly understood by
the user. Specifically, a virtual physical representation of the data
management function of transferring a file from one device 100 to another
device 102 may be an animated graphic of a glass filling up with water as
the data is transferred (Spec. 3:17-23; 5:1-9).
Nykanen
2. Nykanen discloses a wireless device 100 that performs initial
sampling and digitization of sensor inputs from sensors 122, 124, 125, 126,
128, 132, and 134 within a context interference engine 136. The context
interference engine 136 processes the metadata vector 138 to produce the
current context. If the context interface engine 136 needs the processing
power or storage capacity available at a network server 140, the metadata
vector 138 is sent from the wireless device 100 to the context interference
engine 142 in the network server 140 (Figs. 1, 2, and 2A; ¶¶ [0092] and
[0093]).
4
Appeal 2009-007691
Application 10/814,485

3. Nykanen discloses that the wireless device 100 has a training
mode, wherein the user may train the phone to read all the sensors when the
user is healthy and well rested and when the user is healthy and fatigued.
During normal operation, the sensor signals are processed into a metadata
vector which is compared with standard statistical models stored in the user
database 146 of handle “good_health_resting_normally” and
“good_health_fatigued;” wherein the most likely match is then associated
with the touch recognition result. As a result, a health maintenance
application within the wireless device 100 signals an alarm and provides
suggestions for medication to palliate the sensed fatigue of the user from
network server 140 (Fig. 2A; ¶¶ [0115-18]).

PRINCIPLES OF LAW
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.
5
Appeal 2009-007691
Application 10/814,485

ANALYSIS
Claims 1-16 and 20-21
Independent claim 1 recites “determining a virtual physical
representation to be output in response to the execution of the data
management function.” Independent claims 10, 11, and 12 recite a similar
claim limitation.
We consider Appellants’ arguments supra to be persuasive to show
Examiner error. Although Nykanen discloses a health maintenance
application that can process the contextual characteristic of the mobile
device with respect to the user and, in response, signal an alarm
corresponding to a sensed fatigue (physical condition) of the user while
providing suggested medication, we agree with Appellants that an alarm and
a list of medications is not the same as “determining a virtual physical
representation to be output in response to the execution of the data
management function” (App. Br. 6; Ans. 6; FF 3).
In an effort to give the claims their broadest reasonable construction,
we look to the Specification, which discloses that a “virtual physical
representation” for the data management function of transferring a data file
is a presentation (that a user can easily relate to) that follows basic physical
science principles which are commonly understood by the user, such as a
glass filling up with water representing data transferred from one wireless
device to another (FF 1). Nykanen, however, provides a list of suggested
medications at the user interface of the wireless device 100 that corresponds
with the health of the user (FF 3). Although the displayed list of suggested
medication is transferred from the network server 140, this list does not
relate to the data management function of transferring a data file. Further,
6
Appeal 2009-007691
Application 10/814,485

the list is not a virtual physical representation of the data management
function of transferring a file that follows easily understood basic science
principles. More particularly, Nykanen is silent as to providing a virtual
physical representation at the user interface, in addition to the list, that
represents the data management function of transferring data from user
database 146 to wireless device 100 (FF 3).
Therefore, we find that Nykanen does not teach all of the limitations
of representative claim 1. As a result, we will not sustain the Examiner’s
§ 102 rejection of claims 1-16 and 20-21.
Claims 17-19
Appellants argue that claims 17-19 are patentable over the cited prior
art because the claims depend from claim 12 and because Steele does not
cure the deficiencies asserted with respect to the Nykanen reference (App.
Br. 7). Appellants further assert that the Examiner has failed to provide a
convincing line of reasoning for combining the references (App. Br. 8).
As noted supra, we reversed the rejection of claim 12 from which
claims 17-19 depend. We have reviewed Steele (the additional reference
applied by the Examiner to reject these claims), and find that the cited
reference does not cure the cited deficiencies of Nykanen.
We therefore reverse the Examiner’s rejection of claims 17-19 under
35 U.S.C. § 103, for the same reasons expressed with respect to the rejection
of parent claim 12, supra.

CONCLUSION
The references do not disclose a method of representing content
management in an electronic device that includes a step of “determining a
7
Appeal 2009-007691
Application 10/814,485

virtual physical representation to be output in response to the execution of
the data management function.”

ORDER
The Examiner’s rejection of claims 1-21 is reversed.

REVERSED

ELD
MOTOROLA INC
600 NORTH US HIGHWAY 45
W4 - 39Q
LIBERTYVILLE IL, 60048-5343

8